DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment / Arguments
The response, filed 05/28/2026, has been entered. Claims 1-10 are pending with claims 8-10 being withdrawn from consideration. All previous objections and 112b rejections are withdrawn due to amendment. Applicant’s arguments regarding claims 1-7 have been fully considered but are unpersuasive.
On page 8 of the response, applicant argues that “the Office action maps Masuda’s spacer 70 to the claimed first electrically insulating polymeric layer…being arranged on the substrate” and that this mapping is erroneous and cannot be sustained. Applicant argues that “[c]ritically, the spacer 70 is not arranged on the substrate (supporting member 50”. Applicant continue on page 9 by stating the “meaning” of the limitation of claim 1 is that “the first polymeric layer is directly deposited on the substrate and extends across the active area of the device, not merely around it’s periphery” (emphasis added). In response, the examiner notes that claim 1 fails to recite that the first polymeric layer is directly coupled to the substrate. In contrast, claim 1 merely recites that “the first polymeric layer being arranged on the substrate”. Viewing FIG. 12 of Masuda, 70 is clearly “arranged on” 50, even with the intervening portion of 10. As an example, if one had a lunch tray with a napkin on the center and a cup on the napkin, it would be far more than reasonable to interpret the cup as being on the tray and also reasonable, yet not contradictory, to say the cup is on the napkin. Therefore the examiner finds the aforementioned argument unpersuasive.
On pages 9-11 applicant argues that the examiner’s holding of routine optimization and “result-effective” variables (for claim 1) is improper. Applicant also states “Li provides no discussion linking membrane thickness to any performance outcome -- sensitivity, dynamic range, flexibility, or otherwise”. In response, the examiner notes that MPEP 2144.05 states that “[i]n order to properly support a rejection on the basis that an invention is the result of ‘routine optimization’, the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range.” This does not require the cited art, such as Li, to explicitly state that the variable is results-effective. In the previous Office action, the examiner clearly stated that certain layer thicknesses (especially that of a pressure membrane) is/are “a results effective variable as thinner layers / electrode / membrane means a more sensitive device, but with a lower maximum pressure and more difficult to produce. In contrast thicker layers are easier to produce and have a higher maximum pressure, but are less sensitive to low pressures.” This is in the context of pressure sensors that sense pressure by deformation of layers. In this context it is unquestionably obvious that the thicknesses of the layers that deform (e.g., the pressure receiving membrane) are a results-effective variable. If the parts that deform are thicker, that means more overall stiffness which means less sensitivity to low pressures but a device that can receive a higher max pressure. If the parts that deform are thinner, that means less overall stiffness which means more sensitivity to low pressures but a device with a lower maximum pressure. The pressure sensor dimensions and layer thicknesses are tuned based on the intended application and pressures or forces that the device may encounter. As for the paragraph spanning pages 10-11 of the response, the examiner did not rely on the ionic composite sensing material film of Li at all. The examiner also did not solely rely on the 100 nm-thick ITO layer of Li. Li teaches alternative to this ITO layer in [0024]-[0025]. Regardless, the examiner noted that the teaching of the exact thickness of the “upper electrode” was not taught by but, rather, rendered obvious by Masuda and Li in more than one way, as set forth in the previous Office action. Li provided general layer thicknesses of the other components of the device that would suggest to one of ordinary skill in the art that the flexible electrode may have a thickness of 5-50 µm. Most importantly, the examiner relied upon, as mentioned above, routine optimization. The upper electrode of Masuda deforms in response to pressure. The examiner has already set forth above how the thickness of this layer (and other layers which deform for pressure sensing such as the polymeric and dielectric layers) are clearly results-effective variables. Therefore the examiner finds the aforementioned argument(s) unpersuasive.
On page 11 of the response, applicant argues that the cavity height adjustment of Li cannot be applied to Masuda and one of ordinary skill in the art would have no reliable basis to predict which cavity height would yield a desired performance outcome in Masuda’s device and would not be “routine” optimization. In response, the examiner holds that it has been clearly explained above that the thicknesses of the deformable layers in a pressure sensor are results-effective variables (e.g., thicker = less sensitive but higher pressures can be sensed…thinner = more sensitive but lower pressure limit). The same is true for the cavity or spacer height as it contributes or directly correlates to how much layers may deform and the linearity of the deformation as it increases. These are basic physical principles and are how pressure sensors work. The difference in the structure (i.e., the presence of the protrusions or dielectric of Masuda) does not change the fact that the cavity/spacer height will affect the sensitivity and, especially, range of the pressure sensor. It is noted that the material/dielectric filling the cavity of Masuda is much softer than the electrode/protrusions and, thus, functions similar to the unfilled cavity of Li in regards to the thickness of the cavity affecting the dynamics of the device and its measurable pressure range. Therefore the examiner finds the aforementioned argument(s) unpersuasive.
On pages 11-12 of the response, applicant argues that the “claimed monolithic upper electrode thickness of 5-50 µm yields practical advantages not described or suggested anywhere in the combined teachings of Masuda and Li. By constraining the electrode to this minimal thickness range, the claimed device significantly reduces the quantity of electrically conductive material required, yielding both economic and ecological benefits. This range also facilitates the manufacturing process, enabling simpler deposition techniques and further reducing production costs. These advantages are wholly absent from the prior art - Masuda provides no numerical guidance on electrode thickness, and Li's electrode is a 100 nm-thick ITO layer with no discussion of material efficiency or manufacturing benefits at any scale - confirming that the claimed range reflects inventive insight rather than routine optimization.” Although not relied upon, the examiner notes the disconnect between applicant’s earlier argument -- that Li’s upper electrode (in the ITO embodiment) is 0.1 µm (100 nm) is an order magnitude thinner than even the lower bound of the claimed 5-50 µm -- and the instant argument regarding “constraining the electrode to this minimal thickness range” and “significantly reduces the quantity of electrically conductive material required, yielding both economic and ecological benefits”. What is relied upon is the general dimensions of Masuda and Li and, most importantly, the obviousness due to routine optimization, as set forth above. Further, there is no evidence in the instant disclosure that the range of 5-50 µm for the upper electrode is critical. Applicant’s own range claimed range spans an order of magnitude. Therefore the examiner finds the aforementioned argument(s) unpersuasive.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (US 20160273987 A1, prior art of record) in view of Li et al. (US 20190162614 A1, prior art of record).Regarding claim 1:Masuda teaches (e.g., FIG. 12) device for locally measuring a normal mechanical stress exerted by a contact element, said device comprising:
a substrate comprising (50 / 50 + 10), over at least a part of its surface, at least one electrically conductive layer, called the lower electrode (10 - e.g., [0102] - “the first electrode 10”),
a first electrically insulating polymeric layer (70 - e.g., [0103] - “spacer 70 may include an insulating resin such as a polyester resin”) comprising at least one through-cavity (32 - [0068] - “[t]he second dielectric 32 may be an air-filled portion”), the first polymeric layer being arranged on the substrate,
a structure arranged on the first polymeric layer, the structure comprising the following successive layers (see below):
a dielectric layer having a thickness of between 50 µm and 2000 µm (31; e.g., [0065] - “the first dielectric 31 that is thin like a film is readily flexurally deformed, the thickness may be in the range of 1 to 100 μm”) and arranged on the first polymeric layer,
an electrically conductive monolithic layer (20; e.g., [0071] - “second electrode 20 having elasticity may be referred to as an elastic electrode or an elastic electrode layer”), referred to as the upper electrode, and
a second polymeric layer (60; e.g., [0102] - “The pressing member 60 may have flexibility. The pressing member 60 may be a resin board and may include at least one resin component selected from the group consisting of polyethylene terephthalate, polycarbonate, and polyimide, for example”) comprising a surface intended to be in contact with the contact element (the examiner notes the “configured to be” language; Masuda teaches that element 60 is what is intended to receive the pressure to be sensed - [0102]),
the through-cavity being (32) defined by a volume (32) and extending between the electrically conductive layer (10) and the dielectric layer (31), the assembly comprising the through-cavity, the dielectric layer and the lower and upper electrodes forming a capacitor (e.g., [0049]),
the structure being elastically deformable such that when a normal mechanical stress is exerted on the surface of the second polymeric layer intended to be in contact with the contact element the volume of the through-cavity varies so as to change the capacitance of the capacitor (e.g., FIG. 12 and [0049])Masuda fails to explicitly teach:
the first electrically insulating polymeric layer having a thickness comprised between 1 µm and 500 µm;
the monolithic layer having a thickness of between 5 µm and 50 µm(Although Masuda does teach the monolithic layer needing to be thin and flexible - [0072]); and
the second polymeric layer having a thickness of between 10 and 500 µmLi teaches or renders obvious:
the first electrically insulating polymeric layer (i.e., the layer in which the cavity is formed, roughly equivalent to 110 / 155 of Li) having a thickness comprised between 1 µm and 500 µm ([0034] - note that Li gives various cavity sizes); and
the second polymeric layer (i.e., the layer that receives the pressure, equivalent to 120 in Li) having a thickness of between 10 and 500 µm ([0023])
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to the layer thicknesses of Li in the device of Masuda due to Masuda’s silence regarding the thickness of these layers. Masuda gives the thickness of the dielectric layer and a general sense of the scale of the device, but is silent as to the thicknesses of some layers. As such, one of ordinary skill in the art would look elsewhere to similar pressure sensors to determine suitable thicknesses. Additionally/alternatively, the selection of the thicknesses of the various layers is considered by the examiner to be routine optimization, as evidenced by the teachings of Li. This is a results effective variable as thinner layers / electrode / membrane means a more sensitive device, but with a lower maximum pressure and more difficult to produce. In contrast thicker layers are easier to produce and have a higher maximum pressure, but are less sensitive to low pressures.
The limitation of “the monolithic layer” (i.e., the flexible electrode) “having a thickness of between 5 µm and 50 µm” is taught or rendered obvious by: [0072] of Masuda; and/or [0036], [0043], and [0024] of Li. Additionally/alternatively, the thicknesses of the other components of the device and the thickness of the overall device would suggest to one of ordinary skill in the art that the flexible electrode has a thickness of 5-50 µm, especially the upper end of said range. Additionally/alternatively, the selection of thicknesses of the various layers, such as the flexible electrode, is considered by the examiner to be routine optimization. This is a results effective variable as thinner layers / electrode / membrane means a more sensitive device, but with a lower maximum pressure and more difficult to produce. In contrast thicker layers are easier to produce and have a higher maximum pressure, but are less sensitive to low pressures.
Regarding claim 2:Masuda and Li render obvious all the limitations of claim 1, as mentioned above.Masuda teaches or renders obvious:
wherein said dielectric layer has a Young's modulus of between 0.5 and 5 MPa
Masuda teaches (abstract) that the at least one protrusion (10 / 15) has a higher elastic modulus than the first dielectric (31). Masuda teaches the protrusion having an elastic modulus of 1 or 10 MPa (106 Pa or 109 Pa). See [0054]. Masuda explicitly teaches ([0063]) the dielectric layer having an elastic modulus of 104 to 106 Pa (which is 0.01 MPa to 1 MPa). However, Masuda refers to the “elastic modulus”, which is not exactly the same as the “Young’s modulus”. There is more than one form of elastic modulus (i.e. anisotropic materials or construction), but if nothing more specific than “elastic modulus” is mentioned it is usually assumed to mean the Young’s modulus. Elastic modulus is general. For anisotropy, one may also specify Young’s modulus, shear modulus, bulk modulus, and flexural modulus, for example. Given the overall disclosure of Masuda, especially considering [0086] which recites “E [Pa] is Young’s modulus”, the examiner holds that one of ordinary skill in the art would interpret Masuda as teaching or rendering obvious the instant claim limitation. Additionally/alternatively, the Young’s modulus of the dielectric layer is held by the examiner to be routine optimization. Masuda explicitly teaches that the elastic modulus of the dielectric layer 31 may be adjusted ([0066]). This is a results effective variable as it heavily influences the pressure regime of the sensor (thinner being more sensitive but with a lower maximum pressure; thicker being less sensitive but easier to produce and with a higher maximum pressure).
Regarding claim 3:Masuda and Li render obvious all the limitations of claim 1, as mentioned above.Masuda also teaches:
an electrical connection connected to said electrically conductive layer, said electrical connection being intended to connect said electrically conductive layer to an element for measuring the normal mechanical stress exerted by the contact element on the second polymeric layer as a function of the variation in capacitance of the capacitor(e.g., [0099], [0049]; this is also inherent to the operation of the device of Masuda, as disclosed)
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (US 20160273987 A1, prior art of record) in view of Li et al. (US 20190162614 A1, prior art of record) and further in view of Baek (US 20030079547 A1, prior art of record).Regarding claim 4:Masuda and Li render obvious all the limitations of claim 1, as mentioned above.Masuda fails to teach:
wherein: multiple electrically conductive layers are arranged on the substrate, the first polymeric layer comprises several through-cavities, each of the through-cavities being defined by a volume and extending between one of said electrically conductive layers and the dielectric layerBaek teaches (FIG. 9):
wherein: multiple electrically conductive layers (the four labeled and unlabeled bottom electrodes 102) are arranged on the substrate (equivalent to 100 of Baek), each of the through-cavities (the four labeled and unlabeled wells 101) being defined by a volume (101) and extending between one of said electrically conductive layers (equivalent to the electrodes of Baek) and the “dielectric layer” (equivalent to the top or bottom of the cavity or one of the insulating films of Baek; also met upon combination with Masuda)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaches of Baek (a plurality of cavities, each capable of sensing pressure) into the device of Masuda to yield a pressure distribution sensor. The device of Masuda senses essentially a single pressure / force on 60. By incorporating the teachings of Baek, the pressure at a plurality of locations (i.e., a pressure distribution) may be measured.
Regarding the limitation of “the first polymeric layer comprises several through-cavities”: This is met upon combination of Masuda and Baek.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (US 20160273987 A1, prior art of record) in view of Li et al. (US 20190162614 A1, prior art of record) and further in view of Schramm et al. (DE 19632589 A1, prior art of record - all citations are to the previously provided English translation).Regarding claim 5:Masuda and Li render obvious all the limitations of claim 1, as mentioned above.Masuda and Li also render obvious:
a system for locally measuring a normal mechanical stress exerted by a contact element, said system comprising: a device according to claim 1 (see claim 1 rejection above),Masuda fails to teach:
a rheometer comprising a lower surface intended to be arranged on the side of the substrate of the device and an upper surface intended to be arranged on the side of the second polymeric layer, and an element for measuring the normal mechanical stress exerted by a contact element on the second polymeric layer as a function of the variation in capacitance of the capacitor or capacitorsSchramm teaches (FIGS. 1-2)
a rheometer (e.g., [0011]) comprising a lower surface (e.g., bottom of 2 which contacts the pressure sensor) intended to be arranged on the side of the substrate (e.g., 5 / bottom of pressure sensor)) of the device and an upper surface (1a / 1b / 1c / 1d - bottom surface thereof) intended to be arranged on the side of the second polymeric layer (met upon combination with Masuda…i.e., the upper surface of the rheometer is that which will be pressing, directly or indirectly, on the pressure sensor and, thus, on the second polymeric layer of Masuda), and an element for measuring the normal mechanical stress (met by each of Masuda, Li, and Schramm; inherent; it is the element / device which outputs or calculates the pressure / force information) exerted by a contact element (e.g., 3a / 3b / 3c / 3d) on the second polymeric layer as a function of the variation in capacitance of the capacitor or capacitors (this is met upon combination with Masuda)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the device of Masuda / Masuda and Li in a rheometer, as taught by Schramm, to increase the accuracy of the device of Schramm and/or it is an art-recognized intended use for a pressure sensor such as that of Masuda / Masuda and Li.
Regarding claim 6:Masuda, Li, and Schramm render obvious all the limitations of claim 5, as mentioned above.As combined in the claim 5 rejection above, Masuda, Li, and Schramm render obvious:
wherein, when said device comprises multiple capacitors, said measurement element is connected to each electrically conductive layer of each of said capacitors(inherent in the operation of the combination of the device; the examiner also notes the use of the word “when” - see MPEP 2111.04 II “Contingent Limitations”)
Regarding claim 7:Masuda, Li, and Schramm render obvious all the limitations of claim 5, as mentioned above.As combined in the claim 5 rejection above, Masuda, Li, and Schramm render obvious:
use of the system according to claim 5 (see claim 5 rejection above) for locally measuring a normal mechanical stress exerted by a contact element, the use comprising the following successive steps: inserting the device between the lower and upper surfaces of the rheometer, applying a contact element between the upper layer of the rheometer and the surface of the second polymeric layer, intended to be in contact with the contact element, of the device, observing a variation in capacitance of the capacitor, and deducing the normal mechanical stress exerted locally by the contact element(The recited use / method limitations are clearly met by the use of the device of the combination of Masuda, Li, and Schramm set forth in the claim 5 rejection above. See the rejection of claims 1 and 5 above as well as FIGS. 1-2 of Schramm)
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Herbert Keith Roberts whose telephone number is (571)270-0428. The examiner can normally be reached 10a - 6p MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HERBERT K ROBERTS/Primary Examiner, Art Unit 2855
Prosecution Insights