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 .
Election/Restrictions
Newly submitted claims 14-17 are directed to an invention (Species II - FIG. 7, directed to a capacitive sensor) that is independent or distinct from the invention originally claimed (Species I - FIGS. 1-6, directed to a piezoelectric sensor) for the following reasons: the claims to the different species recite the mutually exclusive characteristics of such species; the two species have different, mutually exclusive construction and modes of operation; prior art found for one species would likely not read on or be related to the other species; and the examination of both species would present a search burden due to the aforementioned reasons. Specifically, the previous claims on which applicant has received an action on the merits were all either generic to the two species or, as set forth in the previous / original claims 8-9 and 13, directed solely to Species I.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14-17 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Examiner’s Comment
In the telephonic interview that took place on the 31st of October 2025, the examiner told applicant that a TQAS would be consulted regarding the election by original presentation as it appeared that applicant disagreed with the election by original presentation set forth by the examiner during the interview. The examiner consulted TQAS Karl Tamai who agreed with the examiner’s analysis. Mr. Tamai also referenced the petition decision, dated 09/11/2013 and signed by (at that time) TC 2800 director Jack Harvey, in application 11/889,174 (PGPUB US 20080036033 A1). Applicant may find this petition decision and associated prosecution history at globaldossier.uspto.gov. In summary, the originally filed claims were all generic to two species (hereafter Species A and Species B for clarity). In the June 16th 2011 response, a new dependent claim was added which was drawn to only Species A. An Office action, on that particular species (Species A), was sent. In the reply filed August 31st 2012, the independent claims were amended such that they were directed to Species B. It was held that the June 16th 2011 response (which presented a new dependent claim drawn to only Species A) was an election by original presentation of Species A. As the August 31st 2012 response only included claims directed to Species B, a notice of non-responsive amendment was sent on November 8th 2012. This was refuted (by the applicant in application 11/889,174) but another notice of non-responsive amendment was sent on May 20th 2013. A petition for review and reversal of the election by original presentation was sent to the TC director on June 20th 2013. The petition was denied by the TC director and the election by original presentation was upheld.
Response to Amendment / Arguments
The response, filed 11/05/2025, has been entered. Claims 14-20 are added. Claims 1-20 are pending, with claims 14-17 being withdrawn from consideration as set forth above. The previous 112b rejections of claims 8 and 13 are withdrawn, due to amendment. Applicant’s arguments have been fully considered but are: unpersuasive; moot due to a new grounds of rejection necessitated by amendment; or moot due to the election by original presentation set forth above. The examiner believes all of applicant’s arguments which still pertain to the instant Office action (i.e., the election by original presentation) are addressed above. The arguments related to the independent claims are moot due to a new grounds of rejection, necessitated by amendment. Specifically, the claim element mapping to Yamazaki is changed. Applicant’s arguments regarding claim 20 are moot due to a new grounds of rejection, necessitated by amendment. Particular emphasis is given to the rejection of claim 20 in regards to the obviousness of the protective film placement.
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, 6-8, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (JP 2018170697 A, prior art of record - all citations are to the previously provided English translation) in view of Umetsu (US 20170292863 A1, prior art of record).Regarding claim 1:Yamazaki teaches (e.g., FIG. 8) a sensor element, comprising:
a support member (FIG. 8 - 1) having a recess (FIG. 8 - 6); and a sensing section (e.g., 3a, 3b, 4a, 4b, 4c, 2; generally most all elements above 1) configured to output a detection signal corresponding to a pressure of a medium to be measured (e.g., [0018], [0040]), and being disposed on the support member and having a floating region (membrane region which spans over 6) formed by the recess, (6) wherein the sensing section has a slit (“G”) through which the medium to be measured passes is formed in a portion exposed to the medium to be measured,
wherein the sensing section includes a first constituent layer, a first insulating film (12), a second constituent layer, and a third constituent layer, the second constituent layer is configured so that the portion floating above the recess constitutes a diaphragm portion, and the first constituent layer and the second constituent layer have a plurality of slits (e.g., FIGS. 5-6 and 9) so that the medium to be measured passes through the diaphragm portion(the examiner notes that the first through third constituent layers may be: one of 3a and 3b; and any two of 4a, 4b, and 4c)Yamazaki fails to teach:
a protective film made of a material having higher liquid repellency than that of the sensing section is provided in the slit while maintaining a state in which the medium to be measured passesUmetsu teaches:
a protective film (FIG. 1 - 55) made of a material having higher liquid repellency than that of the sensing section is provided in the slit while maintaining a state in which the medium to be measured passes (e.g., [0032])
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 protective film having liquid repellency, as taught by Umetsu, in the device of Yamazaki to assist in preventing moisture or humidity into the inside of the device when the medium is, for example, a gas (Umetsu - e.g., [0032]).
Regarding claim 6:Yamazaki and Umetsu teach all the limitations of claim 1, as mentioned above.As combined in the claim 1 rejection above, Yamazaki and Umetsu teach or render obvious:
wherein the sensing section has a pressure receiving surface configured to vibrate according to the pressure of the medium to be measured (e.g., Yamazaki - [0019], [0024]), and the protective film is provided on the pressure receiving surface (met upon combination with Umetsu)
Regarding claim 7:Yamazaki and Umetsu teach all the limitations of claim 1, as mentioned above.As combined in the claim 1 rejection above, Yamazaki and Umetsu render obvious:
wherein the protective film is made of a material having a lower elastic modulus than the sensing section
Yamazaki explicitly teaches that the entirety of the vibrational section should not be stiff to increase sensitivity (e.g., [0007], [0042]). Thus, one of ordinary skill in the art would clearly be instructed and motivated to use a film with the lowest elastic modulus possible as it would be formed on the vibrational section(s).
Regarding claim 8:Yamazaki and Umetsu teach all the limitations of claim 1, as mentioned above.Yamazaki also teaches (e.g., FIG. 8):
a piezoelectric film (the other of 3a and 3b that aren’t part of the constituent layers set forth in the claim 1 rejection above) and an electrode film (the remaining one of 4a, 4b, and 4c that aren’t part of the constituent layers set forth in the claim 1 rejection above and that is electrically connected to the piezoelectric film) electrically connected to the piezoelectric film, both of which are disposed on the support member, the piezoelectric film having a vibrating portion (portion which is over recess 6), and the vibrating portion having a support region (region directly above 1) supported by the support member (1), and the floating region (region above 6), one end portion side of the vibrating portion is supported by the support region, and an other end portion side of the vibrating portion is opposite to the one end portion side is floating from the support member, wherein the floating region has a plurality of vibration regions divided by the slit, and the sensing section is configured to have the plurality of vibration regions (e.g., FIG. 9)
Regarding claim 18:Yamazaki and Umetsu teach all the limitations of claim 1, as set forth above.Yamazaki also teaches:
wherein a thickness of the second constituent layer is configured so that the diaphragm portion is displaced according to pressure (e.g., [0006]; the device of Yamazaki functions by displacement/deflection of the sensing portion over the recess)
Claims 2, 10-13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (JP 2018170697 A, prior art of record - all citations are to the previously provided English translation) in view of Kawano et al. (US 20190178738 A1, prior art of record).Regarding claim 2:Yamazaki teaches (e.g., FIG. 8) a sensor element, comprising:
a support member (FIG. 8 - 1) having a recess (FIG. 8 - 6); and a sensing section (e.g., 3a, 3b, 4a, 4b, 4c, 2; generally most all elements above 1) configured to output a detection signal corresponding to a pressure of a medium to be measured (e.g., [0018], [0040]), and being disposed on the support member and having a floating region (membrane region which spans over 6) formed by the recess (6), wherein the sensing section has a slit (“G”) through which the medium to be measured passes is formed in a portion exposed to the medium to be measured,
wherein the sensing section includes a first constituent layer, a first insulating film (12), a second constituent layer, and a third constituent layer, the second constituent layer is configured so that the portion floating above the recess constitutes a diaphragm portion, and the first constituent layer and the second constituent layer have a plurality of slits (e.g., FIGS. 5-6 and 9) so that the medium to be measured passes through the diaphragm portion(the examiner notes that the first through third constituent layers may be: one of 3a and 3b; and any two of 4a, 4b, and 4c)Yamazaki fails to teach:
a protective film made of a material having higher lyophilicity than that of the sensing section is provided in the slit while maintaining a state in which the medium to be measured passesKawano teaches:
a protective film made of a material having higher lyophilicity than that of the sensing section is provided ([0049], [0052], [0054])
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 protective film having higher lyophilicity, as taught by Kawano, in the device of Yamazaki to yield reduced contamination adhesion and improved wetting for when the medium is a liquid.
The examiner notes that “in the slit while maintaining a state in which the medium to be measured passes” is met upon combination of Yamazaki and Kawano.
Regarding claim 10:Yamazaki and Kawano teach all the limitations of claim 2, as mentioned above.Yamazaki also teaches:
wherein the recess has a side surface exposed to the medium to be measured (e.g., Yamazaki FIG. 8 - inner sides of 1 which form 6)Yamazaki fails to teach:
the protective film is provided on the side surfaceKawano teaches:
the protective film is provided on the side surface (e.g., FIGS. 2 - 6, film 30)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the film also coat the side surface, as taught by Kawano, in the device of Yamazaki to further reduce potential effects of contamination.
Regarding claim 11:Yamazaki and Kawano teach all the limitations of claim 2, as mentioned above.As combined in the claim 2 rejection above, Yamazaki and Kawano teach:
wherein the sensing section has a pressure receiving surface configured to vibrate according to the pressure of the medium to be measured (e.g., Yamazaki - [0019], [0024]), and the protective film is provided on the pressure receiving surface (e.g., Kawano - FIG. 2 - film 30, pressure receiving surface being top of 12)
Regarding claim 12:Yamazaki and Kawano teach all the limitations of claim 2, as mentioned above.As combined in the claim 2 rejection above, Yamazaki and Kawano render obvious:
wherein the protective film is made of a material having a lower elastic modulus than the sensing section
Yamazaki explicitly teaches that the entirety of the vibrational section should not be stiff to increase sensitivity (e.g., [0007], [0042]). Thus, one of ordinary skill in the art would clearly be instructed and motivated to use a film with the lowest elastic modulus possible as it would be formed on the vibrational section(s).
Regarding claim 13:Yamazaki and Kawano teach all the limitations of claim 2, as mentioned above.Yamazaki also teaches (e.g., FIG. 8):
a piezoelectric film (the other of 3a and 3b that aren’t part of the constituent layers set forth in the claim 1 rejection above) and an electrode film (the remaining one of 4a, 4b, and 4c that aren’t part of the constituent layers set forth in the claim 1 rejection above and that is electrically connected to the piezoelectric film) electrically connected to the piezoelectric film, both of which are disposed on the support member, the piezoelectric film having a vibrating portion (portion over recess 6), and the vibrating portion having a support region (region directly above 1) supported by the support member (1), and the floating region (region above 6), one end portion side of the vibration portion is supported by the support region, and an other end portion side of the vibration portion is opposite to the one end portion side is floating from the support member, wherein the floating region has a plurality of vibration regions divided by the slit, and the sensing section is configured to have the plurality of vibration regions (e.g., FIG. 9)
Regarding claim 19:Yamazaki and Kawano teach all the limitations of claim 2, as set forth above.Yamazaki also teaches:
wherein a thickness of the second constituent layer is configured so that the diaphragm portion is displaced according to pressure (e.g., [0006]; the device of Yamazaki functions by displacement/deflection of the sensing portion over the recess)
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (JP 2018170697 A, prior art of record - all citations are to the previously provided English translation) in view of Umetsu (US 20170292863 A1, prior art of record) and further in view of Kawano et al. (US 20190178738 A1, prior art of record).Regarding claim 3:Yamazaki and Umetsu teach all the limitations of claim 1, as mentioned above.Yamazaki also teaches:
wherein the recess has a side surface exposed to the medium to be measured (e.g., Yamazaki FIG. 8 - inner sides of 1 which form 6)Yamazaki and Umetsu fail to explicitly teach:
the protective film is provided on the side surfaceKawano teaches:
the protective film is provided on the side surface (e.g., FIGS. 2 - 6, film 30)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the film also coat the side surface, as taught by Kawano, in the device of Yamazaki to further reduce potential effects of contamination. Each of Umetsu and Kawano teach a film which is used to enhance sensor properties. In Umetsu it is a film with high liquid repellency to assist in preventing moisture or humidity into the inside of the device when the medium is, for example, a gas (Umetsu - e.g., [0032]). In Kawano it is a film with high lyophilicity to yield reduced contamination adhesion. It is noted that, in Yamazaki and Umetsu, when sensing a gas pressure, moisture or liquid would be the contaminant. As the device of Yamazaki functions based on vibration of the piezoelectric films / membrane-like area, it is clear that, when measuring a gas, any moisture or liquid in the slit, on or under the films, or adhered (especially high up) on the side walls of the recess may reduce accuracy of the device. As such, based on the above teachings, it would have been obvious to one of ordinary skill in the art to apply the film (of Umetsu) to the aforementioned areas of the device of Yamazaki.
Regarding claim 4:Yamazaki, Umetsu, and Kawano teach all the limitations of claim 3, as mentioned above.Yamazaki fails to teach:
wherein the recess has an uneven portion formed on the side surface, and a portion of the protective film provided on the side surface has an uneven structure resulting from the uneven portionKawano teaches:
wherein the recess has an uneven portion formed on the side surface, and a portion of the protective film provided on the side surface has an uneven structure resulting from the uneven portion (FIGS. 3-6)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an uneven recess side surfaces, as taught by Kawano, in the device of Yamazaki, to prevent potential effects of contamination.
Regarding claim 5:Yamazaki, Umetsu, and Kawano teach all the limitations of claim 3, as mentioned above.Yamazaki fails to teach:
wherein the recess has a plurality of the side surfaces, the recess has a tapered shape in which a distance between the side surfaces facing each other changes along a laminating direction of the support member and the sensing sectionKawano teaches:
wherein the recess has a plurality of the side surfaces, the recess has a tapered shape in which a distance between the side surfaces facing each other changes along a laminating direction of the support member and the sensing section (FIGS. 4-5)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an uneven recess side surfaces, as taught by Kawano, in the device of Yamazaki, to prevent potential effects of contamination.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (JP 2018170697 A, prior art of record - all citations are to the previously provided English translation) in view of Umetsu (US 20170292863 A1, prior art of record) and further in view of Pal et al. (US 20180376254 A1, prior art of record).Regarding claim 9:Yamazaki and Umetsu teach all the limitations of claim 1, as mentioned above.As set forth in the claim rejection above, Yamazaki and Umetsu teach:
the sensor element according to claim 1; Yamazaki fails to teach:
the sensor device, comprising a casing having a mount member on which the sensor element is mounted; a lid fixed to the mount member while accommodating the sensor element; and a through hole configured to communicate with an outside of the sensor element to introduce the medium to be measured, wherein the protective film is provided on a wall surface of the through holePal teaches (FIG. 1; however, also see FIG. 2):
a device, comprising a casing (e.g., 102, 104) having a mount member (102) on which the element (e.g., 108) is mounted; a lid (104) fixed to the mount member (102) while accommodating the element (e.g., 108); and a through hole (106) configured to communicate with an outside of the device to introduce the medium to be measured
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 casing and hole of Pal to encapsulate and protect the sensor device of Yamazaki.
The examiner notes that “piezoelectric” is met upon combination with Yamazaki.
Regarding “wherein the protective film is provided on a wall surface of the through hole”: This is rendered obvious by the instant combination. Umetsu teaches the hydrophobic film which one of ordinary skill in the art would find obvious to use across all openings and surfaces of the device in which water or moisture may interfere with the operation or accuracy of the sensor. Also, see claim 1 rejection above. Additionally claim 9 is rejected in view of the Yamazaki, Umetsu, Pal, and Owejan et al. (US 8347737 B2, prior art of record). Owejan teaches coating of the entry hole with a hydrophobic film or enhanced hydrophobic surface (FIG. 3 - 220).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (JP 2018170697 A, prior art of record - all citations are to the previously provided English translation) in view of Umetsu (US 20170292863 A1, prior art of record) and further in view of Kawano et al. (US 20190178738 A1, prior art of record) and Owejan et al. (US 8347737 B2, prior art of record).Regarding claim 20:Yamazaki and Umetsu teach all the limitations of claim 1, as set forth above.Yamazaki also teaches (FIG. 8):
wherein the sensing section (e.g., 3a, 3b, 4a, 4b, 4c, 2; generally most all elements above 1) has a bottom surface which is disposed on the support member (1) and a top surface (top of aforecited sensing section) which is opposite to the bottom surface in a laminating direction,As combined in the claim 1 rejection above, Umetsu teaches:
the protective film (e.g., FIG. 1 - 55; [0032])Yamazaki and Umetsu fail to explicitly teach:
the protective film is further provided on the bottom surface of the sensing section, and the protective film in the slit and on the bottom surface is continuousUmetsu, Kawano, and Owejan render obvious:
the protective film is further provided on the bottom surface of the sensing section, and the protective film in the slit and on the bottom surface is continuous
Umetsu has the protective film in the slits and on top. Kawano has a protective film along the sides and bottom of the recess (e.g., FIGS. 2-6, element 30; [0049], [0052], [0054]). Owejan teaches a protective film (FIG. 3 - 220) which covers the entry hole (218), the inner side walls (of 204), and that even wraps around the edge and outer side walls (of 204). All teach the protective film being continuous. As such the examiner holds that the prior art renders it obvious to provide such a protective film across most any surface of the sensing device, housing, etc. The motivation being to protect the sensing components and increase accuracy by preventing unwanted materials from being on the sensing components. The examiner also notes MPEP 2141.03 I (“Factors to Consider in Determining Level of Ordinary Skill”) which states: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/HERBERT K ROBERTS/Primary Examiner, Art Unit 2855
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