Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/12/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 7 and 14 have been considered. In the response, the applicant argues claims 1, 7 and 14 as amended are patentably distinct from the prior art of record based on the amended claims now requiring that the first thickness of the fine rotor/coil is less than a second thickness of the metallic coarse rotor/coil. The examiner agrees that the prior art of record doesn’t explicitly describe the rotors/coils having dissimilar thickness as recited. However, upon reviewing the Specification, there doesn’t appear to be a stated criticality for the choice of having the fine rotor/coil having a thickness that is lower than that of the coarse rotor/coil. The only mention of the added recitation is presented in paragraph 0031 of the Specification:
In some embodiments, the thickness of fine rotor 109 may be on the order of 1 mm, while the thickness of metallic coarse rotor 110 may be in excess of 5 mm. Accordingly, metallic coarse rotor 110 may be at least five times as thick as fine rotor 109. As described below, metallic coarse rotor 110 may be coupled to the particular printed circuit board using any suitable combination of screws, rivets, bolts, and adhesives.
Thus, it appears that the only difference between the apparatus and method of the prior art and the claims as recited, are directed to the preferred size of one rotor/coil versus the other which doesn’t appear to impart additional functionality that is critical to the apparatus or method. Accordingly, the new grounds of rejection of claims 1, 7 and 14 are presented below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 5-7 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US Patent Application Publication PGPub 2022/0057281 by Ausserlechner (Ausserlechner ‘281 hereafter).
In terms of claim(s) 1, Ausserlechner ‘281 teaches in Figure(s) 10A, an apparatus, comprising:
a fine rotor (target coil 1014 – k1) located on a first printed circuit board (PCB2);
a metallic coarse rotor (target coil 1016 – k2) coupled to the first printed circuit board (mechanically coupled through 1003+1002);
a fine sensor receiver (pick-up system 1008 – k1) configured to generate a plurality of fine sensor signals based on a first rotation of the fine rotor (see paragraph 0059 and paragraph 0078, last 8 lines), wherein the fine sensor receiver is located on a second printed circuit board (PCB1) separate from the first printed circuit board; and
a coarse sensor receiver (pick-up system 1010 – k2) configured to generate a plurality of coarse sensor signals based on a second rotation of the metallic coarse rotor (see paragraph 0059, and paragraph 0078, last 8 lines), wherein the coarse sensor receiver is located on the second printed circuit board.
Ausserlechner '281 substantially teaches all of the elements disclosed above, except for explicitly mentioning explicitly mentioning that the fine rotor has a first thickness that is less than a second thickness of the coarse rotor, the first thickness being measured along a first axis perpendicular to a first surface of the fine rotor, and wherein the second thickness is measured along a second axis perpendicular to a second surface of the metallic coarse rotor.
However, it would have been obvious to a person having ordinary skill in the art before the application was effectively filed, to use a fine rotor which thickness is smaller compared to the coarse rotor’s, in order to ensure the coarse rotor generates a signal that is as strong as needed for the coarse sensor to sense its rotation, or in situations where the fine rotor doesn’t have to be as big as the coarse rotor and reduction of its size translates to a more compact system, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device In re Gardner v. TEC (see below).
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
As to claim(s) 5, Ausserlechner ‘281 teaches in Figure(s) 10A, a first distance between the first printed circuit board (PCB2) and the second printed circuit board (PCB1) is less than a second distance between the metallic coarse rotor (1016) and the second printed circuit board (PCB1).
As to claim(s) 6, Ausserlechner ‘281 teaches in Figure(s) 11B, an interface circuit (1106) configured to generate an output angle value (torsion angle delta) using the plurality of fine sensor signals and the plurality of coarse sensor signals (in the manner described for example, in paragraph 0086).
In terms of claim(s) 7, Ausserlechner ‘281 teaches in Figure(s) 10A, a method, comprising:
generating, by a fine sensor receiver (pick-up system 1008 – k1), a plurality of fine sensor signals based on rotating a fine rotor (target coil 1014 – k1) included on a first printed circuit board (PCB2);
generating, by a coarse sensor receiver (pick-up system 1010 – k2), a plurality of coarse sensor signals based on rotating a metallic coarse rotor (target coil 1016 – k2) coupled to the first printed circuit board (mechanically coupled to PCB2 through 1003+1002); and
generating, by an interface circuit (1106 in Figure 1106), an output angle value (torsion angle delta) using the plurality of fine sensor signals and the plurality of coarse sensor signals (in the manner described for example, in paragraph 0086).
Ausserlechner '281 substantially teaches all of the elements disclosed above, except for explicitly mentioning explicitly mentioning that the fine rotor has a first thickness that is less than a second thickness of the coarse rotor, the first thickness being measured along a first axis perpendicular to a first surface of the fine rotor, and wherein the second thickness is measured along a second axis perpendicular to a second surface of the metallic coarse rotor.
However, it would have been obvious to a person having ordinary skill in the art before the application was effectively filed, to use a fine rotor which thickness is smaller compared to the coarse rotor’s, in order to ensure the coarse rotor generates a signal that is as strong as needed for the coarse sensor to sense its rotation, or in situations where the fine rotor doesn’t have to be as big as the coarse rotor and reduction of its size translates to a more compact system, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device In re Gardner v. TEC (see below).
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
As to claim(s) 11, Ausserlechner ‘281 teaches in Figure(s) 10A, the fine sensor receiver (1008) and the coarse sensor receiver (1010) are located on a second printed circuit board (PCB1) separate from the first printed circuit board.
Claim(s) 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US Patent US 11,592,319 by Ausserlechner et al., (Ausserlechner '319 hereafter).
In terms of claim(s) 14, Ausserlechner '319 teaches in Figure(s) 1, an apparatus, comprising:
a first printed circuit board (coils 111, 112 are placed on a PCB, see col. 16, lines 38-41) that includes a fine sensor receiver (112) and a coarse sensor receiver (1111); and
a second printed circuit board (coils 122 and 121 are placed on a PCB, see col. 17, lines 9-12) that includes:
a fine coil (122) configured to magnetically couple to the fine sensor receiver (through electromagnetic induction); and
a coarse coil (121) configured to magnetically couple to the coarse sensor receiver (through electromagnetic induction).
Ausserlechner '319 substantially teaches all of the elements disclosed above, except for explicitly mentioning explicitly mentioning that the fine coil has a first thickness that is less than a second thickness of the coarse sensor, the first thickness being measured along a first axis perpendicular to a first surface of the fine coil, and wherein the second thickness is measured along a second axis perpendicular to a second surface of the coarse coil.
However, it would have been obvious to a person having ordinary skill in the art before the application was effectively filed, to use a fine coil which thickness is smaller compared to the thickness of the coarse coil, in order to ensure the coarse sensor is able to receive as much of the signal as it needs to operate as expected, or in situations where the fine sensor doesn’t have to be as big as the coarse sensor and reduction of its size translates to a more compact system, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device In re Gardner v. TEC (see below).
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
As to claim(s) 15, Ausserlechner '319 shows in Figure 1, a first count per revolution of the fine coil (121) is greater than a second count per revolution of the coarse coil (122).
As to claim(s) 16, Ausserlechner '319 teaches in col. 17, lines 9-25, the fine coil (122) is located on a first side of the second printed circuit board, and wherein the coarse coil (121) is located on a second side of the second printed circuit board opposite the first side (“it may be possible to use different layers of the PCB for each target 121, 122 (eg. coils), for example a first layer on top of the PCB and a second layer at the bottom side of the PCB.”).
As to claim(s) 17, Ausserlechner '319 shows in Figure 1, the fine sensor receiver (112) and the coarse sensor receiver (111) are located on a common side of the first printed circuit board.
As to claim(s) 20, Ausserlechner '319 shows in Figure 1, the fine sensor receiver is configured to generate a plurality of fine sensor signals based on a first rotation of the fine coil, wherein the coarse sensor receiver is configured to generate a plurality of coarse sensor signals based on a second rotation of the coarse coil, and wherein the apparatus further comprises an interface circuit (Si1, Si2, 140) configured to generate an output angle value using the plurality of fine sensor signals and the plurality of coarse sensor signals (in the manner described for example, in col. 14, lines 52-67).
In terms of claim(s) 16, 18-19, Ausserlechner '319 substantially teaches all of the elements disclosed above, except for explicitly mentioning the how/where the coils and/or receivers are placed on their respective circuit boards and the “first” and “second” distance” as recited. However, Ausserlechner '319 mentions in col. 17, lines 9-25, “it may be possible to use different layers of the PCB for each target 121, 122 (eg. coils), for example a first layer on top of the PCB and a second layer at the bottom side of the PCB.”.
Thus, it would have been obvious to a person having ordinary skill in the art, before the invention was effectively filed, to position the fine and coarse coils and/or the fine and coarse sensors on opposite sides of their respective printed circuit boards as suggested by Ausserlechner '319, in order to adhere to a preferred design choice. Doing so would not have altered the function of the receivers/coils and thus, would have amounted to an obvious matter of design choice. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ausserlechner ‘281 in view of the US Patent US 7,036,205 by Fukushima et al., (Fukushima hereafter).
In terms of claims 3 and 9, Ausserlechner ‘281 teaches the first printed circuit board (PCB2) is coupled to the metallic coarse rotor (1016). Ausserlechner ‘281 doesn’t mention the use of glue.
The use of adhesives (glue) to attach printed circuits boards to coils is well known in the art. For example, Fukushima teaches in col. 2, lines 24-28, the use of glue to attach a coil to a printed circuit board. It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of glue as attachment means between a coil and a printed circuit board as taught by Fukushima, and attach the metallic coarse rotor (1016) to PCB3 in the device/system/method of Ausserlechner ‘281, thus ensuring the coils are safely secured to the printed circuit board during operation. It’s noted that by coupling 1016 to PCB3, 1016 is effectively coupled to 1002, 1004 as well as PCB2.
Claim(s) 2, 4, 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ausserlechner ‘281 in view of the US Patent US 10,716,534 by McLane et al., (McLane hereafter).
In terms of claims 2, 4, 8 and 10, although Ausserlechner ‘281 teaches the first printed circuit board (PCB2) is coupled to the metallic coarse rotor (1016), Ausserlechner ‘281 doesn’t mention the use of screws or washers.
McLane teaches in Figure 1A, the use of a combination of screws (176) and washers (178) in an arrangement designed to fasten coils (166) to a PCB (164). It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of screws and washers for coupling coils to a printed circuit board, as taught by McLane, to attach the metallic coarse rotor (1016) to PCB3 in the device/system/method of Ausserlechner ‘281, thus ensuring the coils are firmly secured to the PCB and shafts during operation. It’s noted that by coupling 1016 to PCB3, 1016 is effectively coupled to 1002, 1004 as well as PCB2.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ausserlechner ‘281 in view of the US Patent US 12,031,817 by Shaga et al., (Shaga hereafter).
In terms of claim(s) 12, Ausserlechner ‘281 substantially teaches all of the elements disclosed above, except for explicitly mentioning the placement of the fine and coarse sensor receivers on a common side of the second printed circuit board. Instead, Ausserlechner ‘281 shows the sensors (1010 and 1008) are located on opposite sides of the printed circuit board (PCB1).
However, it would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to locate/relocate either of the sensor receivers to the upper or lower surface of the PCB. Shifting the position of either sensor would not have modified the functionality of the system and the claimed apparatus. The particular placement of the sensors with respect to a preferred surface of the PCB, as long as the sensor orientation with respect to rotor coils remains the same, would have been an obvious matter of design choice. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). Moreover, Shaga teaches in Figures 2 and 3, equivalent arrangements of a sensing system where sensor coils are positioned in opposite sides of a support structure (202) and an equivalent alternative where coils are positioned on the same side of a support structure (302). It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to position the sensors coils on the same side of the printed circuit board as taught by Shaga, in the apparatus of Ausserlechner ‘281, in order to gain space in the printed circuit board for other components that may be needed in the future.
As to claim(s) 13, Ausserlechner ‘281 teaches in Figure(s) 10A, Ausserlechner ‘281 teaches in Figure(s) 10A, a first distance between the first printed circuit board (PCB2) and the second printed circuit board (PCB1) is less than a second distance between the metallic coarse rotor (1016) and the second printed circuit board (PCB1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard Isla whose telephone number is (571)272-5056. The examiner can normally be reached Monday-Friday 9a - 5:30p.
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/RICHARD ISLA/ Primary Patent Examiner, Art Unit 2858 June 10, 2026
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