FINAL REJECTION
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 .
Response to Arguments
Applicant's arguments filed 3/3/2026 have been fully considered but they are not persuasive.
With respect to the 35 USC 103 rejection of claims the applicant argues that:
Independent claim 1 requires, in part, a magnetic sensor device arranged in the vicinity of the shaft, and comprising three semiconductor substrates, including a first semiconductor substrate comprising at least a processing circuit, a second semiconductor substrate comprising a first magnetic sensor, and a third semiconductor substrate comprising a second magnetic sensor, each magnetic sensor being configured for measuring a magnetic field component of a magnetic field generated by said shaft when a torque is exerted on the shaft; wherein the first, second and third semiconductor substrates are incorporated in a single packaged device having a plurality of terminals electrically connected to the first substrate; and wherein the processing circuit is configured to determine a pairwise difference between the measured magnetic field components, and for outputting a signal indicative of a torque exerted upon said shaft, based on said pairwise difference. There is no similar teaching or suggestion derivable from the combination of Panine, Binder and Barraco.
In the rejection, Panine is relied on for finding a teaching of a magnetoelastic torque sensor system (Abstract). For finding a teaching of a magnetic sensor device comprising three semiconductor substrates, including a first semiconductor substrate comprising at least a processing circuit, a second semiconductor substrate comprising a first magnetic sensor, and a third semiconductor substrate comprising a second magnetic sensor, the rejection references controller 24 and sensing coils 16 and 42 of Panine, but acknowledges that Panine does not teach three semiconductor substrates or that such three semiconductor substrates are incorporated in a single package.
To address the deficiencies of Panine, the rejection points to Binder for teaching a magnetic field sensor and a sensor circuit integrated in the same chip package and integrated on a plurality of dies, and asserts that it would have been obvious to one skilled in the art to modify the system of Panine with a single package sensor arrangement and plurality of dies according to Binder. However, there is no reasonable rationale for one skilled in the art to make the proposed modification, as Binder is directed to semiconductor substrate based magnetic field sensor elements, such as "Hall plates, vertical Hall effect devices, or magneto-resistive sensors, often referred to as XMR sensors which is a collective term for anisotropic magneto-resistive (AMR), giant magneto-resistive (GMR), tunneling magneto-resistive (TMR), etc." (para. [0036]) which are distinct in structure and configuration from sensing coils such as in Panine.
Panine describes a sensor assembly where sensing coils 16 are configured as inductors, and a pair of sensing coils 16 are disposed on opposing sides of the shaft 12 to provide a more accurate measurement of the magnetic field than a single coil (para. [0030]). A change in the cross-sectional shape of the shaft, e.g. a square, a triangle, an oval, an octagon, etc. according to para. [0027], may change the arrangement shown in the figures of Panine, but the teaching of Panine remains that the pair of sensing coils are disposed in opposing positions relative to a shaft and are not positioned together in a single packaged device (para. [0030]). Accordingly, one skilled in the art would be led away from combining the sensing coils in a single package, as doing so around the shaft is not technically feasible.
The coils of Panine comprise, for example, a copper wire as noted in para. [0060] of Panine, and para. [0035] further explains that the coils are driven so that cores become periodically saturated and that a core material should be driven well into deep saturation. These disclosures describe discrete inductor/coil components having magnetic cores, not semiconductor substrates or dies with incorporated magnetic sensors, and it is unclear from the cited references how a sensing coil and inductor based sensor may be incorporated onto a semiconductor substrate to meet the limitations of claim 1.
Notably, Binder is not directed to and does not otherwise consider a magnetoelastic torque sensor or sensing coils at all. As such, the fact that Binder describes a sensor device integrated in multiple dies in the same package is not relevant to the distinct objectives and structural characteristics of Panine. The combination of Barraco with Panine and Binder fails to remedy these deficiencies (pages 13-15, remarks).
The examiner respectfully disagrees. Claim 1 recites “a first semiconductor substrate comprising at least a processing circuit, a second semiconductor substrate comprising a first magnetic sensor, and a third semiconductor substrate comprising a second magnetic sensor”. A semiconductor substrate is interpreted as a base material on which circuits are built. Panine teaches a torque sensor assembly 10 having a controller 72 and magnetic sensing coils 16 and 42 where the elements are connected as part of a circuit (figure 6). Further, the sensing coils may be arranged adjacent the shaft (paragraph 37) as well as arranged depending on factors of the shaft (paragraph 30), and have the controller 72 as well as sensing coils 16 and 42 on a side of the shaft, and another of sensing coils 16 and 42 on the opposite side (figure 5). Also, the element and/or elements of which the controller and sensing coils are arranged within/on may be interpreted as a sort of semiconductor substrate because the element can be interpreted as a base material that the circuitry, controller, sensing coils, and other circuit elements are built upon (figures 5 and 6).
Binder teaches a magnetic sensor module that includes a magnetic sensor where the magnetic field sensor elements include, but is not limited to, Hall plates, vertical Hall effect devices, or magneto-resistive sensors, often referred to as XMR sensors which is a collective term for anisotropic magneto-resistive (AMR), giant magneto-resistive (GMR), tunneling magneto-resistive (TMR)(paragraph 36), and having sensor elements 10 of sensor arrangement 4, that are sensitive to magnetic fields influenced by the north pole sections 62 and south pole sections 63 of a wheel 61, and a sensor circuit 8 of the sensor arrangement 4 that generates a sensor output that corresponds to the rotational speed of the wheel 61. The sensor device having the sensing elements and sensor circuit integrated on a single semiconductor die or a plurality of dies and the sensors and circuit may be disposed on the same package (the package being the sensor arrangement paragraph 35, figure 6).
Therefore, it is obvious to modify Panine with Binder to teach the magnetic sensors and the controller being provided on a semiconductor die as well as providing a group of sensors and controller on the same package (thereby being on the same side of the shaft) in order to provide an integral arrangement (In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965, MPEP 2144.04 IV.) and thereby improve the sensor device package by taking up less space. Further, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Further, magnetic sensing coils and Hall sensors are both known forms of magnetic sensing in force, torque, and/or detecting arrangements that are suitable for measuring the magnetic fields generated by the inverse magnetostrictive effect (see paragraph 49, Matysik et al. U.S. Patent Application Publication 2016/0327443) and therefore it is reasonable to modify the sensing coils of Panine to be one of the known magnetic sensing forms discussed in Binder as part of the single package.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/941,361 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches and/or is obvious in view of the current claims of the application.
With respect to claims 1, 10-15, and 18, the claims are not patentably distinct and/or are obvious in view of the copending claims 1 and 11-12.
With respect to claim 2, the claim is not patentably distinct and/or is obvious in view of the copending claim 2.
With respect to claim 3, the claim is not patentably distinct and/or is obvious in view of the copending claim 3.
With respect to claim 4, the claim is not patentably distinct and/or is obvious in view of the copending claim 4.
With respect to claim 5 the claim is not patentably distinct and/or is obvious in view of the copending claim 5.
With respect to claim 6, the claim is not patentably distinct and/or is obvious in view of the copending claim 6.
With respect to claim 7, the claim is not patentably distinct and/or is obvious in view of the copending claim 7.
With respect to claims 8 and 9, the claims are not patentably distinct and/or are obvious in view of the copending claims 8-10.
With respect to claim 16, the claim is not patentably distinct and/or is obvious in view of the copending claim 19.
With respect to claim 17, the claim is not patentably distinct and/or is obvious in view of the copending claim 20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-8, 10, 12-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panine U.S. Patent Application Publication 2020/0225103 in view of Binder U.S. Patent Application Publication 2018/0196080 and further in view of Barraco et al. U.S. Patent Application Publication 2013/125669.
With respect to claims 1-8, 16, and 18, Panine teaches a magnetoelastic torque sensor system (abstract, figure 5), comprising: a shaft comprising at least one axial section that is magnetized in a circumferential direction (shaft 12 having magnetized regions 44 and 46, figure 5); a magnetic sensor device arranged in the vicinity of the shaft (controller 72, sensing coils 16 and 42), and comprising three semiconductor substrates, including a first semiconductor substrate comprising at least a processing circuit (controller 72), a second semiconductor substrate comprising a first magnetic sensor (sensing coil 16), and a third semiconductor substrate comprising a second magnetic sensor (sensing coil 42), each magnetic sensor being configured for measuring a magnetic field component of a magnetic field generated by said shaft when a torque is exerted on the shaft (paragraph 28-30 and 38-40); and wherein the processing circuit is configured for determining a total between the measured field components, and for outputting a signal indicative of a torque exerted upon said shaft, based on said total magnetic field measurement (torque determined from sum of magnetic field, paragraphs 38-40). Panine further teaches wherein the magnetic sensor device is configured for measuring or estimating a first temperature of the first sensor, and a second temperature of the second sensor (sensors 24 positioned on the controller substrate that sense temperature of the sensing coils 24, paragraph 31, figure 5), and for temperature-compensating the signals obtained from the first and second sensor prior to determining said difference (paragraph 45, figure 6).
Panine fails to teach wherein the first, second and third semiconductor substrates are incorporated in a single packaged device having a plurality of terminals electrically connected to the first substrate, and wherein the processing circuit is configured for determining a pairwise difference between the measured field components, and for outputting a signal indicative of a torque exerted upon said shaft, based on said pairwise difference, wherein the first semiconductor substrate mainly comprises silicon; and wherein the second and third semiconductor substrate) mainly comprise silicon, and/or are discrete silicon substrates, wherein the second and third semiconductor substrate comprise a compound semiconductor material selected from the III-V-group, wherein the sensor device is a wafer-level packaged device; wherein the first semiconductor substrate is situated between the second and the third semiconductor substrate; and wherein the first semiconductor substrate is electrically connected to the second semiconductor substrate and to the third semiconductor substrate by means of at least one redistribution layer, wherein the magnetic sensor device further comprises a lead frame; wherein the first substrate is situated between the second and the third semiconductor substrate on a single side of the lead frame; and wherein the first semiconductor substrate is electrically connected to the second semiconductor substrate and to the third semiconductor substrate by means of bond wires, and wherein the first magnetic sensor and the second magnetic sensor each comprise one or more of a horizontal hall element, a vertical hall element, a magneto-resistive element, and/or a GMI element.
Binder teaches a sensor system 600 that includes an magnetized encoder wheel 61 comprised of alternating north pole sections 62 and south pole sections 63, and sensor elements 10 of sensor arrangement 4 that are sensitive to magnetic fields influenced by the north pole sections 62 and south pole sections 63 of the wheel 61 and the sensor circuit 8 of the sensor arrangement 4 generates a sensor output that corresponds to the rotational speed of the wheel 61 by detecting the change of the alternating magnetic field (sensor arrangement 4 is interpreted as a single package incorporating the sensor elements 10, paragraph 63, figure 6). Binder also teaches the magnetic field sensor and a sensor circuit are both integrated in the same chip package that may be a plastic encapsulated package, such as leaded package or leadless package, or a surface mounted device (paragraph 32), and the sensor device may be integrated on a single semiconductor die (e.g., silicon die or chip) or have a plurality of dies for implementing the sensor device, and the sensor might be on one die and the sensor circuit on another die such that they are electrically connected to each other within the package (interpreted as substrates being connecting through wiring through a layer, paragraph 35). Further, Binder teaches where the magnetic field sensor elements include, but is not limited to, Hall plates, vertical Hall effect devices, or magneto-resistive sensors, often referred to as XMR sensors which is a collective term for anisotropic magneto-resistive (AMR), giant magneto-resistive (GMR), tunneling magneto-resistive (TMR)(paragraph 36).
Barraco teaches a torque sensing device for measuring the torque applied to a rotatable shaft where the difference in the signals from magnetic field sensors 152, 154 is determined in order to measure the shaft torque (paragraph 47-48 and 56-59, figure 5).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention of Panine with the single package sensor arrangement where the sensors may be hall or magnetoresistive element having connections therein of Binder and being made from the claimed materials as well as measuring the difference between the temperature corrected magnetic sensor signals as taught by Barraco in order to provide a sensing device that is more compact and to improve the effectiveness of the torque sensing device (Barraco paragraph 90).
With respect to claims 10, 14, and 15, Panine teaches wherein the shaft comprises at least a first axial section magnetized in a first circumferential direction (active region 44 magnetized in one direction, paragraphs 37-39, figure 5), and optionally also a second axial section magnetized in a second circumferential direction opposite the first circumferential direction (active region 46 magnetized in the other direction, paragraphs 37-39, figure 5); and wherein the magnetic sensor device is oriented relative to the shaft such that a first axis defined by a virtual line passing through the first sensor and the second sensor is radially oriented and parallel to the shaft (figure 5); and wherein the first sensor and the second sensor are configured for measuring a first and a second magnetic field component radially oriented and parallel to the shaft (figure 5); and wherein the first sensor is situated at a first axial position near a middle of the first magnetized axial section, and wherein the second sensor is situated near a middle of the second magnetized axial section if present (figure 5).
With respect to claims 12 and 13, Panine teaches wherein the magnetic sensor device is oriented relative to the shaft such that a first axis defined by a virtual line passing through the first sensor and the second sensor is radially oriented and parallel with respect to the shaft (sensors are arranged radially to the shaft, figure 5); and wherein the first sensor and the second sensor are configured for measuring a first and a second magnetic field component oriented parallel to the shaft (paragraphs 37-39); and wherein the first sensor is situated at a first axial position near a first edge of the magnetized axial section (figure 5), and wherein the second sensor is situated at a second axial position near a second edge of the magnetized axial section (figure 5).
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panine U.S. Patent Application Publication 2020/0225103 in view of Binder U.S. Patent Application Publication 2018/0196080 further in view of Barraco et al. U.S. Patent Application Publication 2013/125669 and further in view of GieBibl U.S. Patent Application Publication 2017/0176273.
With respect to claims 9 and 11, Panine as modified by Binder and Barraco teach the magnetic field sensor and a sensor circuit are both integrated in the same chip package that may be a plastic encapsulated package, such as leaded package or leadless package, or a surface mounted device (Binder, paragraph 32), and the sensor device may be integrated on a single semiconductor die (e.g., silicon die or chip) or have a plurality of dies for implementing the sensor device, and the sensor might be on one die and the sensor circuit on another die such that they are electrically connected to each other within the package (interpreted as substrates being connecting through wiring through a layer, Binder, paragraph 35).
But Panine as modified by Binder and Barraco fails to teach wherein the second semiconductor substrate and the third semiconductor substrate are arranged on top of or underneath the first substrate, and wherein the first sensor is situated at an axial position near a middle of the magnetized axial section at a first distance from the shaft, and wherein the second sensor is situated at the same axial position as the first sensor but at a second distance from the shaft, larger than the first axial distance.
GieBibl teaches a ferromagnetic component 32 with a magnetized region 33. The magnetized region 33 comprises three magnetic tracks 34, 35, 36. The neighboring magnetic tracks 34, 35, 36 each have an opposite circumferential magnetization 39, 40. The magnetic track 34 and the magnetic track 36 have a circumferential magnetization 40. The common magnetic track 35 has a magnetization 39 opposite to 40. A first magnetic field sensor 41 is assigned to the magnetic tracks 34, 35. The first magnetic field sensor 41 comprises the coils 42, 43 and optionally the coils 44, 45 when a movement of the ferromagnetic component 32 in the radial direction should be able to be detected, and coils 47, 48 positioned as a different perpendicular distance from the component 32 (paragraphs 130-136, figure 1).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention of Panine as modified by Binder and Barraco with the sensors that are at different distances from the component being measured as taught by GieBibl in order to improve rotation-dependent errors (paragraph 135, GieBibl).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panine U.S. Patent Application Publication 2020/0225103 in view of Binder U.S. Patent Application Publication 2018/0196080 further in view of Barraco et al. U.S. Patent Application Publication 2013/125669 and further in view of Raths Ponce et al. U.S. Patent Application Publication 2018/0231425.
With respect to claim 17, Panine as modified by Binder and Barraco teach the claimed invention except wherein the sensor system is part of an e-bike.
Raths Ponce teaches a magnetoelastic torque sensor and a method for determining a torque, which is applied to a shaft, with a magnetoelastic torque sensor (abstract) that may be part of an e-bike (paragraph 40).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention of Panine as modified by Binder and Barraco with the magnetoelastic torque sensor as part of an e-bike as taught by Raths Ponce in order to provide a more accurate sensing device for an e-bike.
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 FREDDIE KIRKLAND III whose telephone number is (571)272-2232. The examiner can normally be reached 9am-5pm.
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FREDDIE KIRKLAND III
Primary Examiner
Art Unit 2855
/Freddie Kirkland III/Primary Examiner, Art Unit 2855 5/27/2026
Prosecution Insights