DETAILED ACTION
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 Amendment
Regarding the amendment filed 08/07/2025: Claims 1-22 are pending. Claims 21-22 are newly added.
Response to Arguments
Rejection Under 35 USC 112
Applicant's arguments regarding the rejection of claim 8 under 35 U.S.C. 112 has been fully considered and are persuasive. Therefore the rejection has been withdrawn.
Rejection Under 35 USC 103
Applicant's arguments regarding the rejection of claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Eder (US 2020/0278220 A1, cited in IDS, heretofore referred to as Eder) in view of Gilbert et al (US 2019/0326501 A1, heretofore referred to as Gilbert) have been fully considered and are not persuasive. Regarding claims 1-20 Applicant argues: “Here, the Office Action fails to establish, with substantial evidence support, that a "skilled artisan would have plucked" Gilbert "out of the sea of prior art ... and combined it with" Eder "to address some need present in the field" or "would select" Gilbert and Eder "in order to combine their elements." Additionally, "[w]hether a skilled artisan would have been motivated to combine prior art references is a question of fact" and therefore must be supported by substantial evidence. See, e.g., Vertek Vision Int'l ULC v. Assembly Guidance Systems, Inc., 97 F.4th 882 (Fed. Cir. 2024). Citing paragraph [0643] of Gilbert, the Office Action asserts that "it would have been obvious to a person of ordinary skill in the art to use the apparatus of Eder with the two layer shield layer of Gilbert in order to control the magnetic field outside the antenna." However, no antenna is mentioned by Eder, such that there is no apparent reason for combining Eder and Gilbert in the manner set forth in the Office Action to "control the magnetic field outside the antenna." In other words, the Office Action relies on improper conclusory statements, which cannot sustain the present rejection, rather than substantial evidence, as required.
As for the alleged dielectric first layer and the alleged electrically conductive second layer purportedly described by Gilbert, those structures are described by Gilbert as being included in an "integrated circuit having a magnetically programmable element on a conductive path formed from modified ELR [(extremely low resistance)] material." See, e.g., Gilbert, para. [0641]. The Office Action fails to adequately explain why a person of ordinary skill in the art would be motivated to modify Eder's scanning unit to include certain selected structures of Gilbert's "integrated circuit having a magnetically programmable element on a conductive path formed from modified ELR material." As noted by the Federal Circuit, "[o]ne cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention." In re Fine, 837 F.2d 1071 (Fed.
Cir. 1988). The Office Action's cherry-picking of isolated components from Gilbert's 400+ page disclosure further demonstrates that the present rejection is based on improper hindsight and improper conclusory statements rather than an "articulated reasoning with some rational underpinning" required under KSR "to support the legal conclusion of obviousness." See, e.q., In re Kahn, 441 F.3d 977 (Fed. Cir. 2006).
Therefore, in view of the foregoing, it is respectfully submitted that the Office Action fails to set forth a prima facie case of unpatentability of claims 1 to 20, supported by substantial evidence, in view of the combination of Eder and Gilbert.
Accordingly, withdrawal of the present rejection is respectfully requested.”. While Applicant is current in asserting that Gilbert describes "[e]lectrical, mechanical, computing, and/or other devices that include components formed of extremely low resistance (ELR) materials, including, but not limited to, modified ELR materials, layered ELR materials, and new ELR materials.", the Examiner disagrees that Gilbert does not relate to “to a sensing element, e.g., for an inductive position measuring device for determining a relative position between a scale element and the sensing element, and to a position measuring device that includes such a sensing element”. While Gilbert specifically relates to extremely low resistance (ELR) materials and not sensing elements per se, Gilbert does teach the ELR components may be used in at least position sensing elements such as Hall effect sensors (Gilbert; Par 0992) or inductive sensors (Gilbert; Par 0944). As such the Examiner believes Gilbert does teach ELR layers and how they may be used in sensing elements. Therefore the rejection stands.
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.
Claims 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over Eder (US 2020/0278220 A1, cited in IDS, heretofore referred to as Eder) in view of Gilbert et al (US 2019/0326501 A1, heretofore referred to as Gilbert).
Regarding claim 1, Eder teaches a sensing element (Eder; Fig. 1, Element 1.1) for an inductive position measuring device (Eder; Fig. 1, Element 1 and Par 0034), comprising: an excitation track (Eder; Fig. 1, Element 1.12); a receiving track (Eder; Fig. 1, Element 1.11 and Par 0035); a substrate made of a metallic material (Eder; Fig. 1, Element 1.4 and Par 34; Eder teaches a metallic substrate); and a shield layer structure arranged between the substrate and the receiving track and/or between the substrate and the excitation track (Eder; Fig. 1, Element 1.45 and Par 034; Eder teaches a dielectric shield layer between the coils and the substrate).
Eder is silent on the shield layer and including: a dielectric first layer; and an electrically conductive second layer.
Gilbert teaches the shield layer and including: a dielectric first layer (Gilbert; Fig. 118, Element 4202 and Par 0641); and an electrically conductive second layer (Gilbert; Fig. 118, Element 4209, Par 0642 and Par 0642; Gilbert teaches a shielding layer is used to conduct the electromagnetic field in the desired manner).
Before the effective filing date of the invention it would have been obvious to a person of ordinary skill in the art to use the apparatus of Eder with the two layer shield layer of Gilbert in order to control the magnetic field outside the antenna (Gilbert; Par 0643).
Regarding claim 2, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Eder further teaches wherein the first layer has a thickness of less than 1 mm (Eder; Par 0034; Eder teaches a dielectric thickness of 20um).
Regarding claim 3, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Gilbert further teaches wherein the second layer is arranged as a physical vapor deposited layer (Gilbert; Par 0568; Gilbert teaches PVD to create the multiple layers).
Regarding claim 4, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Gilbert further teaches wherein the shield layer structure includes a third layer arranged between the first layer and the second layer (Gilbert; Fig 118, Elements 4212 and Par 0642; Gilbert teaches multiple layers between the two shield layers).
Regarding claim 5, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Eder further teaches further comprising a multilayer sensor structure including a first electrically conductive layer and a second electrically conductive layer (Eder; Fig 1, Elements 1.11 and 1.12 and Par 0034-0035; Eder teaches the windings are in layers 1.11 and 1.12 above the shield layer 1.45), wherein the excitation track and the receiving track are structured in the first electrically conductive layer of the multilayer sensor structure (Eder; Fig 1, Elements 1.12 and Par 0034-0035; Eder teaches the excitation winding are in layer 1.12 above the shield layer 1.45) and in the second electrically conductive layer of the multilayer sensor structure (Eder; Fig. 1, Elements 1.11 and Par 0034-0035; Eder teaches the receiver windings are in layer 1.11 above the shield layer 1.45).
Regarding claim 6, the combination of Eder and Gilbert teaches the sensing element according to claim 5. Gilbert further teaches wherein an insulating layer is arranged between the second electrically conductive layer of the multilayer sensor structure and the shield layer structure (Gilbert; Fig. 118, Element 4219 and Par 0641; Gilbert teaches an insulated void layer between the electrically conductive layers and the shield layer), a fourth layer being arranged between the insulating layer and the second layer of the shield layer structure (Gilbert; Fig. 118, Element 4203 and Par 0641; Gilbert teaches a via between the insulating layer and the shield layer).
Regarding claim 7, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Gilbert further teaches wherein the shield layer structure includes a third layer (Gilbert; Fig 118, Elements 4212 and Par 0642) and a fourth layer (Gilbert; Fig 118, Elements 4217 and Par 0642), the second layer of the shield layer structure being arranged between the third layer and the fourth layer (Gilbert; Par 0642; Gilbert teaches multiple layers above and below the second shield layer).
Regarding claim 8, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Gilbert further teaches wherein the screen layer structure includes a third layer (Gilbert; Fig 118, Elements 4212 and Par 0642) and/or a fourth layer (Gilbert; Fig 118, Elements 4217 and Par 0642), the second layer of the screen layer structure being adjacent to the third layer and/or the fourth layer (Gilbert; Par 0642; Gilbert teaches multiple layers directly above and below the second shield layer), the third layer and/or the fourth layer including chromium (Gilbert; Par 0664; Gilbert teaches chromium may be used as a modifying material of the layers).
Regarding claim 9, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Eder further teaches wherein a thickness of the first layer of the layer structure is at least 2.5 µm (Eder; Par 0034; Eder teaches a dielectric thickness of 20um).
Regarding claim 10, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Eder further teaches further comprising at least one electronic component (Eder; Fig 2, Element 1.21), the shield layer structure being arranged between the substrate and the electronic component (Eder; Fig 2 and Par 0037; Eder teaches the electronic component is mount on top of the shield layer).
Regarding claim 11, the combination of Eder and Gilbert teaches the sensing element according to claim 10. Eder further teaches wherein the electronic component is adapted to evaluate signals received by the receiving track (Eder; Par 0037; Eder teaches the electronic component contains evaluation electronics).
Regarding claim 12, the combination of Eder and Gilbert teaches the sensing element according to claim 10. Eder further teaches wherein the electronic component is adapted to generate an excitation current that is conductible to the excitation track (Eder; Par 0042; Eder teaches the excitation windings are controlled by the electronics).
Regarding claim 13, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Gilbert further teaches further comprising at least one electronic component associated with an electronic circuit that is electrically connected to a connection element arranged as a connection to a ground potential (Gilbert; Fig 115, Element 3910 and Par 0632; Gilbert teaches the layer may be connected to ground), the second layer being electrically connected to the connection element (Gilbert; Fig 115, Element 3902 and Par 0632; Gilbert teaches the layer may be connected to a conductive path).
Regarding claim 14, the combination of Eder and Gilbert teaches the sensing element according to claim 13. Gilbert further teaches wherein the second layer is electrically connected to the connection element via a line, an ohmic resistor and a capacitor being connected in parallel in the line (Gilbert; Par 0632; Gilbert teaches the layer may be a conductive path, i.e. a line).
Regarding claim 15, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Eder further teaches wherein the receiving track and the excitation track extend along a measurement direction of the inductive position measuring device (Eder; Par 0027 and Par 32; Eder teaches the mounting direction is circumferential and the measurement direction is circumferential).
Regarding claim 16, the combination of Eder and Gilbert teaches the sensing element according to claim 15. Eder further teaches wherein the measurement direction is a linear direction, a circumferential direction, or a tangential direction (Eder; Par 0034; Eder teaches the measurement direction is circumferential).
Regarding claim 17, Eder teaches an inductive position measuring device (Eder; Fig. 1, Element 1 and Par 0034), comprising: a scale element (Eder; Fig. 1, Element 2); and a sensing element arranged opposite the scale element (Eder; Fig. 1, Element 1.1), the scale element and the sensing element being movable relative to each other (Eder; Par 0034; Eder teaches the scale and sensing element change in relative angular potential), the sensing element including: an excitation track (Eder; Fig. 1, Element 1.12); a receiving track (Eder; Fig. 1, Element 1.11 and Par 0035); a substrate made of a metallic material (Eder; Fig. 1, Element 1.4 and Par 34; Eder teaches a metallic substrate); and a shield layer structure arranged between the substrate and the receiving track and/or between the substrate and the excitation track (Eder; Fig. 1, Element 1.45 and Par 034; Eder teaches a dielectric shield layer between the coils and the substrate).
Eder is silent on the shield layer including: a dielectric first layer; and an electrically conductive second layer.
Gilbert teaches the shield layer and including: a dielectric first layer (Gilbert; Fig. 118, Element 4202 and Par 0641); and an electrically conductive second layer (Gilbert; Fig. 118, Element 4209, Par 0642 and Par 0642; Gilbert teaches a shielding layer is used to conduct the electromagnetic field in the desired manner).
Before the effective filing date of the invention it would have been obvious to a person of ordinary skill in the art to use the apparatus of Eder with the two layer shield layer of Gilbert in order to control the magnetic field outside the antenna (Gilbert; Par 0643).
Regarding claim 18, the combination of Eder and Gilbert teaches the inductive position measuring device according to claim 17. Eder further teaches wherein the scale element and the sensing element are movable relative to each other along a measurement direction of the inductive position measuring device (Eder; Par 0027 and Par 32; Eder teaches the mounting direction is circumferential and the measurement direction is circumferential).
Regarding claim 19, the combination of Eder and Gilbert teaches the inductive position measuring device according to claim 17. Eder further teaches wherein the measurement direction is a linear direction, a circumferential direction, or a tangential direction (Eder; Par 0034; Eder teaches the measurement direction is circumferential).
Regarding claim 20, the combination of Eder and Gilbert teaches the inductive position measuring device according to claim 17. Eder further teaches wherein the sensing element is adapted to determine a position of the scale element (Eder; Par 0032; Eder teaches the sensing element determines the scanning the circumference of the scale).
Regarding claim 21, the combination of Eder and Gilbert teaches the sensing element according to claim 1. Gilbert further teaches further comprising at least one electronic component associated with an electronic circuit that is electrically connected to a connection element arranged as a connection to a ground potential (Gilbert; Fig 39-E, Element 3912 and Par 0631; Gilbert teaches a via connecting the circuit to the ground), the second layer being electrically connected to the connection element and being not electrically connected to the substrate (Gilbert; Par 0640-0641; Gilbert teaches the via may be part of a shielding layer and not directly connected to the substrate).
Regarding claim 22, the combination of Eder and Gilbert teaches the inductive position measuring device according to claim 17. Gilbert further teaches wherein the sensing element includes at least one electronic component associated with an electronic circuit (Gilbert; Fig 39-E, Element 3914) that is electrically connected to a connection element arranged as a connection to a ground potential (Gilbert; Fig 39-E, Element 3912 and Par 0631; Gilbert teaches a via connecting the circuit to the ground), the second layer being electrically connected to the connection element and being not electrically connected to the substrate (Gilbert; Par 0640-0641; Gilbert teaches the via may be part of a shielding layer and not directly connected to the substrate).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
-Tiemann et al teaches an inductive angle measuring device.
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 ADAM S CLARKE whose telephone number is (571)270-3792. The examiner can normally be reached M-F 8am-4pm.
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, Judy Nguyen can be reached at (571)272-2258. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM S CLARKE/Examiner, Art Unit 2858
/JUDY NGUYEN/Supervisory Patent Examiner, Art Unit 2858
