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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “step”, and are therefore being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use “step of” coupled with functional language without reciting sufficient structure to perform the recited function and the “step of” language is not preceded by any structural modifier. Such claim limitations are:
“a preparation step of preparing a quartz crystal substrate having the first surface and the second surface” (claim 1, lines 8-9);
“a first protective film forming step of forming a first protective film in an element formation region of the quartz crystal substrate at the first surface where the vibrator is formed” (claim 1, lines 10-13);
“a first dry etching step of dry etching the quartz crystal substrate from the first surface through the first protective film” (claim 1, lines 14-16);
“a coating step of coating a first protective material at the first surface of the quartz crystal substrate” (claim 3, lines 2-4);
“an exposure step of exposing the first protective material” (claim 3, lines 4-5);
“a development step of developing the first protective material” (claim 3, lines 5-6);
“a second protective film formation step of forming a second protective film in the element formation region at the second surface of the quartz crystal substrate” (claim 4, lines 7-10); and
“a second dry etching step of dry etching the quartz crystal substrate from the second surface through the second protective film” (claim 4, lines 11-13).
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The claim limitation(s) has/have been presumed to invoke 35 U.S.C. 112, sixth paragraph, because it/they meet(s) the following 3-prong analysis:
(A) The claim limitation(s) use the phrase “means for” or “step for” or a generic replacement therefore: “step of” and “step for” have no discernable difference in scope.
(B) The “means for” or “step for” is modified by functional language:
“preparing a quartz crystal substrate having the first surface and the second surface”;
“forming a first protective film in an element formation region of the quartz crystal substrate at the first surface where the vibrator is formed”;
“dry etching the quartz crystal substrate from the first surface through the first protective film”;
“coating a first protective material at the first surface of the quartz crystal substrate”;
“exposing the first protective material”;
“developing the first protective material”;
“forming a second protective film in the element formation region at the second surface of the quartz crystal substrate”; and
“dry etching the quartz crystal substrate from the second surface through the second protective film”.
(C) The phrase “means for” or “step for” is not modified by sufficient structure, material, or acts for achieving the specified function. In this instance, there is no structure or acts for achieving any of the specified functions. What is used to prepare the quartz crystal substrate? What step is done to prepare it? What structure or device is used to form the protective film? What step is performed to form the film? What device, element or structure(s) is/are used to perform the dry-etching, or the coating, or the exposing or the developing? The claim language does not provide any structural answers to any of these questions and, according to the above noted three-prong analysis, is therefore understood to invoke 112(f) interpretation.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 discloses “a preparation step of preparing a quartz crystal substrate having the first surface and the second surface” (lines 8-9; emphasis added). The claim provides no information as to what technique(s), step(s) or structure(s) is/are involved in “preparing a quartz crystal substrate”. Put simply, the reader is left to ask: how or in what manner is it prepared? The claim does not answer this basic question, and thus the claim is ambiguous and therefore indefinite. As best understood, this step appears more akin to simply “providing a crystal substrate”.
Claim 1 is found to be indefinite for further reasons. The claim discloses “R1 is a thickness of the first protective film in a first groove formation region of the quartz crystal substrate where the first groove is formed, and R2 is a thickness of the first protective film in a second groove formation region of the quartz crystal substrate where the second groove is formed” (lines 17-22; emphasis added). Put simply, there is a lack of antecedent basis for the italicized limitations in the claim, because the first and second groover are never formed. There is a very broad recitation of “dry etching the quartz crystal substrate”; however, this is not at all the same as forming first and second grooves. Accordingly, it is not clear if limitations were inadvertently omitted from the claim, and the steps are thus ambiguous and thereby indefinite. As currently presented the claim is interpreted as best understood to intend either: “a first groove formation region of the quartz crystal substrate where the first groove is intended to be formed…[and] a second groove formation region of the quartz crystal substrate where the second groove is intended to be formed”; or “a first dry etching step of dry etching the quartz crystal substrate from the first surface through the first protective film, the dry etching causing formation of the first groove and the second groove,”. However, as it is improper to read limitations into the claims, the Applicant is strongly encouraged to correct these indefiniteness issues.
Claims 2-7 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 1.
Claim 6 is also found to be indefinite for additional reasons. The claim discloses “the vibrator is an angular velocity detection element configured to detect an angular velocity, the first vibration arm performs a flexural vibration in response to an applied drive signal, and the second vibration arm performs a flexural vibration in response to an applied angular velocity” (lines 3-8; emphasis added). There are numerous indefiniteness issues with this claim. First, please refer to the “NOTE” in the prior art rejection of claim 1, below. There is nothing at all in claim 1, from which claim 6 depends, or in claim 6 itself, which provide any enablement for the vibrator to actually do anything, much less to be “an angular velocity detection element configured to detect an angular velocity” or for the arms to perform a flexural vibration in response to an applied drive signal, and … perform a flexural vibration in response to an applied angular velocity”. There is not a single structure in the product being formed other than a quartz substrate having two arms and two grooves. There are no electrodes, leads, lands, traces or electrical connections of any type. There is no circuitry which would enable any kind of “detection”. There is no power source which would (or even could) provide an “applied drive signal. There is nothing which could apply any angular velocity, and even if there were, the above noted deficiencies would render such application moot. Further, the claims are not directed to a method of using the product. The claims are explicitly and statutorily directed to a method of manufacture. As such, the product does not function, it is only formed. If the Applicant wishes for the product being formed to be an angular velocity detection element configured to detect an angular velocity, then they are strongly encouraged to disclose a method of manufacturing such a product. The current language of claim 6 does not further limit or define the claimed method of manufacture in any understandable manner.
Claim 7 is also further rejected as indefinite, so rendered by virtue of its dependency upon the indefinite subject matter of claim 6.
Claim 7 is also found to be additionally indefinite. The claim discloses “a pair of the second vibration arms extending from the base portion to both sides in a first direction, a pair of support arms extending from the base portion to both sides in a second direction intersecting the first direction, a pair of the first vibration arms extending from one of the support arms to both sides in the first direction, and a pair of the first vibration arms extending from the other one of the support arms to both sides in the first direction”. First, this claim is indefinite because it does not understandably define or modify the method of manufacture in any way. There is not a single step disclosed, and not a single previously recited step is modified. Further, the term “both sides” which appears repeatedly in the claim lacks antecedent basis and renders the claim unclear. Is the product really only a two-dimensional, completely flat, imaginary object? Or is it a real object, and thus three-dimensional and therefore having more than two sides? Moreover, the relationship between the “base portion” and the originally disclosed structures (of claim 1), and the relationship between the “base portion” and the “sides” are entirely unclear, especially given the fact that the “both sides” are disclosed in this claim in a manner which indicates that the sides are somehow not a part of the base portion. If the Applicant wishes for the product to have all of the features of claim 7, then they are strongly encouraged to disclose a method of manufacturing those features, given the fact that the claims are statutorily directed to a method of manufacture and not to a product.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kizaki (JP 2014-23134 A), in view of Kikushima (US 2010/0207495 A1).
Regarding claim 1, Kizaki discloses a method for manufacturing a *vibrator (Title; Abstract), the vibrator (100) including a first *vibration arm (12a) that has a first surface (fig. 3: top, as viewed) and a second surface (fig. 3: bottom, as viewed) which are in a front and back relationship and that has a bottomed first groove (161 or 162) opened in the first surface, and a second vibration arm (13) that has a bottomed (relative and subjectively defined term, also not an industry standard term; as shown in fig. 3[3]: the groove in 13 is “bottomed” by the bottom one of 32; alternatively, the groove in 13 is “bottomed” by the base portion, 11, of the vibrator) second groove (14) opened in the first surface (figs. 3[1]-3[4]; pp. 3-4, “Description of Embodiments” section, pars. 3-8), the method comprising: a preparation step of preparing a quartz crystal substrate (31) having the first surface and the second surface (fig. 3[1]; pg. 5, lines 8-21); a first protective film formation step of forming a first protective film (33) in an element formation region (all areas where 32 and 33 are remaining on the top surface of 31 in fig. 3[2]) of the quartz crystal substrate at the first surface where the vibrator is formed (figs. 3[1]-3[2]; pg. 5, lines 9-19); and a first etching step of etching the quartz crystal substrate from the first surface through the first protective film, wherein R1 > R2, in which R1 (at 311: protective film 33 is thicker than where it is formed at the intended location of 12a), is a thickness of the first protective film in a first groove formation region of the quartz crystal substrate where the first groove is formed, and R2 (at the intended location of 12a) is a thickness of the first protective film in a second groove formation region of the quartz crystal substrate where the second groove is formed (figs. 3[2]-3[4]; pg. 5, lines 16-33).
Kizaki, however, does not explicitly disclose that the etching step is a dry etching step.
Kikushima teaches that it is well known to perform a similar method (pars. 0097-0107); wherein the vibrator can be etched using dry etching (fig. 24; par. 0105).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Kizaki to incorporate the dry etching of Kikushima. POSITA would have realized that wet or dry etching can be easily and readily performed in the method to achieve the desired depth, precision, etching speed and repeatability. In fact, Kikushima explicitly discloses that dry and wet etching are obvious alternatives. Moreover, there is no indication in the instant disclosure that any special dry etching step or technique was devised or that any surprising results were derived from simply using the old method of Kizaki with the well-known dry etching of Kikushima. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
*NOTE: the claims disclose that the formed product and the arms thereof are intended to be a “vibrator” and “vibration” arms; however, there is nothing in any of the claims which enables such intended functionality. A quartz vibrator necessarily requires electrical excitation in order to function (i.e., vibrate), but there is no mention anywhere in the claims of applying or forming any electrode, electrical lead, or the like, which would actually enable the arms to be for “vibration”. As such, in the prior art, where there is a disclosure of the identical method as disclosed in the claims, and where there is disclosure of identical structures being worked upon, the prior art is reasonably held to anticipate the claimed method and structures. If the Applicant wishes for the intended functionality of the product being formed to breathe life into the claim, then they are strongly encouraged to actually recite a step (or steps) of forming conductive materials which would actually enable such functionality. Otherwise, the terms “vibrator” and “vibration” are not understood to impart patentable weight. This understanding and interpretation of the claims is applicable for all of the presented claims and for each prior art rejection.
Regarding claim 3, Kizaki in view of Kikushima teaches the method of claim 1 as detailed above, and Kizaki further discloses that the first protective film formation step includes a coating step of coating a first protective material at the first surface of the quartz crystal substrate, an exposure step of exposing the first protective material, and a development step of developing the first protective material (figs. 3[1]-3[3]; pg. 5, lines 9-25).
Regarding claim 6, Kizaki in view of Kikushima teaches the method of claim 1 as detailed above, and Kizaki further discloses that the vibrator is [capable of being] an angular velocity detection element configured to detect an angular velocity, the first vibration arm [is capable of] perform[ing] a flexural vibration in response to an applied drive signal, and the second vibration arm [is capable of] perform[ing] a flexural vibration in response to an applied angular velocity (pg. 1, “Background Art” section, par. 1; pg. 4, lines 31-42).
Regarding claim 7, Kizaki in view of Kikushima teaches the method of claim 6 as detailed above. Kizaki further discloses a vibrator which includes a base portion (11), a pair of the second vibration arms (two portions of 13) extending from the base portion to both sides in a first direction, and a pair of the first vibration arms (12a and 12b) extending both sides in the first direction (figs. 1-2).
Kikushima further teaches that it is well known to have a vibrator which includes a base portion (12), a pair of the second vibration arms (two of 26(20)) extending from the base portion to both sides in a first direction (y-direction), a pair of support arms (14) extending from the base portion to both sides in a second direction (x-direction) intersecting the first direction, a pair of the first vibration arms (left two of 28(20)) extending from one of the support arms to both sides in the first direction, and a pair of the first vibration arms (right two of 28(20)) extending from the other one of the support arms to both sides in the first direction (fig. 16; pars. 0079-0085).
Claims 2, and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kizaki in view of Kikushima, further in view of Satoh et al. (US 2003/0071542 A1).
Regarding claim 2, Kizaki in view of Kikushima teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Kizaki, however, does not appear to teach that R3 >R1> R2, in which R3 is a thickness of the first protective film in a region of the element formation region other than the first groove formation region and the second groove formation region.
Satoh teaches that it is well known to perform a related method (Title; Abstract; fig. 14-19; pars. 0208-0219) for manufacturing a vibrator (“vibration unit”), the method comprising: a preparation step of preparing a quartz crystal substrate (1) having the first surface (fig. 14: top, as viewed) and the second surface (bottom) (par. 0170; fig. 14); a first protective film formation step of forming a first protective film (“Cr”, “Au” and “NR”) in an element formation region of the quartz crystal substrate at the first surface where the vibrator is formed (fig 16; pars. 0209-0211); and a first etching step of etching the quartz crystal substrate from the first surface through the first protective film (figs. 17-18; pars. 0212-0213), wherein R1 > R2, in which R1 is a thickness of the first protective film in a first groove formation region of the quartz crystal substrate where the first groove is formed, and R2 is a thickness of the first protective film in a second groove formation region of the quartz crystal substrate where the second groove is formed (annotated fig. 17, below).
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Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Kizaki to incorporate the additional section of protective film having a different thickness than R1 and R2 of Satoh. POSITA would have realized that any amount or thickness of protective film(s) can be easily and readily applied to achieve the desired protection of the substrate from unwanted etching, control over etching speed and depth and thus predictably avoid costly rework. Moreover, there is no indication in the instant disclosure that any special protective film or film thickness was devised or that any surprising results were derived from simply using the old method of Kizaki with the well-known additional section of protective film having a different thickness of Satoh. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. This is especially true given that the portion of protective film in claim 2 is not even used for a method step and thus does not apparently affect the method of manufacture beyond simply having been formed.
Regarding claim 4, Kizaki in view of Kikushima do not teach that the vibrator has a third groove opened in the second surface of the first vibration arm and a fourth groove opened in the second surface of the second vibration arm, the method further comprises: a second protective film formation step of forming a second protective film in the element formation region at the second surface of the quartz crystal substrate; and a second dry etching step of dry etching the quartz crystal substrate from the second surface through the second protective film, and R4 > R5, in which R4 is a thickness of the second protective film in a third groove formation region of the quartz crystal substrate where the third groove is formed, and R5 is a thickness of the second protective film in a fourth groove formation region of the quartz crystal substrate where the fourth groove is formed.
Kizaki in view of Kikushima and further in view of Satoh teaches the method of claim 2 as detailed above.
As noted above, Kikushima teaches that all the etching steps can be dry etching steps (fig. 24; par. 0105).
Additionally, Satoh further teaches that it is well known that the vibrator has a third groove opened in the second surface of the first vibration arm and a fourth groove opened in the second surface of the second vibration arm (figs. 14-18), the method further comprises: a second protective film formation step of forming a second protective film (figs. 16-17: bottom ones of “Cr”, “Au”, and “NR”) in the element formation region at the second surface of the quartz crystal substrate (figs. 16-17; pars. 0209-0211); and a second etching step of etching the quartz crystal substrate from the second surface through the second protective film (figs. 16-18; pars. 0212-0213), and R4 > R5, in which R4 is a thickness of the second protective film in a third groove formation region of the quartz crystal substrate where the third groove is formed, and R5 is a thickness of the second protective film in a fourth groove formation region of the quartz crystal substrate where the fourth groove is formed (Annotated fig. 17, above).
Please refer to claims 1 and 2, above, regarding the rationale for combination of references.
Regarding claim 5, Kizaki in view of Kikushima and further in view of Satoh teaches the method of claim 4 as detailed above, and Satoh further teaches that it is well known that R6> R4 >R5, in which R6 is a thickness of the second protective film in a region of the element formation region other than the third groove formation region and the fourth groove formation region (Annotated fig. 17, above).
Please refer to claims 1 and 2, above, regarding the rationale for combination of references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Oga et al. (US 10,447,237 B2) is held to be of particular relevance to the claimed invention (see at least figs. 5A-7C), as the “thickness” of the “protective film” can be measured horizontally, because the claim does not define the measurement direction, which is therefore subjectively defined by the reader.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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