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 .
Election/Restrictions
Claim 19 remains withdrawn.
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, 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 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tchoryk et al. (WO 2020243670 A1, hereinafter ‘670) in view of Modugno et al. (US 20090282916 A1, hereinafter ‘916).
As to claim 1, ‘670 teaches an inertial sensor (fig. 1A; ¶13 teaches that the mass 108 deflects in response to acceleration, and wherein the inertial sensor is a siesmometer), the inertial sensor comprising:
one 104 microresonator, each microresonator supporting a corresponding optical resonance (at least ¶11-13 teach that the microresonator is a whispering gallery mode resonator supporting a corresponding optical resonance);
a micro-electro-mechanical inertial test mass 108 (¶13 teaches that the inertial sensor is microfabricated) suspended adjacent to and non-contiguous with the one or more microresonators (fig. 1A), the test mass deflectable under the application of an inertial force (¶13);
one 106 or more optical couplers for coupling light into and out of a corresponding microresonator (¶13); and
one (photodiode - ¶19) or more detectors for detecting light received from the one or more microresonators by the one or more optical couplers (¶19);
wherein a change in a spacing between the test mass and at least one microresonator causes a change in the optical resonance characteristics of that microresonator (¶13).
‘670 does not teach wherein the test mass is thicker than each microresonator from the one or more microresonators,
one or more electrodes for counteracting a deflection of the test mass with an electrostatic force.
‘916 teaches an inertial sensor comprising a proof mass (¶27; corresponding with the claimed “test mass”), and
one or more electrodes for counteracting a deflection of the test mass with an electrostatic force (¶27-28 teach that the proof mass is electrostatically rebalanced, meaning there are one or more electrodes for counteracting a deflection of the test mass with an electrostatic force; ¶34-35 teach that low accelerations, the proof mass is electrostatically rebalanced, and that at higher accelerations beyond the electrostatic rebalancing capability of the sensor, the proof mass is allowed to deflect in an open-loop manner; ¶29 and fig. 1 teach that the sensor uses a control section 16 to output a measure of acceleration based on both of open-loop sensing and closed-loop sensing, wherein the closed-loop sensing is sensing that is performed in conjunction with electrostatic force being applied to the proof mass; ¶9 teaches that this method of operating the sensor allows the sensor to provide a high-range output response).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of ‘670 to use one or more electrodes for counteracting a deflection of the test mass with an electrostatic force, wherein the test mass is rebalanced by the one or more electrodes up to a certain acceleration level, and then allowed to deflect above the certain acceleration level, as taught by ‘916, so as to provide a high-range output response (see ¶9 of ‘916; in this case, a high level of acceleration can be sensed).
Regarding the claimed relative rest mass thickness,
such a difference between the claimed invention and the prior art would have been obvious to one of ordinary skill in the art. It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an
improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 as modified inherently provides a level of response to acceleration.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of ‘670 as modified such that the test mass is thicker than each microresonator from the one or more microresonators, since such a modification would be a mere change in the relative size/proportion of the test mass for the predictable result that deflections in response to acceleration are still successfully detected.
As to claim 3, ‘670 teaches the limitations of the claim except wherein the test mass having an average thickness of more than a micron.
However, such a difference between the claimed invention and the prior art would have been obvious to one of ordinary skill in the art. It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an
improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 inherently provides a level of response to acceleration.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of ‘670 such that the test mass has an average thickness of more than a micron, since such a modification would be a mere change in relative size(s)/proportion(s) in the apparatus for the predictable result that deflections in response to acceleration are still successfully detected.
Claim(s) 1, 4-18 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (WO 2015080662 A1, hereinafter Dong) in view of Salit et al. (JP 2015143686 A, hereinafter Salit).
As to claim 1, Dong teaches an inertial sensor (title), the inertial sensor comprising:
one microresonator 114, each (i.e. “the”) microresonator 114 supporting a corresponding optical resonance (¶20);
a micro-electro-mechanical (¶15 and ¶18) inertial test mass 102 suspended adjacent to and non-contiguous with the one microresonator 114 (¶16), the test mass deflectable under the application of an inertial force (¶20-21),
one optical coupler 116 for coupling light into and out of a corresponding microresonator 114; and
one detector 118 for detecting light received from the one or more microresonators by the one or more optical couplers (¶20);
wherein a change in a spacing between the test mass and at least one microresonator 114 causes a change in the optical resonance characteristics of that microresonator (¶20-21).
Dong does not teach wherein the test mass is thicker than each microresonator from the one or more microresonators;
one or more electrodes for counteracting a deflection of the test mass with an electrostatic force.
Salit teaches an accelerometer comprising a proof mass 56 whose deflection is detected optically (¶55) and whose deflection is counteracted with at least one electrode 78 for counteracting a deflection of the test mass with an electrostatic force (¶58; the Examiner notes that Salit teaches a single accelerometer with an optical structure for detecting proof mass deflection and an electrostatic actuation structure for returning the proof mass to the null position).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Dong such that at least one electrode is used for counteracting a deflection of the test mass with an electrostatic force as taught by Salit for the benefit of preventing damage and/or wear to suspension elements (¶61 of Salit).
Regarding the claimed relative rest mass thickness,
such a difference between the claimed invention and the prior art would have been obvious to one of ordinary skill in the art. It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an
improved response to acceleration or rate of rotation of the sensor,” and the test mass of Dong as modified inherently provides a level of response to acceleration.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Dong as modified such that the test mass is thicker than each microresonator from the one or more microresonators, since such a modification would be a mere change in the relative size/proportion of the test mass for the predictable result that deflections in response to acceleration are still successfully detected.
Dong as modified teaches one electrode (in view of Salit) for counteracting a deflection of the test mass with an electrostatic force.
As to claim 4, Dong as modified teaches the limitations of the claim except wherein the test mass has an average thickness in the order of tens or hundreds of microns.
However, such a difference between the claimed invention and the prior art would have been obvious to one of ordinary skill in the art. It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶13-14 of the instant specification discloses that the thickness and/or relatively larger size of the test mass provides “an improved response to acceleration or rate of rotation of the sensor,” and the test mass of Dong as modified inherently provides a level of response to acceleration.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Dong as modified such that the test mass has an average thickness in the order of tens or hundreds of microns, since such a modification would be a mere change in the relative size/proportion of the test mass for the predictable result that deflections in response to acceleration are still successfully detected.
As to claim 5, Dong teaches wherein the distance between the test mass and each of the one microresonator 114 is equal to or less than 1 micron (fig. 3a, ¶20 and ¶22).
If Applicant argues that Dong as modified does not teach wherein the distance between the test mass and each of the one microresonator is equal to or less than 1 micron,
Dong teaches (¶24) that setting the distance “from 0 nm and 75 nm” provides a stronger optical signal.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Dong as modified such that the gaps are set from 0 and 75 nm as further taught by Dong so as to have a stronger optical signal (¶24 of Dong).
As to claim 6, Dong teaches wherein the inertial sensor comprises at least two microresonators 114, 124, at least two optical couplers 116, 126, and at least two detectors 118, 128, and
wherein a change in a first spacing between the test mass and a first of the two microresonators and a change in a second spacing between the test mass and a second of the two microresonators causes a differential change in the optical resonance characteristics of the two microresonators (see ¶20-21; in particular, ¶21 teaches “The resonance wavelength of the ring resonator 124 shifts in an opposite direction to that of the ring resonator 114 as the two ling resonators are located in opposite sides of the proof mass 102”).
As to claim 7, Dong teaches wherein the test mass is suspended between a first microresonator 114 and a second microresonator 124.
As to claim 8, Dong teaches wherein the test mass includes a protrusion (e.g. an end of arc 112), the protrusion located between a first microresonator 114 and a second microresonator 124.
As to claim 9, Dong teaches wherein the test mass further includes one or more additional protrusions (e.g. the other end of arc 112), the one or more additional protrusions each located between two microresonators 114, 124.
As to claim 10, the requirements of the claim are considered to be met since claim 1 was met in the alternative in which there is one electrode and the feature of multiple electrodes is considered to be optional. Only that which is optional is claimed here, and therefore claim 10 does not recite any features which would define over Dong as modified.
As to claim 11, Dong teaches wherein the one microresonator 114 are radially separated from the test mass (fig. 1).
As to claim 12, Dong teaches wherein the one microresonator 114 are fixed relative to the inertial sensor (¶16).
As to claim 13, Dong teaches wherein the inertial sensor is for detecting acceleration (title; ¶8).
As to claim 14, Dong teaches wherein the one microresonator 114 are whispering gallery mode resonators (¶14).
As to claim 15, Dong teaches the limitations of the claim except wherein the test mass is larger than each of the one or more microresonators.
It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 inherently provides a level of response to acceleration.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Dong as modified such that the test mass is larger than each of the one or more microresonators, since such a modification would be a mere change in relative size(s)/proportion(s) in the apparatus for the predictable result that deflections in response to acceleration are still successfully detected.
As to claim 16, Dong teaches wherein the one 78 or more electrodes are
used to control the long-term stability properties of the inertial sensor (¶61; alternatively, the one electrode 78 is capable of use to control the long-term stability properties of the inertial sensor).
As to claim 17, Dong teaches a light source 104 for transmitting light into the one optical coupler 116.
As to claim 18, Dong teaches wherein the light transmitted into each of the one or more optical couplers is broadband light (¶16).
As to claim 20, Dong teaches wherein the change in the optical resonance characteristics is a shift in the optical resonance (¶20-21).
As to claim 21, Dong teaches wherein the one or more microresonators each have a different optical resonance (the one microresonator 114 has a different optical resonance from another microresonator with a different optical resonance; alternatively, the requirements of the claim are considered to be met since claim 1 was met in the alternative in which there is one microresonator and the feature of multiple microresonators is considered to be optional. Only that which is optional is claimed here, and therefore claim 21 does not recite any features which would define over Dong as modified).
Response to Arguments
Applicant's arguments filed 5/21/26 have been fully considered but they are not persuasive.
Applicant argues on pg. 9 that “independent claim 1 has been amended to include the limitation previously recited in canceled claim 2. Amended claim 1 now recites, inter alia, "...wherein the test mass is thicker than each microresonator from the one or more microresonators." This amendment narrows the scope of claim 1 and introduces a structural feature that is not taught or suggested by the cited prior art, either alone or in combination.”
Applicant’s argument is not persuasive because claim 1 is properly rejected (see the rejections of claim 1 above).
Applicant argues on pg. 9 that “the thicker test mass…enables closed-loop operation, decouples actuation noise from readout noise, and provides a qualitatively different sensing mechanism that the prior art all-optical device of '670 cannot achieve.”
Applicant’s argument is not persuasive. Instant ¶8 discloses “The use of voltage for the actuation also enables large test masses to be used without high optical power being required, as they can be actuated effectively and efficiently using voltage.” Here, the use of voltage for actuation refers to the use of a closed-loop operation, and the closed-loop operation enables the use of large test masses, NOT the other way around. Accordingly, Applicant is incorrect in stating that large test masses enable closed-loop operation.
In response to applicant's arguments against the references individually, 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). The Office Action modifies the test mass of the modified ‘670, which is not an all-optical sensor. Accordingly, Applicant’s argument based on the unmodified ‘670 is not persuasive.
Regarding the noise decoupling pointed out by Applicant, instant ¶7-10 disclose
“[0007]
For the reasons mentioned above, there is a prejudice against combining components from optical and electromechanical sensors. However, the inventor has used inventive skill to provide an inertial sensor that combines a cavity enhanced optomechanical readout mechanism with electrostatic actuation. The inventor has also come to the surprising realisation that the combination of a cavity enhanced optomechanical readout mechanism and electrostatic actuation of the test mass provides significant advantages over purely electromechanical inertial sensors and purely optical inertial sensors. In particular, utilising voltage only for the actuation of the test mass and not for the sensing enables a significant reduction in noise and, consequently, an increase in sensitivity of the sensor.
[0008]
The use of voltage for the actuation also enables large test masses to be used without high optical power being required, as they can be actuated effectively and efficiently using voltage. This is not possible when using an inertial sensor having optical means for actuation because the test masses need to be small and thin in order to be actuated using the optical means. Large test masses, in particular, thick test masses, are advantageous as they have a high mechanical sensitivity and so provide a larger and more sensitive mechanical response to inertial forces. Moreover, using resonant light for the optomechanical readout mechanism provides even more sensitivity as the motion of the test mass shifts the resonance condition, amplifying the signal and not the noise.
[0009]
The combination of optomechanical sensing of the displacement of the test mass (using one or more microresonators and one or more optical couplers) in combination with electrostatic actuation of the test mass (using one or more electrodes) in the inertial sensor provides a hybrid optical-electro-mechanical sensor with improved sensitivity, and an improved signal to noise ratio, when compared to an inertial sensor based on capacitive sensing, without compromising on the size of the test mass. Such a sensor retains the ability to actuate a large test mass for a large mechanical response to inertial forces.
[0010]
The hybrid nature of the inertial sensor provides for both improved sensitivity and improved response, something that would not be possible with an all optical sensor. Such an improved response is important in order to effectively tune or calibrate the sensor sensitivity. In fact, by providing sufficient actuation of the test mass, closed loop operation can be implemented effectively such that the drift, for example thermally induced drift, or non-linear responses of the test mass can be better controlled. Accordingly, the sensor is less likely to encounter a positioning error. The inertial sensors described herein can produce extremely low noise measurements, enabling them to track even very slight changes in position.”
Accordingly, the improvement in noise reduction is due to the hybrid nature of the sensor (i.e. combining optical detection of mass deflection with electrostatic actuation of the mass to cancel the deflection), and not due to the size of the mass as alleged by Applicant.
Applicant argues on pgs. 10-12 that the larger/thicker test mass causes the claimed device to perform differently with “higher mechanical sensitivity and a more sensitive mechanical response to inertial forces.” Applicant argues on pg. 11 that instant ¶8 discloses “Large test masses, in particular, thick test masses, are advantageous as they have a high mechanical sensitivity and so provide a larger and more sensitive mechanical response to inertial forces.” Applicant argues on pg. 13 that “The large size of the test mass provides an improved response to acceleration or rate of rotation of the sensor"
Applicant’s argument is not persuasive because, as pointed out by Applicant, the claimed test mass’s size merely provides a quantitatively different function (i.e. a different degree of function(s) that are already present in the prior art). This means the claimed dimensions do not provide a claimed device that performs differently than the prior art device.
Applicant argues on pg. 13 that and “The claimed thicker test mass does not merely improve the sensitivity of the same sensing function performed by the prior art device. Rather, the thicker test mass, in the context of the claimed hybrid optical-electromechanical architecture, enables qualitatively different operational capabilities that are not possible in the prior-art all-optical sensor of '670.”
In response to applicant's arguments against the references individually, 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). The Office Action modifies the test mass of the modified ‘670, which is not an all-optical sensor. Accordingly, Applicant’s argument based on the unmodified ‘670 is not persuasive.
Applicant argues in the paragraph bridging pgs. 13-14 that “the thicker test mass enables effective closed- loop operation, a fundamentally different mode of operation from the open-loop sensing of the prior all-optical art. Paragraph [0010] of the originally filed specification describes that "by providing sufficient actuation of the test mass, closed loop operation can be implemented effectively such that the drift, for example, thermally induced drift, or non-linear responses of the test mass can be better controlled. Accordingly, the sensor is less likely to encounter a positioning error. " Paragraph [0011] of the originally filed specification further describes that "the combination of the optical readout mechanism and the closed loop operation allows for the best balance of sensitivity, control and long-term stability to provide a sensitive and stable inertial sensor that can be precisely controlled to achieve the necessary measurements. " A sensor operating in closed-loop mode with drift control and long-term stability is not the same device "performing the same function" as an open- loop all-optical sensor. It is a device performing a different function, controlled, stable, and precise measurement, which the prior art device cannot perform.”
Applicant’s argument is not persuasive. Instant ¶10 discloses
“The hybrid nature of the inertial sensor provides for both improved sensitivity and improved response, something that would not be possible with an all optical sensor. Such an improved response is important in order to effectively tune or calibrate the sensor sensitivity. In fact, by providing sufficient actuation of the test mass, closed loop operation can be implemented effectively such that the drift, for example thermally induced drift, or non-linear responses of the test mass can be better controlled. Accordingly, the sensor is less likely to encounter a positioning error. The inertial sensors described herein can produce extremely low noise measurements, enabling them to track even very slight changes in position.”
Accordingly, the benefits in ¶10 are a result of the “hybrid nature,” including electrostatic actuation of the mass, and not a result of the mass’s size, per se.
As to instant ¶11, Applicant’s own excerpt states that the described benefits stem from “the combination of the optical readout mechanism and the closed loop operation” and not the mass’s size, per se.
Furthermore, the closed-loop operation of the prior art is already effective, since the prior art device is operable.
In response to applicant's arguments against the references individually, 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). The Office Action modifies the test mass of the modified ‘670, which is not an all-optical sensor. Accordingly, Applicant’s argument based on the unmodified ‘670 is not persuasive.
Applicant argues on pg. 14-15 that “Second, the readout mechanism itself operates differently. As paragraph [0008] in the originally filed specification describes, "using resonant light for the optomechanical readout mechanism provides even more sensitivity as the motion of the test mass shifts the resonance condition, amplifying the signal and not the noise. " In the prior art capacitive sensors described at paragraph [0003] of the specification, both the electrostatic force and the capacitive readout contribute noise, and the noise from the electrostatic force "interferes with the capacitive readout. " In the claimed hybrid sensor, the thicker test mass is actuated electrostatically, but the readout is entirely optical. This decoupling of actuation from readout, which is made possible by the thick test mass that can be actuated efficiently by voltage rather than optical means, eliminates the cross-talk between actuation noise and readout noise that plagues the prior art. This is not an incremental improvement, but a structurally and functionally different sensing architecture.”
Applicant’s argument is not persuasive. As previously explained, the decoupling of noise between the readout mechanism and actuation mechanism is due to the fact that the readout mechanism is optical and the actuation mechanism is electrostatic (see the portions of instant ¶7-10 discussed previously), and is not due to the mass’s thickness. The decoupling of actuation from readout is NOT made possible by the thick test mass. Instant ¶8 clearly states “The use of voltage for the actuation also enables large test masses to be used.” This means that the use of voltage for actuation enables the use of a large test mass, not the other way around as incorrectly interpreted by Applicant.
Applicant argues on pg. 15 “Therefore, the difference between the claimed device with its thicker test mass and the prior art device is not merely a "change in relative dimensions" within the meaning of Gardner. Gardner is limited to cases where the dimensional change does not cause the device to "perform differently." Here, the thicker test mass, within the claimed hybrid architecture, enables closed-loop operation, decouples actuation noise from readout noise, and provides a qualitatively different sensing mechanism that the prior art all-optical device of '670 cannot achieve, regardless of its dimensional configuration. The holding of Gardner is therefore inapplicable.”
Applicant’s argument is not persuasive. As discussed above, the size of the test mass does not enable closed-loop operation or decouple actuation noise from readout noise, and the test mass size does not provide a qualitatively different sensing mechanism than the modified ‘670.
In response to applicant's arguments against the references individually, 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). The Office Action modifies the test mass of the modified ‘670, which is not an all-optical sensor. Accordingly, Applicant’s argument based on the unmodified ‘670 is not persuasive.
Applicant argues on pg. 16 “The claimed device, with its thicker test mass operating in the hybrid optical-electromechanical architecture, performs at least one function that the all- optical seismometer of '670 cannot perform: closed-loop electrostatic rebalancing of the proof mass under optical readout. (See the originally filed specification at paragraph [0010].) '670 has no closed-loop capability whatsoever and no mechanism for actively counteracting proof-mass deflection.
In response to applicant's arguments against the references individually, 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). The Office Action modifies the test mass of the modified ‘670, which is not an all-optical sensor. Accordingly, Applicant’s argument based on the unmodified ‘670 is not persuasive.
Applicant argues on pg. 16 that
“Even the Examiner's combination of '670 with '916's electrodes does not bridge this gap, because '916's closed-loop architecture is inseparably tied to its capacitive readout, which is absent from '670.”
Applicant’s argument is not persuasive. Applicant fails to articulate why “'916's closed-loop architecture is inseparably tied to its capacitive readout.”
Applicant argues on pg. 16 that “The thicker test mass is the structural precondition that makes electrostatic rebalancing of an optically read proof mass feasible in the first place (see the originally filed specification at paragraph [0008]: "[t]he use of voltage for the actuation also enables large test masses to be used without high optical power being required, as they can be actuated effectively and efficiently using voltage. This is not possible when using an inertial sensor having optical means for actuation because the test masses need to be small and thin in order to be actuated using the optical means.") The dimensional limitation is therefore not a freestanding "change in size. " It is the dimensional feature that enables the qualitatively different mode of operation that distinguishes the claim from the prior art and from the Examiner's combination.”
Applicant’s argument is not persuasive. The use of voltage for actuation is the precondition for using a thicker test mass (not the other way around as incorrectly interpreted by Applicant), as clearly stated in the part of ¶8 cited by Applicant above.
Applicant argues on pg. 17 that “The thick test mass is made possible by the hybrid optical- electromechanical architecture and is not a predictable design change.”
Applicant’s argument is not persuasive.
It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 as modified inherently provides a level of response to acceleration. Accordingly, the claimed test mass size does not result in a claimed device that performs differently than the prior art device and would have been obvious to a PHOSITA.
Applicant argues on pgs. 17-18 that
“The Examiner's characterization of the thicker test mass as a "mere change in the relative size/proportion of the test mass for the predictable result that deflections in response to acceleration are still successfully detected" misapprehends the technical significance of the claimed feature within the specific context of the claimed inertial sensor. In particular, this characterization fails to account for the fact that, as the specification describes, the prior art constrains test mass dimensions in a way that makes a thicker test mass neither routine nor predictable. As paragraph [0006] of the originally filed specification describes, "current inertial sensors are either purely electromechanical or purely optical. " Paragraph [0006] of the originally filed specification further describes that there is a recognized "size incompatibility of photonic structures and electromechanical structures. " In a purely optical sensor such as '670, paragraph [0008] teaches or suggests that "test masses need to be small and thin to be actuated using the optical means. " Therefore, in the context of the primary reference, making the test mass thicker is not an available optimization as it runs contrary to the operational requirements of optical actuation. This is not a case of selecting from a finite number of identified, predictable solutions; rather, the specification teaches that a prejudice existed against the very combination of optical and electromechanical components (e.g., paragraph [0007] of the originally filed specification describes: "there is a prejudice against combining components from optical and electromechanical sensors").”
Applicant’s arguments are not persuasive. Not all current inertial sensors are purely electromechanical or purely optical. The Salit reference, discussed in one of the rejections of claim 1 above, teaches an inertial with optical readout and electrostatic actuation (¶55 and ¶58).
Instant ¶8 does not discuss the ‘670 reference. This is evidenced at least by the fact that instant ¶8 is directed to the limitations of mass size for optical actuation while ’670 is silent as to optical actuation. Even if ‘670 were to teach optical actuation, which the Examiner does not admit, the application of the ‘916 reference would replace the alleged optical actuation of ‘670 with electrostatic actuation, which would remove the alleged need for a small mass.
Furthermore, the alleged prejudice cited by Applicant in instant ¶7 is not expressed in any of the prior art references relied on in the rejections, and, therefore, cannot be used as a basis for Applicant’s argument that the prior art teaches away from the claimed combination.
Applicant argues on pg. 19 “Therefore, providing a test mass that is thicker than the microresonator is not a routine optimization or a predictable dimensional change. It is a specific structural relationship enabled by, and intimately connected to, the claimed hybrid sensor architecture.”
Applicant’s argument is not persuasive. The Examiner did not take the position that the change in test mass size is a routine optimization.
It has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 as modified inherently provides a level of response to acceleration. As previously explained by the Examiner, the disclosed test mass size does not enable the sensor to operate in a hybrid manner. Accordingly, the claimed test mass size does not result in a claimed device that performs differently than the prior art device and would have been obvious to a PHOSITA.
Applicant argues on pg. 19 that “Even in the combination proposed by the Examiner, one of ordinary skill in the art would not arrive at a test mass that is thicker than each microresonator without impermissible hindsight reasoning.”
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues in the paragraph bridging pgs. 19-20 that “ ‘916 does not teach or suggest any structural modification to the proof mass itself. In contrast, paragraph [0026] of '916 describes the physical limitations of the proof mass as being "dependent on the physical design of the sensor and the proof mass, which in turn are implementation or application driven," suggesting that the proof-mass geometry is treated as an implementation- specific input rather than a parameter to be optimized for the range-extension purpose of '916.”
Applicant’s argument is not persuasive because the Examiner did not take the position that the proof-mass geometry is a “parameter to be optimized for the range-extension purpose.”
In response to applicant's arguments against the references individually, 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). The Examiner did not rely on ‘916 to provide a teaching or suggestion to modify the thickness of the proof mass.
Furthermore, by stating “dependent on the physical design of the sensor and the proof mass, which in turn are implementation or application driven,” ‘916 suggests that the proof mass’s configuration is not rigidly set in stone and may be adjusted based on the particular “implementation or application” for which the sensor is required.
Applicant argues on pgs. 20-21 that
“'916 is an electromechanical capacitive inertial sensor. The same set of plates/electrodes serves two functions in '916: capacitive sensing of proof-mass displacement and electrostatic rebalancing of the proof mass. As '916 expressly teaches at paragraph [0005], the proof-mass displacement "is typically measured by capacitive sensor plates disposed beneath the proof mass. " Paragraph [0007] of '916 teaches the dual function: "the proof mass displacement is sensed as in an open-loop application, but a feedback electrostatic force is also applied to the proof mass to null out the proof mass displacement. The output of the sensor is the voltage applied to the electrodes to null the proof mass displacement. " Nowhere does '916 teach or suggest electrodes for electrostatic actuation that are separable from, or independent of, the capacitive readout function.”
Applicant’s argument is not persuasive. Applicant has failed to provide persuasive evidence that the embodiment relied on in ‘916 is configured such that “The same set of plates/electrodes serves two functions in '916: capacitive sensing of proof-mass displacement and electrostatic rebalancing of the proof mass.” Applicant cites ¶5 and ¶7 of ‘916, which are directed to “Related Art” (see ¶4). In contrast, the Examiner relied on one of the “PREFERRED EMBODIMENTS” (¶22). None of the preferred embodiments requires the same set of plates/electrodes to perform both of sensing and rebalancing. Accordingly, even though ‘916 does not teach separate electrodes for sensing and rebalancing, a PHOSITA considering ’670 and ‘916 would simply modify ‘670 to have electrodes for rebalancing while retaining the optical readout mechanism of ‘670.
Applicant argues on pgs. 21-22 “Furthermore, the motivation the Examiner identifies for the combination, "to provide a high-range output response" (Office Action at page 5, citing '916 paragraph [0009]), cannot be obtained without '916's capacitive open-loop readout. '916 itself explains how the high-range capability is achieved: "[t]he subject invention provides a system and method for providing such high range capability with a closed- loop inertial sensor, by combining the closed loop output response of the sensor with an open-loop displacement output.' " ('916 at paragraph [0008].) The "open-loop displacement output" in '916 is a capacitive measurement of the proof-mass displacement once the saturation limit of electrostatic rebalancing has been exceeded. ('916 at paragraph [0008]; see also paragraph [0029] (describing the open-loop output branch Out 2 generated through the open-loop motion sensor 12 with capacitive transfer functions). Paragraph [0036] ("[w]hen the input signal rises above the saturated feedback limit, the proof mass deflection increases from the null value in proportion to the additional input signal, " which '916 detects via the capacitive Deflection Limit function block 13.) Without the open-loop capacitive measurement, '916's "high- range" architecture does not function.”
Applicant’s argument is not persuasive. Applicant correctly points out that ¶9 of ‘916 teaches “The subject invention provides a system and method for providing such high range capability with a closed-loop inertial sensor, by combining the closed-loop output response of the sensor with an open-loop displacement output.” However, nothing in ‘916 states that the electrostatic/capacitive actuation can only be used with an open-loop displacement output is also capacitive.
Applicant argues on pg. 22 “The Examiner's combination, grafting only the electrodes of '916 onto the passive optical readout of '670, would not, on its own terms, produce '916's "high-range output response." It would produce something neither reference teaches, an optical-readout sensor with bare electrostatic actuation, lacking the open-loop displacement readout that '916 itself identifies as essential to the high-range scheme. A person of ordinary skill in the art seeking the benefit the Examiner relies on for motivation would therefore have no reason to perform the partial, dissected combination the Office Action proposes, they would, at most, look to import '916's full architecture (which requires capacitive plates beneath the proof mass), and that is something '670's WGM-based architecture, with the proof mass suspended adjacent to a microresonator, is not configured to accommodate.
Applicant’s argument is not persuasive. As discussed above, nothing in ‘916 states that the electrostatic/capacitive actuation can only be used with an open-loop displacement output is also capacitive. Furthermore, ¶27 of ‘916 states “The PID controller takes the reported deflection of the proof mass as input and generates an output signal which is used to re-balance (zero) the deflection.” In ‘670, the deflection is reported optically. Accordingly, a PHOSITA would simply modify ‘670 such that the optical deflection readout is used to create an input to generate an electrostatic rebalancing actuation force as taught by ‘916. The resulting combination would provide a sensor with a high sensing range, meaning a PHOSITA would indeed have a reason to combine the prior art.
Applicant argues on pg. 22 that
“Accordingly, a person of ordinary skill in the art, motivated by the desire to extend the measurement range as taught by '916, would add the electrostatic rebalancing control architecture to the existing sensor of '670 without modifying the geometry of '670's proof mass. Nothing in '916's teaching points toward modifying the relative dimensions of the proof mass and the microresonators.”
In response to applicant's arguments against the references individually, 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). The Examiner did not rely on ‘916 to provide a teaching or suggestion to modify the dimensions of the proof mass.
Applicant argues on pg. 23
“The Examiner may argue that once electrodes are added, the dimensional constraint on the test mass is removed, and a person of ordinary skill would therefore thicken the test mass as a matter of routine optimization. However, this reasoning conflates removing a constraint with providing a motivation. Removing a constraint merely expands the theoretical design space. It does not provide a reason to select one design choice (thickening the test mass relative to the microresonators) over the many available options. Once electrodes are added, a person of ordinary skill could adjust any number of design parameters, for example, electrode gap, applied voltage, controller gains, suspension stiffness, sensor packaging, none of which involve modifying the dimensional relationship between the test mass and the microresonators. Without a specific teaching or suggestion in the cited references pointing to the claimed dimensional relationship, the Examiner's reasoning requires the hindsight knowledge of Applicant's invention to select the thicker test mass from the expanded design space, which is impermissible under 35 U.S.C. § 103.”
Applicant’s arguments are not persuasive. It is unclear what dimensional constraint Applicant refers to. If Applicant is referring to Applicant’s earlier argument that “[0026] of '916 describes the physical limitations of the proof mass as being "dependent on the physical design of the sensor and the proof mass, which in turn are implementation or application driven,” the Examiner has already responded by pointing out that ¶26 of ‘916 implies that the mass’s geometry can be modified according to the “implementation or application” for which the sensor is used.
Furthermore, the Examiner did not take the position that modifying the mass’s size is an optimization.
Additionally, the Examiner relied on Gardner, which does not require the Examiner to “provide a reason to select one design choice…over the many available options.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 as modified inherently provides a level of response to acceleration. As previously explained by the Examiner, the disclosed test mass size does not enable the sensor to operate in a hybrid manner. Accordingly, the claimed test mass size does not result in a claimed device that performs differently than the prior art device and would have been obvious to a PHOSITA.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues on pgs. 23-24 that
“Furthermore, neither '670 nor '916 teaches or suggests the dimensional relationship recited in the amended claim, i.e., that the test mass is thicker than each microresonator. '670 discloses that "Typical sizes for resonators are between 500 µm and 25 mm" ('670 at [[0012]; see also [0013] ("The racetrack width can range between 0.5 mm and 25 mm") ) and discloses that a plate may be positioned approximately 20 µm from the waveguide ('670 at paragraph [0013]) or that a proof mass may be separated by "100 micrometers or more" from the resonator ('670 at paragraph [0014]) . '670 does not teach or suggest the thickness of the proof mass and any thickness relationship between the proof mass and the resonator. '916 does not teach or suggest microresonators. '916 is a capacitive electromechanical sensor in which the proof mass is suspended above capacitive sensor plates ('916 at paragraph [0005]), and therefore '916 neither teaches nor suggests nor discloses any dimensional relationship between a test mass and a microresonator.”
In response to applicant's arguments against the references individually, 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). The Examiner did not rely on ‘916 or ‘670 to provide a teaching or suggestion to modify the dimensions of the proof mass.
Applicant argues on pgs. 24-25 that “The Office Action further cites MPEP $2144.04 (IV) (A) (citing Gardner V. TEC Systems) for the proposition that a "mere change in size" does not patentably distinguish. But that doctrine presupposes a prior-art baseline as to the dimension being "changed." Where neither cited reference establishes any dimensional relationship between proof-mass thickness and microresonator dimensions, and where the dimension at issue (proof-mass thickness vs. microresonator thickness) is, as the originally filed specification discloses at paragraphs [0008] and [0014], a result-effective variable for the particular hybrid architecture claimed, there is no "change" for the per se rule to operate upon. Applicant respectfully submits that the mere citation of MPEP $2144.04 (IV) (A) cannot supplement the missing prior-art teaching of the claimed dimensional relationship in the absence of any reference disclosure of that relationship.”
Applicant’s argument is not persuasive. The mass and microresonator of ’670 have thicknesses, whether they are inherent or explicitly taught, and they are either equal to each other or different from each other, with one being higher or lower than the other. Since ‘670 does not explicitly disclose the inherent relationship, Gardner is relied on to “change” the relative thickness of the mass to achieve the recited relationship.
Applicant argues on pg. 25 that “Furthermore, the claimed dimensional relationship, wherein the test mass is thicker than each microresonator, is not merely one of many equivalent design options. As described in the originally filed specification, the thicker test mass interacts specifically with the optical readout mechanism: the increased mass produces a larger mechanical displacement in response to inertial forces, which in turn produces a larger shift in the optical resonance of the microresonator (see paragraph [0008] of the originally filed specification) This dimensional relationship is therefore intimately tied to the specific sensing mechanism of the claimed hybrid sensor and is not a parameter that a person of ordinary skill would have reason to adjust merely because electrodes have been added for range extension.”
Applicant’s argument is not persuasive. The modification of the mass’s thickness is obvious because it has been held that a mere change in size does not patentably distinguish over the prior art. See MPEP 2144.04(IV)(A). In Gardner v. TEC Systems, 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. In this case, ¶14 of the instant specification discloses that the relatively larger size of the test mass provides “an improved response to acceleration or rate of rotation of the sensor,” and the test mass of ‘670 as modified inherently provides a level of response to acceleration. Accordingly, the claimed test mass size does not result in a claimed device that performs differently than the prior art device and would have been obvious to a PHOSITA.
Applicant argues on pgs. 25-26 that “For at least the foregoing reasons, Applicant respectfully submits that amended claim 1, which requires "wherein the test mass is thicker than each microresonator from the one or more microresonators, is patentable over the combination of '670 and '916. Neither reference, alone or in combination, teaches or suggests this structural feature.”
Applicant’s arguments are not persuasive at least for the reasons already discussed above by the Examiner.
Applicant argues on pg. 26 that “Furthermore, the rationale of Gardner V. TEC Systems may be inapplicable because the specification explicitly teaches that the claimed relative dimensions result in a device that performs differently from the prior art, namely, with higher mechanical sensitivity, a more sensitive mechanical response to inertial forces, and an improved response to acceleration or rate of rotation.”
Applicant’s argument is not persuasive because none of the functions cited by Applicant are evidence of a claimed device with the recited dimension(s) performing differently than the prior art device. The prior art device already has mechanical sensitivity, a mechanical response to inertial forces, and a response to acceleration.
Applicant argues on pg. 26 that “In further support of patentability, the originally filed specification describes concrete technical obstacles in the art to the specific combination claimed herein. Paragraph [0006] of the originally filed specification describes that "current inertial sensors are either purely electromechanical or purely optical," and identifies specific technical reasons for this divide: "size incompatibility of photonic structures and electromechanical structures" and "the already complex fabrication required to create monolithic photonic structures and electromechanical structures. " These are not speculative barriers. They are identified engineering challenges that explain why the art had not arrived at the claimed combination of optomechanical readout with electrostatic actuation.
The primary reference '670 does not contradict this assessment. As an initial matter, the Office Action itself acknowledges that '670 "does not teach one or more electrodes for counteracting a deflection of the test mass with an electrostatic force. " (See page 5 of the Office Action.) Beyond the Examiner's acknowledgment, a close reading of '670 confirms that it falls squarely within the "purely optical" category described at paragraph [0006] of the specification.”
Applicant’s argument is not persuasive. The alleged barriers cited by Applicant are in Applicant’s own specification and not in ‘670 and ‘916. The Examiner did not rely on Applicant’s specification as a prior art reference. Accordingly, Applicant has failed to provide persuasive evidence that ‘670 and/or ‘916 teach away from the claimed combination. Additionally, it is known to have a sensor with optical displacement readout and electrostatic rebalancing of the proof mass (see the “Salit” reference discussed above). This at least means Applicant has failed to provide persuasive evidence that the concept of combining optical readout with electrostatic rebalancing would have been too challenging to achieve.
Applicant argues on pg. 28 that
“Further, '670 does not teach, suggest, or disclose any electrodes, applied voltage for actuation, electrostatic force, closed-loop feedback, PID control, or any other active mechanism for driving or counteracting the motion of the proof mass. The only voltage mentioned in '670 is the seismometer's output: "The seismometer output can be a voltage range (low voltage ~100 mV) proportional to the seismic activity around the individual phone. ('670 at paragraph [0022].) That is a sensor output, not an actuation input. '670 therefore teaches or suggests a strictly passive optical-readout seismometer.”
In response to applicant's arguments against the references individually, 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). The Examiner relied on ‘916 to provide the teaching of electrostatic actuation.
Applicant argues on pg. 28-29 that “Paragraph [0007] of the originally filed specification describes that it was through inventive skill that the inventor combined "a cavity enhanced optomechanical readout mechanism with electrostatic actuation" and arrived at the "surprising realisation" that this combination "provides significant advantages over purely electromechanical inertial sensors and purely optical inertial sensors. " It is this specific combination of optical readout decoupled from electrostatic actuation that enables a thick test mass. The prior art's failure to combine these approaches is not merely a preference but reflects the concrete technical obstacles described at [0006] in the originally filed specification, which the inventor overcame.”
Applicant’s argument is not persuasive. Applicant’s alleged inventiveness would not have been the only reason to combine optomechanical readout with electrostatic actuation. As detailed in the rejections above, it would have been obvious to combine ‘670 and ‘916 to provide a sensor with a high sensing range. It would have been obvious to combine Dong with Salit to prevent damage/wear.
Applicant argus on pg. 29 that “Claim 3, which depends on amended claim 1 and further recites "the test mass having an average thickness of more than a micron," is patentable for at least the same reasons as claim 1.”
Applicant’s argument is not persuasive for at least the reasons discussed above by the Examiner.
Applicant argues on pgs. 29-30 that “Additionally, the originally filed specification at paragraph [0012] (Summary section) describes: "The test mass may have an average thickness of more than a micron. This provides explicit support for claim 3 and confirms that the test mass thickness is not merely a nominal dimension but a deliberately chosen structural parameter within the claimed sensor architecture. The Examiner's rejection of claim 3 under the Gardner rationale fails for the same reasons discussed above with respect to claim 1.”
Applicant’s argument is not persuasive for at least the reasons discussed above by the Examiner.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/R.C.P./ Examiner, Art Unit 2853
/STEPHEN D MEIER/ Supervisory Patent Examiner, Art Unit 2853
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