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
Applicant’s election without traverse of group I, subgroup IA, species IA1 and subspecies IAA, IAa, IAi, IAX in the reply filed on 12/23/25 is acknowledged.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/23/25.
Applicant withdrew claims 2-10, 12-13, 15-16, 18 and 20. However, the Examiner notes that claims 2-10 were indicated as generic in the restriction requirement mailed 10/8/25 and will not be withdrawn. Additionally, upon further consideration, claims 12-13, 15-16 and 20 are also generic and will not be withdrawn.
The Examiner notes that Applicant elected claim 19 and withdrew claim 18, citing on pg. 8 of Applicant’s reply that claim 19 is allegedly drawn to elected subgroup IAi. However, claim 19 is drawn to non-elected subgroup IAii and claim 18 is drawn to elected subgroup IAi.
Accordingly, claim 18 has not been withdrawn and claim 19 has been withdrawn.
Claim Objections
Claims 4-18, and 20-21 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims have not been further treated on the merits.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites “each microresonator.” However, claim 1 merely recites one or more microresonators, which does not positively establish that there is more than one microresonator. Accordingly, it is unclear whether or not there is actually more than one microresonator.
For the purpose of examination, it will be interpreted that the phrase “the one or more microresonators” is recited.
Claim 3 is indefinite for depending from claim 2.
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) 1-3 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 or more microresonators , 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 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).
As to claim 2, ‘670 teaches the limitations of the claim except wherein the test mass is thicker than each microresonator.
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 is thicker than each microresonator, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2015080662 A1 teaches an optomechanical accelerometer comprising a proof mass radially separated between two microresonators (fig. 1)
US 20170089944 A1 teaches various elements relevant to the instant disclosure
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/R.C.P./ Examiner, Art Unit 2853
/STEPHEN D MEIER/ Supervisory Patent Examiner, Art Unit 2853