FIRST NON-FINAL REJECTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
Receipt is acknowledged of the information disclosure statements dated 10/15/2024 and 6/4/2025, which information has been considered and entered. The information disclosure statements have been placed in the application file, and the information referred to therein has been considered as to the merits.
The numerous references and materials listed on the numerous sheets of the IDSs make it difficult to determine whether or not any of the references, or parts of the references, are material to applicants' claimed invention. It is noted that applicants, in their several IDS submissions, do not indicate any particular reference or parts of references which they deem "material" to the patentability of the pending claims under 37 CFR 1.56.
Applicants are reminded of the standard set forth in the leading inequitable conduct case of J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 223 USPQ 1089 (Nov. 9, 1984), cert. denied, 106 S.Ct. 73 (1985): Where none of the prior art cited during prosecution teaches a key element of the claim(s) and where a reference known to the applicants does, the applicants should know that reference is material. Thus, if applicants are aware of any cited reference from among the IDSs referenced above are "material," applicants should make that reference known to the examiner.
It is also noted that a "misrepresentation is material if it makes it impossible for the Patent Office fairly to assess [the patent] application against the prevailing statutory criteria." In re Multidistrict-Litig. Involving Forst Patent, 540 F.2d 601, 604, 191 USPQ 241, 243 (3d Cir. 1976); see also Monsanto Co. v. Rohm & Haas Co., 456 F.2d 592, 600, 172 USPQ 323, 329 (3d Cir.), ce.rt. denied, 40'7 U.S. 934, 174 USPQ 129 (1972). And, the submission of voluminous documents in the instant information disclosure statements (here, in excess of 343 pages of NPL documents) make it difficult, and likely impossible, for the Patent Office to fairly assess applicants' application against the prevailing statutory criteria.
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 1-15, 28, 29, 31, 47, and 51 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.
With respect to claims 1, 13, 47, and 51, the current claim phrase of “or any combination thereof” is not clearly understood because the phrase is unbounded and does not clearly define the metes and bounds of the claims. Therefore, the claims are indefinite.
Regarding claim 31, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 12-15, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shigeto et al. U.S. Patent Application Publication 2015/0338291.
With respect to claim 1, Shigeto teaches a force sensor (figure 1) comprising: a magnetic actuator (magnetic resin foam 1) having a proximal end and a distal end (figure 1), the magnetic actuator comprising an elastomeric resin (the magnetic resin foam 1, paragraphs 30-36); and a population of magnetic particles dispersed within the elastomeric resin (the sensor comprises a resin foam containing a magnetic filler, paragraph 30); a magnetometer operatively positioned in proximity to the distal end of the magnetic actuator (magnetic sensor 2, figure 1); and a spacer disposed between the magnetometer and the distal end of the magnetic actuator (substrate 4 is disposed between the magnetic resin foam 1 and magnetic sensor 2, figure 1), thereby creating a standoff distance between the magnetometer and the distal end of the magnetic actuator (figure 1); wherein the magnetic actuator and the magnetometer are sized relative to one another such that a force applied to the magnetic actuator in a x-y plane relative to the magnetometer (interpreted as the sizes of the magnetic resin foam 1 and magnetic sensor 2, figure 1), along a z-axis relative to the magnetometer, or any combination thereof produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force (The above function is interpreted as being taught by the structure of the magnetic resin foam 1 and magnetic sensor 2. An “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528, Fed. Cir. 1990, MPEP 2114).
With respect to claim 2, Shigeto teaches wherein the magnetic actuator and the magnetometer are sized relative to one another such that compression of the magnetic actuator under an applied force along the z-axis relative to the magnetometer produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force (Interpreted as the sizes of the magnetic resin foam 1 and magnetic sensor 2, figure 1. The above function is interpreted as being taught by the structure of the magnetic resin foam 1 and magnetic sensor 2. An “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528, Fed. Cir. 1990, MPEP 2114).
With respect to claim 3, Shigeto teaches wherein the magnetometer produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force (paragraphs 72-73).
With respect to claim 12, Shigeto teaches wherein the magnetic actuator and the magnetometer are sized relative to one another such that compression of the magnetic actuator under a window of applied forces ranging from an applied force effective to compress the magnetic actuator by 5% to an applied force effective to compress the magnetic actuator by 40% produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force across the window of applied forces (The above function is interpreted as being taught by the structure and sizing of the magnetic resin foam 1 and magnetic sensor 2. An “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528, Fed. Cir. 1990, MPEP 2114).
With respect to claim 13, Shigeto teaches wherein a force applied to the magnetic actuator in the x-y plane relative to the magnetometer produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force (interpreted as the function of the magnetic sensor 2, paragraphs 72-73), wherein a force applied to the magnetic actuator along the z-axis relative to the magnetometer produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force, or any combination thereof (interpreted as the function of the magnetic sensor 2, paragraphs 72-73).
With respect to claim 14, Shigeto teaches wherein the magnetic actuator and the magnetometer are sized relative to one another such that compression of the magnetic actuator under a window of applied forces ranging from an applied force effective to compress the magnetic actuator by 3% to an applied force effective to compress the magnetic actuator by 20% produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force across the window of applied forces (The above function is interpreted as being taught by the structure and sizing of the magnetic resin foam 1 and magnetic sensor 2. An “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528, Fed. Cir. 1990, MPEP 2114).
With respect to claim 15, Shigeto teaches wherein the magnetic actuator and the magnetometer are sized relative to one another such that shear of the magnetic actuator under an applied force in a x-y plane relative to the magnetometer produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force (interpreted as the function of the magnetic sensor 2, paragraphs 72-73).
With respect to claim 31, Shigeto teaches wherein the standoff distance is selected to provide a measurable signal such as magnetic field response greater than 100 μT with an applied force (interpreted as the function of the magnetic sensor 2 that is a distance from the magnetic resin foam, paragraphs 72-73).
Claim(s) 1, 4-11, 28, 29, 47, and 51 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shigeto et al. U.S. Patent Application Publication 2015/0253207.
With respect to claims 1, 47, and 51, Shigeto ‘207 teaches a force sensor (figure 1) comprising: a magnetic actuator having a proximal end and a distal end (magnetic fillers 3, paragraph 71, figure 1); a magnetometer operatively positioned in proximity to the distal end of the magnetic actuator (magnetic sensor 2, paragraph 7, figure 1); and an elastomeric spacer disposed between the magnetometer and the distal end of the magnetic actuator (elastomer 1, paragraph 71, figure 1), thereby creating a standoff distance between the magnetometer and the distal end of the magnetic actuator (the distance between the magnetic sensor 2 and the magnetic fillers 3, figure 1); wherein the magnetic actuator and the magnetometer are sized relative to one another such that a force applied to the magnetic actuator in a x-y plane relative to the magnetometer (interpreted as the sizes of the elastomer 1 and magnetic sensor 2, figure 1), along a z-axis relative to the magnetometer, or any combination thereof produces a magnetic field response that is increasing and proportionate or decreasing and proportionate to the applied force (The above function is interpreted as being taught by the structure of the elastomer 1 and magnetic sensor 2. An “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528, Fed. Cir. 1990, MPEP 2114). Further, Shigeto ‘207 teaches an elastomeric housing enclosing at least a portion of the magnetic actuator and extending beyond the distal end of the magnetic actuator (the elastomer 1 encloses the magnetic fillers 3, figure 1), thereby creating a standoff distance between the magnetometer and the distal end of the magnetic actuator (figure 1). Also, Shigeto ‘207 teaches the magnetic actuator comprising an elastomeric resin (elastomer 1); and a population of magnetic particles dispersed within the elastomeric resin (magnetic fillers 3).
With respect to claims 4-11, 28, and 29, Shigeto ‘207 teaches wherein the magnetic actuator has a largest cross-sectional dimension that is smaller than a largest cross-sectional dimension of the magnetometer when the magnetic actuator is not subjected to an applied force (the magnetic fillers 3 have a smaller largest cross section than the magnetic sensor 2, figure 1), wherein the largest cross-sectional dimension of the magnetic actuator is from 5% to 80% of the largest cross-sectional dimension of the magnetometer when the magnetic actuator is not subjected to an applied force (the magnetic fillers 3 cross section is interpreted as being 5% to 80% the cross section of the magnetic sensor at rest, figure 1), wherein the magnetic actuator has a largest cross-sectional dimension that is smaller than a largest cross-sectional dimension of the magnetometer when the magnetic actuator is compressed by 40% under an applied force (the magnetic fillers 3 have a smaller largest cross section than the magnetic sensor 2 and remails smaller when compressed, figure 1), wherein the largest cross-sectional dimension of the magnetic actuator is from 50% to 90% of the largest cross-sectional dimension of the magnetometer when the magnetic actuator is compressed by 40% under an applied force (interpreted as the size of the magnetic fillers 3 in view of the magnetic sensor 2 when compressed, figure 1), wherein the magnetic actuator has a largest cross-sectional area that is smaller than a largest cross-sectional area of the magnetometer when the magnetic actuator is not subjected to an applied force (figure 1), wherein the largest cross-sectional area of the magnetic actuator is from 50% to 90% of the largest cross-sectional are of the magnetometer when the magnetic actuator is not subjected to an applied force (figure 1), wherein the magnetic actuator has a largest cross-sectional area that is smaller than a largest cross-sectional area of the magnetometer when the magnetic actuator is compressed by 40% under an applied force (interpreted as the size of the magnetic fillers 3 in view of the magnetic sensor 2 when compressed, figure 1), wherein the largest cross-sectional area of the magnetic actuator is from 50% to 90% of the largest cross-sectional area of the magnetometer when the magnetic actuator is compressed by 40% under an applied force (interpreted as the size of the magnetic fillers 3 in view of the magnetic sensor 2 when compressed, figure 1), wherein the magnetic actuator has a substantially circular horizontal cross-section (interpreted as the shape of the magnetic fillers 3, figure 1), and wherein the magnetic actuator has a substantially cylindrical shape or a substantially conical shape (interpreted as the shape of the magnetic fillers 3, figure 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDDIE KIRKLAND III whose telephone number is (571)272-2232. The examiner can normally be reached 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Breene can be reached at (571) 272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
FREDDIE KIRKLAND III
Primary Examiner
Art Unit 2855
/Freddie Kirkland III/Primary Examiner, Art Unit 2855 11/14/2025