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 .
INFORMATION DISCLOSURE STATEMENT
The information disclosure statements (IDS) submitted on 06 March 2024 and 28 March 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the Examiner herein.
CLAIM STATUS
Claims 1-18 were originally filed.
Claims 1-18 were canceled by the preliminary amendment filed 06 March 2024.
Claims 19-38 were newly added by the preliminary amendment filed 06 March 2024.
Claims 19-38 are currently pending and have been examined herein.
INITIAL REMARKS
Applicant is reminded that in order to be entitled to reconsideration or further examination, the Applicant or patent owner must reply to the Office action. The reply by the Applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner' s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims, be held in abeyance until allowable subject matter is indicated. The Applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
Should the Applicant believe that a telephone conference would expedite the prosecution of the instant application, Applicant is invited to call the Examiner.
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.
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 paragraph1:
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;
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
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “processing circuit configured for… determining”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, applicant may:
amend the claim limitation(s) to avoid it/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
present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/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 the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 19-38 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, for failing to disclose a sufficient algorithm to satisfy the written description requirement.
Re claim 19, Applicant’s recitation does not comply with the written description requirement because it sets forth a computer-implemented feature without an algorithm disclosed for achieving the particular computer-implemented feature. This rejection applies regardless of whether § 112(f) is invoked.2
Particularly, claim 19 recites the following computer-implemented feature:
“a processing circuit configured for… determining at least two physical quantities related to a position of the magnet using a predefined algorithm that uses said at least two magnetic field differences or gradients as inputs.”
Applicant is respectfully reminded, for computer-implemented claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.” MPEP § 2161.01(I).
Applicant’s specification does not describe an algorithm that performs this feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Applicant’s specification even explicitly states that “the skilled person, having the benefit of the present disclosure, can easily find a suitable algorithm that meets his needs…” (emphasis added). However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Applicant is also reminded, “[i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 USC 112(a) or pre-AIA 35 USC 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01(I).
Therefore, because an algorithm for the computer-implemented feature is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter, and in accordance with MPEP § 2161.01, claim 19 is rejected for lack of written description.
Dependent claims 20-32 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Claims 33-38 contain language similar to claims 19-32 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 33-38 are also rejected under 35 USC § 112(a) as failing to comply with the written description requirement.
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 19-38 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.
Re claim 19, Applicant recites a first instance of the limitation, “the magnet”. However, Applicant lacks antecedent basis for this limitation, thereby rendering it indefinite. In the interest of compact prosecution and for the purposes of examination, the Examiner will interpret this limitation as a magnet.
Re claims 20-38, Applicant recites limitations respectively dependent from claim 19, but that fail to cure the deficiencies discussed in the rejection above. Accordingly, claims 20-38 are rejected based at least on the same reasons applied to claim 19 directly above.
Further re claim 19, Applicant recites the feature, “using a predefined algorithm…”. However, such limitation represents a mathematical calculation that may be executed in any number of manners, as implied by the Specification. As such, one of ordinary skill in the art would not be reasonably apprised of the scope of this limitation, thereby rendering it indefinite.
Further re claims 20-38, Applicant recites limitations respectively dependent from claim 19, but that fail to cure the deficiencies discussed in the rejection above. Accordingly, claims 20-38 are rejected based at least on the same reasons applied to claim 19 directly above.
Further re claim 22, Applicant recites the feature, “as a sum of term, e.g. as a sum of 3 to 15 terms, or…”. Such exemplary language in the claims is indefinite. Appropriate correction is required.
Further re claims 23-28, Applicant recites limitations respectively dependent from claim 22, but that fail to cure the deficiencies discussed in the rejection above. Accordingly, claims 23-28 are rejected based at least on the same reasons applied to claim 22 directly above.
Further re claim 38, Applicant recites the feature, “different from the first direction, e.g. perpendicular to…”. Such exemplary language in the claims is indefinite. Appropriate correction is required.
CLAIM REJECTIONS - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 19-27, 29-35, and 37-38 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US20200271479, Wang et al. (hereinafter “WANG”).
Re claim 19, WANG discloses a magnetic sensor device [0006] comprising:
an integrated circuit comprising a semiconductor substrate [0037-0038], the semiconductor substrate comprises a plurality of at least three magnetic sensors, each magnetic sensor configured for measuring at least one magnetic field component [0032];
a processing circuit configured for determining at least two magnetic field differences or gradients derived from said at least three magnetic field components, and for determining at least two physical quantities related to a position of the magnet using a predefined algorithm that uses said at least two magnetic field differences or gradients as inputs [0099-0102]
Re claim 20, WANG discloses the device of claim 19, as shown above. WANG further discloses:
wherein the at least three magnetic sensors are spaced apart in a first direction parallel to the semiconductor substrate, and in a second direction parallel to the semiconductor substrate different from the first direction [0032]; and
wherein the plurality of at least three magnetic sensors is configured for measuring at least three magnetic field components oriented in a direction perpendicular to the semiconductor substrate [0036]
Re claim 21, WANG discloses the device of claim 19, as shown above. WANG further discloses:
wherein the plurality of magnetic sensors is configured for measuring at least two first magnetic field components oriented in a first direction, and for measuring at least two second magnetic field components oriented in a second direction [0021]; and
wherein the processing circuit is configured for determining at least two magnetic field differences or gradients derived from said at least two first and said at least two second magnetic field components, and for determining said at least two physical quantities using said predefined algorithm and said at least two magnetic field differences or gradients as inputs [0008]
Re claim 22, WANG discloses the device of claim 19, as shown above. WANG further discloses:
wherein the predefined algorithm is configured for calculating each of said at least two physical quantities as a sum of terms, e.g. as a sum of 3 to 15 terms, or as a sum of at least twelve terms [0011]
Re claim 23, WANG discloses the device of claim 22, as shown above. WANG further discloses:
wherein each of the terms is a function of one or more of said differences [0011]
Re claim 24, WANG discloses the device of claim 22, as shown above. WANG further discloses:
wherein each of the terms is a constant or an algebraic function of one or more of said magnetic field differences or gradients [0011]
Re claim 25, WANG discloses the device of claim 22, as shown above. WANG further discloses:
wherein at least two terms contain a linear expression of one of said differences [0015], and
wherein at least two terms contain a non-linear expression of one or more of said differences [0015]
Re claim 26, WANG discloses the device of claim 22, as shown above. WANG further discloses:
wherein at least two terms or each sum are or contain a quadratic expression or a second order polynomial of one of said differences [0015]; and/or
wherein at least one term is a third order or a fourth order polynomial expression of one of said differences [0015]
Re claim 27, WANG discloses the device of claim 22, as shown above. WANG further discloses:
wherein at least one term is a product of two differences or two gradients; and/or wherein at least one term is a division of two differences or two gradients [0117]
Re claim 29, WANG discloses the device of claim 19, as shown above. WANG further discloses:
wherein the predefined algorithm further comprises a post-processing step; wherein the post-processing step is configured for adding or subtracting an offset value which is stored in a non-volatile memory during a calibration procedure [0040]
Re claim 30, WANG discloses the device of claim 19, as shown above. WANG further discloses:
wherein the semiconductor substrate further comprises a temperature sensor for measuring a temperature of the semiconductor substrate; and wherein the semiconductor substrate is configured for correcting the measured first and second magnetic field components based on the measured temperature, or wherein the predefined algorithm takes the measured temperature into account as an additional input, or wherein the measured temperature is used in a post-processing step [0107]
Re claim 31, WANG discloses the device of claim 19, as shown above. WANG further discloses:
wherein the predefined algorithm is configured for deriving at least two first difference values from said at least two first magnetic field components, and for deriving at least two second difference values from said at least two second magnetic field components; and for calculating said at least two physical values based on said at least two first and said at least two second difference values [0008]
Re claim 32, WANG discloses the device of claim 31, as shown above. WANG further discloses:
wherein each of the at least three first difference values is determined as a pairwise difference between two first magnetic field components, and wherein each of the at least three second difference values is determined as a pairwise difference between two second magnetic field components; or wherein each of the at least three first difference values is determined as a difference between a first magnetic field component and a first common value, and wherein each of the at least three second difference values is determined as a difference between a second magnetic field component and a second common value [0008]
Re claim 33, WANG discloses the device of claim 19, as shown above. WANG further discloses:
an integrated circuit [0015]; a magnet which is movable relative to the integrated circuit, and configured for generating a magnetic field, wherein the magnet is movable relative to the integrated circuit with at least two degrees of freedom [0015]
Re claim 34, WANG discloses the device of claim 33, as shown above. WANG further discloses:
wherein the magnet is a two-pole magnet [0017]
Re claim 35, WANG discloses the device of claim 33, as shown above. WANG further discloses:
wherein the magnet is connected to a joystick; and wherein the at least two physical quantities are two tilting angles [0015]
Re claim 37, Applicant recites claim limitations of the same or substantially the same scope as that of claim 33. Accordingly, claim 37 is rejected in the same or substantially the same manner as claim 33.
Re claim 38, Applicant recites claim limitations of the same or substantially the same scope as that of claims 21 and 35 combined. Accordingly, claim 38 is rejected in the same or substantially the same manner as claims 21 and 35.
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 28 is rejected under 35 U.S.C. § 103 as being unpatentable over WANG in view of OFFICIAL NOTICE.
Re claim 28, WANG discloses the device of claim 22, as shown above.
WANG fails to explicitly disclose wherein each of the sums comprises a coefficient or parameter which is determined by machine learning, or by a curve fitting technique
However, the Examiner takes OFFICIAL NOTICE that using machine learning or curve fitting techniques to manipulate mathematical expressions of data were old and well-known in the art at the time of filing of the instant inventio.
Furthermore, it would have been obvious to one of ordinary skill in the art, at the time of filing of the instant invention, to modify WANG to include such well-known feature. One would have been motivated to do so in order to provide accurate angular rotation and 3D joystick function in an application saving manufacturing costs (see at least WANG [0021]). Further still, the Supreme Court in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) provided that combining prior art elements according to known methods to yield predictable results may render a claimed invention obvious over such combination. Here, the Examiner’s assertion merely teaches that it is well-known to apply machine learning or curve fitting for mathematical calculations. Since both WANG and the Examiner’s assertion disclose features common in this field of art, one of ordinary skill in the art would recognize that the combination of elements here has previously been executed according to known methods, thereby evidencing that such combination would yield predictable results.
Claim 36 is rejected under 35 U.S.C. § 103 as being unpatentable over WANG in view of Le, WO2006106454A1 (hereinafter “LE”).
Re claim 36, WANG discloses the device of claim 33, as shown above.
WANG further discloses wherein the magnetic sensor system comprises a post-processing step wherein a temperature of material is measured or estimated, and wherein the determined physical quantities are corrected to reduce temperature dependent material characteristics [0107]
WANG fails to explicitly disclose wherein the magnetic sensor system is a force sensor system; and wherein the magnet is flexibly mounted relative to the integrated circuit by means of a flexible material, wherein the flexible material is an elastomer; and wherein the at least two physical quantities are two force components of a mechanical force exerted upon a contact surface of said flexible material; and optionally wherein the predefined algorithm further comprises a post-processing step wherein a temperature of the flexible material is measured or estimated, and wherein the determined physical quantities are corrected to reduce temperature dependent material characteristics
However, LE, in the same or similar field of endeavor, teaches a magnetic sensor system that is a force sensor system; and wherein a magnet is flexibly mounted relative to a integrated circuit by means of a flexible material, wherein the flexible material is an elastomer; and wherein physical quantities can be two force components of a mechanical force exerted upon a contact surface of said flexible material; and optionally wherein a predefined algorithm further comprises a post-processing step wherein a temperature of the flexible material is measured or estimated, and wherein the determined physical quantities are corrected to reduce temperature dependent material characteristics [Fig.14 and associated text]
Furthermore, it would have been obvious to one of ordinary skill in the art, at the time of filing of the instant invention, to modify WANG to include the particular flexible structure of LE. One would have been motivated to do so in order to provide good sensitivity and linearity (see at least LE [p.2/ll25-27]). Further still, the Supreme Court in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) provided that combining prior art elements according to known methods to yield predictable results may render a claimed invention obvious over such combination. Here, LE merely teaches that it is well-known to mount a magnet in a force sensor system on a flexible substrate. Since both WANG and LE disclose similar sensor systems, one of ordinary skill in the art would recognize that the combination of elements here has previously been executed according to known methods, thereby evidencing that such combination would yield predictable results.
RELEVANT PRIOR ART
The Examiner would like to make Applicant aware of prior art references, not relied upon in this action, but pertinent to Applicant’s disclosure. They are as follows:
US20200166590, Cai – magnetic sensor device
US20200124684, Burssens et al. – magnetic sensor system for a semiconductor
US20160334242, Ausserlechner – magnetic angle sensor
US20150377648, Sirohiwala et al. – magnetic joystick sensor system
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M HAMMOND III whose telephone number is 571-272-2215. The Examiner can normally be reached on Monday-Friday 0800-1700.
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, Peter Macchiarolo can be reached on 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. For more information about the PAIR system, see: https://ppair-my.uspto.gov/pair/PrivatePair.
Respectfully,
/Thomas M Hammond III/Primary Examiner, GAU 2855
1 MPEP § 2181, subsection I
2 This rejection does not rely on 35 USC § 112(f) being invoked. See MPEP § 2161.01 (“[C]laims with computer-implemented functional claim limitations may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. […]. Even if a claim is not construed as a means-plus-function limitation under 35 U.S.C. 112(f), computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description and enablement requirements of 35 U.S.C. 112(a).” (emphasis added)).
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