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 .
Response to Arguments
The rejections of claims 1-6, 8 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20200/064414 to Uchida (Uchida) are withdrawn.
Claim Objections
Claim 18 is objected to because of the following informalities:
In claim 18, line 9, “in in” should be “in”.
Appropriate correction is required.
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 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.
Amended claim 1 recites:
A magnetic sensor comprising:
a soft magnetic structure including at least one yoke having a shape long in one direction; and
a magnetic detection element configured to detect a magnetic field generated by the at least one yoke, the magnetic detection element being adjacent to the at least one yoke in a transverse direction of the at least one yoke, wherein
the soft magnetic structure further includes at least one additional magnetic body arranged next to the at least one yoke in a longitudinal direction of the at least one yoke and located off the at least one yoke in an orthogonal direction orthogonal to the longitudinal direction, and
the soft magnetic structure is configured such that, when an external magnetic field in the orthogonal direction is applied to the soft magnetic structure, a magnetic path for a magnetic flux to pass through is formed between the at least one yoke and the at least one additional magnetic body.
While recognizing that functional language is permissible in some instances, MPEP 2173.05(g) cautions:
… the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 55 USPQ 381 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior").
This appears to be the case with the functional language “the soft magnetic structure is configured such that, when an external magnetic field in the orthogonal direction is applied to the soft magnetic structure, a magnetic path for a magnetic flux to pass through is formed between the at least one yoke and the at least one additional magnetic body” of amended claim 1. This language merely states a problem solved or a result obtained, and one of ordinary skill in the art would not know from the claim terms with sufficient particularly what structure is encompassed by the claim for achieving the recited functionality. This language fails to set forth well-defined boundaries of the invention and is therefore indefinite.
Although not presently relied upon to reject amended claim 1, the examiner emphasizes that US 20200/064414 to Uchida (Uchida) applied in the prior Office action to reject claim 1 under 35 U.S.C. 102(a)(1) appears to disclose all of the explicitly recited structural features of currently amended claim 1. For example, the prior anticipation rejection of claim 1 provides (emphasis in original):
Regarding claim 1, Uchida discloses a magnetic sensor comprising:
a soft magnetic structure including at least one yoke having a shape long in one direction (Uchida, e.g., Figs. 21-22 (duplicated below), with reference to Fig. 22, for example, soft magnetic structure including first yoke in the form of yoke 51Bc having a shape long in the Y direction; also see paragraph 95, Uchida’s yokes 51 are each formed of a soft magnetic material); and
a magnetic detection element configured to detect a magnetic field generated by the at least one yoke, the magnetic detection element being adjacent to the at least one yoke in a transverse direction of the at least one yoke (Uchida, e.g., Figs. 21-22 (duplicated below), MR elements 90 on either side of yoke 51Bc in X direction, which is transverse direction relative to Y direction of yoke 51Bc), wherein
the soft magnetic structure further includes at least one additional magnetic body arranged next to the at least one yoke in a longitudinal direction of the at least one yoke and located off the at least one yoke in an orthogonal direction orthogonal to the longitudinal direction (the examiner notes at the outset that the broadest reasonable interpretation of “magnetic body” includes any body having magnetic properties/characteristics; under this interpretation, Uchida’s yokes 51 in Figs. 21-22 and/or shields 71A-D, 72A-D each constitute a magnetic body; accordingly, with reference to Fig. 22 in a first example, yoke 51Ad constitutes a first additional magnetic body that is arranged next to yoke 51Bc in a longitudinal (Y) direction of yoke 51Bc and is located off of yoke 51Bc in an orthogonal (-X) direction relative to the longitudinal (Y) direction of yoke 51Bc; likewise in the first example, with further reference to Fig. 22, yoke 51Cd constitutes a second additional magnetic body that is arranged next to yoke 51Bc in a longitudinal (Y) direction of yoke 51Bc and is located off of yoke 51Bc in an orthogonal (+X) direction relative to the longitudinal (Y) direction of yoke 51Bc; in the alternative and for purposes of the rejection of dependent claim 5 below only, with reference to Figs. 21-22 in a second example, lower shield 72C constitutes a first additional magnetic body that is arranged next to yoke 51Bc in a longitudinal (Y) direction of yoke 51Bc and is located off of yoke 51Bc in an orthogonal (Z) direction relative to the longitudinal (Y) direction of yoke 51Bc; also see paragraph 120, lower shield 72C is formed of a soft magnetic material).
PNG
media_image1.png
447
433
media_image1.png
Greyscale
Uchida, Fig. 21
PNG
media_image2.png
582
392
media_image2.png
Greyscale
Uchida, Fig. 22
The examiner notes that the prior rejection of claim 1 set forth above considers an alternative application of Uchida in which lower shield 72C is relied upon as disclosing the “at least one additional magnetic body”. Under this application, Uchida appears to discloses all of the explicitly recited structural features of claim 1, both as originally presented and as currently amended. Although the added functional language seems intended require some further structural difference/distinction between amended claim 1 and the application of Uchida to original claim 1, it is not sufficiently clear what the structural difference entails based solely on the “configured such that” functional language. Additional clarification is required so that the scope of claim 1 is clear. Claims 2-15 are rejected under 35 U.S.C. 112(b) by virtue of their dependence from claim 1.
Allowable Subject Matter
Claims 16-19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 16 corresponds to dependent claim 7, previously indicated as allowable, rewritten in independent form.
Claim 17 corresponds to dependent claim 9, previously indicated as allowable, rewritten in independent form.
Regarding claim 18, US 2017/0328963 to Schmitt et al. (Schmitt) is regarded as the closest prior art. Schmitt relates to a method and apparatus for producing a magnetic field sensor device as well as to a magnetic field sensor device produced by the method according to the invention; see, e.g., Figs. 1a and Fig. 2c. Schmitt discloses a magnetic sensor comprising:
a soft magnetic structure including at least one yoke having a shape extending in a longitudinal direction (Schmitt, e.g., Fig. 2c, note central portion of structuring element 18 that defines a shape extending in a longitudinal direction); and
a magnetic detection element configured to detect a magnetic field generated by the at least one yoke, the magnetic detection element being adjacent to the at least one yoke in a transverse direction of the longitudinal direction (magnetic detection elements will be positioned adjacent at least one of the boundary edges 20 of structuring element 18 of Fig. 2c in a direction transverse to the longitudinal direction of the central portion of structuring element 18; see, e.g., Fig. 1a), wherein
the at least one yoke includes at least one end in the longitudinal direction forming at least one additional magnetic body, the additional magnetic body bending off the at least one yoke (Schmitt, e.g., Fig. 2c, note ends of structuring element 18, each of which bends off from central portion of structuring element 18).
Schmitt does not appear to disclose or suggest an additional magnetic body that bends of the at least one yoke in a direction out of a plane defined by the longitudinal direction and the transverse direction. Rather, the bends in Schmitt’s arrangement appear to be in the plane defined by the longitudinal direction of the central portion of structuring element 18 and transverse direction of Schmitt’s magnetic detection elements relative to the central portion of structuring element 18.
Claim 19 is allowed by virtue of its dependence from claim 18.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL R MILLER whose telephone number is (571)270-1964. The examiner can normally be reached 9AM-5PM EST M-F.
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, Lee Rodak, can be reached at 571-270-5628. 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.
/DANIEL R MILLER/Primary Examiner, Art Unit 2858
Prosecution Insights