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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) SO as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA
1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 or 1.321(d) may be
used to overcome an actual or provisional rejection based on nonstatutory double patenting
provided the reference application or patent either is shown to be commonly owned with the
examined application, or claims an invention made as a result of activities undertaken within the
scope of a joint research agreement. See MPEP § 717.02 for applications subject to
examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159.
See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to
file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR
1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory
double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be
accompanied by a reply requesting reconsideration of the prior Office action. Even where the
NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1.
For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action,
see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c)
may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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1. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over Claims 1-9, 11, 12-16, 22-24 & 34 of U.S. Patent No. 11,092,617
(Takizawa). Although the claims at issue are not identical, they are not patentably distinct from
each other because all of the claimed elements and limitations in the Instant application are
claimed in the '617 Takizawa patent. Therefore, the claims in the Instant application are not
patentably distinct from the claims in the '617 Takizawa patent.
Since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because The subject matter claimed in the instant application is disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Instant Application 18802209
Conflicting Patent US11092617
Claim 1
Claims 1 & 11
Claim 2
Claim 13
Claim 3
Claim 5
Claim 4
Claim 1
Claim 5
Claims 23 & 24
Claim 6
Claim 17 & 22
Claim 7
Claim 17
Claim 8
Claim 23 & 24
Claim 9
Claim 16
Claim 10
Claim 34
Claim 11
Claim 4
Claim 12
Claim 6
Claim 13
Claim 2
Claim 14
Claim 3
Claim 15
Claim 5
Claim 16
Claim 24
Claim 17
Claim 7
Claim 18
Claims 7-9
Claim 19
Claim 8
Claim 20
Claim 9
2. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over Claims 1-5, 7-8, 13, 16-17 & 23-24 U.S. Patent No. 11,754,594 (Takizawa). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed elements and limitations in the Instant application are claimed in the '594 Takizawa patent. Although '594 Takizawa patent does not claim an acceleration sensor for the inertial measurement unit; however, the concept of including the acceleration sensor is disclosed and illustrated in Figure 11 in the '617 Takizawa patent and would have obvious (e.g. as evidenced by U.S. Patent Application Publication 2015/0247877 in paragraph [0048] and illustrated in Figure 2A) to claim such acceleration sensor to form a composite sensor for the inertial measurement unit. Therefore, the claims in the Instant application are not patentably distinct from the claims in the '617 Takizawa patent
Since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because The subject matter claimed in the instant application is disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Instant Application 18802209
Conflicting Patent US11754594
Claim 1
Claims 1 & 2
Claim 2
Claims 7 & 8
Claim 3
Claim 1
Claim 4
Claim 1
Claim 5
Claim 1
Claim 6
Claim 1
Claim 7
Claim 12
Claim 8
Claim 12
Claim 9
Claim 1
Claim 10
Claim 1
Claim 11
Claim 5
Claim 12
Claim 1
Claim 13
Claim 3
Claim 14
Claim 4
Claim 15
Claim 15
Claim 16
Claim 13
Claim 17
Claim 14
Claim 18
Claim 14
Claim 19
Claim 15
Claim 20
Claim 16
3. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over Claims 1-12 of U.S. Patent No. 12,099,075 (Takizawa). Although the
claims at issue are not identical, they are not patentably distinct from each other because all of
the claimed elements and limitations in the Instant application are claimed in the '594 Takizawa
patent. Although ‘075 Takizawa patent does not claim an acceleration sensor for the inertial
measurement unit; however, the concept of including the acceleration sensor is disclosed and
illustrated in Figure 11 in the '075 Takizawa patent and would have obvious (e.g. as evidenced
by U.S. Patent Application Publication 2015/0247877 in paragraph [0048] and illustrated in
Figure 2A) to claim such acceleration sensor to form a composite sensor for the inertial
measurement unit. Therefore, the claims in the Instant application are not patentably distinct
from the claims in the ‘075 Takizawa patent.
Since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because The subject matter claimed in the instant application is disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Instant Application 18802209
Conflicting Patent US12099075
Claim 1
Claims 1 & 12
Claim 2
Claim 6- 8
Claim 3
Claims 1 & 12
Claim 4
Claims 1 & 12
Claim 5
-
Claim 6
-
Claim 7
Claim 9
Claim 8
Claim 10
Claim 9
-
Claim 10
-
Claim 11
Claim 5
Claim 12
-
Claim 13
Claim 3
Claim 14
Claim 4
Claim 15
-
Claim 16
-
Claim 17
-
Claim 18
-
Claim 19
-
Claim 20
-
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 1-6 & 11-20 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for an element claimed as “a structure” as “a mass” (601)[0146] or “a drive unit” (45)[0091] the disclosure does not apply to all structures and arrangement of structures in a physical quantity sensor.
Claims 1-6 & 11-20 and its dependent claims are rejected under 35 U.S.C. 112(a), as failing to comply with the scope of enablement requirement. In Applicant' s case the breadth of the claims extends beyond the disclosure of “a structure” as “a mass part” (601)[0146] or “a drive unit” (45)[0091]. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” In this case, the relevant Wand factors Examiner has considered are :
2164.01(a) Undue Experimentation Factors [R-01.2024]
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The disclosure does not provide additional working examples or indication of any other type of a structure” other than as “a mass” (601)[0146] or “a drive unit” (45)[0091]. The inventor has reduced to practice at the time a first beam that faces “a mass” (601)[0146] or “a drive unit” (45)[0091]. Absence of disclosure all structures that can face a first beam, places on the public the entire quantity of experimentation needed to make or use the full scope of Claims 1-6 & 11-20 and overreaches the disclosed concept.
Claims 1-6 & 11-20 therefore recites subject matter directed to the broadest level of a concept of all structures that can face a first beam.
Consistent with office policy, Examiner has weighed all the evidence for and against enablement of this invention and has concluded based on guidance provided by the MPEP and case law (including the Wands factors) that there is not enough evidence in favor of the scope of the enablement of this invention.
Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert' s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered)”.
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 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation “a structure arranged to overlap the substrate in a plan view; which is unclear as to what the meets and bounds of “a structure” require. Examiner looks to the specification and finds the structure is one of “a mass part”(601)[0146] or “a drive unit” (45)[0091].
Claims 7 & 8 recite the structure is the drive part which is unclear as the parent Claim 3 recites the structure is connected to the elastic part. The mass unit is connected to the elastic part
but not the drive unit that is claimed in claims 7 & 8. Examiner suggests changing the flow through dependency to claim 1 and not to claim 3.
All dependent claims are rejected for their dependence on a rejected base claim.
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.
Claims 1-10 & 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kanemoto (US 20150247877: “Kanemoto”) in view of Helin (US 20030027370: “Helin”).
Claim 1. Kanemoto discloses a physical quantity sensor (Figs. 1-18:10) comprising: a substrate (11); a structure (140) arranged to overlap the substrate (11) in a plan view; and an elastic part (130) arranged to overlap the substrate (11) in the plan view (Fig. 3), wherein the elastic part (130) comprises: an inner beam (Fig. 3 annotated inner beams are 2nd & 3rd verticals); an outer beam (Fig. 3 annotated outer beams are1st & 4th verticals where 4th vertical is the cited outer beam) arranged between the inner beam (Fig.3 annotated 4th vertical outer beam arranged between 3rd vertical and structure 140) and the structure (140) and parallel to the inner beam (Fig. 3: 130 vertical beams 1st to 4th are parallel, ordistance between the inner beam and the outer beam is T2 (Fig. 3 annotated indicates the width of the spaces between the verticals is T2).
a first beam arranged between the outer beam and the structure and parallel to the outer beam and a connecting part connected to the outer beam and the first beam wherein the first beam includes a pair of free ends and
a distance between the outer beam and the first beam is T3, and 0.8 < T3/T2 < 3.0.
With regard to 1) Helin teaches a MEMS component comprising, as illustrated in (Figure 1, 7 & 8), a MEMS component 10 comprises a structure 14 connected to an elastic part Fig. 1 15 & 16 but with embodiment of Fig. 8: 80[0081]. Helin further teaches the elastic part 15,16 includes a first beam (Fig. 8: 81) parallel to the outer beam (80) [0075-0076] with a connecting part (82) connected to the outer beam (80) wherein the first beam includes a pair of free ends (81) where each end is a free end in a plan view along the Z-axis (e.g. as observed in Figure 8) such [0075-0081].
It would have been obvious to a person of ordinary skill in the art before the effective
filing date to use Helin’s first beam attached via a connecting part and parallel to an outer beam where the first beam includes a pair of free ends to Kanemoto’s outer beam parallel to a structure because the added first beam to an outer beam increases reliability of the flex of the outer beam by increasing the mass of the outer beam without impact to the stiffness properties of the outer beam [0081 Helin].
With regard to 2) The distance T2 is optimized to meet stiffness properties for suspending a physical quantity sensor and the value T3 is optimized to not impact the stiffness property which is an obvious design choice that would fall in the comparative range of 0.8 < T3/T2 < 3.0 with no significance disclosed in the specification as to the importance of the ratio range. Since the courts have held it would be obvious to one of ordinary skill in the art at the time of the invention was made to determine performance values that relate to each other is discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize Kanemoto’s, as modified by Helin’s, distances between outer and inner beams T2 to ensure sufficient support stiffness for the physical quantity sensor while ensuring the distance T3 does not impact the optimized stiffness value within the ratio range.
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Claim 2. Dependent on the physical quantity sensor according to claim 1. Kanemoto does not explicitly disclose:
the connecting part is connected to a region between the pair of ends of the first beam.
Helin teaches a MEMS component comprising, as illustrated in (Figure 1, 7 & 8), a MEMS component 10 comprises a structure 14 connected to an elastic part Fig. 1 15 & 16 but with embodiment of Fig. 8: 80[0081]. Helin further teaches the elastic part 15,16 includes a connecting part (82) connected to the outer beam (80) to a region between the pair of ends of the first beam (Fig. 8: 81 with connector 83 in between ends of 81) [0075-0081].
It would have been obvious to a person of ordinary skill in the art before the effective
filing date to use Helin’s first beam attached via a connecting part between the pair of free ends to Kanemoto’s outer beam parallel to a structure because the added centrally connected first beam to an outer beam increases reliability of the flex of the outer beam by increasing the mass of the outer beam without impact to the stiffness properties and balance of the outer beam [0081 Helin].
Claim 3. Dependent on the physical quantity sensor according to claim 2. Kanemoto further discloses the elastic part (130) is connected to the structure (120)[170].
Claim 4. Dependent on the physical quantity sensor according to claim 3. Kanemoto further discloses a distance between the outer beam and the structure is T1, and T2 < T1 (fig.3: shows close placement of the verticals of 130 T2 and a clear larger separation between 130 and the structure T1).
Claim 5. Dependent on the physical quantity sensor according to claim 4, Kanemoto, as modified, further discloses a gyro sensor (100) supported on the substrate (12) and detecting angular velocity based on a change in capacitance [0048], wherein the gyro sensor (100) includes the structure (120) and the elastic part (130)[0070-0072].
Claim 6. Dependent on the physical quantity sensor (10) according to claim 5. Kanemoto, as modified, further discloses the gyro sensor (100) comprises: a fixed part (115) fixed to the substrate (12); a mass part (120) connected to the fixed part (115); and a drive part (140) that drives the mass part (120)[0071-0072].
Claim 7. Dependent on the physical quantity sensor according to claim 6. Kanemoto, as modified, further discloses a structure is the drive part (140).
Claim 8. Dependent on the physical quantity sensor according to claim 7. Kanemoto, as modified, does not explicitly disclose:
the first beam faces the drive part.
Helin teaches a MEMS component comprising, as illustrated in (Figure 1, 7 & 8), a MEMS component 10 comprises a structure 14 connected to an elastic part Fig. 1 15 & 16 but with embodiment of Fig. 8: 80[0081]. Helin further teaches the elastic part 15,16 includes a first beam (Fig. 8: 81) parallel to and facing the outer beam (80) [0075-0081].
It would have been obvious to a person of ordinary skill in the art before the effective
filing date to use Helin’s first beam parallel to and facing an outer beam to Kanemoto’s outer beam parallel to and facing a driving unit because the added first beam to an outer beam increases reliability of the flex of the outer beam by increasing the mass of the outer beam without impact to the stiffness properties of the outer beam or impact to the forces actuated by the facing driving unit [0081 Helin].
Claim 9. Dependent on the physical quantity sensor according to claim 6. Kanemoto further discloses the structure is the mass part (120).
Claim 10. Dependent on the physical quantity sensor according to claim 9. Kanemoto, as modified by Helin with motivation to combine in, does not explicitly disclose:
the first beam faces the mass part.
Kanemoto further has a mass part (120) that would face the elastic member (130) if reversed/flipped along the yaxis to central support since the courts have held reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, USPQ 167. It would have been obvious to one having ordinary skill in the art bere the effective filing date of the claimed invention to reverse Kanemoto’s, as modified with a first beam, to a central connection arrangement because the arrangement improves space efficiency in confined areas where the corner connection areas are not available.
Claim 16. Dependent on the physical quantity sensor according to claim 6, wherein the gyro sensor (100) includes a detection part (Fig. 3) [0061].
Claim 17. Dependent on claim 1. Kanemoto, as modified, further discloses the composite sensor (10) comprising: the physical quantity sensor (100) according to claim 1; and an acceleration sensor (200)[0048].
Claim 18. Dependent on claim 1 Kanemoto, as modified, further discloses an inertial measurement unit (Fig. 3: 10) comprising: the physical quantity sensor (100) according to claim 1; an acceleration sensor (200) [0048], and a microcomputer (1100) that controls the physical quantity sensor (100) and the acceleration sensor (200) [0048].
Claim 19. Dependent on claim 1 where Kanemoto, as modified, further discloses an electronic apparatus comprising: the physical quantity sensor (10) according to claim 1; and a controller [0172: ECU] configured to control an object based on a detection signal output from the physical quantity sensor (100)[0172] & [ 0163-0164].
Claim 20. Dependent on claim 1 where Kanemoto, as modified, further discloses a vehicle (Fig. 12: 1502), comprising: the physical quantity sensor (10) according to claim 1; and an attitude controller [0172: ECU] configured to control an attitude of the vehicle (Fig. 12: 1502), based on a detection signal output from the physical quantity sensor (10)[[0172: a vehicle attitude control system].
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kanemoto in view of Helin and in further view of Takizawa (US 20130111991; “Takizawa”).
Claim 11. Dependent on the physical quantity sensor according to claim 4. Kanemoto does not explicitly disclose:
wherein T1 ≤ 10 µm.
Takizawa teaches FIG. 1 is a plan view schematically illustrating a gyro sensor 100 [0045]. Takizawa further teaches the gap between spring beams T1 is (w1) [0086: the widths may be set so that w.sub.1=4 .mu.m]
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Takizawa’s gap of 4.mu.m. with Kanemoto’s, as modified, gap between the inner and outer beams of the elastic part because a larger gap between elastic beams of 4.mu.m improves reliability of the device by providing an improved restoring force of the elastic spring part which reduces error inducing stiction [Takizawa 0007].
Claim 12. Dependent on the physical quantity sensor according to claim 11. Kanemoto does not explicitly disclose:
a width of the beam is W1, and 0 < W1 ≤ 10µm.
Takizawa teaches FIG. 1 is a plan view schematically illustrating a gyro sensor 100 [0045]. Takizawa further teaches a width of the beam is W1, and 0 < W1 ≤ 10µm [0102: setting value w of the width of the driving spring portion 114 to 2 µm, 4 µm, and 8 µm].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Takizawa’s beam width of 2, 4 or 8µm with Kanemoto’s, as modified, elastic portion widths because the width ranges can be selected to improve measurement accuracy by tailoring the width dependent resonant frequency of the elastic part to meet the load requirements of the device [Takizawa 0102-0103].
Claims 13 & 14. Dependent on the physical quantity sensor according to claim 12, wherein 0.9 ≤ T3/T2 ≤ 1.1.
The distance T2 is optimized to meet stiffness properties for suspending a physical quantity sensor and the value T3 is optimized to not impact the stiffness property which is an obvious design choice that would fall in the comparative range of 0.9 ≤ T3/T2 ≤ 1.1. with no significance disclosed in the specification as to the importance of the ratio range. Since the courts have held it would be obvious to one of ordinary skill in the art at the time of the invention was made to determine performance values that relate to each other is discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize Kanemoto’s, as modified by Helin’s, distances between outer and inner beams T2 to ensure sufficient support stiffness for the physical quantity sensor while ensuring the distance T3 does not impact the optimized stiffness value within the ratio range.
Claim 15. Dependent on the physical quantity sensor (100) according to claim 14. Kanemoto does not explicitly disclose:
a depth of the beam is D1, and 20µm ≤ D1 ≤ 30µm.
Since the previous claimed width of a beam is set in Claim 12 the depth of the beam would have to be optimized to ensure the desired resonance can be achieved. Since the courts have held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize Kanemoto’s, as modified by Helin’s, beam to an effective thickness because the dimensions of the beam improves measuring accuracy by generating a resonant frequency that is optimized for the resonated mass of the physical quantity sensor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Monica S Young whose telephone number is (303)297-4785. The examiner can normally be reached M-F 08:30-05:30 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at 571-273-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA S YOUNG/ Examiner, Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855
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