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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 21 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claimed subject matter does not have support in the specification or figures for at least the “without a heterogeneous material interface” language. It is noted that Applicant did not cite support in the response.
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 1-12, 14-20 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.
Claims 1 and 17 are rejected for the language “relative thick(er)” for being a relative term with no basis for determining the scope of such language. The remaining claims are merely rejected due to dependency
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5-12, 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nassar (US 20070163355) in view of Johnson (US 2016/0235564).
Claims 1, 5-12, 15-17, 19-20:
Nassar teaches a method for forming an integrated, flexible diaphragm by providing a mandrel (Fig. 2) and applying a metal layer by sputtering [0029]. The metal layer is applied to the body portion of the mandrel and the diaphragm portion (Fig. 3). Thereafter, at least a portion of the mandrel is removed by etching [0030].
Nassar does not teach specific details related to the sputtering process.
However, Johnson teaches a method for depositing metal layers by sputtering. This includes performing the process in a vacuum [0026], applying sequential sputtered layer to achieve the desired thickness [0041], and masking to control which areas are coated and which are not [0042].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Nassar and incorporate the steps of Johnson because they represent conventional steps in a routine sputtering process.
Claims 2-3:
Johnson teaches it is known to use a laser for material removal [0010].
Claims 14:
Johnson teaches sputtering nitinol, a superelastic nickel titanium material [0004].
Claim 18:
Johnson teaches the use of sacrificial layers [0039].
Claim 21:
The sensor implant shell structure is considered inherent based on the formation on a mandrel and without specific structure recited.
Allowable Subject Matter
Claim 4 is objected to for depending from a rejected claim, but otherwise represents allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art is the closest prior art and does not teach the structure where the diaphragm portion has an oval shape and is positioned on a sidewall of the mandrel form with a major axis of the oval shape aligning with an axis of the mandrel form.
Response to Arguments
Applicant's arguments filed 1/13/26 have been fully considered but they are not persuasive.
Arguments rely on the assertion that none of the prior art references teach vapor deposition. However, all the prior art references utilize sputtering, which is a type of physical vapor deposition. Applicant further asserts that the particular vapor deposition process disclosed in the specification enables the formation of the particular structure, however the independent claims are not found to contain patentably distinct vapor deposition processes or resulting structure.
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 ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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