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 .
Summary
Claims 1-12 are pending. Claims 1-12 are rejected herein. This is a First Action on the Merits.
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.
As explained in MPEP § 2181, subsection I, 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 paragraph:
(A) 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;
(B) 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
(C) 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.
Claim Objections
Claim(s) 1, 3, 4, and 6-12 is/are objected to because of the following informalities. Appropriate correction is required.
Regarding claims 1, 3, 4, and 6-12: These claims all contain language of action stating what is done to the structures in apparatus claims. The Examiner recommends replacing this language with language that does use action verbs. For instance, in claim 1, replacing “the mechanical low-pass filter is placed” with --the mechanical low-pass filter is located--. Similarly, in claim 11, replacing “wherein at least one hole is formed penetrating an interior of the mechanical low-pass filter” with --wherein the low-pass filter further comprises at least one hole…--. For the language “is compressed” in claims 3 and 12, the Examiner recommends explicitly reciting the structure that is doing the compressing as is done in claim 6. Please note the following language “is placed” in claim 1, “is formed” in claim 1, “is compressed” in claim 3, “placed” (2x) in claim 4, “placed” in claim 6, “is placed” in claim 7, “is pressed” in claim 7, “is placed” in claim 8, “is pressed” in claim 8, “is placed” in claim 9, “is pressed” in claim 9, “is placed” in claim 10, “is pressed” in claim 10, “is formed” in claim 11, “is compressed” in claim 12.
Claim Rejections - 35 USC § 112(b)
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.
Claim(s) 1-12 is/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.
Regarding claim 1: The scope of claim 1 is unclear. The claim is directed toward “a mechanical low-pass filter” however the only limitation that appears to be placed on this structure is that it “is formed of an elastomer.” All the rest of claim 1 is statements of intended use. Claim 1 states what structures the filter is positioned between (vibration source and acceleration sensor) and what its purpose is (to filter out high frequencies), but the scope of the claim appears to only be a piece of elastomer. The subject matter of claim 1 might be better represented by a method claim for removing an influence of high-frequency vibration from an acceleration sensor. Then the steps can be: providing and filter formed of an elastomer and positioning it between the acceleration sensor and the source of vibration.
Regarding claim 3: It is unclear what it means when claim 3 states that the filter “is compressed.” This sounds like a method step because there has to be something doing the compressing. However, as stated above, the only structure within the scope of claim 1 is a piece of elastomer. Therefore it seems like claim 3 is incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: whatever structure is doing the compressing.
Regarding claim 4: Claim 4 is indefinite because it contains a logical contradiction. Claim 4 states that the filter is “configured to absorb an external vibration transmitted to the acceleration sensor.” However, the vibration cannot be both absorbed by the filter and transmitted to the acceleration sensor. The Examiner recommends using language such as “configured to absorb vibrations above a cut-off frequency” or something similar.
Regarding claims 7-10: Claims 7-10 are indefinite because one skilled in the art would not understand two separate pieces of elastomer (such as the pieces 122 in FIGS. 5-8 of the present application) as a single low-pass filter. Claims 4-6 refer to a single piece of elastomer as a low-pass filter, therefore for claims 7-10 to call two separate, potentially identical, pieces of elastomer a “low-pass filter” is indefinite. The Examiner recommends using language such as “further comprising an additional low-pass filter, wherein the low-pass filter is located on a lower portion of the acceleration sensor and the additional low-pass filter is located on an upper portion of the acceleration sensor” or something similar. This language has support in FIGS. 7-10 of the Applicant’s original disclosure. The Applicant may also consider using language such as “first” and “second.”
Regarding claims 2, 3, and 5-12: These claims are rejected as indefinite for depending from an indefinite claim.
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.
(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.
Claim(s) 1, 3-10, and 12 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by LEBRON et al. (US 20200057088).
Regarding claim 1: As best understood, LEBRON discloses: A mechanical low-pass filter (elastic material 104B best seen in FIG. 4A; para. 35) positioned between a vibration source, which generates a high-energy phenomenon, and an acceleration sensor (This is a statement of intended use and does not limit the structure of the filter because the sensor is not within the scope of the claim. Also, the elastic material 104B is between the bottom of the assembly, where vibrations could enter the Printed circuit Board Assembly (PBA 106) having MEMS sensor 114, which is an acceleration sensor as discussed in para. 21. The purpose of this elastic layer is to attenuate high-frequency energy as discussed in para. 35.), wherein the mechanical low-pass filter is placed on one side of the acceleration sensor (Again stating where the filter is located when in use does not limit its structure, but FIG. 3 does show the elastic material on one side of the acceleration sensor 106.), and is formed of an elastomer (para. 25) and configured to absorb an external vibration transmitted to the acceleration sensor (This is a property of the elastomer and not a structural limitation, but this is also the purpose of the elastic material of LEBRON as discussed in para. 35.), to filter out a frequency higher than a cut-off frequency, and to remove an influence of a high-frequency excitation (para. 35).
Regarding claim 3: As best understood, LEBRON discloses: the mechanical low-pass filter is compressed (para. 35, 39, 53) in a direction parallel to a direction of a transmission of a vibration (FIG. 3).
Regarding claim 4: As best understood, LEBRON discloses: A frequency cut-off apparatus (FIG. 3; para. 35) comprising: a housing portion (102, 110); and a sensing portion (PBA 106 having MEMS sensor 114) placed in an interior of the housing portion (FIG. 3) and configured to measure acceleration (para. 21), wherein the sensing portion comprises: an acceleration sensor configured to sense acceleration (PBA 106 having MEMS sensor 114; para. 21); and a mechanical low-pass filter (104B; para. 35) placed on one side of the acceleration sensor (FIG. 3), formed of an elastomer (para. 25), and configured to absorb an external vibration transmitted to the acceleration sensor (para. 35).
Regarding claim 5: As best understood, LEBRON discloses: the housing portion comprises: a lower frame (110 in FIG. 3) comprising an accommodating space (122) in an interior and an open upper end (FIG. 3); and an upper frame (102) configured to cover the open upper end of the lower frame (FIG. 3).
Regarding claim 6: As best understood, LEBRON discloses: the sensing portion further comprises: a compression means placed in an interior of the housing portion and configured to compress the mechanical low-pass filter (Para. 35, 39, and 53 describe how the flanges and structures shown in FIG. 4A cooperate to compress the bottom elastic material 104B.).
Regarding claim 7: As best understood, LEBRON discloses: the mechanical low-pass filter (104B, 104A) is placed on an upper portion (position of 104A in FIG. 4B) and a lower portion (position of 104B) of the acceleration sensor (PBA 106), a portion of the upper frame protrudes toward the lower frame (right side of top housing 102 in FIG. 3; The deposited material 127A, discussed in para. 64 [FIG. 4B], also protrudes from upper frame/top housing), and the sensing portion is pressed and fixed in a position by the lower frame and the protruding portion of the upper frame (FIG. 4B; para. 35, 39, 53).
Regarding claim 8: As best understood, LEBRON discloses: the mechanical low-pass filter (104B, 104A) is placed on an upper portion (position of 104A in FIG. 4B) and a lower portion (position of 104B) of the acceleration sensor (PBA 106), a portion of the lower frame protrudes toward the upper frame (part of bottom housing 110 that ends in bottom housing inner shelf 128 best seen in FIG. 4B; Deposited material 127B also protrudes upward from the bottom housing.), and the sensing portion (PBA 106) is pressed and fixed in a position by the upper frame and the protruding portion of the lower frame (para. 35, 39, 53).
Regarding claim 9: As best understood, LEBRON discloses: the mechanical low-pass filter (104B, 104A) is placed on an upper portion (position of 104A in FIG. 4B) and a lower portion (position of 104B) of the acceleration sensor (PBA 106), a portion of the lower frame protrudes toward the upper frame (part of bottom housing 110 that ends in bottom housing inner shelf 128 best seen in FIG. 4B; Deposited material 127B also protrudes upward from the bottom housing.), a portion of the upper frame protrudes toward the lower frame (right side of top housing 102 in FIG. 3; Deposited material 127A, discussed in para. 64, also protrudes from upper frame/top housing.), and the sensing portion is pressed and fixed in a position by the protruding portion of the lower frame and the protruding portion of the upper frame (para. 35, 39, 53).
Regarding claim 10: As best understood, LEBRON discloses: the mechanical low-pass filter (104B, 104A) is placed on an upper portion (position of 104A in FIG. 4B) and a lower portion (position of 104B) of the acceleration sensor (PBA 106), and the sensing portion is pressed and fixed in a position by the lower frame and the upper frame (para. 35, 39, 53).
Regarding claim 12: As best understood, LEBRON discloses: the mechanical low-pass filter is compressed (para. 35, 39, 53) in a direction parallel to a direction of a transmission of a vibration (The entire assembly 100 is mounted on its bottom with screws through holes 109A and 109B in FIG. 3. Therefore the vibrations will be transmitted upwards from the bottom and the compression between top housing 102 and bottom housing 110 will be parallel to the direction of transmission.).
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(s) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over LEBRON.
Regarding claims 2 and 11: As best understood, LEBRON does not disclose a hole in the filter (104A and 104B). Rather LEBRON discloses holes in the surfaces that mate with the filter, both on the PBA (106) and the top and bottom housings (102, 110) as discussed in para. 50, 61, 62, for the purposes of making a secure connection such that the elastic material “may grab, or bite onto, the three dimensional features” (para. 62). LEBRON also discloses protrusions (127A and 127B in FIG. 4B) to mate with the filter/elastic material. Therefore it would be obvious to one skilled in the art to have holes in the elastic material of LEBRON for the purpose of making a better mechanical connection between the elastic material and the surfaces that are being clamped onto as discussed in para. 62-63 of LEBRON as it only constitutes an obvious rearrangement of parts (See MPEP 2144.04 VI C). In the present case what is being moved are the “three dimensional features” of LEBRON from one surface on either the PBA or the housing to their corresponding surface on the filter/elastic material. In both cases it will produce a stronger mechanical connection as discussed in para. 61-63.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. BRAMAN et al. (US 20160103145) teaches an elastomer 610 (para. 23 FIG. 6) disposed above and below a sensor such as accelerometer (para. 15) to damp the transmission of high frequency energy into the sensor (para. 23). Several other references have been added to the Notice of References Cited for teaching sensors with damping members used to prevent the transmission of vibrations into the sensor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL J KOLB whose telephone number is (571)270-7601. The examiner can normally be reached M-F 9-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura M Sweeney can be reached at 571-272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHANIEL J KOLB/Examiner, Art Unit 2855
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