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 .
Priority
2. Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 10/16/2023 is considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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(c) 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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-6, 9-15 and 17 of Takasugi et al. (U.S. Patent No. 12164009), hereinafter ‘Takasugi’. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims disclose similar subject matter. Both sets of claims are compared below.
Claim 1 of Pending Application 18932913
Claim 1 of U.S. Patent 12164009
A sensor configured to detect a physical quantity, the sensor comprising: a first insulating layer, a second insulating layer, and a third insulating layer arranged in order along a first direction;
A sensor configured to detect a predetermined physical quantity, the sensor comprising: a first insulating layer, a second insulating layer, and a third insulating layer arranged in order along a first direction;
and a sensor element configured to change in a physical property depending on the physical quantity,
wherein: the sensor element is located on an opposite side of the third insulating layer from the second insulating layer; (note: sensor element includes functional layer in U.S. Patent, thus arrangement and location on opposite side interpreted is similarly)
wherein: the sensor element includes a functional layer constituting at least a part of the sensor element; the functional layer is located on an opposite side of the third insulating layer from the second insulating layer;
one or two of insulating layers of the first insulating layer, the second insulating layer, and the third insulating layer contain a first insulating material different from a second insulating material contained in another one of the insulating layers; (note: first and third insulating layers contain a first insulating material; second insulating layer containing a second insulating material interpretation for Double Patenting)
the first and third insulating layers each contain a first insulating material; the second insulating layer contains a second insulating material;
the second insulating layer includes a first portion and a second portion located at a position different from the first portion in a second direction orthogonal to the first direction;
the second insulating layer includes a first portion and a second portion located at a position different from the first portion in a second direction orthogonal to the first direction;
and a maximum dimension of the second portion in the first direction is greater than a maximum dimension of the first portion in the first direction.
and a maximum dimension of the second portion in the first direction is greater than a maximum dimension of the first portion in the first direction.
Clm 2
Clm 5
Clm 3
Clm 6 (sensor includes functional layer as disclosed in Claim 1)
Clm 4
Clm 11
Clm 5
Clm 12
Clm 6
Clm 13
Clm 7
Clm 14
Clm 8
Clms 1 and 4 or Clm 17
Clm 9
Clm 5
Clm 10
Clm 6 (sensor includes functional layer as disclosed in Claim 1)
Clm 11
Clm 11
Clm 12
Clm 12
Clm 13
Clm 13
Clm 14
Clm 14
Clm 15
Clm 1 and 9
Clm 16
Clm 1 and 2
Clm 17
Clm 10
Clm 18
Clm 11
Clm 19
Clm 12
Clm 20
Clm 15
Claims 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 12164009 as described above, in view of Naito et al. (US 20060176142), hereinafter ‘Naito’.
Regarding Claims 21 and 22, Takasugi fails to explicitly disclose wherein the second insulating layer includes a protrusion including the inclined surface of Claim 21 and wherein the second insulating layer includes a slope including two wall surfaces facing each other, and at least one of the two wall surfaces corresponds to the inclined surface of Claim 22.
Naito discloses a magnetic sensor having a second insulating layer (Fig. 14, layer 114) including a protrusion (Fig. 14, projection 115) including the inclined surface (Fig. 14, slope 116) of Claim 21 and of Claim 22 wherein the second insulating layer (Fig. 14, layer 114) includes a slope including two wall surfaces facing each other (Fig. 14, slope of each 116), and at least one of the two wall surfaces corresponds to the inclined surface (Fig. 14, slope 116 with inclination angle as described in Para [0152]) for the benefit of providing a small-size magnetic sensor in which three or more giant magnetoresistive elements are arranged on a single substrate so as to detect three axial values regarding the intensity of a magnetic field applied thereto with respect to three axial directions (Para [0008]).
Therefore it would have been obvious to one having ordinary skill in the art to combine and provide wherein the second insulating layer includes a protrusion including the inclined surface and wherein the second insulating layer includes a slope including two wall surfaces facing each other, and at least one of the two wall surfaces corresponds to the inclined surface for the benefit of providing a small-size magnetic sensor in which three or more giant magnetoresistive elements are arranged on a single substrate so as to detect three axial values regarding the intensity of a magnetic field applied thereto with respect to three axial directions as taught by Naito in Para [0008, 0152] and in Fig. 14.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naito et al. (US 20080169807), hereinafter ‘Naito’, and further in view of Farooq et al. (US 20090015285), hereinafter ‘Farooq’.
Regarding Claims 15 and 17, Naito discloses a sensor configured to detect a physical quantity (Abstract), the sensor comprising: a first insulating layer (Fig. 29 a, c element 31; Para [0326] 31 is formed by sequentially laminating a silicon oxide film), a second insulating layer (Fig. 29 a, c element 34; Para [0145] silicon nitride film 34), and a third insulating layer (Fig. 29 a, c element 35; Para [0146] film 35 composed of silicon oxide) arranged in order along a first direction (Fig. 29 a, arranged along direction bottom to top); a metal layer located on an opposite side of the first insulating layer from the second insulating layer (Para [0144] conductive portions 21a and 21b; Fig. 29 b, c and c, b 21a located on opposite side of layer of 31 of Fig. 29 a, c); and a sensor element configured to change in a physical property depending on the physical quantity (Fig. 30 a, c, element 5, Para [0110] magnetization direction varies in response to an external magnetic field), wherein: the sensor element is located on an opposite side of the third insulating layer from the second insulating layer (Fig. 30 a, c element 5 on opposite of 35 from layer 34 of Fig. 29 a, c); one or two of insulating layers of the first insulating layer, the second insulating layer, and the third insulating layer contain a first insulating material (Para [0326] 31 is formed by sequentially laminating a silicon oxide film; Para [0146] film 35 composed of silicon oxide) different from a second insulating material contained in another one of the insulating layers (Para [0145] silicon nitride film 34); and the second insulating material has a fracture toughness value higher than that of the metal layer.
Naito fails to explicitly disclose wherein the second insulating material has a fracture toughness value higher than that of the metal layer of Claim 15 and wherein the second insulating material is SiO.sub.2 of Claim 17.
Farooq teaches a conductive pad and insulator test structure wherein the insulating material has a fracture toughness value higher than a fracture toughness of a metal layer (Para [0031] fracture toughness ratio of Aluminum to SiO.sub.2 is about 14 – 28) and of Claim 17 the insulating material is Si.O.sub 2 (Para [0031]) for the benefit of improving the stress intensity factor (Para [0030-0031]).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date to combine and provide the second insulating material has a fracture toughness value higher than a fracture toughness of the metal layer and the insulating material is Si.O.sub 2 for the benefit of improving the stress intensity which reduces cracking as taught by Farooq in Para [0030-0031].
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naito et al. (US 20080169807), hereinafter ‘Naito’ in view of Farooq et al. (US 20090015285), hereinafter ‘Farooq’ as applied to claim 15 above, and further in view of Yashiro et al. (US 20180041187), hereinafter ‘Yashiro’.
Regarding Claims 18 and 19, Naito fails to explicitly disclose wherein the first insulating material has a fracture toughness value higher than that of the second insulating material and the first insulating material includes Al.sub.2O.sub.3; and the second insulating material includes SiO.sub.2.
Yashiro teaches a first insulating material has a fracture toughness value higher than a fracture toughness of a second insulating material and the first insulating material is Al.sub.2O.sub.3; and the second insulating material is SiO.sub.2 (Para [0045, 0060-0062] disclosing an insulation later having a higher fracture toughness than a second insulation later and the Al.sub.2O.sub.3 has a fracture toughness greater than that of silicon dioxide (SiO.sub.2) for the benefit of providing improvements such as preventing cracking from developing.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date to combine and provide the first insulating material has a fracture toughness value higher than that of the second insulating material and the first insulating material includes Al.sub.2O.sub.3; and the second insulating material includes SiO.sub.2 for the benefit of providing improvements such as preventing cracking from developing as taught by Yashiro in Para [0045, 0060-0062].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naito et al. (US 20080169807), hereinafter ‘Naito’ in view of Farooq et al. (US 20090015285), hereinafter ‘Farooq’ as applied to claim 15 above, and further in view of Inaba (US 20130088318), hereinafter ‘Inaba’.
Regarding Claim 20, Naito and Farooq fail to explicitly disclose wherein the metal layer is a part of a coil.
However Inaba teaches a metal layer is a part of a coil (Para [0069] magnetic field produced by coil) for the benefit of suppressing leakage of magnetic flux from the coil as taught by Inaba in Para [0069].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date to combine and provide a metal layer as part of a coil for the benefit of suppressing leakage of magnetic flux from the coil as taught by Inaba in Para [0069].
Allowable Subject Matter
Claims 1-14 would be allowable by overcoming the Double Patenting rejection above.
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding Claim 16, the closest prior art fails to disclose nor would it be obvious to combine “wherein: the second insulating layer includes a first portion and a second portion located at a position different from the first portion in a second direction orthogonal to the first direction; and the metal layer extends to intersect a border between the first and second portions when seen in the first direction” in combination with all other limitations of the claim and overcoming the Double Patenting rejection as disclosed above would render the claim allowable over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALESA ALLGOOD whose telephone number is (571)270-5811. The examiner can normally be reached M-F 7:30 AM-3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eman Alkafawi can be reached at (571) 272-4448. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALESA ALLGOOD/ Primary Examiner, Art Unit 2858
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