NON-FINAL REJECTION
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(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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/453,481 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches and/or is obvious in view of the current claims of the application.
With respect to claims 1, 19, the claims are not patentably distinct and/or are obvious in view of the copending claims 1, 16.
With respect to claim 2, the claim is not patentably distinct and/or is obvious in view of the copending claim 2.
With respect to claim 3, the claim is not patentably distinct and/or is obvious in view of the copending claim 3.
With respect to claim 4, the claim is not patentably distinct and/or is obvious in view of the copending claim 4.
With respect to claim 5 the claim is not patentably distinct and/or is obvious in view of the copending claim 5.
With respect to claim 6, the claim is not patentably distinct and/or is obvious in view of the copending claim 6.
With respect to claim 7, the claim is not patentably distinct and/or is obvious in view of the copending claim 7.
With respect to claims 8-10, the claims are not patentably distinct and/or are obvious in view of the copending claims 8 and 9.
With respect to claims 11 and 12, the claims are not patentably distinct and/or are obvious in view of the copending claims 10-15.
With respect to claim 20, the claim is not patentably distinct and/or is obvious in view of the copending claim 17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-18 and 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.
With respect to claim 1, the claim limitation “wherein said processing circuit or an external processor is configured for determining a torque exerted upon said shaft, based on the measured magnetic field components or based on pairwise differences of these magnetic field components” describes method steps of using the claimed apparatus. The phrase “determining a torque exerted upon said shaft”, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
With respect to claim 2, the claim limitation “measuring or estimating a first temperature of the first sensor, and a second temperature of the second sensor, and for temperature-compensating the signals obtained from the first and second sensor” describes method steps of using the claimed apparatus. The phrases “measuring or estimating a first temperature of the first sensor” and “temperature-compensating the signals obtained from the first and second sensor” described method steps of using, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
With respect to claim 3, the claim limitation “measuring a temperature of the main substrate, and wherein the processing circuit is configured for temperature correcting the sensor signals, based on the measured temperature” describes method steps of using the claimed apparatus. The phrases “measuring a temperature of the main substrate” and “temperature correcting the sensor signals” described method steps of using, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
With respect to claim 4, the claim limitation “measuring a temperature of said sensor substrate, and wherein the processing circuit is configured for temperature correcting the sensor signals based on these temperature signals” describes method steps of using the claimed apparatus. The phrases “measuring a temperature of said sensor substrate” and “temperature correcting the sensor” described method steps of using, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
With respect to claim 6, the claim limitation “wherein the second and third semiconductor substrate comprise a compound semiconductor material selected from the III-V-group” is not clearly understood because the claims do not previously describe “the III-V-group”. Therefore, the metes and bounds of the claim cannot be determined and the claim is indefinite.
Claim 7 recites the limitation "the sensor device" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
With respect to claim 13, the claim limitation “wherein the first, second and third magnetic sensor are configured for measuring a first, second and third magnetic field component radially oriented with respect to the shaft” describes method steps of using the claimed apparatus. The phrase “measuring a first, second and third magnetic field component” describes a method step of using, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
With respect to claim 15, the claim limitation “wherein the sensor device further comprises a fourth magnetic sensor; and the first, second, third and fourth magnetic sensor are configured for measuring a first, second, third and fourth magnetic field component radially oriented with respect to the shaft” describes method steps of using the claimed apparatus. The phrase “measuring a first, second, third and fourth magnetic field component” describes a method step of using, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
With respect to claim 17, the claim limitation of “wherein the sensor device further comprises a fourth magnetic sensor; and the first, second, third and fourth sensor are configured for measuring first, second, third and fourth magnetic field component radially oriented with respect to the shaft” describes method steps of using the claimed apparatus. The phrase “measuring first, second, third and fourth magnetic field component” describes a method step of using, and a claim that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011) (MPEP 2173.05p).
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.
Claim(s) 1-8, 11-14, and 19, is/are rejected under 35 U.S.C. 103 as being unpatentable over Panine U.S. Patent Application Publication 2020/0225103 in view of Binder U.S. Patent Application Publication 2018/0196080 and further in view of Barraco et al. U.S. Patent Application Publication 2013/125669.
With respect to claims 1-8, 11, 12, and 19, Panine teaches a magnetoelastic torque sensor system (abstract, figure 5), comprising: a shaft comprising a first axial section magnetized in a first circumferential direction, and a second axial section magnetized in a second circumferential direction, opposite the first circumferential direction (shaft 12 having opposed magnetized regions 44 and 46, figure 5); a magnetic sensor device arranged in the vicinity of the shaft (controller 72, sensing coils 16 and 42), and comprising three semiconductor substrates, including a first semiconductor substrate comprising at least a processing circuit (controller 72), a second semiconductor substrate comprising a first magnetic sensor (sensing coil 16), and a third semiconductor substrate comprising a second magnetic sensor (sensing coil 42), each magnetic sensor being configured for measuring a magnetic field component of a magnetic field generated by said shaft when a torque is exerted on the shaft (paragraph 28-30 and 38-40); and wherein the processing circuit is configured for determining a total between the measured field components, and for outputting a signal indicative of a torque exerted upon said shaft, based on said total magnetic field measurement (torque determined from sum of magnetic field, paragraphs 38-40). Panine further teaches wherein the magnetic sensor device is configured for measuring or estimating a first temperature of the first sensor, and a second temperature of the second sensor (sensors 24 positioned on the controller substrate that sense temperature of the sensing coils 24, paragraph 31, figure 5), and for temperature-compensating the signals obtained from the first and second sensor prior to determining said difference (paragraph 45, figure 6).
Panine fails to teach wherein the first, second and third semiconductor substrates are incorporated in a single packaged device having a plurality of terminals electrically connected to the first substrate, and wherein the processing circuit is configured for determining a pairwise difference between the measured field components, and for outputting a signal indicative of a torque exerted upon said shaft, based on said pairwise difference, wherein the first semiconductor substrate mainly comprises silicon; and wherein the second and third semiconductor substrate) mainly comprise silicon, and/or are discrete silicon substrates, wherein the second and third semiconductor substrate comprise a compound semiconductor material selected from the III-V-group, wherein the sensor device is a wafer-level packaged device; wherein the first semiconductor substrate is situated between the second and the third semiconductor substrate; and wherein the first semiconductor substrate is electrically connected to the second semiconductor substrate and to the third semiconductor substrate by means of at least one redistribution layer, wherein the magnetic sensor device further comprises a lead frame; wherein the first substrate is situated between the second and the third semiconductor substrate on a single side of the lead frame; and wherein the first semiconductor substrate is electrically connected to the second semiconductor substrate and to the third semiconductor substrate by means of bond wires, and wherein the first magnetic sensor and the second magnetic sensor each comprise one or more of a horizontal hall element, a vertical hall element, a magneto-resistive element, and/or a GMI element.
Binder teaches a sensor system 600 that includes an magnetized encoder wheel 61 comprised of alternating north pole sections 62 and south pole sections 63, and sensor elements 10 of sensor arrangement 4 that are sensitive to magnetic fields influenced by the north pole sections 62 and south pole sections 63 of the wheel 61 and the sensor circuit 8 of the sensor arrangement 4 generates a sensor output that corresponds to the rotational speed of the wheel 61 by detecting the change of the alternating magnetic field (sensor arrangement 4 is interpreted as a single package incorporating the sensor elements 10, paragraph 63, figure 6). Binder also teaches the magnetic field sensor and a sensor circuit are both integrated in the same chip package that may be a plastic encapsulated package, such as leaded package or leadless package, or a surface mounted device (paragraph 32), and the sensor device may be integrated on a single semiconductor die (e.g., silicon die or chip) or have a plurality of dies for implementing the sensor device, and the sensor might be on one die and the sensor circuit on another die such that they are electrically connected to each other within the package (interpreted as substrates being connecting through wiring through a layer, paragraph 35). Further, Binder teaches where the magnetic field sensor elements include, but is not limited to, Hall plates, vertical Hall effect devices, or magneto-resistive sensors, often referred to as XMR sensors which is a collective term for anisotropic magneto-resistive (AMR), giant magneto-resistive (GMR), tunneling magneto-resistive (TMR)(paragraph 36).
Barraco teaches a torque sensing device for measuring the torque applied to a rotatable shaft where the difference in the signals from magnetic field sensors 152, 154 is determined in order to measure the shaft torque (paragraph 47-48 and 56-59, figure 5).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention of Panine with the single package sensor arrangement where the sensors may be hall or magnetoresistive element having connections therein of Binder and being made from the claimed materials as well as measuring the difference between the temperature corrected magnetic sensor signals as taught by Barraco in order to provide a sensing device that is more compact and to improve the effectiveness of the torque sensing device (Barraco paragraph 90).
With respect to claims 13, Panine teaches wherein the first, second and third magnetic sensor are configured for measuring a first, second and third magnetic field component radially oriented with respect to the shaft (figure 5); and the first magnetic sensor is situated at an axial position near an outer edge of the first axial section, and the second magnetic sensor is situated at an axial position near an outer edge of the second axial section; and the third magnetic sensor is located at an axial position between the first sensor and the second sensor and/or between the first and the second axial zone (figure 5).
With respect to claim 14, Panine teaches wherein the magnetic sensor device is oriented relative to the shaft such that the first substrate is located in a virtual plane tangential to a virtual cylindrical surface about the shaft (figure 5), or such that a normal to the sensor substrates is oriented substantially radially with respect to the shaft (figure 5), or such that the sensor substrates are located in a virtual plane containing the shaft (figure 5), or such that a normal to the sensor substrates is oriented in a circumferential direction of the shaft (figure 5); and/or wherein the torque is determined as a linear combination of the measured magnetic field components (figure 6), or wherein the torque is determined as a weighted sum of pairwise differences of the measured magnetic field components, or wherein the torque is determined in accordance with the following formula: T=K*((Br1−Br3)−(Br3−Br2)), where Br1, Br2, Br3 are the first, second and third magnetic field component radially oriented with respect to the shaft, and K is a predefined constant.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panine U.S. Patent Application Publication 2020/0225103 in view of Binder U.S. Patent Application Publication 2018/0196080 further in view of Barraco et al. U.S. Patent Application Publication 2013/125669 and further in view of GieBibl U.S. Patent Application Publication 2017/0176273.
With respect to claims 9 and 10, Panine as modified by Binder and Barraco teach the magnetic field sensor and a sensor circuit are both integrated in the same chip package that may be a plastic encapsulated package, such as leaded package or leadless package, or a surface mounted device (Binder, paragraph 32), and the sensor device may be integrated on a single semiconductor die (e.g., silicon die or chip) or have a plurality of dies for implementing the sensor device, and the sensor might be on one die and the sensor circuit on another die such that they are electrically connected to each other within the package (interpreted as substrates being connecting through wiring through a layer, Binder, paragraph 35).
But Panine as modified by Binder and Barraco fails to teach wherein the first semiconductor substrate is situated between the second and the third semiconductor substrate on a single side of the lead frame or and wherein the second semiconductor substrate and the third semiconductor substrate are arranged on top of or underneath the first semiconductor substrate.
GieBibl teaches a ferromagnetic component 32 with a magnetized region 33. The magnetized region 33 comprises three magnetic tracks 34, 35, 36. The neighboring magnetic tracks 34, 35, 36 each have an opposite circumferential magnetization 39, 40. The magnetic track 34 and the magnetic track 36 have a circumferential magnetization 40. The common magnetic track 35 has a magnetization 39 opposite to 40. A first magnetic field sensor 41 is assigned to the magnetic tracks 34, 35. The first magnetic field sensor 41 comprises the coils 42, 43 and optionally the coils 44, 45 when a movement of the ferromagnetic component 32 in the radial direction should be able to be detected, and coils 47, 48 positioned as a different perpendicular distance from the component 32 (paragraphs 130-136, figure 1).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention of Panine as modified by Binder and Barraco with the sensors that are at different distances from the component being measured as taught by GieBibl in order to improve rotation-dependent errors (paragraph 135, GieBibl).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panine U.S. Patent Application Publication 2020/0225103 in view of Binder U.S. Patent Application Publication 2018/0196080 further in view of Barraco et al. U.S. Patent Application Publication 2013/125669 and further in view of Raths Ponce et al. U.S. Patent Application Publication 2018/0231425.
With respect to claim 20, Panine as modified by Binder and Barraco teach the claimed invention except wherein the sensor system is part of an e-bike.
Raths Ponce teaches a magnetoelastic torque sensor and a method for determining a torque, which is applied to a shaft, with a magnetoelastic torque sensor (abstract) that may be part of an e-bike (paragraph 40).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention of Panine as modified by Binder and Barraco with the magnetoelastic torque sensor as part of an e-bike as taught by Raths Ponce in order to provide a more accurate sensing device for an e-bike.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDDIE KIRKLAND III whose telephone number is (571)272-2232. The examiner can normally be reached 9am-5pm.
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FREDDIE KIRKLAND III
Primary Examiner
Art Unit 2855
/Freddie Kirkland III/Primary Examiner, Art Unit 2855 9/28/2026
