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.
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Claims 1 and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,189,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader in every aspect than the patent claim and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1 and 8 are generic to all that is recited in claim 1 of the patent. That is, claims 1 and 8 are anticipated by claim 1 of the patent.
Claims 2-7 and 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,189,002, hereafter Pat’ 002 in view of Matono et al. (US 2004/0004787), hereafter Matono.
Regarding claims 2-4 and 9-11 U.S. Patent No. 12,189,002 discloses all elements except for limitations of claims 2-4 and 9-11.
Regarding claims 2 and 9, Matono teaches the magnetic sensor, wherein each sloping side of the soft magnetic body is defined at least partially by a sloping line, as viewed in the film thickness direction (see Fig. 2 — sloping lines formed by 13TR, 13TL, 6TR, and 6TL). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add teaching of Matono to Pat’ 002 in order to obtain advantages that Matono have to offer (see Abstract for slope/taper surfaces).
Regarding claims 3 and 10, Matono teaches the magnetic sensor, wherein the sloping side is defined only by a straight line, as viewed in the film thickness direction (see Fig. 2 — sloping lines formed by 13TR, 13TL, 6TR, and 6TL are straight). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add teaching of Matono to Pat’ 002 in order to obtain advantages that Matono have to offer (see Abstract for slope/taper surfaces).
Regarding claims 4 and 11, Matono teaches the magnetic sensor, wherein the sloping side is defined only by a curved line, as viewed in the film thickness direction (see para [0073] and Fig. 9 — tapered surfaces 13TL and 13TR are curved surfaces corresponding to 13KR and 13KL. Tapered surfaces 6TL and 6TR are curved surfaces corresponding to 6KR and 6KL). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add teaching of Matono to Pat’ 002 in order to obtain advantages that Matono have to offer (see Abstract for slope/taper surfaces).
Regarding claims 5 and 12, Pat’ 002 at claim1 teaches the magnetic sensor, but does not explicitly teach wherein the sloping side is defined by a combination of a curved line and a straight line, as viewed in the film thickness direction. Matono teaches in Fig. 9 the use of curved surfaces 13KL, 13KR, 6KR and 6KL and the use of curved surfaces in positions corresponding to the tapered surface 13TL, 13TR, 6TR and 6TL as shown in Fig. 3 (See para [0073). Matono teaches that the local concentration of magnetic flux in the yoke layer can be prevented with curved or straight surfaces (see para [0071-0073]. Matono teaches in para [0073] that the yoke structure can be freely modified as long as the yoke is continuously narrowed width. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tapered surface taught by Matono to include a curved and straight line since it has been held that a mere change in shape is within the level of one of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It is further noted that Matono teaches the use of straight or curved surfaces for the tapered surface render the same results (see para [0073]). Therefore, forming the tapered surface of Matono with both a straight section and curved ends is an obvious modification that one would make to prevent the local accumulation of magnetic flux. Based on the teachings of Matono, it is anticipated the operation of the device would remain unchanged.
Regarding claims 6 and 13, Pat’ 002 at claim 1 teaches the magnetic sensor, but does not teach wherein the sloping side is defined by the straight line and two curved lines that are connected to opposite ends of the straight line, respectively, as viewed in the film thickness direction. Matono teaches in Fig. 9 the use of curved surfaces 13KL, 18KR, 6KR and 6KL and the use of curved surfaces in positions corresponding to the tapered surface 13TL, 13TR, 6TR and 6TL as shown in Fig. 3 (see para [0073). Matono teaches that the local concentration of magnetic flux in the yoke layer can be prevented with curved or straight surfaces (see para [0071-0073]). Matono teaches in para [0073] that the yoke structure can be freely modified as long as the yoke is continuously narrowed width. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tapered surface taught by Matono to include two curved and a straight line since it has been held that a mere change in shape is within the level of one of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It is further noted that Matono teaches the use of straight or curved surfaces for the tapered surface render the same results (See para [0073)). Therefore, forming the tapered surface of Matono with both a straight section and curved ends is an obvious modification that one would make to prevent the local accumulation of magnetic flux. Based on the teachings of Matono, it is anticipated the operation of the device would remain unchanged.
Regarding claims 7 and 14, Pat’ 002 at claim 1 teaches the magnetic sensor, but does not teach wherein a distance between an intersection of an extension of a first one of the adjacent ones of the straight sides and an extension of a second one of the adjacent ones of the straight sides and the sloping side is 1.0×10.sup.−3 (μm) or more and 5.0 (μm) or less, as viewed in the film thickness direction. Matono at Fig. 3 discloses a distance between an intersection of an extension of a first one of the adjacent ones of the straight sides and an extension of a second one of the adjacent ones of the straight sides and the sloping side is 1.0×10.sup.−3 (μm) or more and 5.0 (μm) or less, as viewed in the film thickness direction [see Fig. 3 — chamfering area formed by sloping side is shown as having width L3 and height L4. Per para [0059] — L3 is 2 µm and L4 is 0.17 µm. This makes the distance between the intersection and the sloping side to be between 0.17 and 2 microns and thus in the claimed range. Also, see fig. 3 for chamfering area formed by sloping side is shown as having width L3 and height L4. Per para [0059] — L3 is 2 µm and L4 is 0.17 µm. Thus making the chamfered area (area of triangle = 0.5 x base x height) equal to 0.5 x 2 µm x 0.17 µm = 0.17 µm2. This appears consistent with the pending application in which the chamfering area is the triangular area formed by the extension 30YA, 30XA, and 36 as shown in Fig. 1D.]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add teaching of Matono to Pat’ 002 in order to obtain advantages that Matono have to offer (see Abstract for slope/taper surfaces).
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicants are reminded that MPEP 2141.02 states: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. V. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Conclusion
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/PARESH PATEL/Primary Examiner, Art Unit 2858
June 12, 2026
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