DETAILED ACTION
This office action is in response to the amendments to the claims filed on 04 March 2026. Claims 1 – 19 are pending and currently being examined.
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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “control unit” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 18 is 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.
In Re Claim 18, this claim recites the limitation “the planar internal wall” in Lines 1 – 2. There is insufficient antecedent basis for this limitation in this claim. For the purpose of prior art analysis, the limitation --a planar internal wall-- will be assumed instead.
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, 2, 4, 5, 6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and further in view of Tokita (US Patent 8,461,746 B2).
PNG
media_image1.png
486
662
media_image1.png
Greyscale
Annotated Figure 1 of Webb
In Re Claim 1, Webb discloses a pump (title) configured to pump a fluid between an inlet (portion 40 of 38) and an outlet (52), comprising:- a first annular piezoelectric transducer (28, 28’, 29, 29’) extending around a central axis (vertical centerline of 38) and including a first electrode (35); a first resonator (30) connected to the first piezoelectric transducer (28, 28’, 29, 29’) and extending around the central axis, the first resonator (30) being formed of a first deformable solid material (brass), the first resonator (30) being configured to be deformed when the first piezoelectric transducer (28, 28’, 29, 29’) is polarized (Column 3, Lines 58 – 65); - a control unit (the source that supplies the AC potential) configured to polarise the first electrode (35) at a polarisation voltage modulated with a modulation frequency (of 0.8 kHZ i.e. 800 c.p.s.); wherein: the pump comprises a cavity (between 18 and the unlabeled base structure), extending around a central axis (see shaded region in the above annotated figure), - the first resonator (30) forms a first internal wall of the cavity (top of the shaded region in the above annotated figure), opposite a second internal wall (bottom of the shaded region in the above annotated figure) of the cavity; a cavity thickness extending along the central axis, between the first internal wall and the second internal wall (the thickness is the height of the shaded area in the annotated figure above); - the pump includes a first sleeve (38) connected to the first resonator, the first sleeve (38) opening into the centre of the cavity and forming the inlet (portion 40 of 38) of the pump (Column 2, Lines 69 – 71); the cavity (the shaded region in the above annotated figure) is configured to receive the fluid downstream of the first sleeve (the fluid enters the cavity through the hole 40/42 in 38 – see Column 3, Line 70); - the pump includes at least one channel (52) discharging from the cavity, the channel (52) extending along the first resonator about an axis perpendicular to the central axis (the channel 52 has a horizontal portion that extends to the cavity – see annotated figure above), the channel (52) forming the outlet of the pump (Column 4, Lines 15 – 19); - the first resonator (30) is configured such that under the effect of the polarisation of the first piezoelectric transducer (28, 28’, 29, 29’) a deformation of the resonator (30) occurs, locally and temporarily reducing the thickness of the cavity (Column 3, Line 64 discloses bi-metal type flexing of the plates 28/28’ which would result in reducing the thickness of the cavity because 20 forms a border of the cavity), the deformation of the resonator (30) leading to propulsion of a fluid admitted into the cavity (the fluid is propelled from 38 to 52), from the first sleeve (38) around the central axis, the propulsion inducing a suction effect at the centre of the cavity (shaded area in the annotated figure above) facing the inlet (fluid is drawn in through 38, therefore a suction effect must be created, since the inlet is at the center of the cavity – the suction effect must be at the center of the cavity)(Column 3, Lines 30 – 57 and 69 – 73; Column 4, Lines 3 – 19 and 68 – 72; Figures 1 and 2).
Webb does not disclose that the deformable material of the first resonator becomes thinner towards the central axis.
However, Delevoye discloses a piezoelectric transducer (portion of 2 – 4a, 4b; Figure 1; paragraph [0064]) and a resonator (70) and sleeve (7), wherein the deformable material of the resonator (70) becomes thinner towards the central axis (paragraph [0065]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to modify deformable material of the first resonator of Webb such that it has a thinned central region as taught by Delevoye (i.e. in essence substituting the transducer 20 of Webb with the transducer 2 of Delevoye) for the purpose of creating a mechanical amplification of the vibration at the central region so that fluids high viscosity can be heated and become suitable for propulsion (paragraph [0019] of Delevoye).
Although Webb discloses a modulation frequency, it does not disclose a modulation frequency of greater than 20 kHZ.
However, paragraph [0039] of Ganti discloses a piezoelectric transducer (110) with an operating frequency of at least 20 kHz (ultrasonic range) which is in the claimed range of greater than 20 kHZ. Paragraph [0042] of Ganti discloses that a frequency range of greater than 15 kHz or more, users may not hear any noise, thus establishing the frequency as a result effective variable.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to modify the modulation frequency of Webb / Delevoye such that it is at least 20 kHz has taught by Ganti because 1) it is suitable for the ultrasonic range operation of the transducer of Delevoye and because 2) it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; and because 3) the manner of operation (i.e. selecting an appropriate modulation frequency) does not structurally distinguish over the prior art (MPEP 2114-II) and because 4) operating piezoelectric pumps in the ultrasonic range offers advantages such as quiet operation (paragraph [0042] of Ganti), high precision, long lifespan, and a compact size.
Webb does not explicitly disclose that the first resonator is deformed in a direction parallel to the central axis, and that the deformation of the resonator periodically turns around the central axis to locally and temporarily reduce the thickness of the cavity.
However, Figure 2B of Tokita discloses a cavity (grey area in Figure 2B) between a first internal wall (combination of lower channel wall 2a and 7) and a second internal wall (upper channel wall 2a), a piezoelectric transducer (3; Column 5, Lines 38 – 40) is connected to a first resonator (7) which is part of the first internal wall, the first resonator (7) is deformed (see wave in Figure 2B) in a direction parallel to the central axis (the central axis is a vertical line through the center of the circular channel of 1 in Figure 1), and the deformation of the resonator (7) periodically turns around the central axis to locally and temporarily reduce the thickness of the cavity (the peak of the wave represents the reduced thickness of the cavity) (Column 6, Lines 40 – 54).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to reconfigure the piezoelectric transducer of Webb / Delevoye such that the first resonator is deformed in a direction parallel to the central axis such that the deformation of the resonator periodically turns around the central axis to locally and temporarily reduce the thickness of the cavity as taught by Tokita because the modification is merely a changing the mode of operation of the piezoelectric transducer, and the manner of operation does not make a structural distinction over the prior art – MPEP 2114-II.
In Re Claim 2, the combined references above disclose all the limitations of Claim 1, and Delevoye discloses that the first transducer (portion of 2) includes at least two distinct angular portions (4a, 4b; Figure 2; paragraph [0064]) configured to be deformed differently (paragraph [0064]: “phase opposition”) under the effect of the polarization (excitation by sinusoidal voltage) applied to the first electrode (4) so as to generate deformation of the first resonator (70) (paragraph [0064]; Figures 1 and 2); Tokita discloses that deformation of the first resonator (70) is in the direction parallel to the central axis such that the deformation of the first resonator (70) propagates in a circular direction around the central axis and centrifuges the fluid as shown in Figure 2B.
In Re Claim 4, the combined references above disclose all the limitations of Claim 2, the ceramic material of the piezoelectric transducer (4a, 4b) Delevoye is a piezoelectric material, a ceramic material intrinsically has electrical dipoles when the material is subjected to polarization by an electric field, and since the facing electrode sectors 4a and 4b are energized in phase opposition (paragraph [0064]), it is expected that in the two portions of the ceramic (material of 70) facing electrodes 4a and 4b respectively - the electric dipolar moment is oriented oppositely.
PNG
media_image2.png
434
870
media_image2.png
Greyscale
Annotated excerpt of Figure 1 of Webb
In Re Claim 5, the combined references above disclose all the limitations of Claim 1, and Webb discloses an unlabeled support (see annotated excerpt above), the first resonator (30) faces the unlabeled (see annotated excerpt above) bottom of the cavity, the cavity extending between the first resonator (30), forming the first internal wall, and the bottom, forming the second internal wall.
In Re Claim 6, the combined references above disclose all the limitations of Claim 1, and Webb discloses that the first sleeve (38) is coaxial with the central axis (Figure 1).
In Re Claim 14, the combined references above disclose all the limitations of Claim 1, and Ganti’s range of at least 20 kHz overlaps the claimed range of greater than 100 kHZ. Therefore, it is only a matter of discovering an optimum value of a result effective variable, which involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art - In re Aller, 105 USPQ 233. Note also that the manner of operation (i.e. selecting an appropriate frequency) does not structurally distinguish over the prior art (MPEP 2114-II).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and further in view of Hayashi (PG Pub US 20190019940 A1).
In Re Claim 3, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 2, and Delevoye discloses an embodiment having four annular sectors (n=4) in paragraph [0129], but they do not disclose polarizing two angular sectors of the first electrode by respective voltages phase-shifted by a phase-shift of 90 degrees (2π/n when n=4).
However, Hayashi discloses a piezoelectric transducer (10; Figure 1) suitable for use as a piezoelectric actuator/vibrator (paragraph [0088]) having an electrode (12; Figure 1; paragraph [0025]) segmented to form four angular sectors (A+,A-,B+,B-), the control unit (this is implied because polarization is performed) being configured to polarize two angular sectors (A+,A-) of the first electrode (paragraph [0079]) by respective voltages phase-shifted with the other two angular sectors (B+,B-) by a phase-shift of 90 degrees (2π/n when n=4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to polarize the four angular sectors of Delevoye in the pump of Webb / Delevoye / Ganti / Tokita by respective voltages phase-shifted by 90 degrees as taught by Hayashi because this is only a matter of reconfiguring the control unit of the same device from one method of operation to another known method of operation, so the results of applying another known technique to the same device that is ready for improvement are predictable (MPEP 2141, Section III, Rationale D).
Claim(s) 7, 8 and 10 – 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and further in view of Johnson (US Patent 3,107,630 A).
In Re Claim 7, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 1, but they do not disclose a second annular piezoelectric transducer.
However, Johnson discloses a first annular piezoelectric transducer (167) and a second annular piezoelectric transducer (166) that extends around the central axis and including a second electrode (upper layer connected to 174/175) connected to the control unit (174/175);- a second resonator (lower layer under the upper layer connected to 174/175) is connected to the second piezoelectric transducer (166) and extends around the central axis, the second resonator (lower layer) being formed of a deformable solid (in order to function as disclosed), the second resonator being configured to be deformed when the second piezoelectric transducer is polarized (by AC supply 176);- the second resonator (lower layer of 166) extends facing (“facing” does not imply that there are no other in-between structures) the first deformable solid material (lower layer of 167); - the cavity extends between the first resonator (lower layer of 167) and the second resonator (lower layer of 166).
PNG
media_image3.png
616
1383
media_image3.png
Greyscale
Annotated Figure 1 of Webb and Figure 20 of Johnson
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to incorporate a second annular piezoelectric transducer as taught by Johnson adjacent to the first annular piezoelectric transducer of Webb (in the manner shown in the annotated figures above) because the resulting multi-stage piezoelectric pump offers higher pressure, better energy efficiency under high-pressure loads, and more stable/smoother operation compared to single-stage pumps. The advantage of higher pressure comes from building pressure across multiple stages, while greater efficiency is achieved because each stage can be smaller. This can also lead to a smaller footprint and reduced noise levels.
In Re Claim 8, the combined references above disclose all the limitations of Claim 7, and the added second transducer of Johnson would function the same way as the first transducer of Delevoye (a mere duplication of parts is considered to be routine skill in the art – MPEP 2144.04, Section VI-B), so Delevoye discloses that the second transducer (2) includes at least two distinct angular portions (portions of 70 adjacent to 4a, 4b; Figure 2; paragraph [0064]) configured to be deformed successively by the effect of the polarisation applied to each second electrode (4a, 4b) so as to generate deformation of the second resonator (70), so that the deformation of the second resonator (70) propagates around the central axis.
In Re Claim 10, the combined references above disclose all the limitations of Claim 8, and the ceramic material of the piezoelectric transducer (4a, 4b) of Delevoye is a piezoelectric material, a ceramic material intrinsically has electrical dipoles when the material is subjected to polarization by an electric field, and since the facing electrode sectors 4a and 4b are energized in phase opposition (paragraph [0064]), it is expected that in the two portions of the ceramic (material of 70) facing electrodes 4a and 4b respectively - the electric dipolar moment is oriented oppositely.
PNG
media_image4.png
626
720
media_image4.png
Greyscale
Annotated Figure 13 of Delevoye
In Re Claim 11, the combined references above disclose all the limitations of Claim 10, and Delevoye discloses a first axis of symmetry that is orthogonal to a second axis of symmetry as demonstrated in the annotated figures above. Diametrically opposed electrode sectors (see electrodes 4a and 4b) are operated in phase opposition (paragraph [0064]).
In Re Claim 12, the combined references above disclose all the limitations of Claim 8, and Figure 20 of Johnson discloses a first sleeve (173) connected to the first resonator (lower layer of 167) and a second sleeve (172) connected to the second resonator (lower layer of 166), both sleeves discharging to the center of the cavity as depicted.
In Re Claim 13, the combined references above disclose all the limitations of Claim 8, and Figure 20 of Johnson discloses that the first sleeve (173) and second sleeve (172) are both coaxial with the central axis of the cavity.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and in view of Johnson (US Patent 3,107,630 A) and further in view of Hayashi (PG Pub US 20190019940 A1).
In Re Claim 9, Webb, Delevoye, Ganti, Tokita and Johnson disclose all the limitations of Claim 8, and Delevoye discloses an embodiment having four annular sectors (n=4) in paragraph [0129], but they do not disclose polarizing two angular sectors of the first electrode by respective voltages phase-shifted by a phase-shift of 90 degrees (2π/n when n=4).
However, Hayashi discloses a piezoelectric transducer (10; Figure 1) suitable for use as a piezoelectric actuator/vibrator (paragraph [0088]) having an electrode (12; Figure 1; paragraph [0025]) segmented to form four angular sectors (A+,A-,B+,B-), the control unit (this is implied because polarization is performed) being configured to polarize two angular sectors (A+,A-) of the first electrode (paragraph [0079]) by respective voltages phase-shifted with the other two angular sectors (B+,B-) by a phase-shift of 90 degrees (2π/n when n=4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to polarize the four angular sectors of Delevoye in the pump of Webb / Delevoye / Ganti / Tokita / Johnson by respective voltages phase-shifted by 90 degrees as taught by Hayashi because this is only a matter of reconfiguring the control unit of the same device from one method of operation to another known method of operation, so the results of applying another known technique to the same device that is ready for improvement are predictable (MPEP 2141, Section III, Rationale D).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and further in view of Furuta (US Patent 10,516,091 B2).
In Re Claim 15, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 1, and Webb discloses that the first electrode is segmented to form four angular sectors (Figure 13; paragraph [0129]), but it does not disclose detecting a control signal (by an implied control unit).
However, Furuta discloses (in Column 2, Lines 24 – 40) sending a polarization to each angular sector (“one drive phase electrode” is one sector, “the other drive phase electrode” is another sector) in succession (Column 2, Lines 24 – 30 discloses only one or the other drive phase electrode is energized by voltage, and the propagating wave disclosed in Column 2, Lines 34 – 35 is generated due to a 90 degree phase difference which means the maximum polarization voltage is applied in succession). Whichever of the two drive electrodes is not polarized, the adjacent ceramic portion still may advantageously have residual polarization (Column 17, Lines 46 – 65). Whether or not the ceramic portion has residual polarization can be determined by applying voltage between the electrodes holding that portion and measuring an applied electric field which represents a polarization amount (Column 17, Line 66 – Column 18, Line 3). So the measured electric field reads on the claimed control signal which indicates whether or not the ceramic portion has residual polarization in a state where the corresponding electrode is not polarized by a polarization signal. From the viewpoint of enhancing the generation force during drive of the ultrasonic motor, it is preferred that the entire region held between the polarizing electrodes and the common electrode have residual polarization (Column 17, Lines 53 – 55).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to conduct a residual-polarization-test (which involves detecting a control signal) as taught by Furuta on the electrode sectors not polarized by a polarization signal in Webb / Delevoye / Ganti / Tokita in order to verify that region held between the polarizing electrodes and the common electrode have residual polarization because the residual polarization enhances generation force during drive of the ultrasonic motor.
Claim(s) 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and further in view of Menture (PG Pub US 20230006127 A1).
In Re Claim 16, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 1, but they do not disclose the thickness of the cavity.
However, Menture discloses a cavity (102; Figure 1; paragraph [0020]) having a thickness (“depth”) between 10 to 25 microns (as seen in Figure 1) which is in the claimed range of less than 2 mm.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to design the thickness of the cavity of Webb / Delevoye / Ganti / Tokita to be between 10 to 25 microns as taught by Menture because such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In Re Claim 19, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 1, but they do not disclose the diameter and thickness of the cavity.
However, Menture discloses a cavity (102; Figure 1; paragraph [0020]) having a thickness (“depth”) between 10 to 25 microns (as seen in Figure 1), and the diameter (1000 μm wide or 100 mm long) is at least 10 times the thickness (25 μm depth), note that paragraph [0020] clearly states that the shape of the cavity (102) can be circular.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to design the thickness of the cavity of Webb / Delevoye / Ganti / Tokita to be between 10 to 25 microns as taught by Menture and a diameter of the cavity of Webb / Delevoye / Ganti / Tokita to be 1000 μm or 100 mm as taught by Menture because such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and further in view of Bumby (PG Pub US 20240247651 A1).
In Re Claim 17, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 1, but they do not disclose frequency sweep control.
However, Bumby discloses determining an appropriate starting/operational frequency (the claimed frequency domain polarization signal) by carrying out a frequency sweep control at a finite number of successive discrete frequencies (Figure 4; paragraph [0070]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to determine an appropriate starting/operational frequency (the claimed frequency domain polarization signal) for the pump of Webb / Delevoye / Ganti / Tokita by carrying out a frequency sweep control at a finite number of successive discrete frequencies as taught by Bumby for the purpose of lowering the peak velocity and thus reducing stress on the actuator and increasing its lifespan (paragraph [0007] of Bumby).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Webb (US Patent 3,361,067 A) in view of Delevoye (PG Pub US 20140377091 A1) and in view of Ganti (PG Pub US 20200053905 A1) and in view of Tokita (US Patent 8,461,746 B2) and further in view of Killeen (PG Pub US 20130000759 A1).
In Re Claim 18, Webb, Delevoye, Ganti and Tokita disclose all the limitations of Claim 1, but they do not disclose a hydrophobic part on a planar internal surface of the cavity,
However, Killeen discloses a cavity (442; Figure 4A) having a planar internal surface (portion of the top surface of 430 that is in 442) with a hydrophobic coating (paragraph [0083]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to form a hydrophobic coating as taught by Killeen on a planar internal surface of the cavity of Webb for the purpose of promoting priming.
Response to Arguments
Applicant has argued on Page 13 (near the top) of Applicant’s Response that: “Claim 16 requires that the cavity thickness is less than 2 mm. However, neither Webb nor Delevoye discloses or suggests a sub-millimeter cavity thickness. Such a thickness minimizes the energy imparted to the fluid (see specification at paragraphs [0049] and [0074]). For this reasons, a person of ordinary skill in the art would not modify Webb and/or Delevoye based on the teaching of Menture”.
Examiner’s Response: In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Webb and Delevoye are silent with regards to the thickness of the cavity, which would motivate one skilled in the art to consider Minter for an appropriate thickness of the cavity. Although applicant’s reason (“minimizes the energy imparted to the fluid”) has not been cited in these references, MPEP 2144, Section IV clearly states: The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Applicant has argued on Page 13 (second last paragraph) of Applicant’s Response that: “new Claim 19 requires that the cavity extends, perpendicular to the central axis, to a diameter, wherein the diameter is at least 10 times the thickness of the cavity. The applied art fails to disclose or suggest this feature”.
Examiner’s Response: Figure 1 of Minter clearly discloses that the diameter (1000 μm wide or 100 mm long) is at least 10 times the thickness (25 μm depth), note that paragraph [0020] clearly states that the shape of the cavity (102) can be circular.
Applicant has argued on Page 13 (second last paragraph) of Applicant’s Response that: “This minimizes the energy imparted to the fluid”.
Examiner’s Response: Although applicant’s reason (“minimizes the energy imparted to the fluid”) has not been cited in these references, MPEP 2144, Section IV clearly states: The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
The rest of applicant’s arguments are moot in view of new grounds of rejection presented in this office action.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 6:00 PM.
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, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.G.K/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746