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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: the first flat surface 140, the second flat surface 142 and the PET layer 146 disclosed in the specification [0027] (PG Pub US 2025/0009247 A1).
The reference number 102 is disclosed as the “lumen” in [0035] and the “pair of [connection] wires” in the rest of the disclosure. FIG.4A as disclosed in [0035] does not have the reference number102 labeled. The reference number 102 in [0037] should be corrected to 402.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature of “the pair of wires are electrically coupled to the conductive wire on the first flat surface of the magnetically permeable core” recited in claims 2 and 12 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3-4 and 11-17 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 pre-AIA the applicant regards as the invention.
Claims 3, 4, 11 and 15 recite “Metglas” that is a trade name. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the type of material that forms the magnetically permeable core and, accordingly, the identification/description is indefinite.
The dependent claims of the above rejected claims are rejected due to their dependency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 7, 9 and 18-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hayat et al., US 2025/0009247 A1, hereinafter Hayat.
Claim 1. Hayat teaches a magnetic position sensor (100) for tracking a position of a medical device ([0010]: a position sensor adapted to measure signals indicative of at least one of a location and orientation of the sensor relative to one or more magnetic fields), the magnetic position sensor comprising:
a magnetically permeable core ([0073]: a. providing a ferrite core having a tubular shape) including a longitudinal axis (FIG.5: the axis Fx) and a first flat surface extending parallel with the longitudinal axis (FIGS.1&5: any of the 4 grey side surfaces in the surface mounting portion SM is a flat surface extending from one side of the axis FX to the other side of the axis FX); and
a coil including a conductive wire wrapped around the longitudinal axis of the magnetically permeable core in a plurality of windings ([0074]: b. windings conductive wire over the ferrite core to form a helical coil over a circumference of the ferrite core).
Claim 5. As applied to claim 1, in Hayat, FIGS.1&5: any of the 4 grey side surfaces in the surface mounting portion SM is the first flat surface. For any grey side to be the first flat surface, any of the other three sides in FIGS.1&5 is considered the second flat surface that is also extending parallel with the longitudinal axis.
Claims 7 and 9. Hayat further teaches that
the magnetically permeable core extends distal to a distal end of the coil by a core extension distance; and the magnetically permeable core extends proximal to a proximal end of the coil (FIGS.1&5: the core extends between the two the surface mounting portions SM; [0144]: a compact helical SMD coils 10H configured with longitudinal dimension of the core section C extends about 1.2-1.4 mm (and totally about 2 mm together with the surface mounting portion), and lateral dimensions (width/diameter) more preferably in the order of 0.5 mm) – one end of the coil is the proximal end, and the other end of the coil is the distal end. The core extension distance is the length of the core section C.
Claim 18. Hayat teaches in FIG.9A-9C a medical device (1000) ([0154]: the medical instrument 1000), comprising:
an elongate shaft ([0154]: the medical instrument 1000, which may be a compact invasive medical instrument, generally includes a housing H and a magnetic field-based position sensor 100) including
a side wall (FIG.9A: the walls of the housing H); and
a magnetic position sensor (100), including:
a magnetically permeable core ([0073]: a. providing a ferrite core having a tubular shape) including a longitudinal axis (FIG.5: the axis Fx) and a first flat surface extending parallel with the longitudinal axis (FIGS.1&5: any of the 4 grey side surfaces in the surface mounting portion SM is a flat surface extending from one side of the axis FX to the other side of the axis FX); and
a coil including a conductive wire wrapped around the longitudinal axis of the magnetically permeable core in a plurality of windings ([0074]: b. windings conductive wire over the ferrite core to form a helical coil over a circumference of the ferrite core), wherein
the magnetic position sensor is located in the side wall of the elongate shaft (FIG.9A).
Claim 19. Hayat further teaches that
the longitudinal axis and the first flat surface are oriented parallel to the elongate shaft (FIGS.1&5: any of the 4 grey side surfaces in the surface mounting portion SM is the flat surface; FIG.9C: the flat surface that is against the inner wall of the housing H is parallel to the longitudinal axis of the coil and also parallel to the inner wall of the housing H, hence the “elongate shaft” as claimed).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 2-3, 11-14, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hayat et al., US 2025/0009247 A1, hereinafter Hayat, in view of Buesseler et al., US 2019/0223756 A1, hereinafter Buesseler.
Claims 2 and 3. Hayat teaches all the limitations of claim 1.
Hayat does not teach a pair of wires electrically coupled to the conductive wire on the first flat surface of the magnetically permeable core, and one or more layers of Metglas are stacked together to form the magnetically permeable core.
However, in an analogous magnetic position sensor configuration field of endeavor, Buesseler teaches
a pair of wires electrically coupled to the conductive wire ([0096]: coil 74 of position sensor 426 may be formed from a length of conductive wire 76…Leads 76-1 and 76-2 of coil 74 terminate on projections 484-1, 484-2 where leads 76-1, 76-2 are electrically connected with conductive elements 490; FIGS.10-11: a pair of conductive elements 490); and
one or more layers of Metglas are stacked together to form the magnetically permeable core ([0016]: the cores can be made of any material, with materials of higher magnetic permeability being more suitable…Metglas® amorphous alloys is particularly well suited for use).
In regard to the coupling occurred on the first flat surface of the magnetically permeable core, Hayat teaches at least two electric contact couplers SMC located on the first flat surface (FIG.1B, as noted in claim 11, any of the grey side surfaces is the “flat surface” as claimed) for coupling the ends of the conductive winding, and Buesseler teaches that the pair of wires are electrically coupled to the conductive wire ([0096]). Hence, when Hayat and Buesseler are combined, it teaches that the pair of wires are electrically coupled to the conductive wire at the electric contact couplers SMC that is located on the first flat surface.
In regard to the conductive elements being conductive wires, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. Such an alternate configuration is considered merely changes in size and shape, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). MPEP 2144.04.IV.B.
Therefore, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the claimed invention to have the method of Hayat employ such features associated with “a pair of wires electrically coupled to the conductive wire on the first flat surface of the magnetically permeable core, and one or more layers of Metglas are stacked together to form the magnetically permeable core” as taught in Buesseler for the advantage of having a high magnetic permeability core and to properly form a conductive loop in response to the magnetic field sensing, as suggested in Buesseler, [0016] and [0096].
Claim 11. Hayat teaches a method of assembling a magnetic position sensor ([0072]: a method for fabricating a surface mounted coil device), the method comprising:
forming a magnetically permeable core ([0073]: a. providing a ferrite core having a tubular shape),
the magnetically permeable core including a longitudinal axis (FIG.5: the axis Fx) and
a first flat surface extending parallel with the longitudinal axis (FIGS.1&5: any of the grey side surfaces is a flat surface extending from one side of the axis FX to the other side of the axis FX);
winding a conductive wire around the longitudinal axis of the magnetically permeable core to form a coil ([0074]: b. windings conductive wire over the ferrite core to form a helical coil over a circumference of the ferrite core); and
electrically coupling to the conductive wire ([0087]: at least two electric contact couplers SMC conductively coupled near/at respective ends of the conductor of the conductive winding arrangement CW of the Coil Portion C; FIG.1B).
Hayat does not teach forming the core from one or more Metglas layers, and electrically coupling a pair wires to the conductive wire.
However, in an analogous magnetic position sensor configuration field of endeavor, Buesseler teaches
forming the core from one or more Metglas layers ([0016]: the cores can be made of any material, with materials of higher magnetic permeability being more suitable…Metglas® amorphous alloys is particularly well suited for use), and
electrically coupling a pair of wires to the conductive wire ([0096]: coil 74 of position sensor 426 may be formed from a length of conductive wire 76…Leads 76-1 and 76-2 of coil 74 terminate on projections 484-1, 484-2 where leads 76-1, 76-2 are electrically connected with conductive elements 490; FIGS.10-11: a pair of conductive elements 490).
In regard to the conductive elements being conductive wires, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. Such an alternate configuration is considered merely changes in size and shape, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). MPEP 2144.04.IV.B.
Therefore, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the claimed invention to have the method of Hayat employ such features associated with “forming the core from one or more Metglas layers, and electrically coupling a pair wires to the conductive wire” as taught in Buesseler for the advantage of having a high magnetic permeability core and to properly form a conductive loop in response to the magnetic field sensing, as suggested in Buesseler, [0016] and [0096].
Claim 12. As applied to claim 11, Hayat teaches at least two electric contact couplers SMC located on the first flat surface (FIG.1B, as noted in claim 11, any of the grey side surfaces is the “flat surface” as claimed) for coupling the ends of the conductive winding, and Buesseler teaches that the pair of wires are electrically coupled to the conductive wire ([0096]). Hence, when Hayat and Buesseler are combined, it teaches that the pair of wires are electrically coupled to the conductive wire at the electric contact couplers SMC that is located on the first flat surface.
Claim 13. As applied to claim 11, in Hayat, FIGS.1&5: any of the grey side surfaces is the first flat surface. For any grey side to be the first flat surface, any of the other three sides in FIGS.1&5 is considered the second flat surface that is also extending parallel with the longitudinal axis.
Claim 14. Further as applied to claims 11 and 13, in Hayat, FIGS.1&5: any of the grey side surfaces is the first flat surface, and any of the other three grey side surface is the second flat surface - the opposite side of the first flat surface is a second flat surface that is parallel to the second plane.
Claim 17. Hayat, Buesseler and Desch combined teaches all the limitations of claim 11.
Hayat further teaches that
a distal portion of the magnetically permeable core extends distal to a distal end of the coil by a core extension distance (FIGS.1&5: the core extends between the two the surface mounting portions SM; [0144]: a compact helical SMD coils 10H configured with longitudinal dimension of the core section C extends about 1.2-1.4 mm (and totally about 2 mm together with the surface mounting portion), and lateral dimensions (width/diameter) more preferably in the order of 0.5 mm) – one end of the coil is the proximal end, and the other end of the coil is the distal end. The core extension distance is the length of the core section C, wherein
the distal portion includes a flat distal surface parallel to the longitudinal axis of the magnetically permeable core (FIGS.1&5: the surface of the surface mounting portion SM that lay on the CB surface is parallel to the longitudinal axis).
Claim 20. Hayat further teaches that
the first flat surface is oriented to face radially outward relative to the elongate shaft (FIGS.1&5: any of the 4 grey side surfaces in the surface mounting portion SM is the flat surface) – any of these flat surface face has a side that face outward of the sensor, hence also outward relatively to the device and more specifically the elongate shaft or the housing of the device.
Hayat does not teach a pair of wires electrically coupled to the conductive wire on the first flat surface of the magnetically permeable core.
However, in an analogous magnetic position sensor configuration field of endeavor, Buesseler teaches
a pair of wires electrically coupled to the conductive wire ([0096]: coil 74 of position sensor 426 may be formed from a length of conductive wire 76…Leads 76-1 and 76-2 of coil 74 terminate on projections 484-1, 484-2 where leads 76-1, 76-2 are electrically connected with conductive elements 490; FIGS.10-11: a pair of conductive elements 490).
In regard to the coupling occurred on the first flat surface of the magnetically permeable core, Hayat teaches at least two electric contact couplers SMC located on the first flat surface (FIG.1B, as noted in claim 11, any of the grey side surfaces is the “flat surface” as claimed) for coupling the ends of the conductive winding, and Buesseler teaches that the pair of wires are electrically coupled to the conductive wire ([0096]). Hence, when Hayat and Buesseler are combined, it teaches that the pair of wires are electrically coupled to the conductive wire at the electric contact couplers SMC that is located on the first flat surface.
In regard to the conductive elements being conductive wires, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. Such an alternate configuration is considered merely changes in size and shape, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). MPEP 2144.04.IV.B.
Therefore, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the claimed invention to have the method of Hayat employ such features associated with “a pair of wires electrically coupled to the conductive wire on the first flat surface of the magnetically permeable core” as taught in Buesseler for the advantage of properly forming a conductive loop in response to the magnetic field sensing, as suggested in Buesseler, [0096].
Claims 4 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hayat et al., US 2025/0009247 A1, hereinafter Hayat, in view of Buesseler et al., US 2019/0223756 A1, hereinafter Buesseler, further in view of Desch et al., US 5,521,609, hereinafter Desch.
Claims 4 and 15. Hayat and Buesseler combined teaches all the limitations of claim 1.
Neither Hayat nor Buesseler teaches that the magnetically permeable core is formed via stacking a plurality of Metglas ribbons.
However, in an analogous magnetic sensor configuration field of endeavor, Desch teach that
the magnetically permeable core is formed via stacking a plurality of Metglas ribbons (Col.2, ll.31-42: this invention is directed to a lightweight magnetic antenna structure or sensor…the sensor includes a loaded induction coil and is similar to known ferrite-loaded receiving coils…the magnetic flux is now concentrated using a new coil loading material comprising metallic glass, a material manufactured by Metglas Products that is identified by the product called “Metglas Ribbon” and sold under Part No. 2705M).
Therefore, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the claimed invention to have the sensor and the method of Hayat and Buesseler combined employ such a features of “the magnetically permeable core is formed via stacking a plurality of Metglas ribbons” as taught in Desch for the advantage of having a high magnetic permeability core that is made of a commercially available material, as suggested in Desch, Col. 2, ll.41-42.
Claim 16. Hayat, Buesseler and Desch combined teaches all the limitations of claim 15.
Hayat further teaches that
the magnetically permeable core includes a core width and a core height, wherein a ratio of core height to core width is within a range of 1:6 and 1:35 ([0144]: a compact helical SMD coils 10H configured with longitudinal dimension of the core section C extends about 1.2-1.4 mm (and totally about 2 mm together with the surface mounting portion), and lateral dimensions (width/diameter) more preferably in the order of 0.5 mm) – the ratio of 0.5 and about 2 is about 1:4.
In regard to the range of the radio of 1:6 and 1:35, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients, as evidenced by Hayat, [0144]: a person of ordinary skill in the art would readily appreciate various techniques for utilizing the signals obtained from the SMD-coils 10H of the sensor 100 of FIGS. 5A to 5D to determine/assess the orientation of the magnetic field source MFo relative thereto. Such an alternate configuration is considered merely changes in size/proportion, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A.
Claims 6, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Owen in view of Hayat et al., US 2025/0009247 A1, hereinafter Hayat.
Claim 6. Hayat further teaches that
the magnetically permeable core includes a core width and a core height, wherein a ratio of core height to core width is within a range of 1:4 and 1:50 ([0144]: a compact helical SMD coils 10H configured with longitudinal dimension of the core section C extends about 1.2-1.4 mm (and totally about 2 mm together with the surface mounting portion), and lateral dimensions (width/diameter) more preferably in the order of 0.5 mm) – the ratio of 0.5 and 2 is 1:4.
In regard to the range of the radio, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients, as evidenced by Hayat, [0144]: a person of ordinary skill in the art would readily appreciate various techniques for utilizing the signals obtained from the SMD-coils 10H of the sensor 100 of FIGS. 5A to 5D to determine/assess the orientation of the magnetic field source MFo relative thereto. Such an alternate configuration is considered merely changes in size/proportion, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A.
Claim 8. Hayat further teaches that
a ratio of the core extension distance to a coil length of the coil is within a range of 1:2 and 1:10 (FIGS.1&5: the core extends between the two the surface mounting portions SM; [0144]: a compact helical SMD coils 10H configured with longitudinal dimension of the core section C extends about 1.2-1.4 mm (and totally about 2 mm together with the surface mounting portion), and lateral dimensions (width/diameter) more preferably in the order of 0.5 mm).
Considering that the coil length is the total length of the core section and the surface mounting poring, about 2 mm, and the core extension distance is the longitudinal dimension of the core section C, about 1.2-1.4 mm, it results in a ratio of 1:1.67, which is considered within the error range of a ratio of 1:2 as claimed, depending on how the numbers may be rounded up or how many significant digits are considered.
In regard to the range of the radio, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. Such an alternate configuration is considered merely changes in size/proportion, as evidenced by Hayat, [0144]: a person of ordinary skill in the art would readily appreciate various techniques for utilizing the signals obtained from the SMD-coils 10H of the sensor 100 of FIGS. 5A to 5D to determine/assess the orientation of the magnetic field source MFo relative thereto. Such an alternate configuration is considered merely changes in size/proportion, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A.
Claim 10. Hayat further teaches that
the plurality of windings of the coil extend a coil length along the longitudinal axis and the magnetically permeable core extends a core length along the longitudinal axis, wherein the coil length is less than 83% of the core length (FIGS.1&5: the core extends between the two the surface mounting portions SM; [0144]: a compact helical SMD coils 10H configured with longitudinal dimension of the core section C extends about 1.2-1.4 mm (and totally about 2 mm together with the surface mounting portion), and lateral dimensions (width/diameter) more preferably in the order of 0.5 mm).
The core section length 1.2 mm around which the conductive coil is winded is the coil length. The total length including the surface mounting portion of 2 mm is the core length. The coil length 1.2 mm is 67% of the core length 2 mm that is less than 83% as claimed.
In regard to the relative length between the coil and the core, it is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. Such an alternate configuration is considered merely changes in size/proportion, as evidenced by Hayat, [0144]: a person of ordinary skill in the art would readily appreciate various techniques for utilizing the signals obtained from the SMD-coils 10H of the sensor 100 of FIGS. 5A to 5D to determine/assess the orientation of the magnetic field source MFo relative thereto. Such an alternate configuration is considered merely changes in size/proportion, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to arrive such a configuration through routine experimentation with reasonable expectation of success. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). 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), 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. MPEP 2144.04.IV.A.
Conclusion
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/YI-SHAN YANG/ Primary Examiner, Art Unit 3798