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 .
Election/Restrictions
Applicant's election with traverse of Group I and Species B in the reply filed on 12/31/2025 is acknowledged. The traversal is on the ground(s) that processes “are related and can be used together, or more specifically, one sensor corresponds to a more detailed description of another sensor” (emphasis omitted). This is not found persuasive because features specific to elected Species B are not required for non-elected species and vice versa.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 11-14, 40-42, 44-45, and 47-48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/31/2025.
Drawings
Replacement drawings were received on 04/26/2025. These drawings are not acceptable, insofar as fewer than all of the problems listed below would be remedied by the replacement drawings.
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 “concave downwardly” must be shown or the feature(s) canceled from the claim(s).
No new matter should be entered.
The drawings are objected to because:
Drawings are not “grouped together and arranged on the sheet(s) without wasting space” as required by 37 CFR 1.84(h).
Shading does not conform to the standards set forth in 37 CFR 1.84(m), which recites “shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. … Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. ... Solid black shading areas are not permitted, except when used to represent bar graphs or color.” Numerous drawings include solid black shading. See Fig. 11, for example, wherein a lead line for 130 is obfuscated by solid black shading. As a further example, shading in Fig. 5 obfuscates at least some lead lines.
Sheet drawing numbers (“Sheet 1 of 20”, “Sheet 2 of 20”, etc.) do not conform to the standards set forth in 37 CFR 1.84(t), which recites (emphasis added) “The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.” See Fig. 14, for example, wherein reference characters exceed drawing sheet numbers in height, while the word “Sheet” constitutes a superfluous marking.
Fewer than all lines are “durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined” as required by 37 CFR 1.84(l) (emphasis added). For example, see Fig. 4, wherein a faint grid of lines scarcely appears, and boxes are outlined by ill-defined lines.
It is unclear where a lead line for 111 points in Fig. 2. Applicant is reminded of the standards for lead lines set forth in 37 CFR 1.84(q), which recites “Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.”
Some arrows have unclear meaning (if any). See fig. 3, for example. Furthermore, in Fig. 3, it is unclear where arrows for 1101 and 1102 point. In Figs. 5-6, the meaning (if any) of arrows is also unclear. Arrow meaning is also unclear in Fig. 20.
For a graph in Fig. 4, axes are not labeled. Furthermore, in numerous graphs, units are not specified.
Due to ill-defined line quality for lead lines, it is unclear where lead lines for A and B point.
It is unclear where leads lines point for reference character 161.
A capacitance in Fig. 18 appears unlabeled by any reference character.
Fewer than all letters, numbers, and reference characters measure at least 1/8 inch in height as required by 37 CFR 1.84(p)(3). See especially Fig. 24, wherein letters and numerals are so small as to be illegible.
Letters, numerals, and reference characters mingle with the lines, obfuscating legibility. See Fig. 26, for example, wherein a viewer cannot discern which character corresponds to which data point.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "1101" and "151" have both been used to designate “first electrode”. Furthermore, reference characters "1102" and "152" have both been used to designate “second electrode”.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “200” has been used to designate both the structure in Fig. 11 and the different structure in Fig. 12. See also reference characters 210 and 220. The reference character 2501 is likewise used to designate different features of Figs. 12 and 24.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include reference sign(s) indicating the following parts mentioned in the description: “end portion” [0067].
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: S4.
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.
Specification
The disclosure is objected to because of the following informalities:
At [0053], the SPEC recites “one end of the conductive structure 130 is electrically connected to a first electrode 1101, the other end of the conductive structure 130 may extend out of an inner surface of the housing 120, and the other end of the conductive structure 130 is concave downwardly with respect to an outer surface of the housing 120” (emphasis added). It is unclear how many ends exist. A recitation in [0110] is similarly objectionable.
At [0055], the SPEC recites “for ease of understanding, the conductive structure 130, as illustrated in FIG. 3, is replaced with a first electrode 1101.” This is inconsistent with the separate appearance of 130 and 1101 in Fig. 3. This is further inconsistent with 1101 appearing in lieu of 111 (to the extent understood), 112, or 113, rather than in lieu of 130.
At [0067], the SPEC recites “finger 140 of the user”. This is inconsistent with the appearance of 140 in the drawings. See Fig. 3, for example. See also Fig. 10. Moreover, in drawings which appear to illustrate a user’s finger, reference character 140 is absent.
At [0067], the SPEC recites “first electrode 1101 has a first side A, and the first side A is a sidewall having the largest area among the sidewalls of the first electrode 1101.” This is inconsistent with the appearance of the drawings, in which A appears to be tied for largest.
At [0068], the SPEC recites “when the electrodes are covered with purified water, saline, and concentrated saline”. It is unclear how all three of these liquids could possibly cover electrodes at the same time.
At [0074], the SPEC recites “conductive structures 130 are concave downwardly”. This is inconsistent with the flush appearance of Fig. 6.
At [0112], the SPEC recites “capacitance 167 between the device ground corresponding to the sensor and the ground”. This is inconsistent with the appearance of 167 in Fig. 17.
At [0112], the SPEC recites “droplet 168”. This is inconsistent with the appearance of 168 in Fig. 18.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 6 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.
Claim 6 recites “flow communication with the external environment”. The meaning of the limitation “flow communication” is unclear. It is unclear what needs to flow in an apparently solid-state sensor.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rasmussen et al (US 20140126759 A1).
As recited in independent claim 1, Rasmussen et al show a sensor (see Fig. 1 and Fig. 3, for example), comprising: a sensing element (including detector 34) and a conductive structure (see 3, 4, 5, for example), wherein the sensor is applied to a housing 2; and the housing is configured to carry (see Figs. 1 and 3) the sensing element 34 and the conductive structure (3, 4, 5), the sensing element 34 is disposed inside or on an inner sidewall (insofar as the depicted location is fairly construed as inside or on an inner sidewall) of the housing 2, at least a portion of the conductive structure (3, 4, 5) is exposed to an external environment (see arm 9 and area 6 of wearer’s body 7, which are fairly construed as external to housing 2) of the housing 2, and the conductive structure (3, 4, 5) is electrically connected (see electrical connections in Fig. 3, for example) with the sensing element 34.
As recited in claim 6, to the extent understood, Rasmussen et al show that the housing 2 includes an aperture portion (insofar as 4 is located within an aperture, 5 is located within an aperture, etc.) corresponding to the conductive structure (3, 4, 5), the conductive structure (3, 4, 5) is in flow communication (to the extent understood) with the external environment of the housing 2 through the aperture portion (where 4 is located, or where 5 is located, for example), and the conductive structure (3, 4, 5, for example) is in an interference fit with the aperture portion (The product by process limitations in these claims are directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessman, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al, 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process limitations or steps, which must be determined in a “product by process” claim, and not the patentability of the process limitations. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not. Note that the applicant has the burden of proof in such cases, as the above case law makes clear.).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rasmussen et al (US 20140126759 A1) in view of Chen et al (US 20130021289 A1).
Rasmussen et al show a sensor as described above.
Regarding claim 2: Rasmussen et al show that the sensor (see Fig. 1 and Fig. 3, for example) includes a plurality of conductive structures (4 and 5) arranged in an array (insofar as the prior art arrangement is fairly construed as an array),
As recited in claim 2, Rasmussen et al are silent regarding a plurality of sensing elements arranged in an array, and each of the plurality of sensing elements has a corresponding conductive structure in a plurality of conductive structures.
Regarding the limitation “a plurality of sensing elements”: Mere duplication of known parts has no patentable significance unless a new an unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.). In this case, the record is devoid of evidence of unexpected results due to the duplication.
As recited in claim 2, Chen et al discloses a plurality of sensing elements (“Touch sensor circuitry 34 may include one or more integrated circuits or other circuitry for making capacitance measurements and converting capacitance measurements into touch event location information (e.g., X-Y information that locates a touch event at a particular vertical and horizontal location on the surface of display 14)” [0057], emphasis added, wherein the disclosure “one or more” includes a plurality within its scope).
Moreover, the Examiner finds that plural sensing elements each corresponding to a conductive structure in a plurality of conductive structures was predictable before the effective filing date.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to duplicate the known sensing element of Rasmussen et al as suggested by Chen et al. The rationale is as follows: one of ordinary skill in the art would have had reason to try any known number of sensing elements, including more than one sensing element, in the absence of criticality, as suggested by Chen et al (“Touch sensor circuitry 34 may include one or more integrated circuits” [0057], emphasis added).
Regarding the limitation “arranged in an array”: There is no invention in relocating known parts, when the functioning of the apparatus is not changed by the relocation. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Furthermore, Chen et al disclose “Touch sensor circuitry 34 may be coupled to touch sensor array 38 by path 24” [0057].
Moreover, the Examiner finds that an array of touch sensing elements was predictable before the effective filing date.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to arrange plural touch sensing elements of Rasmussen et al in an array connected to an array of touch sensors as suggested by Chen et al. The rationale is as follows: one of ordinary skill in the art would have had reason to minimize the electrical paths mentioned by Chen et al (“Touch sensor circuitry 34 may be coupled to touch sensor array 38 by path 24” [0057]) so as to reduce energy loss by heating of a long conductive path by locating the sensing elements near each capacitive sensor in Chen et al’s array of capacitive sensors, to reduce conductive material costs and environmental impacts, and to succumb to longstanding market pressure toward miniaturization as was known in the art.
As recited in claim 3, Rasmussen et al show that the plurality of conductive structures (4 and 5, for example) are arranged at intervals (see interval between 4 and 5 in Figs. 1 and 3).
As recited in claim 3, Rasmussen et al are silent regarding the plurality of conductive structures corresponding to the plurality of sensing elements.
See teachings, findings, and rationale above.
As recited in claim 4, Rasmussen et al is silent regarding whether a distance between two adjacent conductive structures among the plurality of conductive structures is within a range of 0.05 mm-5 cm.
The law is replete with cases in which when the mere difference between the claimed invention and the prior art is some range, variable or other dimensional limitation within the claims, patentability cannot be found.
It furthermore has been held in such a situation, the Applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Moreover, the instant disclosure does not set forth evidence ascribing unexpected results due to the claimed dimensions. See Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), which held that the dimensional limitations failed to point out a feature which performed and operated any differently from the prior art.
Additionally, the Examiner finds that the recited distance range was predictable before the effective filing date.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to arrive at the recited dimensions in the course of routine experimentation and optimization in the absence of criticality. The rationale is as follows: one of ordinary skill in the art would have had reason to succumb to longstanding market pressure toward miniaturization and high resolution of touch sensing as was notoriously well known in the art.
Allowable Subject Matter
Claims 7 and 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 7 and its dependent claims 9-10, the closest prior art of record is Rasmussen et al (US 20140126759 A1), which does not disclose “the first electrode and the second electrode are disposed inside the housing, the first electrode has a first side, a side of the second electrode is arranged side by side along an extension direction of the first side, and one end portion of the first electrode is spaced apart from one end portion of the second electrode, and the conductive structure is electrically connected with one of the first electrode or the second electrode.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julie Anne Watko whose telephone number is (571)272-7597. The examiner can normally be reached Monday-Tuesday 9AM-5PM, Wednesday 10:30AM-5PM, Thursday-Friday 9AM-5PM, and occasional Saturdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ke Xiao can be reached at 571-272-7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
JULIE ANNE WATKO
Primary Examiner
Art Unit 2627
/Julie Anne Watko/Primary Examiner, Art Unit 2627
02/26/2026