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 .
Claims 21-39 are pending in the instant application. Claims 1-20 are canceled and claims 24-25 and 37-38 are amended.
Terminal Disclaimer
The terminal disclaimers filed on 01/05/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of patent No. 11, 989,362, patent No. 12,204,715, and patent No. 12,307,062 have been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 02/26/2026 have been fully considered but they are not persuasive.
Applicant argues that “ONE CANNOT REPLACE JUNUS'S ELECTRICALLY CONDUCTIVE TRACE WITH A PASSIVE MAGNETIC MATERIAL WITHOUT CHANGING THE PRINCIPLE OPERATION OF THE JUNUS'S ELECTRICALLY CONDUCTIVE TRACE”, remarks pages 9-13. In addition, applicant argues that “the Office Action has failed to establish a prima facie case of obviousness because combining the references in the manner described in the Office Action would change the underlying principle of operation of Junus. Cho's first shielding member that is made of a magnetic material appears to be a passive material. Such a passive material cannot be electrically driven. Thus, if Junus' electrically conductive trace where to be replaced with the magnetic material as described by Cho, the trace could not be electrically drivable as described by Junus”, remarks pages 12-13.
Examiner respectfully disagrees. The office action is not substituting the Junus shielding member with Cho’s shielding member. The office action relied on selecting a magnetic iron material for the shielding material. One of ordinary skill in the art would have recognized that iron material is an electrical conductor that can be driven by an electrical current, making it effective for many electrical and electromagnetic applications. In response to applicant's argument, 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).
Applicant further argues “ONE OF ORDINARY SKILL IS THE ART WOULD BE DISSUADED FROM USING A MAGNETIC MATERIAL TO SHIELD ELECTRIC NOISE BASED ON THE CHO'S DESCRIPTION” and that “one of ordinary skill in the art would not be motivated to use Cho’s magnetic material to shield noise”, remarks pages 13-14.
Examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the office action relied on selecting a magnetic iron material, as disclosed by Cho, for the shielding material of Junus’s shield. As explained above, iron materials are known for being conductive material and thus being able to be driven by current. Moreo over, one of ordinary skill in the art, before the effective filling date of the claim invention would have recognized the obviousness of selecting magnetic iron material from a finite number of conductive materials known in the art that would have yielded the same predictive result of shielding.
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.
The factual inquiries 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 21-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Junus et al. (US 20220011868 A1, hereinafter referenced as Junus) in view of Cho et al. (US 20230004193 A1, here in after referenced as Cho).
Regarding Claim 21, Junus teaches a capacitance module (see Fig. 1, para. [0046], para. [0056]-[0057]. A capacitive touch sensor), comprising:
a touch electrode on a first surface of the capacitance module (see Fig. 1, para. [0045]-[0046], para. [0055]-[0056]. A grid array of drive and sense electrode pairs 105 on the top conductive layer (or on both the top and second conductive layers) of the substrate 102);
an inductance coil deposited on a second surface of the capacitance module (see Fig. 1, first spiral trace 111 arranged in a first layer 110, para. [0031] para. [0039], para. [0060]-[0061], para. [0068]-[0073]); and
a “shield” material positioned between the inductance coil and the first surface (see Fig. 1, shield 107, located between the top layer 104 and the first layer 110, Fig. 5B, para. [0163]-[0167] The substrate 102 can further include a shielding trace fabricated in a conductive layer and configured to shield the touch sensor from electrical noise generated by the multi-layer inductor 150, such as during and after a haptic feedback cycle. The intermediate layer 106 can include a contiguous trace area that defines an electrical shield 107 configured to shield the set of drive and sense electrode pairs 105 of the touch sensor from electrical noise generated by the multi-layer inductor 150 when driven with an oscillating voltage by the controller 190 during a haptic feedback cycle).
Junus does not explicitly disclose the “shield” material is a magnetic iron material.
However, Cho teaches the “shield” material is a magnetic iron material (see para. [0089]. The first shielding member 503 may be made of a soft magnetic material and may be made of a material such as iron (Fe), ferrite, or nano crystal. However, this does not mean that the material forming the first shielding member 503 described above is limited to iron (Fe), ferrite, or nano crystal. The first shielding member 503, as a material capable of shielding a magnetic field, may be modified in various ways within a range that can be easily carried out by a person skilled in the art).
Junus and Cho are related to input devices, thus one of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the obviousness of modifying the capacitance module disclose by Junus with Cho’s teachings of using magnetic iron material for shield, since it would aided in improving the shield by providing a magnetic material having high magnetic permeability to shield a magnetic field (Cho, para. [0089]).
Regarding Claim 22, Junus and Cho teach the capacitance module of claim 21.
Junus further teaches wherein the inductance coil is positioned to interact with a magnet adjacent to the inductance coil (see Fig. 1, a first magnetic element 181, para. [0031], para. [0039]-[0042], para. [0061]-[0062]. The first magnetic element 181 is arranged below the substrate 102 and defines a first polarity facing the multi-layer inductor 150. The controller 190 is configured to: read a set of electrical values from the set of drive and sense electrode pairs 105; detect a first input on the touch sensor surface 172 based on the set of electrical values; and, in response to detecting the first input, drive an oscillating voltage across the multi-layer inductor 150 to induce alternating magnetic coupling between the multi-layer inductor 150 and the first magnetic element 181 and oscillate the substrate 102 and the cover layer 170 relative to the chassis 192).
Regarding Claim 23, Junus and Cho teach the capacitance module of claim 21,
Junus further teaches wherein the inductance coil has a first portion deposited on the second surface (see Fig. 1, first spiral trace 111 arranged in a first layer 110, para. [0031] para. [0039], para. [0060]-[0061], para. [0068]-[0073]) and a second portion deposited on a third surface (see Fig. 1, second spiral trace 122 arranged in a second layer 120, para. [0031], para. [0039], para. [0060]-[0061], para. [0068]-[0073]);
wherein the first portion and the second portion are electrically connected (see Fig. 1, Fig. 5B, multi-layer inductor, para. [0039]-[0045], para. [0060]-[0061]. The system 100 can include a stack of overlapping, interconnected spiral traces fabricated on a set of adjacent layers of the substrate 102 to form a multi-layer, multi-turn, and/or multi-core inductor that exhibits greater inductance—and therefore greater magnetic coupling to the set of magnetic elements—than a single spiral trace on a single conductive layer of the substrate 102. These spiral traces can be coaxially aligned about a common vertical axis (e.g., centered over the set of magnetic elements) and electrically interconnected by a set of vias through the intervening substrate layers of the substrate 102).
Regarding Claim 24, Junus and Cho teach the capacitance module of claim 21.
Junus further teaches wherein the magnet is configured to provide a haptic effect on the capacitance module by moving the inductance coil with a change in a magnetic force (see Fig. 1, a first magnetic element 181, para. [0031], para. [0038]-[0042], para. [0095]-[0097] and para. [0171]-[0172]. The first magnetic element 181 is arranged below the substrate 102 and defines a first polarity facing the multi-layer inductor 150. The controller 190 is configured to: drive an oscillating voltage across the multi-layer inductor 150 to induce alternating magnetic coupling between the multi-layer inductor 150 and the first magnetic element 181 and oscillate the substrate 102 and the cover layer 170 relative to the chassis 192. In response to detecting a new input the controller 190: outputs a command based on a location and/or force magnitude of the input; and selectively drives the multi-layer inductor 150 with an oscillating voltage (or oscillating current), which induces an alternating magnetic field through the multi-layer inductor 150, magnetically couples the multi-layer inductor 150 to the magnetic elements, yields an alternating force between the multi-layer inductor 150 and the magnetic elements, and thus oscillates the substrate 102 and the touch sensor surface 172 relative to the chassis 192 of the device).
Regarding Claim 25, Junus and Cho teach the capacitance module of claim 21.
Junus further teaches wherein the inductance coil and the first coil shield and/or the second coil shield are located near a corner of the second surface (see Fig. 1. First spiral trace 111 arranged in a first layer 110. As depicted in figures 1-2 the first spiral trace is located near a corner of the first layer 110).\
Regarding Claim 26, Junus and Cho teach the capacitance module of claim 21.
Cho further teaches wherein the magnetic iron material is ferrite (see para. [0089]. The first shielding member 503 may be made of a soft magnetic material and may be made of a material such as iron (Fe), ferrite, or nano crystal. However, this does not mean that the material forming the first shielding member 503 described above is limited to iron (Fe), ferrite, or nano crystal. The first shielding member 503, as a material capable of shielding a magnetic field, may be modified in various ways within a range that can be easily carried out by a person skilled in the art).
Junus and Cho are related to input devices, thus one of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the obviousness of modifying the capacitance module disclose by Junus and Cho with Cho’s teachings of using ferrite material for shield, since it would aided in improving the shield by providing a magnetic material having high magnetic permeability to shield a magnetic field (Cho, para. [0089]).
Regarding Claim 28, Junus and Cho teach the capacitance module of claim 21.
Junus further teaches, in another embodiment, wherein the “shield” material is a coating on a substrate that forms the first surface (see Fig. 2, para. 0166], the first layer 110 of the substrate 102—containing the first spiral trace in of the multi-layer inductor 150—can further include a shield electrode trace 112 adjacent and offset from the first spiral trace in; and the controller 190 can drive the shield electrode trace 112 and the first spiral trace 111 to a reference potential in order to shield the second set of sensor traces 146—at the deflection spacer locations—from electrical noise when reading electrical values from these sensor traces 146).
Junus and Cho are related to input devices, thus one of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the obviousness of modifying the capacitance module disclosed by Junus and Cho, with Junus teachings, in another embodiment, of providing the “shield” material as coating on a substrate, since it would been obvious to try from a finite number of shielding options known in the art that would have yield the same predictable result.
Moreover, combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Cho further teaches the “shield” material is a magnetic iron material (see para. [0089]. The first shielding member 503 may be made of a soft magnetic material and may be made of a material such as iron (Fe), ferrite, or nano crystal. However, this does not mean that the material forming the first shielding member 503 described above is limited to iron (Fe), ferrite, or nano crystal. The first shielding member 503, as a material capable of shielding a magnetic field, may be modified in various ways within a range that can be easily carried out by a person skilled in the art).
Junus and Cho are related to input devices, thus one of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the obviousness of modifying the capacitance module disclose by Junus and Cho with Cho’s teachings of using magnetic iron material for shield, since it would aided in improving the shield by providing a magnetic material having high magnetic permeability to shield a magnetic field (Cho, para. [0089]).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Junus et al. (US 20220011868 A1, hereinafter referenced as Junus) in view of Cho et al. (US 20230004193 A1, here in after referenced as Cho), further in view of Lee et al. (US 20130016073 A1, hereinafter Lee).
Regarding Claim 27, Junus and Cho teach the capacitance module of claim 21.
Junus and Cho do not explicitly disclose wherein the magnetic iron material is a composite material.
However, Lee teaches wherein the magnetic iron material is a composite material (see para. [0038]. The magnetic field shielding layer is an alloy thin film composed of silicon (Si) based on iron (Fe). Recently, amorphous metal made by mixing iron (Fe), Silicon (Si), and boron (B), while altering a crystal structure of the mixture, has been used. The amorphous metal is a material that has superior magnetic field shielding performance with high permeability and conductivity with respect to a magnetic field in a band of several hundreds of kHz and a low-frequency band. In particular, the amorphous metal has much higher permeability than other materials in DC (Direct Current)).
Junus, Cho and Lee are related to input devices, thus one of ordinary skill in the art, before the effective filing date of the claimed invention, would have recognized the obviousness of modifying the capacitance module disclose by Junus and Cho with Lee’s teachings of providing a composite material for the shield, since it would have improved the shielding properties by providing an amorphous metal material that has superior magnetic field shielding performance with high permeability and conductivity with respect to a magnetic field in a band of several hundreds of kHz and a low-frequency band (Lee para. [0038]). Moreover, it would have been obvious to try from a finite number of shielding magnetic iron materials known in the art that would have yield the same predictable result of shielding magnetic field.
Allowable Subject Matter
Claims 29-39 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
None of the prior art, made of record, singularly or in combination, discloses or fairly suggests the following:
Claim 29:
a second coil shield deposited on the third surface of the capacitance module;…; wherein the first coil shield and the second coil shield are positioned to reduce electromagnetic interference between the inductance coil and other electronic components of the capacitance module
In combination with all other claim limitations.
Claim 38:
a first coil shield is deposited on the second surface and a second coil shield is deposited on the third surface of the capacitance module, the first coil shield and the second coil shield being positioned to reduce electromagnetic interference between the first inductance coil, the second inductance coil, and other electronic components of the capacitance module
In combination with all other claim limitations.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/IM/Examiner, Art Unit 2626
/TEMESGHEN GHEBRETINSAE/Supervisory Patent Examiner, Art Unit 2626 6/3/26
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