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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. US 12007291 B2. Although the claims at issue are not identical, they are not patentably distinct from each other as compared in the table below.
Claim of 19/269434
Claim of US 12007291 B2
17. A pressure sensing method, the method comprising:
exciting a pressure sensing unit into a resonant oscillation using an excitation coil arrangement, wherein the pressure sensing unit comprises:
a cavity comprising a membrane;
a first permanent magnet inside the cavity and coupled to the membrane;
a second permanent magnet inside the cavity, wherein the second permanent magnet is coupled to the cavity, and
the first permanent magnet is rotationally coupled to the membrane,
wherein at least a part of the magnetic moment is oriented perpendicular to the rotation axis, wherein the at least one of the permanent magnets is excited into the resonant oscillation;
measure a magnetic field which is altered by the resonant oscillation; and determine a pressure from the frequency of alteration of the measured magnetic field.
15.A pressure sensing method, comprising:
using an excitation coil arrangement to
a
a first permanent magnet inside the closed cavity and coupled to the at least one membrane;
a second permanent magnet inside the dosed cavity, wherein the second permanent magnet is coupled to the structure by a
wherein
wherein at least a part of magnetic moment
measure a magnetic field which is altered by the resonant oscillation; and determine a pressure from the frequency of alteration of the measured magnetic field.
As identified in the table above, the broader claim 17 of the instant application is anticipated with the narrower claim 15 of US 12007291 B2, while also reciting further limitations, shown as stroked out. Hence, nonstatutory double patenting is applied under anticipation analysis.
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 1-20 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 1 line 11 recites “an elongate structure” there is already reference to this I lie 5. It is not understood if it is referring to same item or not. Examiner interprets as ---a second elongate structure---.
Claim 1 recites in lines 12-13 “wherein the magnetic moment of the first permanent magnet and a magnetic moment of the second magnetic object are aligned in opposite directions”. It is not understood when the alignment is occurring and whether it happens the entire time. As shown in Fig 2, the moments are opposite. However, as per claim atheist one of the magnets rotate. When this happens, the moments alignment with be same. Claim does not clarify this. Examiner interprets that the moments are capable of being aligned.
Claim 1 recites “externally applied magnetic field” in line 14-15. It is not understood whether or not this is part of the system, since the pressure sensing device is claimed to detect pressure changes. Further, it is not understood how pressure sensing will happen if deformation is b external field (optional claim language causes confusion).
Claims 2-16 are rejected based on dependency to claim 1.
Regarding claims 2, 10, 11, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention, since it is only a preference.
Claim 3 recites “a externally applied magnetic field”. It is not understood if it is referring to the same external field recited in claim 1 or not.
Claim 4 recites “wherein an oscillation frequency of the … the second permanent magnets” Parent claim 1 recites an option where the second PM may be fixed. It Is not understood how the second PM will oscillate if it is fixed. That is, this limitation is implemented only when the rotational feature of the second PM is selected. However, claim 1 is in optional form. Hence the claim is indefinite.
Regarding claim 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 6 recites “varying”. It is not understood how the physical features of the permanent magnets can vary. Examiner interprets as the two magnets maybe constructed with different features.
Claim 13 recites “when applying the external magnetic field”. However, the feature in in optional form in claim 1. It is not understood whether or not the application of external field is occurring or not, since the alignment and deformation is related to this field.
Claim 15 recites similar limitation to claim 4 and is rejected for same reasons as above (regarding rotation of second PM). Claim 15 further recites “a magnetic field”. It is not understood if it is referring to the same external field recited in claim 1 or not.
Claim 17 recites “the magnetic moment” in line 8. It Is not clear which of the magnets moment is recited here. Examiner interprets as ---a magnetic moment of the first permanent magnet---
Claims 18-20 rejected in view of dependency to claim 17.
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.
(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 1-2, 5-7, 13 rejected under 35 U.S.C. 102 (a) (1) and 102 (a) (s) as being anticipated by Tsuda [US 5542293 A].
As per claim 1, Tsuda teaches a pressure sensing unit (Tsuda Fig 2), comprising:
a structure defining a cavity (Tsuda Fig 2, space inside pressure detecting unit formed by cap 14, frame 13 and flange 12),
the structure comprises one or more deformable members that deform in response to an external pressure (Tsuda Col 3 lines 23-25 “with the expansion and contraction of the bellows 5 which is responsive to changes in the air pressure”),
the one or more deformable members forming an outer wall portion of the cavity (Tsuda Fig 2Bellow 5 is formed on outer wall 12),
a first permanent magnet rotationally coupled to the cavity by an elongate structure (Tsuda Fig 2, Col 3 lines 33-35 “A cylindrical rotor magnet 3 having an inner diameter larger than that of the shaft 9 is rotatably mounted on the outer periphery of the shaft 9.’),
wherein the elongate structure allows rotational movement of the first permanent magnet with respect to the structure (Tsuda Fig 2, shaft 9 allows rotational movement of magnet 3), and
wherein at least a part of a magnetic moment of the first permanent magnet is oriented perpendicular to a rotation axis of the rotational movement (Tsuda Fig 2, N-pole and S-pole , Col 3 lines 53-59 “N-pole and S-pole with respect to the axis the shaft 9 passes through”) and
a second permanent magnet either fixed or rotationally coupled to the cavity by an elongate structure (Tsuda Fig 2, Col 3 lines 20-23 “a setting magnet 4 of a ring or cylindrical shape is fixedly coupled to the left side of the guide 16,” items 4, 16, comprise magnet and second elongate structure),
wherein the magnetic moment of the first permanent magnet and a magnetic moment of the second magnetic object are aligned in opposite directions (Tsuda Fig 5, Col 4 lines 5-6 “the rotor magnet 3 and the setting magnet 4 are kept attracted to each other as shown in FIG. 5’ implies opposite moments at this position), and
wherein a separation distance between the first permanent magnet and the second permanent magnet changes in response to deformation due to the externally applied pressure (Examiner choses this. Tsuda Figs separation distance changes based on air pressure introduced into the bellows 5) or externally applied magnetic field (This is in optional form and these features are not elected by examiner for examination).
As per claim 2, Tsuda further teaches wherein the elongated structure is either a wire or a thread, wherein the wire or thread (Col 4 lines 61-62 “The shaft 9 is threaded into the guide 16”, meaning the shaft is a thread in relation to the guide) is preferably made of Ultra High Molecular Weight Polyethylene or a similar material (This is only a preference and hence not essential to the claim).
As per claim 5, Tsuda further teaches wherein at least one of the first or the second permanent magnets has a rotationally symmetric shape, such as a spherical or a cylindrical shape (Tsuda Col 3 lines 52-53 “the rotor magnet 3, setting magnet 4 and reversing magnet 8 are permanent magnets in cylindrical shape”).
As per claim 6, In view of 112 rejection above, Tsuda further teaches wherein the first and the second permanent magnets have one or more of the following characteristics with respect to each other: different size / shape/ type / material (Tsuda Col 6 lines 39-40 “The rotor magnet 3 need not be in cylindrical shape but may be in any other shape”).
As per claim 7, Tsuda further teaches wherein the one or more deformable members are made from an elastomer, metal foil, or a patterned sheet (Tsuda Col 7 line 18 “a metallic bellows 5”).
As per claim 10, Tsuda further teaches wherein the second permanent magnet is attached to the cavity in a way that it becomes static (Tsuda Col 3 lines 19-22 “A guide 16 is welded to the left side of the bellows 5 and a setting magnet 4 of a ring or cylindrical shape is fixedly coupled to the left side of the guide 16,”), preferably the second permanent magnet is glued to the cavity (This is only a preference and hence not essential to the claim).
As per claim 13, Tsuda further teaches wherein the first and the second permanent magnets are aligned in a way that when applying the external magnetic field, the first permanent magnet oscillates in substantially perpendicular direction to the axis of the elongated structure (These features are directed to using device when applying external magnetic field. The parent claim is in optional form for this feature and hence these features directed to this optional feature is not required by device and hence not elected by examiner for examination).
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.
Claims 3-4, 8-9, 14 rejected under 35 U.S.C. 103 as being unpatentable over Tsuda.
As per claims 3-4, 8-9, Tsuda does not expressly teach wherein the elongate structure is chosen in such a way that a rotational stiffness of the elongate structure is low in comparison to a torsion created by an externally applied magnetic field; or wherein at least one of the first and the second permanent magnets have a diameter between 0.2mm and 1.0 mm, wherein an oscillation frequency of the at least one of the first and the second permanent magnets created by the externally applied magnetic field is around 500 Hz for a 1.0 mm diameter and around 2500 Hz for a 0.2 mm diameter; or wherein the cavity is of a cylindrical shape; or the pressure sensing unit a length between 1.0 and 5.0 mm; or wherein the pressure sensing unit is configured to operate under externally applied pressure between 800 mBar and 1300 mfBar.
However, these limitations are only directed to choosing or selecting dimensions and working ranges for constructing the device of Tsuda. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. MPEP2144.05 “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In this case, the general condition for the pressure monitor is that it needs to be mounted on a tire. The section of dimensions and materials for such a pressure monitor is not inventive and optimum ranges can be obtained by routine experimentation.
Claims 11, 12, 16 rejected under 35 U.S.C. 103 as being unpatentable over Tsuda in view of O’Keefe [US 6453185 B1].
As per claims 11, 12, 16, Tsuda does not expressly teach wherein the pressure sensing unit is suitable to be used as an implanted sensing unit in a mammal, preferably a patient, wherein the pressure sensing unit is a permanently implanted device and implanted into one or more of: stent, medical coil, catheter, guidewire, pulmonary artery pressure sensor, implanted valve, wherein the pressure sensing unit is integrated into a permanent implant such as a stent or aneurysm coiling, or a temporary implant such as a guidewire or catheter, or it could be delivered independently such as via the blood stream.
O’Keefe teaches wherein the pressure sensing unit is suitable to be used as an implanted sensing unit in a mammal, preferably a patient, wherein the pressure sensing unit is a permanently implanted device and implanted into one or more of: stent, medical coil, catheter, guidewire, pulmonary artery pressure sensor, implanted valve, wherein the pressure sensing unit is integrated into a permanent implant such as a stent or aneurysm coiling, or a temporary implant such as a guidewire or catheter, or it could be delivered independently such as via the blood stream (O’Keefe Col 13 lines 62-65).
Examples of rationales that may support a conclusion of obviousness include: (F) (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. In the instant case, known the claims are directed to using the pressure sensor of Tsuda for medical applications. This is obvious since the work of Tsuda would prompt variations in biomedical applications, since the variations provide predictable result of assuring pressure changes in a pressure chamber.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References cited in PTO 892, and not applied in any rejection above, has been considered as they are related to pressure measurements using magnetic / electromagnetic properties and changes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OOMMEN JACOB whose telephone number is (571)270-5166. The examiner can normally be reached 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNE M KOZAK can be reached at 571-270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Oommen Jacob/Primary Examiner, Art Unit 3797
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