`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
`
`
`CONF {MATION NO.
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`13/254,298
`
`09/0 1/201 1
`
`Akira Matsuura
`
`MAT—10484US
`
`8037
`
`EXAMINER
`RATNERPRESTIA —
`“”000” —
`7590
`52473
`PO. BOX 980
`SHAH, SAMIRM
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
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`ART UNIT
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`2856
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`
`
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`NOT *ICATION DATE
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`DELIVERY MODE
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`05/30/2014
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/254,298 MATSUURA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`SAMIR M. SHAH its“ 2856
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 02/18/2014.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 12 7and 9-12 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)I:I Claim(s)
`is/are allowed.
`
`7)|Z| Claim(s) 1 2 7and9- 12 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’\WIIW.usnto. ovI’ atentS/init events/
`
`
`
`h/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 12/27/2013.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20140512
`
`

`

`DETAILED ACTION
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`1.
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
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`Information Disclosure Statement
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`2.
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`The information disclosure statement (IDS) submitted on 12/27/2013 is being
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`considered by the examiner.
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`3.
`
`Claims 2, 9 and 10 are objected to because of the following informalities:
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`Claim Objections
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`(a)
`
`As to claim 2, line 4, delete "processor" and replace it with --processor,--.
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`(b)
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`As to claim 2, last line, delete "wherein first" and replace it with --wherein the
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`(c)
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`As to claim 9, last line, delete "of polimide" and replace it with --of a polyimide
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`(d)
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`As to claim 10, line 2, delete "having" and replace it with --has--.
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`4.
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`Appropriate correction is required.
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`Response to Arguments
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`5.
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`Applicant’s arguments with respect to claims 1, 2 and 7 have been considered
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`but are moot in view of the new ground(s) of rejection.
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`

`

`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`7.
`
`The factual inquiries set forth in Graham v. John Deere 00., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`8.
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`This application currently names joint inventors. In considering patentability of the
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`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
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`of the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for the examiner to
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`

`

`consider the applicability of pre-AlA 35 U.S.C. 103(c) and potential pre-AlA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AlA 35 U.S.C. 103(a).
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`9.
`
`Claims 1, 2, 7 and 9-12 are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Osamu (English Translation of Japanese Patent Application
`
`Publication JP 07-333077 hereinafter referred to as “Osamu”) in view of Dell’Orto et al.
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`(US Patent 4,793,189 hereinafter referred to as “Dell’Orto”), and further in view of Orita
`
`et al. (US Patent 5,880,351 hereinafter referred to as “Orita”) and Lin (US Patent
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`Application Publication 2007/0098207 A1 hereinafter referred to as “Lin”).
`
`(a)
`
`As to claim 1, Osamu discloses a physical quantity sensor comprising:
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`a deformable body (13) in which strain occurs (in (E) and (F) directions) in
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`response to a stress applied thereto (figures 10, 11 ; paragraphs 0044-0046);
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`a vibrator/lower electrode (3) and upper electrode (4) (with vibration portion (4b))
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`mounted to the deformable body (13) , the vibrator (3, 4) vibrating with a frequency
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`according to the strain or with an amplitude according to the strain (figure 11 ;
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`paragraphs 0044, 0045); and
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`a processor (7) bonded to the deformable body (13), the processor (7)
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`processing a signal output from the vibrator (3, 4) (figure 11 ; paragraphs 0042, 0044,
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`0045).
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`Osamu does not expressly disclose the vibrator being mounted to the deformable
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`body via a first adhesive made and the processor being bonded to the deformable body
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`

`

`via a second adhesive such that the first adhesive has a larger shear modulus than the
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`second adhesive.
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`Dell’Orto teaches a physical quantity sensor for sensing stresses and strains on
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`a deformable body/“mechanical member” (1 0), wherein a vibrator (S) is mounted to the
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`deformable body (1 O) with a first adhesive/“layer B of a glue or cement”, and further,
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`wherein a processor/circuit (11) is bonded to the deformable body (1 0) via an insulating
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`plate (12) glued on the deformable body (1 0) via a second adhesive/“by means of a soft
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`glue adapted for damping vibrations” (figures 2, 8; column 2, lines 31-46) (note: it is
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`clear that “cement” would have a larger shear modulus than a “soft glue adapted for
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`damping vibrations").
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`It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to modify Osamu’s sensor, so as to include the vibrator being
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`mounted to the deformable body via a first adhesive and the the processor being
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`bonded to the deformable body via a second adhesive such that the first adhesive has a
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`larger shear modulus than the second adhesive, as taught by Dell’Orto, because the
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`first adhesive (with a larger shear modulus) would enable the strain from the deformable
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`member to be more efficiently transferred to the vibrator, whereas the second adhesive
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`(adapted for damping vibrations) would prevent/reduce erroneous measurements
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`resulting due to undesired vibrations or strain being transferred to the processor, as
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`suggested by Dell’Orto (column 2, lines 15-17, 38-42, 47-60; column 3, lines 1-3, 15-
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`20).
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`Osamu, in combination with Dell’Orto, teaches the claimed invention except for
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`the first adhesive being made of a metal-based joining material or epoxy resin.
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`

`

`Orita teaches a vibration sensor wherein a vibration sensor/"glass breakage
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`sensor" (20) is mounted to a deformable body/“[breakable] window pane” via an
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`adhesive made of epoxy resin (figures 2, 3; column 13, lines 9-17).
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`It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to modify Osamu's sensor, as combined with Dell'Orto, so as to
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`further include using epoxy resin as the first adhesive to mount the vibrator to the
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`deformable body, as taught by Orita, because the epoxy resin would "enable vibration
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`occuring in the [deformable body] to be efficiently transmitted to the vibration sensing
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`element", as suggested by Orita (column 13, lines 13-17).
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`Osamu, in combination with Dell’Orto and Orita, teaches the claimed invention
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`except for the second adhesive being made of silicone resin.
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`Lin teaches using a soft glue adapted for damping vibrations, wherein the soft
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`glue can be made of silicone resin (paragraph 0022).
`
`It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to modify Osamu’s sensor, as combined with Dell’Orto and Orita,
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`so as to further include using silicone resin as the second adhesive for bonding the
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`processor to the deformable body, as taught by Lin, because Dell’Orto teaches the
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`advantage(s) of using a soft glue adapted for damping vibrations, and Lin teaches using
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`silicone resin as a soft glue, which can efficiently dampen vibrations (paragraph 0022).
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`(b)
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`As to claim 2, Osamu discloses a package/container (8) mounted to the
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`deformable body (13), the package (8) accommodating the vibrator (3, 4) and the
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`processor (7) (figures 10, 11; paragraphs 0042-0045).
`
`

`

`However, Osamu does not expressly disclose the package being mounted to the
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`deformable body via a third adhesive made of silicone resin, wherein the first adhesive
`
`has a larger shear modulus than the third adhesive.
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`Dell’Orto, as applied to claim 1 above, teaches the physical quantity sensor for
`
`sensing stresses and strains on the member (1 0), wherein the processor/circuit (11) is
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`bonded to the deformable body (1 0) via an insulating plate (12) glued on the deformable
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`body (10) “by means of a soft glue adapted for damping vibrations” such that the strain
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`does not substantially transmit to the processor (11) (figures 2, 8; column 2, lines 31-
`
`46).
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`Lin, as applied to claim 1 above, teaches uses silicone resin as a soft glue
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`adapted for damping vibrations (paragraph 0022).
`
`It would have been obvious to one of ordinary skill in the art at the time the
`
`invention was made to modify Osamu’s sensor, so as to use silicone resin as the third
`
`adhesive/“soft glue”, as taught by Dell’Orto and Lin, to mount Osamu’s package to the
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`deformable body so that the strain does not substantially transmit to the package,
`
`because this would also prevent/reduce erroneous measurements due to unwanted
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`strain being transferred to the processor, which is accomodated by the package.
`
`(c)
`
`As to claim 7, Osamu in combination with Dell’Orto, Orita and Lin, as applied to
`
`claim 1 above, discloses a flexible substrate (12) having the processor (11) mounted
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`thereon, wherein the second adhesive/“soft glue” fixes the flexible substrate (12) to the
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`deformable body (10) (Dell’Orto: figure 8; column 2, lines 38-46).
`
`

`

`(d)
`
`As to claim 9, Osamu in combination with Dell’Orto, Orita and Lin, as applied to
`
`claim 1 above, teaches the claimed invention except for the flexible substrate being
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`made of polyimide film.
`
`It would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to utilize polyimide film for the flexible substrate of Osamu's
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`apparatus, as combined with Dell’Orto, Orita and Lin, because utilizing such a material
`
`would be a mere design choice.
`
`Furthermore, it has been held by the courts that it is not an invention to utilize
`
`routine experimentation to determine a preferred material for an item. Please see In re
`
`Allen, 105 USPQ 233 (CCPA 1955), In re Boesch, 617 F.2d 272, 205 USPQ 215
`
`(CCPA 1980), and In re Leshin, 125 USPQ 416 (CCPA 1960).
`
`(e)
`
`As to claim 10, Osamu teaches the vibrator (3, 4) having a beam portion (12) on
`
`which the driving electrode (4) and the detecting electrode (3) are mounted (figure 11;
`
`paragraphs 0044-0046).
`
`(f)
`
`As to claim 11, Osamu’s vibrator (3, 4) occupies a smaller area compared to the
`
`processor (7), as seen in plan view (figures 1, 6, 11), and Dell'Orto's vibrator (S)
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`occupies a smaller area compared to the processor (11), as seen in plan view (figures
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`8, 9).
`
`Therefore, it is clear that the area of the first adhesive, used to mount the vibrator
`
`on the deformable body, would be smaller than an area of the second adhesive, used to
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`bond the processor to the deformable body, as seen in plan view.
`
`

`

`Moreover, it is held that when applicant has presented no argument which
`
`convinces us that the particular shape/configuration of their apparatus is significant or is
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`anything more than one of numerous configurations a person of ordinary skill in the art
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`would find obvious for the purpose of providing a physical quantity sensor with an area
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`of a first adhesive mounting a vibrator to a deformable body and an area of a second
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`adhesive bonding a processor to the deformable body, it would be a design choice. In re
`
`Dai/ey, 149 USPQ 47 (CCPA 1976). See Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459.
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify Osamu’s sensor, as combined with DeII’Orto,
`
`Orita and Lin, in order to include an area of the first adhesive being smaller than an area
`
`of the second adhesive in plan view, because this would be a mere design choice.
`
`(g)
`
`As to claim 12, Osamu, in combination with DeII’Orto, Orita and Lin, teaches the
`
`claimed invention except for the package being made of ceramic or metal.
`
`It would have been obvious to one of ordinary skill in the art at the time the
`
`invention was made to utilize ceramic or metal for the package of Osamu's sensor, in
`
`combination with DeII’Orto, Orita and Lin, because utilizing such a material would be a
`
`mere design choice.
`
`Furthermore, it has been held by the courts that it is not an invention to utilize
`
`routine experimentation to determine a preferred material for an item. Please see In re
`
`Allen, 105 USPQ 233 (CCPA 1955), In re Boesch, 617 F.2d 272, 205 USPQ 215
`
`(CCPA 1980), and In re Leshin, 125 USPQ 416 (CCPA 1960).
`
`

`

`Conclusion
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`10.
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`The prior art made of record and not relied upon, cited in the attached 892 form,
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`is considered pertinent to applicant's disclosure.
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`11.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
`
`12.
`
`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
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`13.
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to SAMIR M. SHAH whose telephone number is (571 )272—
`
`2671. The examiner can normally be reached on Monday-Friday 10:00 am to 6:30 pm.
`
`

`

`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Peter Macchiarolo can be reached on (571) 272-2375. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
`
`14.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/S. M. S./
`
`Samir M. Shah
`
`Examiner, Art Unit 2856
`05/12/2014
`
`/PETER MACCHIAROLO/
`
`Supervisory Patent Examiner, Art Unit 2856
`
`