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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/660,353
`
`03/17/2015
`
`Shigehiro Yoshiuchi
`
`PIPMB—52210US1
`
`3726
`
`12’0““ —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`SINGER, DAVID L
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2856
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/02/2016
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/660,353 YOSHIUCHI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2856DAVID L. SINGER first“
`
`-- 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 0137 CFR 1.136(a).
`after SIX (6) 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)IXI Responsive to communication(s) filed on 03/17/2015.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)I:| 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
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`3) I] Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date 03/17/2015 10/25/2015.
`4) D Other: —-
`
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20161121
`
`Disposition of Claims*
`5)|XI CIaim(s) L6is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L6 is/are rejected.
`
`is/are objected to.
`
`I )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l CIaim(s
`I
`* 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
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
`
`
`
`
`
`, or send an inquiry to PRl-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)IXI The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 03/17/2015 is/are: a)I:I accepted or b)IXI 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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`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.
`
`Attach ment(s)
`
`
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 2
`
`DETAILED ACTION
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`The present application is being examined under the pre-AlA first to invent provisions.
`
`Priority
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Information Disclosure Statement
`
`The information disclosure statements (IDS) submitted on 03/17/2015 and 10/26/2016 are in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are
`
`being considered by the examiner.
`
`Drawings
`
`The drawings (particularly fig. 8) are objected to as failing to comply with 37 CFR 1.84(o) and
`
`(p)(2), and 37 CFR 1.52(d) for containing excessive text or text that is not in English. See also MPEP
`
`507(0).
`
`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
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`drawings will not be held in abeyance.
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 3
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`Specification
`
`The title of the invention is not descriptive. A new title is required that is clearly indicative of the
`
`invention to which the claims are directed.
`
`The Examiner notes that "inertial force sensors” are commonly known objects in the art and
`
`therefore the title provides insufficient informative value in indexing, classifying, searching, etc.
`
`The Examiner respectfully notes that the claims are directed towards an “angular velocity sensor”
`
`with most limitations pertaining to the electrode layout. The Examiner therefore respectfully suggests that
`
`the title include “angular velocity sensor” and pertain to the electrode layout.
`
`Applicant is reminded of the proper content of an abstract of the disclosure.
`
`A patent abstract is a concise statement of the technical disclosure of the patent and should
`
`include that which is new in the art to which the invention pertains. The abstract should not refer to
`
`purported merits or speculative applications of the invention and should not compare the invention with
`
`the prior art. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and
`
`the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in
`
`an old apparatus, process, product, or composition, the abstract should include the technical disclosure of
`
`the improvement. The abstract should also mention by way of example any preferred modifications or
`
`alternatives. Where applicable, the abstract should include the following: (1) if a machine or apparatus, its
`
`organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity
`
`and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design
`
`details of an apparatus should not be included in the abstract. The abstract should be in narrative form
`
`and generally limited to a single paragraph within the range of 50 to 150 words in length.
`
`See MPEP § 608.01 (b) for guidelines for the preparation of patent abstracts.
`
`The abstract of the disclosure is objected to because the abstract, while directed towards an
`
`inertial force sensor, is absent of description of the electrode layout as is the focus of the claims. The
`
`abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need
`
`for consulting the full patent text for details. Correction is required. See MPEP § 608.01 (b).
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 4
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`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 Objections
`
`Claims 1-6 are objected to because of the following informalities:
`
`As to claim 1, “electrodes electrodes” appears to be a typo of “electrodes”
`
`Dependent claims are likewise objected to.
`
`Appropriate correction is required.
`
`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 pre-AIA 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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 5
`
`Claim(s) 1-3 and 5-6 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by
`
`Ohta (US 20060049497 A1; “Ohta”).
`
`Reference figs. 1 & 2 of Ohta on left, and instant figs. 15 and 1 of application in middle and on
`
`right:
`
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`
`Regarding claim 1, Ohta discloses an angular velocity sensor (fig. 1) ([0016] “FIG. 1A is a
`
`schematic plan view showing an angular velocity sensor according to a first embodiment of the present
`
`invention, and FIG. 1B is a cross sectional view showing the sensor according to the first embodiment”)
`
`comprising: a substrate (100, package) ([0024] “The package 100 is constructed as a multilayer substrate
`
`of ceramic films 110 such as an alumina film.”); a circuit chip (300, circuit chip) having first chip electrodes
`
`(not separately shown; electrodes of 300 positioned corresponding to top row of 500 in fig. 1A) at a first
`
`side (corresponds to top row of 500 in fig. 1A) of the circuit chip (300) and second chip electrodes (not
`
`separately shown; electrodes of 300 positioned corresponding to bottom row of 500 in fig. 1A) at a
`
`second side (corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300), the first side
`
`(corresponds to top row of 500 in fig. 1A) of the circuit chip (300) being opposite to the second side
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 6
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`(corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300) ([0075] “In the above-described
`
`embodiment, the sensor chip 200 and the circuit chip (300) 300 are bonded through the bumps 500 by
`
`flip-chip bonding. Alternatively, the sensor chip 200 and the circuit chip (300) 300 can be bonded with
`
`bonding wires after they are stacked"; The Examiner respectfully notes that such bonding inherently has
`
`electrodes to be so bonded); and a sensor element (200, sensor chip) having first sensor electrodes (top
`
`row of pads 70; electrodes of 200 corresponding to top row of 500 in fig. 1A) at a first side (corresponds
`
`to top row of 500 in fig. 1A) of the sensor element (200), the first sensor electrodes (top row of 70;
`
`electrodes of 200 corresponding to top row of 500 in fig. 1A) being electrically connected to the first chip
`
`electrodes (not separately shown; electrodes of 300 positioned corresponding to top row of 500 in fig. 1A)
`
`at the first side (corresponds to top row of 500 in fig. 1A) of the circuit chip (300) ([0075]), and second
`
`sensor electrodes (bottom row of 70; electrodes of 200 corresponding to bottom row of 500 in fig. 1A) at a
`
`second side (corresponds to bottom row of 500 in fig. 1A) of the sensor element (200), the second sensor
`
`electrodes (bottom row of 70; electrodes of 200 corresponding to bottom row of 500 in fig. 1A) being
`
`electrically connected to the second chip electrodes (not separately shown; electrodes of 300 positioned
`
`corresponding to bottom row of 500 in fig. 1A) at the second side (corresponds to bottom row of 500 in
`
`fig. 1A) of the circuit chip (300) ([0075]), wherein the first side (corresponds to top row of 500 in fig. 1A) of
`
`the sensor element (200) being opposite to the second side (corresponds to bottom row of 500 in fig. 1A)
`
`of the sensor element (200), wherein (the Examiner notes the following limitation is a broad reasonable
`
`interpretation “BRI”, 2) the sensor element (200; see fig. 2) ([0026] “FIG. 2 shows the sensor chip 200.”)
`
`having a center beam part (fig. 2, 20, vibrating member) being parallel to the first side (corresponds to top
`
`row of 500 in fig. 1A) of the sensor element (200; see fig. 2) and the second side (corresponds to bottom
`
`row of 500 in fig. 1A) of the sensor element (200; see fig. 2), the sensor element (200; see fig. 2) having
`
`at least four beam parts (fig. 2, 23, driving beams) connected to the center beam part (fig. 2, 20) ([0027]
`
`“As shown in FIG. 2, beam structures are composed of vibrating member 20, driving beams 23, sensing
`
`beams 40, and electrodes 50,60.”) (End BRI; see pertinent prior art), wherein the circuit chip (300) has
`
`third chip electrodes (pads 310 left row in fig. 1), being electrically connected to first substrate electrodes
`
`(not shown; wiring portion on left side of stage 130 between substrate 110 and lead 420) on the substrate
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 7
`
`(100), at a third side (left side) of the circuit chip (300) ([0038-[0049], particularly [0046]—[0048]: “One end
`
`of each lead 420 is electrically connected to a pad 310”, “The other end of each lead 420 is attached to
`
`wiring portion (not shown)”, “Thus, the circuit chip 300 and the package 100 are mechanically bonded
`
`through the tape 410 and electrically bonded through the leads 420.") and wherein the third chip
`
`electrodes (310 left row in fig. 1) at the third side (left side) of the circuit chip (300) are aligned
`
`perpendicular to the first side (corresponds to top row of 500 in fig. 1A) of the circuit chip (300) and the
`
`second side (corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300).
`
`Regarding claim 2, Ohta discloses the angular velocity sensor (fig. 1) according to claim 1,
`
`wherein the circuit chip (300) has fourth chip electrodes (310 right row in fig. 1), being electrically
`
`connected to second substrate electrodes (not shown; wiring portion on right side of 130 between
`
`substrate 110 and lead 420) on the substrate (100), at a fourth side (right side) of the circuit chip (300),
`
`and the fourth chip electrodes (310 right row in fig. 1) at the fourth side (right side) of the circuit chip
`
`(300) are aligned perpendicular to the first side (corresponds to top row of 500 in fig. 1A) of the circuit
`
`chip (300) and the second side (corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300).
`
`Regarding claim 3, Ohta discloses the angular velocity sensor (fig. 1) according to claim 1,
`
`wherein the first sensor electrodes (top row of 70; electrodes of 200 corresponding to top row of 500 in
`
`fig. 1A) at the first side (corresponds to top row of 500 in fig. 1A) of the sensor element (200) are
`
`electrically connected to the first chip electrodes (not separately shown; electrodes of 300 positioned
`
`corresponding to top row of 500 in fig. 1A) at the first side (corresponds to top row of 500 in fig. 1A) of the
`
`circuit chip (300) via metal bumps (top row of 500, bumps) ([0035] “The pads 70 are connected to bumps
`
`500, which are made of gold (Au), solder or the like”) and the second sensor electrodes (bottom row of
`
`70; electrodes of 200 corresponding to bottom row of 500 in fig. 1A) at the second side (corresponds to
`
`bottom row of 500 in fig. 1A) of the sensor element (200) are electrically connected to the second chip
`
`electrodes (not separately shown; electrodes of 300 positioned corresponding to bottom row of 500 in fig.
`
`1A) at the second side (corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300) via further
`
`metal bumps (bottom row of 500).
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 8
`
`Regarding claim 5, Ohta discloses the angular velocity sensor (fig. 1) according to claim 1,
`
`wherein the third chip electrodes (310 left row in fig. 1) at the third side of the circuit chip (300) are
`
`disposed outside of a region (corresponds to region under 200 in fig. 1) located between the first chip
`
`electrodes (not separately shown; electrodes of 300 positioned corresponding to top row of 500 in fig. 1A)
`
`at the first side (corresponds to top row of 500 in fig. 1A) of the circuit chip (300) and the second chip
`
`electrodes (not separately shown; electrodes of 300 positioned corresponding to bottom row of 500 in fig.
`
`1A) at the second side (corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300).
`
`Regarding claim 6, Ohta discloses the angular velocity sensor (fig. 1) according to claim 2,
`
`wherein the fourth chip electrodes (310 right row in fig. 1) at the fourth side (right side) of the circuit chip
`
`(300) are disposed outside of a region (corresponds to region under 200 in fig. 1) located between the
`
`first chip electrodes (not separately shown; electrodes of 300 positioned corresponding to top row of 500
`
`in fig. 1A) at the first side (corresponds to top row of 500 in fig. 1A) of the circuit chip (300) and the
`
`second chip electrodes (not separately shown; electrodes of 300 positioned corresponding to bottom row
`
`of 500 in fig. 1A) at the second side (corresponds to bottom row of 500 in fig. 1A) of the circuit chip (300).
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis 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, 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.
`
`Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ohta.
`
`The following are cropped images of chip 300 in fig. 1A of Ohta, wherein the second cropped
`
`image has been rotated for visual comparison:
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 9
`
`
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`Regarding Claim 4, Ohta discloses the angular velocity sensor (fig. 1) according to claim 1,
`
`wherein the circuit chip (300) has a rectangular shape.
`
`MPEP 2125(ll) states: “[l]t is well established that patent drawings do not define the precise
`
`proportions of the elements and may not be relied on to show particular sizes if the specification is
`
`completely silent on the issue.”). However, the description of the article pictured can be relied on, in
`
`combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re
`
`Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
`
`Therefore, while Ohta does not disclose that a longer side is longer by 10-20% than a shorter
`
`side, one of ordinary skill would reasonably infer that one side can be longer than another side.
`
`It would have been obvious to one having ordinary skill in the art at the time the invention was
`
`made to change the relative size of the sides of the rectangle such that a longer side is longer by 10-20%
`
`than a shorter side, since it has been held that where the general conditions of a claim are disclosed in
`
`the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,
`
`105 USPQ 233.
`
`Furthermore, in cases like the present, where patentability is said to be based upon particular
`
`chosen dimensions or upon another variable recited within the claims, applicant must show that the
`
`chosen dimensions are critical. As such, the claimed dimensions appear to be an obvious matter of
`
`engineering design choice and thus, while being a difference, does not serve in any way to patentably
`
`distinguish the claimed invention from the applied prior art.
`
`In re Woodruff, 919 F.2d 1575, 1578, 16
`
`USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Kuhle, 526 F2d. 553, 555, 188 USPQ 7, 9 (CCPA 1975).
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 10
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
`
`The Examiner particularly notes the layout of the beams and electrodes in fig. 1 of WO
`
`2009/034682 A1 (corresponds to US 20110203371 A1) as compared to fig. 14 of instant application.
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`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to DAVID L. SINGER whose telephone number is (303)297-4317. The examiner can
`
`normally be reached on Monday - Friday 7:30am - 5:00pm MT, EXCEPT alternating Friday.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Peter Macchiarolo can be reached on 571-272-2375. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 14/660,353
`
`Art Unit: 2856
`
`Page 11
`
`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.
`
`/DAVID L SINGER/
`
`Examiner, Art Unit 2856
`
`/HARSHAD R. PATEL/
`
`Primary Examiner, Art Unit 2855
`
`