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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/612,417
`
`11/11/2019
`
`HIDEAKI FUJIURA
`
`083710-2836
`
`2170
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`RODAK, LEE E
`
`2868
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/17/2022
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-6 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 11/11/2019 is/are: a)[¥) accepted or b)( 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 11 November 2019 and 07 June 2021.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220311
`
`Application No.
`Applicant(s)
`16/612,417
`FUJIURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LEE E RODAK
`2868
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 11 November 2019.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`Receipt is acknowledgedof certified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 11 November 2019 and
`
`07 June 2021 was considered by the examiner.
`
`Claim Rejections - 35 USC § 112
`
`4.
`
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`5.
`
`Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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-AlA 35 U.S.C. 112, the applicant), regards as the invention.
`
`6.
`
`Regarding claim 1, the phrase “each section in a 1/16n period” renders the
`
`claim indefinite as “each section” lacks adequate antecedent basis and it is unclear
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 3
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`whatthe claimed sections correspond to in terms of the period of the signal.
`
`Itis
`
`unclearif this recitation further divides the 1/16n period into a plurality of sections or if
`
`the sections refer to a plurality of 1/16n period segments. Clarification is required.
`
`7.
`
`Claims 2-6 not specifically addressed are also rejected for the reasons above
`
`due to dependenceon claim 1.
`
`Claim Rejections - 35 USC § 102
`
`8.
`
`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.
`
`9.
`
`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 madein this Office action:
`
`A personshall 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 effectivefiling date of the claimed
`invention.
`
`10.
`
`Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Shonaiet al. US 2006/0136169 (Shonai).
`
`Regarding claim 1, Shonai teaches (Fig. 1)
`
`the magnetic sensor comprising:
`
`a first magnetism detection element (GMR bridge WB1) that outputsa first
`
`detection signal (see Fig. 1 — sine signal output from bridge WB1);
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 4
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`a second magnetism detection element (GMR bridge WB2) that outputs a
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`second detection signal (see Fig. 1 — cosine signal output from bridge WB2); and
`
`a detection circuit (signal processing unit 10) that receives the first detection
`
`signal and the second detection signal (processing unit 10 receives sine and cosine
`
`signals from WB1 and WB2),
`
`wherein the detection circuit (signal processing unit 10) converts the first
`
`detection signal and the second detection signal into a third signal (see para [0078] —
`
`arithmetic operation section 14 performs arctangent of ratio of sine and cosine signals.
`
`This interpretation appears consistent with pending application in which the third signal
`
`corresponds to the arctan per para [0058-0059] indicating circuit 70a is an arctan circuit
`
`and generates the third signal), and corrects the first detection signal for each section in
`
`a (1/16n) period of the third signal, when n is a natural number (see Fig. 1 and para
`
`[0126] — error signals are removed from the from the output angle before compensation
`
`signal. This is considered to be performed over the entire period and therefore includes
`
`sections of the 1/16n period as shownin Figs. 4-14).
`
`Regarding claim 2, Shonai teaches (Fig. 1) the magnetic sensor according to
`
`claim 1, wherein the detection circuit (signal processing unit 10) performs an arctan
`
`operation on the first detection signal and the second detection signal to generate the
`
`third signal (see para [0078] — arithmetic operation section 14 performs arctangent of
`
`ratio of sine and cosine signals).
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 5
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`Claim Rejections - 35 USC § 103
`
`11.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth 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.
`
`12.
`
`Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shonai et al. US 2006/0136169 (Shonai) in view of Lee et al. US 2004/0229082
`
`(Lee).
`
`Regarding claim 3, Shonai teaches (Fig. 1) the magnetic sensor according to
`
`claim 1, wherein the first magnetism detection element and the second magnetism
`
`detection element are magnetic resistancefilms (per para [0065] — elements G1 to G8
`
`are GMR elements and therefore are magnetic resistancefilms).
`
`Shonai does notexplicitly teach the films comprising an NiFealloy.
`
`Lee teachesfilms comprising an NiFe alloy (see para [0058] — GMR includes
`
`NiFe layer).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify the magnetoresistance element taught by
`
`Shonaito include NiFe as taught by Lee in order to manufacture the GMR structure.
`
`Lee demonstrates that GMR structures are known to comprise NiFe and therefore
`
`utilizing such material in magnetic resistancefilms is not more than predictable use of
`
`prior art elements according to established functions.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 6
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`Regarding claim 4, Shonai teaches the magnetic sensor according to claim 1, in
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`which the first magnetism detection element and the second magnetism detection
`
`elements are GMR sensors (see Shonai Fig.
`
`1
`
`- WB1 and WB2 are GMR bridges).
`
`Shonai does not explicitly teach wherein each ofthe first magnetism detection
`
`element and the second magnetism detection element includes
`
`a substrate,
`
`a magnetic resistance film that is provided on the substrate and comprises an
`
`NiFe alloy, and
`
`a protective film that protects the magnetic resistancefilm.
`
`Lee teaches wherein each ofthe first magnetism detection element and the
`
`second magnetism detection element includes
`
`a substrate (see Fig. 3A — substrate 21),
`
`a magnetic resistance film that is provided on the substrate and comprises an
`
`NiFe alloy (see para [0058] — buffer layer 28 is NiFe) , and
`
`a protective film that protects the magnetic resistancefilm (see Fig. 3A — upper
`
`layer 27).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify the first and second magnetism detection
`
`elements taught by Shonaito include a substrate, NiFe alloy, and protective film as
`
`taught by Lee in order to manufacture the GMR structures. Lee demonstrates that
`
`GMR structures are known to have the claimed features.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 7
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`Regarding claim 5, Shonai teaches the magnetic sensor according to claim 1,
`
`with the first and second magnetism detection elements (see Fig.
`
`1 — GMR bridge
`
`circuits WB1 and WB2).
`
`Shonai doesnot explicitly teach the magnetic sensors comprising:
`
`a silicon substrate; and
`
`a silicon oxide layer provided on the silicon substrate, wherein each ofthe first
`
`magnetism detection element and the second magnetism detection element is disposed
`
`on the silicon oxide layer, and
`
`each ofthe first magnetism detection element and the second magnetism
`
`detection element is a magnetic resistancefilm comprising an NiFe alloy, and includes a
`
`protective layer covering the magnetic resistancefilm.
`
`Lee teaches (Fig. 3A) a silicon substrate (substrate 21 is silicon per para [0050));
`
`and a silicon oxide layer provided on the silicon substrate (see para [0050] — Si wafer on
`
`which SiO2 layer is formed), wherein
`
`each ofthe first magnetism detection element and the second magnetism
`
`detection element is disposed on the silicon oxide layer (see Fig. 3A — sensing portion
`
`20’ on SiO2 covered Si substrate), and
`
`the magnetism detection element is a magnetic resistance film comprising an
`
`NiFe alloy (see para [0058] — buffer layer 28 is NiFe), and includes a protective
`
`layer covering the magnetic resistancefilm (see Fig. 3A — upper layer 27).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify the first and second magnetism detection
`
`elements as taught by Shonaito include a silicon substrate, silicon oxide layer, and
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 8
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`NiFe alloy, and protective film as taught by Lee in order to manufacture the GMR
`
`structures. Lee demonstrates that GMR structures are knownto have the claimed
`
`features.
`
`Regarding claim 6, Shonai teaches the magnetic sensor according to claim 5,
`
`but does not explicitly teach wherein a ratio of a thickness to a width, in a section, of the
`
`magnetic resistancefilm is less than or equal to 1/1000.
`
`Lee teaches a ratio of a thickness to a width, in a section, of the magnetic
`
`resistancefilm is less than or equal to 1/1000 ( per para [0059] — the thicknessof the at
`
`least a portion of the layers ranges from several angstrom to several hundred
`
`nanometers. As such, the ratio of a thickness to a width of some section can be found
`
`to be less than or equal to 1/1000.
`
`It is noted that the pending claim language is not
`
`specific as to what the thickness and width correspond as only a ratio “in a section’ is
`
`claimed. As such, the pending claim language does not require the entire magnetic
`
`resistance film to have the thickness to width ratio as claimed, but only “a section.”).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify the ratio of thickness to width of a section
`
`of the magnetic resistance film taught by Shonai to be equal or less than 1/1000 as
`
`taught by Leein order to obtain GMR elements. Lee demonstrate normal thicknesses
`
`of layers used in GMR elements and by employing such thickness, the claimed ratio is
`
`considered to be met within the structure.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 9
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`Conclusion
`
`13.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LEE E RODAK whosetelephone number is (571)270-
`
`5628. The examiner can normally be reached Monday-Friday 7:30AM - 3:30PM EST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Judy Nguyen can be reached on (571) 272-2258. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto. gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LEE E RODAK/
`Primary Examiner, Art Unit 2868
`
`