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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
`
`2858
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/02/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} 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://Awww.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.
`3.4.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230125
`
`Application No.
`Applicant(s)
`46/612,417
`FUJIURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LEE E RODAK
`2858
`Yes
`
`
`
`-- The MAILING DATEof this 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 12/2/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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: 2858
`
`Page 2
`
`DETAILED ACTION
`
`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.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27
`
`December 2022 has been entered.
`
`Response to Amendment
`
`3.
`
`The amendment filed 27 December 2022 has been entered. Claims 1-6 remain
`
`pendingin this application. Claims 1 and 2 have been amended.
`
`Responseto Arguments
`
`4.
`
`Regarding the 35 USC 112b rejection, Applicant's amendment have beenfully
`
`considered and are persuasive. The 35 USC 112b rejections have been withdrawn.
`
`5.
`
`Regarding the 35 USC 112a rejection, Applicant's arguments filed 27 December
`
`2022 have been fully considered but they are not persuasive. The specification does
`
`not appear to describe “the distortion componentis corrected by subtracting, from the
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 3
`
`distortion component, a correction signal obtained by connecting adjacent peaksin the
`
`peaks of the waveform of the distortion component.” The specification does not appear
`
`to refer to any subtraction. Applicant has referenced para [0121-0126] of the pending
`
`specification for support and the Examiner notes that para [0125] sates “correction can
`
`be performed by connecting adjacent peaksin the distortion waveform,” however,
`
`these passage do not contain any description related to “subtracting.” The “correction”
`
`described in these passage is only recited with respect to the connection of the peaks.
`
`Applicant points to Fig. 7D(b) asillustrating a corrected third signal, however, Fig. 7D(b)
`
`is recited asillustrating the “distortion componentin angle signal (after correction).”
`
`Therefore as best understood by the Examiner, Fig. 7D(b) corresponds to the corrected
`
`distortion signal, not the corrected third signal. There is no description of howthe plotin
`
`Fig. 7D(b) is generated. The Applicant appears to argue that the specification provides
`
`support for the claimed subtraction because one of ordinary skill in the art would
`
`understand by looking at Figs. 7D(a) and 7D(b) that correction is performed by
`
`subtracting the value of the dark blackline (obtained from connecting adjacent peaks)
`
`from the light gray light as shownin Fig. 7(a) to arrive at the plot show in Fig. 7D(b).
`
`The Examiner respectfully disagrees. “Correction” can take place in a number of
`
`different ways and does not necessarily refer solely to subtraction.
`
`It is further noted
`
`that the pending claim language refers to subtracting a correction signal from a
`
`distortion component. The distortion component is referred to a waveform thatis part of
`
`the third signal, however, the manner in which the claimed subtraction is performed
`
`between a signal and a component is not described in the specification. Therefore, the
`
`112(a) rejection is maintained and reiterated below.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 4
`
`6.
`
`Based on the explanation provided in Applicant’s remarks and the amendments
`
`to the claims, a newprior art rejection is set forth below.
`
`Claim Rejections - 35 USC § 112
`
`7.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—The specification shall contain a written description of the
`invention, and of the manner and process of making and usingit, in suchfull, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with whichit
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`8.
`
`Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first
`
`paragraph, asfailing to comply with the written description requirement. The claim(s)
`
`contains subject matter which was not described in the specification in such a way asto
`
`reasonably conveyto one skilled in the relevant art that the inventor or a joint inventor,
`
`or for applications subject to pre-AlIA 35 U.S.C. 112, the inventor(s), at the time the
`
`application wasfiled, had possession of the claimed invention.
`
`9.
`
`Regarding the recitation in claim 1 that the detection circuit corrects the distortion
`
`component by subtracting a correction signal, the pending specification does not appear
`
`to describe the subtraction of a signal. The specification describes the correction
`
`method in para [0117-126] however this description does not include any description of
`
`subtracting a signal. For these reasons claim 1 appears to introduce new matter.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 5
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`There is furthermore no disclosure of how the distortion component is identified and/or
`
`separated from third signal such that adjacent peaks could be connected nor does the
`
`disclosure describe how the claimed correction signal is subtracted from only the
`
`distortion component.
`
`Claims 2-6 are also rejected for the reasons above due to dependenceon claim
`
`Claim Rejections - 35 USC § 103
`
`10.
`
`—_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.
`
`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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`English machine translation Watabeet al. JP 2016166741 (Watabe).
`
`Regarding claim 1, Watabe teaches (Fig. 3) a magnetic sensor comprising:
`
`

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`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 6
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`a first magnetism detection element (first detection circuit 10 with MR elements)
`
`that outputs a first detection signal (see Fig. 3 — signal S1);
`
`a second magnetism detection element (second diction circuit 20 with MR
`
`elements) that outputs a second detection signal (see Fig. 3 — signal S2); and
`
`a detection circuit that receives the first detection signal and the second detection
`
`signal (arithmetic unit 30 receiving S1 and S2. Also see Fig. 4), wherein:
`
`the detection circuit includes an operational circuit (see Fig. 4 — arithmetic unit 30
`
`includes units 31, 32, 33),
`
`the operational circuit includes an angle detection circuit (calculation unit 31)
`
`and an automatic correction circuit (correction processing unit 32),
`
`the angle detection circuit (calculation unit 31) is configured to convertthe first
`
`detection signal and the second detection signal into a third signal (see para [0068] —
`
`angle detection value calculator 31 calculates third signal by arc tangent calculation),
`
`the third signal has a period T (inherent to the arc tangent calculation).
`
`the automatic correction circuit (correction processing unit 32)
`
`is configured to correct the third signal by correcting distortion component (see para
`
`[0120, 122] — correction processing unit 32 uses linear interpolation to obtain the
`
`corrected angle detection value based on angel error AEs correction), and
`
`the distortion component is corrected by subtracting, from the distortion compone
`
`nt, a correction signal obtained by connecting adjacent
`
`peaksof the peaks in the waveform of the distortion (see para [0120] — approximation
`
`angle error AEs is obtainedbylinear interposition. The approximation angle error AEs
`
`is subtracted from @s to generated a corrected angle detection value 8t).
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 7
`
`Watabe teaches in Fig. 23 the approximation angle error AEs has is a waveform
`
`having periodic peaks across the period T of the third signal, however Watabe does not
`
`explicitly teach a distortion component having a waveform including peaks appearing at
`
`every (1/16) of the period T of the third signal.
`
`The apparatus taught by Watabe is capable and configured to perform the
`
`correction, irrespective of the number of peaks in the waveform. The method of
`
`correcting distortion as applied by Watabeis notlimited to a certain number of peaks,
`
`and it would be obvious to apply such a correction method to a waveform with any
`
`number of peaks. Therefore it would be obvious to one of ordinary skill in the art before
`
`the effective filing date to modify the utilize the methodof distortion correction as taught
`
`by Watabe to correct a distortion component having a waveform including peaks
`
`appears at every 1/16 of the period T.
`
`Regarding claim 2, Watabe teaches the magnetic sensor according to claim 1,
`
`wherein the angle detection circuit is configured to perform an arctan operation on the
`
`first detection signal and the second detection signal to generate the third signal (see
`
`para [0068] — angle detection value calculator 31 calculates third signal by arc tangent
`
`calculation).
`
`13.
`
`Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`English machine translation Watabeet al. JP 2016166741 (Watabe) in view of Lee
`
`et al. US 2004/0229082 (Lee).
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 8
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`Regarding claim 3, Watabe teaches the magnetic sensor according to claim 1,
`
`wherein the first magnetism detection element and the second magnetism detection
`
`element are magnetic resistancefilms (see Fig. 3 - MR elementsin circuits 10 and 20).
`
`Watabe does notexplicitly teach the films each comprising an NiFealloy.
`
`Lee teaches films comprising an NiFe alloy (see para [0058] — MR element
`
`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
`
`Watabeto include NiFe as taught by Leein order to manufacture the MR structure. Lee
`
`demonstrates that MR structures are known to comprise NiFe and therefore utilizing
`
`such material in magnetic resistance films is not more than predictable use of prior art
`
`elements according to established functions.
`
`Regarding claim 4, Watabe teaches the magnetic sensor according to claim 1,
`
`wherein each ofthe first magnetism detection element and the second magnetism
`
`detection element are MR elements (see Fig. 3 — MR elements in circuits 10 and 20).
`
`Watabe does not explicitly teach wherein the elements includes a substrate,
`
`a magnetic resistancefilm 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),
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 9
`
`a magnetic resistancefilm 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 resistance film (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 Watabe to include a substrate, NiFe alloy, and protective film as
`
`taught by Lee in order to manufacture the MR structures. Lee demonstrates that MR
`
`structures are known to have the claimed features.
`
`Regarding claim 5, Watabe teaches the magnetic sensor according to claim 1,
`
`wherein the first and second magnetism detection elements (see Fig. 3 — MR elements
`
`in circuits 10 and 20) .
`
`Watabe does not teach the magnetic sensor further 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
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 10
`
`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 Watabeto include a silicon substrate, silicon oxide layer, and
`
`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, Watabe teaches the magnetic sensor according to claim 5,
`
`but does not 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 asonly 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.”).
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 11
`
`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 Watabe to be equal or less than 1/1000 as
`
`taught by Lee in order to obtain MR 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.
`
`14.—Any inquiry concerning this communication or earlier communications from the
`
`Conclusion
`
`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
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`

`

`Application/Control Number: 16/612,417
`Art Unit: 2858
`
`Page 12
`
`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
`
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LEE E RODAK/
`Primary Examiner, Art Unit 2858
`
`