www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`15/680,604
`
`08/18/2017
`
`HideO OhkOShi
`
`PIPMB-46465US3
`
`7126
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`02/04/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`KW0K~ HELEN C
`
`2856
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/04/2019
`
`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):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/680,604
`Examiner
`Helen C Kwok
`
`Applicant(s)
`Ohkoshi et al.
`Art Unit
`2856
`
`AIA Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
`
`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)C] 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):] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—25 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`[:1 Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[j Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`C] Claim(s)
`9
`* If any claims have been determined aflowabte. 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
`
`httpfiwww.usptogovlpatentslinit_events[pph[index.'§p or send an inquiry to PPeredhagk@usptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 18 August 2017 is/are: a). accepted or b)D 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:
`
`a). All
`
`b)I:l Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] 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
`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 m.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181129
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AlA first to invent provisions.
`
`2.
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Claim Objections
`
`3.
`
`Claims 1-25 are objected to because of the following informalities. Appropriate
`
`correction is required.
`
`In claim 1, line 5, the phrase “the electrode pad” should be changed to -- the electrode
`
`pads -- to provide proper antecedent basis.
`
`In claim 2, line 2, the phrase “the electrode pad” should be changed to -- the electrode
`
`pads -- to provide proper antecedent basis. Also, in line 2, it is suggested the phrase “the
`
`sensing element” should be changed to -- the first member -- to better clarify that these
`
`electrode pads are the ones at the first member.
`
`In claim 5, line 2, it is suggested the phrase “the sensing element” should be changed to
`
`-- the first member -- to better clarify that these electrode pads are the ones at the first member.
`
`In claim 11, line 5, the phrase “the electrode pad” should be changed to -- the electrode
`
`pads -- to provide proper antecedent basis.
`
`In claim 12, line 2, the phrase “the electrode pad” should be changed to -- the electrode
`
`pads -- to provide proper antecedent basis. Also, in line 2, it is suggested the phrase “the
`
`sensing element” should be changed to -- the first member -- to better clarify that these
`
`electrode pads are the ones at the first member.
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 3
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`In claim 15, line 2, it is suggested the phrase “the sensing element” should be changed
`
`to -- the first member -- to better clarify that these electrode pads are the ones at the first
`
`member.
`
`In claim 21, line 5, the phrase “the electrode pad” should be changed to -- the electrode
`
`pads -- to provide proper antecedent basis.
`
`Claim Rejections - 35 USC § 1 12
`
`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-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`5.
`
`Claims 7-8 and 11-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the
`
`invention.
`
`In claim 7, line 2, the phrase “the upper surface” lacks antecedent basis.
`
`In lines 2-3,
`
`the phrase “the upper surface” lacks antecedent basis.
`
`In claim 8, line 2, the phrase “the upper surface” lacks antecedent basis.
`
`In claim 1 1, lines 20-21, the phrase “the partially exposed area” lacks antecedent basis.
`
`In claim 17, line 2, the phrase “the upper surface” lacks antecedent basis.
`
`In lines 2-3,
`
`the phrase “the upper surface” lacks antecedent basis.
`
`In claim 18, line 2, the phrase “the upper surface” lacks antecedent basis.
`
`In claim 21, lines 14-15, the phrase “the partially exposed area” lacks antecedent basis.
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 4
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`Double Patenting
`
`6.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the “right to exclude” granted by a patent and to prevent
`
`possible harassment by multiple assignees. A nonstatutory double patenting rejection is
`
`appropriate where the conflicting claims are not identical, but at least one examined application
`
`claim is not patentably distinct from the reference claim(s) because the examined application
`
`claim is either anticipated by, or would have been obvious over, the reference claim(s). See,
`
`e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d
`
`1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d
`
`438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA
`
`1969)
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d) may be
`
`used to overcome an actual or provisional rejection based on nonstatutory double patenting
`
`provided the reference application or patent either is shown to be commonly owned with the
`
`examined application, or claims an invention made as a result of activities undertaken within the
`
`scope of ajoint research agreement. See MPEP § 717.02 for applications subject to
`
`examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159.
`
`See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the
`
`first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance
`
`with 37 CFR 1.321 (b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be used.
`
`Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the
`
`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AlA/25, or PTO/AlA/26)
`
`should be used. A web-based eTerminal Disclaimer may be filled out completely online using
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`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 5
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`web-screens. An eTerminaI Disclaimer that meets all requirements is auto-processed and
`
`approved immediately upon submission. For more information about eTerminaI Disclaimers,
`
`refer to www.uspto.gov/patents/process/fiIe/efs/guidance/eTD-info-I.jsp.
`
`7.
`
`Claims 1-25 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-21 of U.S. Patent No. 8,646,332 (Ohkoshi et al.) Although the claims
`
`at issue are not identical, they are not patentably distinct from each other because all of the
`
`claimed elements and features in the Instant claims are claimed in the claims and disclosed in
`
`the specification of the ‘332 Ohkoshi et al. patent. Hence, the claims in the Instant application
`
`are not patentably distinct from the claims of the ‘332 Ohkoshi et al. patent.
`
`8.
`
`Claims 1-25 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-26 of U.S. Patent No. 8,826,734 (Ohkoshi et al.). Although the
`
`claims at issue are not identical, they are not patentably distinct from each other because all of
`
`the claimed elements and features in the Instant claims are claimed in the claims and disclosed
`
`in the specification of the ‘734 Ohkoshi et al. patent. Hence, the claims in the Instant application
`
`are not patentably distinct from the claims of the ‘734 Ohkoshi et al. patent.
`
`9.
`
`Claims 1-25 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 11-18,21-22 of copending Application No. 14/459,097 (Ohkoshi et al.)
`
`[NOTE: this application has been issued as U.S. Patent 9,778,279). Although the claims at
`
`issue are not identical, they are not patentably distinct from each other because all of the
`
`claimed elements and features in the Instant claims are claimed in the claims and disclosed in
`
`the specification of the ‘097 Ohkoshi et aI. copending application. Hence, the claims in the
`
`Instant application are not patentably distinct from the claims of the copending application of
`
`‘097 Ohkoshi et al.
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 6
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`10.
`
`It should be noted that a terminal disclaimer has been filed on 8/18/18; however, at the
`
`time of examining the Instant application, the terminal disclaimer filed 8/18/18 has not been
`
`reviewed. Therefore, the nonstatutory double patenting rejection set forth above is made and
`
`maintained until the terminal disclaimer is reviewed.
`
`Claim Rejections - 35 USC § 103
`
`11.
`
`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.
`
`12.
`
`Claims 1-25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`U.S. Patent Application Publication 2006/0000294 (Ohta) in view of U.S. Patent Application
`
`Publication 2008/0034867 (Kazama et a|.).
`
`With regards to claim 1 Ohta discloses an angular rate sensor comprising, as illustrated
`
`in Figures 1-7 (note: Figure 1
`
`is rotated clockwise 90 degrees for reference throughout the
`
`rejection), a sensor 10; an angular velocity sensing element 30 includes a first member (e.g.
`
`considering the entire sensing element 30 as the first member) has a first side (e.g. left-hand
`
`side); electrode pads (e.g. small square elements are considered the electrode pad as observed
`
`in Figure 1) disposed on a surface (e.g. top surface) of the first member such that the electrode
`
`pads aligned at only the first side of the first member; an IC 20 includes a first side (e.g. left-
`
`hand side) positioned at the first side of the first member, a second side (e.g. right-hand side)
`
`opposite to the first side; electrode pads (as observed in Figure 1
`
`- the small square elements
`
`on the left hand side of 1C 20 denote pads) aligned at the first side of the IC; electrode pads (as
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 7
`
`observed in Figure 1
`
`- the small square elements on the right hand side of 1C denote pads)
`
`aligned at the second side of the IC; a package 11 includes an electrode pad 17; one of the
`
`electrode pads at the first member are electrically connected to respective one of the electrode
`
`pads at the first side of the IC via a first wire W1 (as observed in Figures 1-2); one of the
`
`electrode pads at the second side of the IC is electrically connected to the electrode pad at the
`
`package via a second wire W2 (as observed in Figures 1-2); the first member 30 is stacked
`
`above the IC 20 (as observed in Figure 2). (See, paragraphs [0019] to [0039]).
`
`The only difference between the prior art and the claimed invention is the sensing
`
`element includes a second member stacked on the first member such that the electrode pads at
`
`the first member are not covered by the second member.
`
`Kazama et aI. discloses a sensor comprising, as illustrated in Figures 1-23 (namely
`
`Figures 16-17), a sensing element 100m includes a first member 40a has a first side (e.g. left-
`
`hand side); electrode pads 41 a disposed on a surface (e.g. top surface) of the first member
`
`such that the electrode pads aligned at only the first side of the first member; an IC 80 includes
`
`a first side (e.g. left-hand side) positioned at the first side of the first member, a second side
`
`(e.g. right-hand side) opposite to the first side; electrode pads 82 aligned at the first side of the
`
`IC; electrode pads 82 aligned at the second side of the IC; a package 85 includes an electrode
`
`pad 83; one of the electrode pads 41 a at the first member 40a are electrically connected to
`
`respective one of the electrode pads 82 at the first side of the IC via a first wire 15 (as observed
`
`in Figure 17); one of the electrode pads 82 at the second side of the IC is electrically connected
`
`to the electrode pad 83 at the package via a second wire 15 (as observed in Figure 17); the first
`
`member 40a is stacked above the IC 80 (as observed in Figure 17); the sensing element 100m
`
`includes a second member 3m (note: this is inadvertently labeled as 30m as illustrated in Figure
`
`17) stacked on the first member 40a such that the electrode pads 41 a at the first member are
`
`not covered by the second member 30m (as observed in Figure 17; paragraph [0118]). (See,
`
`paragraphs [0117] to [0119]).
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 8
`
`It would have been obvious to a person of ordinary skill at the time of invention to have
`
`readily recognize the advantages and desirability of employ the second member stacked on the
`
`first member such that the electrode pads at the first member are not covered by the second
`
`member as suggested by Kazama et al. to the system of Ohta to regulate displacement of the
`
`sensing element and prevent breakage of the sensing element when excess external force is
`
`applied and to provide a hermetically sealed package of the sensing element. (See, paragraph
`
`[0118]).
`
`With regards to claim 2, both references, Ohta and Kazama et al., further disclose the
`
`electrode pad at the sensing element is positioned higher than the electrode pads at the first
`
`side of the IC and the electrode pads at the second side of the IC; the electrode pads at the first
`
`side of the IC and the electrode pads at the second side of the IC are positioned higher than the
`
`electrode pad at the package.
`
`(As observed in Figure 2 of Ohta; as observed in Figure 17 of
`
`Kazama et al.).
`
`With regards to claim 3, Ohta does not explicitly disclose the angular velocity sensing
`
`element is oscillating-type. However, it would have been obvious to an artisan of ordinary skill
`
`in the art at the time of invention to recognize that an oscillating type angular velocity sensing
`
`element is a well-known type of angular velocity sensing element without departing from the
`
`scope of the invention.
`
`With regards to claim 4, both references, Ohta and Kazama et al., further disclose the
`
`sensing element is in contact with the IC. (See, as observed in Figure 2 of Ohta; as observed in
`
`Figure 17 of Kazama et al.).
`
`With regards to claim 5, Ohta further discloses each of the electrode pads at the sensing
`
`element is directly connected to respective one of the electrode pads at the first side of the IC
`
`via the first wire. (See, as observed in Figure 1).
`
`With regards to claim 6, Ohta further discloses all of the electrode pads at the first side
`
`of the IC are aligned straight on a first single imaginary straight line parallel to the first side of
`
`

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`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 9
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`the IC; all of the electrode pads at the second side of the IC are aligned straight on a second
`
`single imaginary straight line parallel to the second side of the IC, the IC has a third side
`
`perpendicular to the first side of the IC and a fourth side opposite to the third side, and no
`
`electrode pads are presented in both of the third side and the fourth side of the IC. (See, as
`
`observed in Figure 1).
`
`With regards to claim 7, Kazama et al. further discloses an area of the upper surface of
`
`the first member 40a is larger than an area of the upper surface of the second member 3m in
`
`plan view. (See, as observed in Figure 17).
`
`With regards to claim 8, Kazama et al. further discloses the upper surface of the second
`
`member 3m does not have a hole. (See, as observed in Figure 17).
`
`With regards to claim 9, Kazama et al. further discloses the first member 40a is in
`
`contact with the second member 3m. (See, as observed in Figure 17).
`
`With regards to claim 10, Kazama et al. further discloses a side surface of the first
`
`member 40a and a side surface of the second member 3m lie in the same plane at a portion
`
`connecting the first member and the second member. (See, as observed in Figure 17).
`
`With regards to claims 11-20, the claims are commensurate in scope with the above
`
`claims 1-10 and are rejected for the same reasons as set forth above.
`
`With regards to claims 21 -22, the claim are commensurate in scope with the above claim
`
`1 and are rejected for the same reasons as set forth above.
`
`With regards to claim 23, Kazama et al. further discloses one of the electrodes 83 of the
`
`package 85 includes a flat shaped portion 78 positioned beneath the IC.
`
`(As observed in Figure
`
`17).
`
`With regards to claim 24, Ohta does not explicitly specify such parameter (e.g. the
`
`angular velocity sensing element has a vibration frequency at around 22000 Hz) as in the claim.
`
`However, to have set such test characteristic as in the claim is considered to have been a
`
`

`

`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 10
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`matter of optimization and possibilities that would have been obvious to an artisan of ordinary
`
`skill in the art at the time of invention without departing from the scope of the invention.
`
`With regards to claim 25, both references, Ohta and Kazama et al., further disclose a
`
`gravity center of the angular velocity sensing element and a gravity center of the IC are aligned
`
`on one axis. (See, as observed in Figure 2 of Ohta; as observed in Figure 17 of Kazama et al.).
`
`Conclusion
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Helen C Kwok whose telephone number is (571)272—2197. The examiner
`
`can normally be reached on Monday to Friday, 7:30 to 4:00 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://www.uspto.gov/interviewpractice.
`
`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.
`
`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
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`

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`Application/Control Number: 15/680,604
`Art Unit: 2856
`
`Page 11
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`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.
`
`/HELEN C KWOK/
`
`Primary Examiner, Art Unit 2856
`January 29, 2019
`
`