www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/417,775
`
`05/21/2019
`
`SEIGO YAMANAKA
`
`731056.475C1
`
`5248
`
`Seed IP Law Group LLP/Panasonic
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`DINH, LYNDA
`
`PAPER NUMBER
`
`ART UNIT
`
`2865
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/14/2021
`
`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):
`USPTOeAction @ SeedIP.com
`
`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/417,775
`Examiner
`LYNDA DINH
`
`Applicant(s)
`YAMANAKA etal.
`Art Unit
`AIA (FITF) Status
`2865
`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 10/26/2021.
`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.
`
`Disposition of Claims*
`7-8 and 15-16 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) 7-8 and 15-16 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 10/26/2021 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
`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 20211206
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 2
`
`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.
`
`DETAILED ACTION
`
`Election/Restriction
`
`2.
`
`Applicant's election without traverse of claims 7-8 and 15-16 in the reply filed on
`
`10/26/2021 is acknowledged.
`
`Claims 1-6, 9-14, and 17-19 are withdrawn from further consideration pursuant to
`
`37 CPR 1.142(b) as being drawn to nonelected species, there being no allowable
`
`generic or linking claim. Election was made withouttraverse in the reply filed on
`
`10/26/2021.
`
`Information Disclosure Statement Objection
`
`3.
`
`The information Disclosure Statement(IDS) filed on 5/21/2019 has been
`
`considered.
`
`Specification Objections
`
`4.
`
`The Application’s specification is objected to becauseof the following
`
`informalities: The content of specification does not include Cross-Referencesto related
`
`applications. See 37 CFR 1.78 MPEP § 211 et seq. Appropriate correction is required.
`
`Claim Objections
`
`5.
`
`Claim 7 is objected to because ofthe following informalities:
`
`In claim 7 line 22, the term “therefore” should be removed, and line 23, missing
`
`the “a” before “plurality of detection patterns”; and term “also” is not positive limitation.
`
`Appropriate correction is required.
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 3
`
`Claim Rejections - 35 USC § 112
`
`6.
`
`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 more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`7.
`
`Claims 7-8 and 15-16 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 pre-AlA
`
`the applicant regards asthe invention.
`
`a.
`
`The recitation in claim 7, “each of the first detection system and the
`
`second detection system include three detectors each of has a detection function with
`
`one bit that outputs any one of two values that vary in accordance with a positional
`
`relationship with a detection target unit, and therefore is capable of outputting plurality of
`
`detection patterns with three digits in accordance with the five positions” (p.5, para 2) is
`
`indefinite. It is unclear how to outputting a plurality of detection patterns with three digits
`
`when aboverecites three detectors each outputs any one of two values whichis a total
`
`of six values “digits”, a total of the first and second detection systems?
`
`Further in claim 7, para 3, “in any of three predetermined positions common to
`
`the first detection system and the second detection system among the five positions,
`
`output values of any one digit and two other digits among the three digits” is indefinite. It
`
`is unclear whether the “three digits” is the same with the “three digits” in para 2 above?
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 4
`
`b.
`
`The recitation in claims 7-8 and 16, “in accordance with the five positions”
`
`(claim 7, p.5, para 2), “among the five positions” (claim 7, p.5, para 3), “three
`
`predetermined positions are locatedat a first position, a third position, andafifth
`
`position” and “a second position and a fourth position” (claims 8 and 16), indefinite. It is
`
`unclear whether these limitations will be satisfied with “a plurality of positionsupto five
`
`positions” as recited in claim 7 (p.5, para 1) because “up to five positions” could be any
`
`position from 1 to 5?
`
`C.
`
`further, in claim 7, paras 3-4 line 4, “one detection system”is indefinite. It
`
`is unclear whether it refers to “the first or the second detection system’?
`
`Further “one detection system” in para 4 line 4 lacks antecedent basis. It is
`
`unclear whether it refers to “one detection system” abovein para 3 line 4?
`
`d.
`
`Furthermore, in claims 7-8 and 15-16, “the five position” lacks antecedent
`
`basis because claim 7 recites “up to five position’.
`
`e.
`
`In claims 8 and 16, “this order”is indefinite.
`
`It is unclear what “this order’
`
`refer to?
`
`Due to number of 35 USC 112 second paragraph and claim objection rejections,
`
`the claims are not sufficient quality to be adequate to understand and thus, the claims
`
`have been treated on their merit as the best understood by the Examiner.
`
`AIA Statement - 35 USC § 102 & 103
`
`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
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 5
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`The following is a quotation under AIA of 35 U.S.C. 103 which forms the basis
`
`for all obviousness rejections set forth in this Office action.
`
`A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 ofthistitle, 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.
`
`10.
`
`Claims 7-8 and 15-16 are rejected under 35 U.S.C. 103 as being anticipated
`
`over lwata (US patent 9,163,957) in view of Kitamoto (US 2013/0069635).
`
`As per Claim 7, vata teaches a casition detection device that detects a position
`
`of an operating unit, ihe position detection device comprising
`
`a first detection system (Fig SA, a firsi magnetized region TOA, col 4 lines 22-23}
`
`and a second detection system (Fig GA, a second magnetized regian 10B, col 4 lines
`
`24-43), and displaceable al a Gluralty of positions up to five postions together with the
`
`operating unit, when the operating unilis displaced (col 6 ines 22-40),
`
`wheremneach of the first detection system and the second detection system
`
`includes three detectors (Hall ICs 21-23, col 4 ine 64 to col 5 ine 3} each of which has
`
`a detection function with one bit that outputs any one of two values that vary in
`
`accordance with a positional relationship with a detection target unit (“magnet 10”
`
`considered “a detection target unit’, one of the first and second gradients is a positive
`
`value and the other one is a negative value, see col 2 lines 9-28, e.g. positive gradient
`
`V1i>V2>V3, col 4 lines 50-55, or negative gradient V1<V2<V3, col 5 lines 4-17), and
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 6
`
`therefore is capable of cuipulting plurality of detection patterns with three digits in
`
`accordance with the five positions (col 4 ines 50-63, coal 5 lines 4-17},
`
`in any of three predetermined pasitions common to the first detection systern and
`
`the second detection system among the five sositions Ghree predetermined R position,
`
`Noposition, and 0 pasitian of five positions of R, N, BH, and B, Fig GA), auipul values
`
`of ary ane digi and two other digits among the three digits included in each af the
`
`plurality of detection patterns are sel io be different tram sach other (Fig 4A shows
`
`different patierns of Gs 21-23}, and in one detection system, each of the plurality of
`
`detection patlerns carresponding to the three predetermined positions is sel to be
`
`different from each other (Figs SB left column with A position, N position, and D
`
`position), and in any of iwo remaining cositions carmmion to the first detection system
`
`and the second detection system among the five positions (Fig 36, night column with #
`
`position and B position),
`
`output values af the three digits included in each of the plurality of detection
`
`patterns are set to be identical (Fig 3B shows e.g. iGs 21-25 at N=H positions and D=-B
`
`positions, col 6 ines 22-40, Fig 44), two of the plurality of detection patterns that belang
`
`to one detection system and correspond to different positions are set to be different
`
`from each other, and two of the olurality of detection patterns that belong to different
`
`detection patierns and correspond to an identical position are alse set to be different
`
`from each other (cal 7 ines 3-17, col 9 line 66 to col 1ine 8}.
`
`iwate does not explicilly leach 4 first and a second detection sysiems thal are
`
`respectively fed from power supply systems different from each other. Kitamote
`
`teaches a first and a second detection systems that are respectively fed trom power
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 7
`
`supply systems different fram each other teaches (Fig 5, para 8607}. It would have been
`
`obvious to one ordinary skill in the art before the effectivefiling date of claimed invention
`
`to modify the teaching of Iwata to provide Hall elements with individual power circuit as
`
`taught by Kitamoto that would facilitate to continue displacement detection with the use
`
`of the Hall elements, e.g. ICs 21-23 (Kitamoto, para 0007).
`
`&s per Claim &, hwata in view of Kitarnoto teaches the position detectian device
`
`according to clam 7, lwata further teaches wherein the five positions are aligned ina
`
`line along a predetermined direction (Figs 3A, 6}, the three predetermined positions are
`
`localed al a first position, a third position, and a fith position in this order fram one enc
`
`in the predetermined direction (Fig GA, magnetized region 10A includes Ri position, N
`
`position, and D position, col 5 ines 49-57}, and the two remaining positions are located
`
`ata second position and a fourth position in this order from the one end in the
`
`oredelermined direction (Fig GA, magnetized region 1068 includes H position and 8
`
`position, col 3 Hnes 51-53 }.
`
`As per Claim 15, hwata in view of Kitamote teaches the position detection device
`
`according to claim 7, lwata does not explicitly teach wherein the first detection sysiem
`
`and the second defection system that are fed from 4 single power supply system
`
`instead of the power supply sysiems different from each other. Kitamoato teaches the
`
`first detection system and the second detection system that are fed from a single power
`
`supply system instead of the power supply sysiems different from each other (Fig 6,
`
`mara G00},
`
`It would have been obvious to one ordinaryskill in the art before the
`
`effective filing date of claimed invention to modify the teaching of Iwata to provide Hall
`
`elements with one power circuit as taught by Kitamoto that would facilitate to continue
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 8
`
`displacementdetection with the use of remaining Hall elements, e.g. ICs 21-23
`
`(Kitamoto, para 0008).
`
`As per Claim 16, lwata in view of Kitamoto teaches the position detection device
`
`according ta claim 15, hwate further teaches wherein the five positions are aliqned ina
`
`line along a predetermined direction (Figs SA, 6}, the three predetermined positions are
`
`located af a first position, a thircl position, anc a Hh pasition in this order fram one end
`
`in the predetermined direction (Fig 3A, magnetized region 10A includes A position, N
`
`position, and D position, col 3 Hnes 49-51}, and the two remaining positions are located
`
`aba second pasion and 4 fourth position in this order from the one end in the
`
`oredetermined direction (Fig 3A, magnetized region 106 includes H position and B
`
`position, colo lines 51-53 }.
`
`Conclusion
`
`11.
`
`The following pertinent prior arts or prior arts of record, such as: US
`
`2016/0153547 of Shibata et al (Shift lever position determination device for vehicle); US
`
`2013/0072350 of Ueno et al (Vehicle shift control device); US patent 9765879 of
`
`Takahashi et al (Shift control apparatus); US 2010/0045272 of Kondo (Position
`
`detector); and US patent 8829893 of Youngner et al (Linear position sensor).
`
`12.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LYNDA DINH whosetelephone number is (571)270-
`
`7150. The examiner can normally be reached on Mon-Fri between 9AM-6PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 9
`
`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, Arleen Vazquez can be reached on (571)272-2619. 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 accessto 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 automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LYNDA DINH/
`
`Examiner, Art Unit 2865
`
`/ALEXANDER SATANOVSKY/
`Primary Examiner, Art Unit 2863
`
`

`

`Application/Control Number: 16/417,775
`Art Unit: 2865
`
`Page 10
`
`