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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
`
`16/619,955
`
`12/06/2019
`
`TAKAYA NAKAMURA
`
`083710-2878
`
`5546
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`GANNON,LEVI
`
`2849
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/08/2022
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`ELECTRONIC
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`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)
`
`

`

`
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 12/06/19 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)() None ofthe:
`b)( Some**
`a) All
`1.4) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) 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 12/06/19.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220603
`
`Application No.
`Applicant(s)
`16/619,955
`NAKAMURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LEVI GANNON
`2849
`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 12/06/19.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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*
`1-7 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) 1-4and6is/are rejected.
`Claim(s) 5and7is/are objectedto.
`C] 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.
`
`) ) ) )
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`

`

`Application/Control Number: 16/619,955
`Art Unit: 2849
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section madein this Office action:
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`A personshall be entitled to a patent unless —
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`(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.
`
`Claims1, 2, and 6 are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Torii et al. (US 2005/0127795; “Torii”).
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`Regarding claim 1, Torii teaches a power generation device (figure 1)
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`comprising:
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`a power generator (11) having a cantilever structure (para/ [0063]) of which one
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`end is a fixed end (end fixed to 7) to be fixed and other end is a free end (end not fixed
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`to 7), the power generator generating a power due to free vibration of the free end
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`(inherent property of piezoelectric material);
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`a holder section (7) comprising resin (para. [0063]), the power generator (11)
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`being mounted on; and
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`

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`Application/Control Number: 16/619,955
`Art Unit: 2849
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`Page 3
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`a rigid plate (6) comprising metal (para. [0063]), the rigid plate (6) being located
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`such that the holder section (7) is between the rigid plate (6) and the power generator
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`(11), wherein;
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`the fixed end (of 11) and the holder section (7) are fixed to each other, and
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`the holder section (7) and the rigid plate (6) are fixed to each other.
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`Asfor claim 2, Torii teaches wherein the fixed end (of 11), the holder section (7),
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`and the rigid plate (6) are overlapped in contact with each other in this order (see order
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`or elements in figure 1), and
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`the fixed end, the holder section, and the rigid plate are fixed to each other by
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`using a fixing member (Resin 7 acts as an adhesive. Para. [0063]).
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`Asfor claim 6, Torii teaches wherein the rigid plate (stainless steel plate 6) is
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`made of a non-magnetic material (As stated in para. [0068] of the instant application,
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`stainless steel is non-magnetic.).
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`

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`Application/Control Number: 16/619,955
`Art Unit: 2849
`
`Page 4
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections set forth 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.
`
`Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Torii in view of Makoto (JP2010-273409; reference of record).
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`As for claims 3 and 4, Torii teaches a housing accommodating the power
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`generator, the holder section, and the rigid plate (The power generation device of Torii
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`is a part of various devices comprising housings upon which the power generation
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`device will be fixed, e.g. an inkjet head, an inkjet recording apparatus, and an angular
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`velocity sensor.).
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`Torii fails to teach wherein the fixing member is a screw thatfixes the fixed end,
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`the holder section, and the rigid plate by penetrating through the fixed end, the holder
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`section, and the rigid plate; and wherein the housing and the rigid plate are fixed to
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`each other by a screw.
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`However, it is well-knownto those of ordinary skill in the art to fix elements of a
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`piezoelectric power generation device together with screws. For example, see screws
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`(4) in figure 2 of Makoto.
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the claimed invention to use screwsasthe fixing elements of Torii because
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`

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`Application/Control Number: 16/619,955
`Art Unit: 2849
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`Page 5
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`such a modification would have been merely implementing well-known fixing elements
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`usedin piezoelectric power generation devices.
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`Allowable Subject Matter
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`Claims 5 and 7 are objected to as being dependent upon a rejected base claim,
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`but would be allowable if rewritten in independent form including all of the limitations of
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`the base claim and any intervening claims.
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`The following is a statement of reasons for the indication of allowable subject
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`matter: The best prior art reference of record, Torii, taken alone or in combination with
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`other references, fails to teach:
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`“wherein a recess corresponding to a shapeof the rigid plate is formed on a
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`surface of the holder section at a side on which the rigid plate is disposed, and the rigid
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`plate is accommodated in the recess.”, as set forth in claim 5; and
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`“an attraction memberfixed to the free end; and an arm section extending in a
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`direction from the free end to the fixed end, the arm section pivotally supported on the
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`fixed end, the arm section including a magnetthat is attached to or released from the
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`attraction memberby the rotation of the magnet.”, as set forth in claim 7.
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`Conclusion
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`The prior art made of record and notrelied upon teach power generators,
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`comprising: piezoelectric cantilevers, resin holders, and metal supports.
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`

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`Application/Control Number: 16/619,955
`Art Unit: 2849
`
`Page 6
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LEVI GANNON whosetelephone number is (571)272-
`
`7971. The examiner can normally be reached 7:00AM-4:30PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Menatoallah Youssef can be reached on 571-270-3684. The fax phone
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`number for the organization wherethis application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
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`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LEVI GANNON/
`Primary Examiner, Art Unit 2849
`June 3, 2022
`
`