DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Comment
The Examiner has cited particular columns and line numbers or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Response to Amendment
Examiner acknowledges canceled Claims 1-8, 15, 18-27, and 29, amended Claims 9, 10, 12, 16, 17, and 28, and new Claims 30-38 in the response filed on 4/15/2026.
Response to Amendment
Applicant’s arguments with respect to Claims 9-14, 16, 17, 28, and 30-38 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant stated that the distributed gap is not a discrete air gap but rather a result of distributing the low permeability (second) material within the volume of the power core together with the high permeability (first material). Further, it will be appreciated that a distributed gap typically will not result from arbitrarily combining the first and second materials. For example, in addition to being distributed, the second material must be present in appropriate quantity (e.g., relative to the quantity of the first material). This requirement is evidenced by the Min reference.
However, the Examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., concentration of the second material) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore as evidence provided by US Pub. No. 20200395163, an energy transfer element having a distributed gap is merely a powder core constructed by magnetic powders that are surrounded by an electrical insulating non-magnetic matrix [0017].
Claim Objections
Claim 10 is objected to because of the following informalities: The instant claim recites “the second mixture comprises magnetizable particles”. It appears that the magnetizable particles should refer to the magnetizable particles earlier recited in Claim 9. The Examiner suggests to amend the instant limitation to “the second mixture comprises the magnetizable particles”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it 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-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it 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.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 recites that “the first mixture is comprised have negligible permanent magnetism such that exposure of the powder core assembly to an external magnetic field of sufficient strength to transform the bar into a permanent magnet does not also transform the U-shaped powder core into a permanent magnet” (emphasis added). Negative limitation(s) in the claim(s) must have explicit support in the specification to satisfy the description requirement of 35 USC 112, In re Grasselli, 231 USPQ 393. Also please see MPEP 2173.05(i) which states, "The mere absence of a positive recitation is not basis for an exclusion."
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.
Claims 9-14, 16, 17, 28, and 30-38 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “close to that of free space” in claims 9 and 34 is a relative term which renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
With regards to Claim 13, the instant claim recites that the bar is an unmagnetized magnet. However, it is unclear to the Examiner how a bar is an unmagnetized magnet when the bar comprises a magnetically hard material. In addition, the Examiner points out that an article (i.e. finished product) is examined on the basis of the final properties and not any properties of an intermediate product or the relationship of properties of the final product to an intermediate product. For the purpose of evaluating prior art, a bar that comprises the claimed materials meets the instant limitation.
Claim Rejections - 35 USC § 102
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 made in this Office action:
A person shall 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 effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-13, 16, 17, 28, and 30-33 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2014092169 (“Funakoshi et al.”).
With regards to Claims 9, Funakoshi et al. teaches an energy transfer element (2) comprising a U-shaped powder core (10a), the U-shaped powder core comprising two legs and being formed from a first mixture comprising particles of a first material (soft magnetic material powder) mixed with a second material (binder), wherein the first material has a higher magnetic permeability than the second material and provides a magnetic path within the U-shaped powder core, and wherein the second material forms a distributed gap in the magnetic path due to being distributed within a volume of the U-shaped powder core and further due to having a magnetic permeability close to that of free space such that the distributed gap acts as a substitute for a discrete air gap (Figs. 1, 2, 4, and 5, [0023], [0038], [0040], [0056], [0069], and [0111]).
Funakoshi et al. teaches a bar (16a) formed from a second mixture comprising particles of the first material (soft magnetic material powder) mixed with the second material (binder) and further mixed with particles of magnetizable material capable of being permanently magnetized (hard magnetic material powder), wherein the bar is positioned across or between the two legs such that the U-shaped powder core forms a first portion of a powder core assembly, the bar forms a remaining portion of the powder core assembly, and the powder core assembly has a shape that provides a closed magnetic path including the distributed gap and the magnetic path within the U-shaped powder core (Fig. 2, 4, and 5, [0060], [0060], and [0064]).
Funakoshi et al. teaches when the magnetizable material is unmagnetized, the magnetizable material has an initial flux density, wherein when the magnetizable material is magnetized, a flux density produced by the magnetized material is offset from the initial flux density, and the bar operates as a permanent magnet. Funakoshi et al. teaches one or more power windings (20a) wrapped around the powder core assembly ([0037] and [0111]).
With regards to Claim 10, Funakoshi et al. teaches the second mixture comprises magnetizable particles suspended in a suspension medium [0069].
With regards to Claims 11 and 13, Funakoshi et al. teaches the magnetizable particles are selected from a group comprising Neodymium Iron Boron (NdFeB) based materials or Samarium Cobalt (SmCo) based material [0067].
With regards to Claim 12, Funakoshi et al. teaches the second mixture comprises epoxy mixed with particles of the first material and particles of the magnetizable material [0069].
With regards to Claim 16, due to Funakoshi not having permanent magnetic material in its first mixture ([0040] and [0056]), Funakoshi teaches the first mixture is comprised to have negligible permanent magnetism such that exposure of the powder core assembly to an external magnetic field to sufficient strength to transform the bar into a permanent magnet does not also transform the U-shaped powder core into a permanent magnet ([0037] and [0040], and [0041]).
With regards to Claim 17, Funakoshi et al. teaches the bar is a permanent magnet, and the bar spans the legs of the U-shaped powder core such that a length of the bar extends across both legs (Fig. 4 and [0037]).
With regards to Claim 28, Funakoshi et al. teaches the bar is a permanent magnet interposing the two legs, a first side of the bar, corresponds to a north pole of the permanent magnet, is covered by a first leg, and a second side of the bar, opposite the first side and corresponding to a south pole of the permanent magnet is covered by a second leg (Fig. 2 and 4, [0042]).
With regards to Claim 30, Funakoshi et al. teaches the closed magnetic path is a path for a first magnetic field generated by electric current conducted through the one or more power windings, the bar is a permanent magnet having magnetic poles oriented such that the bar introduces a second magnetic field into the closed magnetic path, and a flux density of the second magnetic field is opposition to a flux density of the first magnetic field (Fig. 2, [0024], [0037], [0059], and [0072]).
With regards to Claim 31, Funakoshi et al. teaches the magnetic permeability of the first material is a thousand or more times higher than that of free space [0056].
With regards to Claim 32, Funakoshi et al. teaches the powder core assembly has the shape of a rectangular toroid (Fig. 5).
With regards to Claim 33, Funakoshi et al. teaches the second material is uniformly distributed throughout the U-shaped powder core, and the magnetizable material is uniformly distributed throughout the bar ([0056] and [0079]).
Claims 34 and 35 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2016013059 (“Daigaku et al.”).
With regards to Claim 34, Daigaku et al. teaches an energy transfer element (inductance component) comprising a powder core assembly comprising a plurality of pieces (11, 15, and relevant thereof) that have been assembled into a shape providing a closed magnetic path, each piece of the plurality of pieces being cast from a mixture comprising particles of a first material (soft magnetic material powder) mixed with a second material (binder), wherein the first material has a higher magnetic permeability than the second material, the second material forms a distributed gap in the closed magnetic path due to being distributed throughout the powder core assembly and further due to having a magnetic permeability sufficiently close to that of free space such that the distributed gap acts as a substitute for a discrete air gap, and at least one piece is a bar (15) in which the mixture further comprises particles of a magnetizable material (hard magnetic material powder) capable of being permanently magnetized. Daigaku et al. teaches one or more windings (20) configured to generate a magnetic field in the closed magnetic path in response to conduction of electric current through the one or more windings (Figs. 1-3, 9, and 10, [0007], [0012], [0016], [0018]-[0021], [0024], and [0026].
With regards to Claim 35, Daigaku et al. teaches the plurality of pieces comprises four bars assembled into the shape of a rectangular toroid (Figs. 9-10, [0056]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections 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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2014092169 (“Funakoshi et al.”) as applied to Claim 9 above, and further in view of US Pub. No. 20040085173 (“Decristofaro et al.”).
Funakoshi et al. teaches the bar is a permanent magnet as set forth above.
Funakoshi et al. does not teach the structure as claimed for the bar and each leg of the U-shaped powder core.
However, Decristofaro et al. teaches an energy transfer element, wherein each end of its core pieces are mitered together (Abstract, Figs. 2C and 14, [0004], [0021], and [0051]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the ends of Funakoshi et al.’s bar and legs of the U-shaped powder core be mitered to each other in order to increase surface/contact area at the respective joints and reduce the deleterious effects of flux leakage and increase core loss [0065].
Claim(s) 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016013059 (“Daigaku et al.”) as applied to Claim 34 above, and further in view of US Pub. No. 20090191421 (“Huang et al.”).
With regards to Claim 36, Daigaku et al. teaches an energy transfer element comprising the plurality of pieces is a bar (Figs. 1-3, 9, and 10).
Daigaku et al. does not teach each piece of the plurality of pieces is a bar in which the mixture further comprises particles of the magnetizable material (i.e. hard magnetic material powder).
However, Huang et al. teaches an energy transfer element comprising a powder core assembly, wherein the entire powder core assembly is formed from a mixture comprising particles of a first material (soft magnetic powder), a second material (insulating agent and/or organic resin), and particles of a magnetizable material (permanent magnetic powder) capable of being permanently magnetized (Abstract, Figs. 1 and 3, [0001], [0002], [0008]-[0012], [0019], [0020], [0023], and [0024]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have each of Daigaku et al.’s plurality of pieces comprise of a magnetizable material in order to produce a powder core assembly with excellent DC superposition characteristic, good anti-saturation ability, low core loss and is effectively magnetized. ([0008]-[0010]).
With regards to Claim 37, the modified prior art of record would necessarily have each bar permanently magnetized to have a north pole at one end of the bar and a south pole at the opposite end of the bar, and wherein the bars are assembled with opposite poles next to each other (Figs. 1-3, 9, and 10 of Daigaku et al.).
With regards to Claim 38, Daigaku et al. teaches the bars generate a magnetic field with a flux density that opposes a flux density of the magnetic field generated by the one or more windings [0028].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 20210241952 discloses an annular magnetic member with magnetic particles (soft and permanently hard particles) in a non-magnetic matrix (Please see Abstract, Figs. 1, 2, 23, and 24, [0025], and [0100]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
