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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/3/2025 has been entered.
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.
Regarding the limitation(s) "a bar positioned relative to the distributed gap" in Claim 18 (emphasis added), the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that the bar positioned relative to the distributed gap still allows for other unrecited components to be present in the gap (i.e. the instant limitation is taken to be synonymous with “near” or “adjacent”).
Response to Amendment
Examiner acknowledges canceled Claims 1-8, 15, and 24 amended Specification and Claims 9, 13, 14, 16-23, and 25-27, and new Claims 28-29 in the response filed on 6/3/2025.
Response to Arguments
Applicant's arguments filed 6/3/2025 have been fully considered but they are not persuasive.
Applicant argues that Fujiwara’s Figs. 8 and 9 do not disclose a U-shaped powder core or a rectangular toroid. Applicant further argues that Fujiwara’s Figs. 26-29 do not disclose “a bar comprising magnetizable material, the bar positioned in the distributed gap such that the magnetic path is closed, the U-shaped powder core forms a first portion of a rectangular toroid, and the bar forms a remaining portion of the rectangular toroid”.
However, Applicant’s arguments are unpersuasive. The Examiner maintains that Figs. 8 and 9 disclose a U-shaped powder core, however, recognizes that it is not a U-shaped powder core with right angles. While Figs. 8 and 9 may show a “C”-like shape powder core, rotating the powder core produces a U shape powder core (i.e. viewing in a different perspective). The bar (57) in Figs. 8 and 9 is positioned in the distributed gap such that the magnetic path is closed, and together with the U-shaped powder core, forms a toroid. Examiner acknowledges that Figs. 8 and 9 do not teach a rectangular toroid.
Fujiwara teaches other figures that demonstrates its energy transfer element to be in a rectangular toroid (i.e. Figs. 27-29). Fujiwara further teaches that the shape of its energy transfer element (magnetic core) is not specifically limited, and therefore, its invention can be applied to magnetic cores having any shape. The gap length, wherein the bar is positioned into, is also not specifically limited [0068]. Based on the given teachings, it would have been obvious to one of ordinary skill in the art to have Fujiwara’s energy transfer element have the claimed rectangular toroid shape in order to achieve a device with desirable properties as disclosed in paragraph [0061], absence of evidence to the contrary. Furthermore, it has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
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 and 28 are 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.
Applicant amended Claim 16 to recite “the U-shaped powder core is non-magnetizable such that a magnetic field applied after the bar is assembled with the U-shaped powder core magnetizes the bar without magnetizing the U-shaped powder core.” However, the instant limitation fails to comply with the written description requirement. While Applicants cited Figs. 6A-6B, 7A-7B, 8A-8B, and the corresponding description in the Specification as support, the Examiner was unable to find such explicit language directed to the method of magnetization to make said energy transfer element.
Claim 28 recites “the flux density produced by the magnetized material extends from the first side and the second side and is confined within a boundary of the U-shaped powder core” fails to comply with the written description requirement (emphasis added). The Examiner was unable to find written support in Applicant’s Specification.
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, 16-23, and 25-29 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 terms “relatively high magnetic permeability” and “relatively low magnetic permeability” in Claims 9, 18, 26, and 29 are relative terms which renders the claim indefinite. The instant terms are 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. For the purpose of examining prior art, the term “relatively high magnetic permeability” refers to a soft magnetic material (as compared to a magnetically hard/permanent material), and the term “relatively low magnetic permeability” refers to any magnetic and nonmagnetic material.
Where Applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “the U-shaped powder core is non-magnetizable” in Claim 16 is used by the claim to mean “cannot be permanently magnetized” (i.e. cannot be a magnetically hard/permanent material – retain magnetism after an external field is removed and require significant energy to demagnetize), while the accepted meaning appears to be “a soft magnetic material” or equivalent technical language thereof. The term is indefinite because the specification does not clearly redefine the term.
Furthermore, any material can technically be magnetized under a magnetic field. For example, a piece of wood is well known to be a nonmagnetic material. However, said piece of wood is magnetizable under a magnetic field. Once the magnetic field is removed, the piece of wood becomes nonmagnetic. Claim 16, in which Claim 9 is dependent from, requires the U-shaped powder core to comprise of a “relatively high magnetic permeability material”. Therefore, it is unclear how the magnetic field applied to the overall energy transfer element cannot magnetize the U-shaped powder core that comprises a magnetic substance.
With regards to Claims 17 and 25, the instant claims recite the bar spans the legs of the U-shaped powder core such that one side of the bar covers both legs. While the Examiner understands how one side of the bar can cover one leg, it is unclear how one side can cover both legs. For the purpose of examining prior art, a bar that spans the legs of the U-shaped powder core meets the instant limitation.
With regards to Claim 26, the instant claim recites “the bar positioned to occupy or cover the distributed gap”. The gap is essentially a void between the two legs of the U-shaped powder core. It is unclear how the bar is covering said gap when it is a void. The Examiner suggests to remove the instant limitation. Appropriate clarification and/or correction is required in the next response.
Claim 28 recites “the flux density produced by the magnetized material extends from the first side and the second side and is confined within a boundary of the U-shaped powder core”. That is, flux density is present from the first side to the second side of the bar. It is unclear what is meant by the flux density is confined within a boundary of the U-shaped powder core. Does the instant limitation mean that the flux density is present in the overall toroid (i.e. simply meaning that the toroid is magnetic)?
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.
Claims 9-13, 16-22, and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20020097127 (“Fujiwara et al.”).
With regards to Claims 9, 17, 18, and 25, Fujiwara et al. teaches an energy transfer element comprising a powder core comprising two legs and a distributed gap between the legs, wherein the legs of the powder core includes particles of a relatively high magnetic permeability that provides a magnetic path, and wherein the distributed gap is a discrete region of relatively low magnetic permeability that defines a gap in the magnetic path, the powder core having no additional discrete gap (i.e. only one gap) ([0061], [0067], [0068], [0136], [0137], [0098], [0100], [0103], [0104], and [0106]).
Fujiwara et al. teaches a bar comprising magnetizable material (magnetically hard/permanent material ([0061] and [0063]), that will intrinsically operate as a permanent magnet), the bar positioned in the distributed gap such that the magnetic path is closed and the powder core and the bar form a toroid. The magnetizable material is capable of being magnetized, wherein when the magnetizable material is unmagnetized, the magnetizable material has an initial flux density, and wherein when the magnetizable material is magnetized, a flux density produced by the magnetized material is offset from the initial flux density. Fujiwara et al. teaches one or more powder windings wrapped around the magnetic path (Figs. 8-9 and 26-29, [0061]-[0064], [0066], [0068], [0074], [0086]-[0088], [0094], [0095], and [0203]).
Fujiwara et al. teaches the shape of the powder core is not specifically limited and, therefore, can have any shape, for example, toroidal powder cores, EE type magnetic cores, and EI type magnetic cores [0068]. As shown in Figs. 8-9, Fujiwara et al. teaches U-shaped powder cores comprising one bar positioned in a gap such that the U-shaped powder core forms a first portion of a toroid, and the bar spans the legs of the powder core such that one side of the bar covers both legs and forms a remaining portion of the toroid. As shown in Figs. 26-29, Fujiwara et al. teaches a U-shaped rectangular toroid. As disclosed in paragraph [0061], Fujiwara et al. teaches the magnetic core includes at least one gap in a magnetic path (i.e. only one gap present is within the purview of Fujiwara et al.). While Fujiwara et al. does not explicitly disclose an example of a rectangular U-shaped powder core forming a first portion of a rectangular toroid and one bar that forms a remaining portion for the rectangular toroid, the Examiner deems that it would have been obvious to one of ordinary skill in the art to have such structure as claimed as it is within the scope of Fujiwara et al. and to obtain a powder core with desirable properties as disclosed in paragraph [0061].
With regards to Claim 10, Fujiwara et al. teaches the magnetizable material comprises magnetizable particles suspended in a suspension medium [0066].
With regards to Claim 11, Fujiwara et al. teaches the magnetic particles are selected from a group comprising Neodymium Iron Boron (NdFeB) based materials or Samarium Cobalt (SmCo) based material [0066].
With regards to Claim 12, Fujiwara et al. teaches the magnetizable material is a suspension medium comprising epoxy with magnetized magnetizable particles and powder core (Figs. 28-29 and [0071]-[0073]).
With regards to Claim 13, Fujiwara et al. teaches the magnetizable material is an unmagnetized magnet ([0093]-[0095]). 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.
With regards to Claim 16, the product by process limitation of how the toroid is magnetized is a process limitation that is not germane to the determination of patentability of the claimed product. Furthermore, Fujiwara et al. teaches its powder core comprising a magnetically soft material and a magnetically hard/permanent bar. Therefore, Fujiwara et al.’s toroid will behave as claimed under an applied magnetic field.
With regards to Claim 19, Fujiwara et al. teaches the bar comprises both magnetizable powder and non-magnetizable powder [0178].
With regards to Claims 20-22, Fujiwara et al. teaches the magnetizable material comprises magnetizable particles suspending in suspension medium comprising epoxy, wherein the magnetizable particles are selected from a group consisting of Neodymium Iron Boron (NdFeB) based materials or Samarium Cobalt (SmCo) based material and powder core (Figs. 28-29, [0066] and [0071]-[0073]).
With regards to Claims 26, Fujiwara et al. teaches an energy transfer element comprising a powder core comprising two legs and a distributed gap between the legs, wherein the legs of the U-shaped powder core cannot be permanently magnetized and is formed from a homogenous mixture of particles, including particles of a relatively high magnetic permeability that provides a magnetic path, and wherein the distributed gap is a discrete region of relatively low magnetic permeability that defines a gap in the magnetic path, the powder core having no additional discrete gap (i.e. only one gap) ([0061], [0067], [0068], [0136], [0137], [0098], [0100], [0103], [0104], and [0106]).
Fujiwara et al. teaches a bar comprising magnetizable material (magnetically hard/permanent material ([0061] and [0063]), that will intrinsically operate as a permanent magnet) and non-magnetizable material, the bar positioned to occupy or cover the distributed gap such that the magnetic path is closed, wherein the powder core forms a first portion of a toroid and the bar forms a remaining portion of the toroid. The magnetizable material is capable of being magnetized, wherein when the magnetizable material is unmagnetized, the magnetizable material has an initial flux density, and wherein when the magnetizable material is magnetized, a flux density produced by the magnetized material is offset from the initial flux density. Fujiwara et al. teaches one or more powder windings wrapped around the magnetic path (Figs. 8-9 and 26-29, [0061]-[0064], [0066], [0068], [0074], [0086]-[0088], [0094], [0095], and [0203]).
Fujiwara et al. teaches the shape of the powder core is not specifically limited and, therefore, can have any shape, for example, toroidal powder cores, EE type magnetic cores, and EI type magnetic cores [0068]. As shown in Figs. 8-9, Fujiwara et al. teaches U-shaped powder cores comprising one bar positioned in a gap such that the U-shaped powder core forms a first portion of a toroid, and the bar spans the legs of the powder core such that one side of the bar covers both legs and forms a remaining portion of the toroid. As shown in Figs. 26-29, Fujiwara et al. teaches a U-shaped rectangular toroid. As disclosed in paragraph [0061], Fujiwara et al. teaches the magnetic core includes at least one gap in a magnetic path (i.e. only one gap present is within the purview of Fujiwara et al.). While Fujiwara et al. does not explicitly disclose an example of a rectangular U-shaped powder core forming a first portion of a rectangular toroid and one bar that forms a remaining portion for the rectangular toroid, the Examiner deems that it would have been obvious to one of ordinary skill in the art to have such structure as claimed as it is within the scope of Fujiwara et al. and to obtain a powder core with desirable properties as disclosed in paragraph [0061].
With regards to Claim 27, Fujiwara et al. teaches the magnetizable material comprises magnetizable particles suspended in a suspension medium [0066].
With regards to Claim 28, Fujiwara et al. teaches the bar is a permanent magnet, which is a magnetically hard material that retains its magnetism even after removal of a magnetic field/force. Magnetic materials intrinsically have north and south magnetic poles.
Therefore, Fujiwara et al. teaches a first side of the bar, corresponding to a north pole of the permanent magnet, is covered by one of the legs, a second side of the bar, opposite the first side and corresponding to a south pole of the permanent magnet, is covered by another of the legs, and the flux density produced by the magnetized material extends form the first side and the second side and is confined within a boundary of the U-shaped powder core.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC §102 or on prima facie obviousness under 35 USC §103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Claims 14 and 23 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20020097127 (“Fujiwara et al.”) as applied to Claim 9 or 18 respectfully above, and further in view of US Pub. No. 20040085173 (“Decristofaro et al.”).
Fujiwara et al. teaches the bar is a permanent magnet as set forth above.
Fujiwara et al. does not teach the structure as claimed for the bar and each leg of the U-shaped magnetic 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 Fujiwara et al.’s bar and legs of the 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 29 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20020097127 (“Fujiwara et al.”) as applied to Claim 26 above, and further in view of US Pub. No. 20030030529 (“Min et al.”).
Fujiwara et al. teaches a bar as set forth above.
Fujiwara et al. does not teach its bar comprising the same relatively high magnetic permeability material as the U-shaped powder core.
However, Min et al. teaches a U-shaped powder core comprising a magnetically permeable material, and its bar (38) comprising relatively high magnetic permeability material magnetizable material, such as MnZn ferrite (Abstract, Fig. 4, [0051], and [0055]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate a relatively high magnetic permeability material in Fujiwara et al.’s bar in order to minimize fringe losses, mechanical losses and noise in the core (Abstract).
Conclusion
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785