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 .
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.
Claims 22 and 23 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. Once again the applicant has improperly added subject matter which was not in any way presented as having support in the original disclosure. Nowhere in the entire original specification, nor anywhere in the drawing figures is there any support for: “forming through openings in the first laminate between the first and second surfaces, wherein at least two of the through openings are on opposite sides of the windings of the coil structure; and inserting a magnetic core in each of the through openings” (claim 22; emphasis added); there is also no support for “filling spaces between the magnetic cores and the through openings with the second laminate” (claim 23; emphasis added).
The Applicant has repeatedly attempted to add limitations to the disclosure by way of improperly amending them into the claims.
Regarding claim 22, it is entirely clear that the original disclosure never discloses more than one through opening (422) being formed. Please refer to fig. 4, step 404, and specification pars. [0005, and 0031]. In figure 4 there is absolutely only one hole formed, and the drawing even states “FORM HOLE IN LAMINATE”, and does not at all disclose “FORM HOLES”. In the specification there is only a single hole ever formed; through opening (422) is expressly, explicitly and unequivocally disclosed in the singular in the cited paragraphs. The step 406 in fig. 4 shows what looks somewhat like two holes, but this is not the case. First, the seeming openings (really only single opening 422) is no longer a through hole at all. Second, “they” are not a plurality of holes at all but instead is the single through hole (422) after the magnetic core (428) has been inserted. Third, there are certainly not more than two holes as is implied by the newly claimed “at least two of the through openings…”
Regarding claim 23, there is no support whatsoever for any “through holes” (plural), as noted above with respect to claim 22.
The Applicant is strongly encouraged to refrain from continuing to improperly add unsupported new matter to the disclosure of the instant application.
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 of this title, 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 1-4, 7, 9 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2016/0196906 A1), in view of Parish (US 10,665,379 B2).
Regarding claim 1, Kim discloses a method, comprising: forming (S100) a coil structure (all of 110b) of a magnetic structure (100) in a first laminate (120), the first laminate having opposing first (fig. 5: top, as viewed) and second (bottom) surfaces (figs. 1 and 5-7; pars. 0044 and 0072-0073); forming (S110) a through opening (120a) in the first laminate between the first and second surfaces, in which the through opening is surrounded by windings (any two or more of 110b) of the coil structure (figs. 6 and 8; pars. 0075-0077); inserting (S130) a magnetic core (150) in the through opening (figs. 6 and 10; pars. 0078-0079); forming (S140) a second laminate (130a) on the first surface and in the through opening between the first laminate and the magnetic core, in which the first and second laminates, the coil structure, and the magnetic core forms a laminate embedded magnetic core and coil structure (figs. 6 and 11; pars. 0081-0083); and applying second solder resist (130b) on the second surface of the first laminate, in which the second solder resist contacts the second laminate and the magnetic core in the through opening (figs. 12-13: it is expressly and unambiguously clear that second solder resist, 130b, directly contacts the second laminate, 130a, and directly contacts the magnetic core, 150), and the second solder resist enclose[s] the laminate embedded magnetic core (fig. 13). Kim, however, does not explicitly disclose applying a first solder resist on the second laminate, wherein the first solder resist and the second solder resist enclose the laminate embedded magnetic core and coil structure.
Parish teaches that it is well known to perform a similar method, comprising: forming a coil structure (410) in a first laminate (300, including 309b), the first laminate having opposing first (fig. 3F: top as viewed) and second surfaces (bottom) (figs. 3a-3f; col. 6, lines 4-63); forming an opening (302) in the first laminate between the first and second surfaces, in which the opening is surrounded by windings (308) of the coil structure (figs. 3a and 3f-4a; col. 6, lines 4-13 and 61-64); inserting a magnetic core (304) in the opening; forming a second laminate (305a, 309a) applying first solder resist (310a) on the second laminate; and applying second solder resist (310b) on the second surface of the first laminate, in which the first solder resist and the second solder resist enclose the laminate embedded magnetic core and coil structure and cover the magnetic core in the through opening (fig. 5; col. 7, lines 1-31; col. 9, lines 56-64), wherein materials of the first solder resist and the second solder resist are different from materials of the first laminate and the second laminate (col. 10, lines 13-14).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Kim to incorporate the two solder resists covering the laminate of Parish. PHOSITA would have realized that an additional solder resist can be easily and readily added to achieve the desired protection, isolation and layer configuration of the intended magnetic coil structure. Moreover, there is no indication in the instant disclosure that any special solder resist or step of applying one was devised or that any surprising results were derived from simply using the old method of Kim with the well-known second resist of Parish. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 2, Kim in view of Parish teaches the method of claim 1 as detailed above, and Kim further discloses applying (S120) tape (10) on the surface of the first laminate to cover the through opening, wherein the magnetic core is supported on the tape after being inserted in the through opening (figs. 6 and 9; pars. 0079-0080).
Regarding claim 3, Kim in view of Parish teaches the method of claim 2 as detailed above, and Kim further discloses removing (S150) the tape after forming the second laminate in the through opening (figs. 6 and 12; par. 0084).
Regarding claim 4, Kim in view of Parish teaches the method of claim 2 as detailed above, and Kim further discloses forming the second laminate on the first laminate (figs. 10-11).
Regarding claim 7, Kim in view of Parish teaches the method of claim 1 as detailed above, and Kim further discloses that the first and second laminates include a same material (pars. 0047 and 0083: epoxy resin).
Regarding claim 9, Kim in view of Parish teaches the method of claim 1 as detailed above, and Kim further discloses that forming the second laminate in the through opening includes filling a space between the first laminate and the magnetic core in the through opening with the second laminate (figs. 10-11).
Regarding claim 21, Kim in view of Parish teaches the method of claim 1 as detailed above, and Kim further discloses that the coil structure in the first laminate is fully enclosed by the first laminate (fig. 2).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view Parish, further in view of Yeo et al. (US 2019/0311831 A1).
Regarding claim 5, Kim in view of Parish teaches all of the elements of the current invention as detailed above with respect to claim 1. Kim further discloses that the first laminate can comprise Bismaleimide-Triazine (BT) laminate (par. 0047). The modified Kim, however, does not explicitly disclose that the second laminate comprises Ajinomoto Build-up Film (ABF).
Yeo teaches that it is well known to perform a similar method (Title; Abstract), wherein the material for laminate layer or layers can be selected as Ajinomoto Build-up Film (ABF) (par. 0048).
At the time the application was filed, it would have been obvious to one of ordinary skill in the art to have further modified the current invention of Kim to incorporate the preferred ABF material choice of Yeo, since it has been held that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In this instance, Yeo discloses that ABF film is commonly used and one of a number of obvious alternatives. Moreover, there is no indication in the instant disclosure of any criticality to the material selection (see, e.g., claims 5 and 6) or that any surprising results were derived from the use of ABF or BT layers. Accordingly, the use of a well-known lamination material would have been a routine matter for PHOSITA and would have been done with reasonable expectations of success.
Regarding claim 6, Kim in view of Parish teaches all of the elements of the current invention as detailed above with respect to claim 1. Kim further discloses that a laminate layer can comprise Bismaleimide-Triazine (BT) laminate (par. 0047). The modified Kim, however, does not explicitly disclose that the second laminate comprises BT and the first laminate comprises ABF.
Yeo teaches that it is well known to perform a related method (Title; Abstract), wherein BT and ABF are selected for any number of the laminate layers, as desired (par. 0048). Please refer to claim 5 regarding the rationale for combination of references.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view of Parish, further in view of Nakamura et al. (US 2015/0035639 A1).
Regarding claim 8, Kim in view of Parish teaches all of the elements of the current invention as detailed above with respect to claim 3. The modified Kim, however, does not explicitly disclose inverting the laminate embedded magnetic core and coil structure after forming the second laminate in the through opening and before removing the tape.
Nakamura teaches that it is well known to perform a related method (Title; Abstract) including inverting the laminate embedded magnetic core and coil structure after forming the second laminate in the through opening and before removing the tape (102, 1021) (figs. 6A-7C; pars. 0068-0070).
At the time the application was filed, it would have been obvious to one of ordinary skill in the art to have further modified the current invention of Kim to incorporate the inversion of the formed layers of Nakamura. PHOSITA would have realized that inverting the layers would readily allow for easier and quicker filling of openings with the second laminate, allowing gravity to perform the work. This would have predictably decreased time and cost of manufacture. This obvious modification would have been done with reasonable expectations of success, as there is no indication that any special steps were devised, nor that any surprising results were derived from simply using the old method of Kim with the well-known expedient of Nakamura in the manner which Nakamura intended.
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
First, the Applicant has inexplicably argued against the previously applied 112(a) rejection, despite the fact that the Applicant has removed the limitations of claim 1 which were rejected under 112(a). The arguments are moot, and thus not compelling, because they do not apply to any currently applied rejection, and they do not even apply to limitations which are in the claims.
Subsequently, the Applicant has repeated the arguments previously presented (11/06/2025) and entirely rebutted (01/07/2026). The Applicant once again argues that Kim does not “mention any solder resist”. It is true that Kim does not disclose the term “solder resist”; however, the Applicant has done nothing to differentiate the claimed solder resist from the prior art cited layer(s). There is absolutely nothing in the claim which defines the solder resist, nor discloses any functionality which defines the solder resist. In fact, the Applicant’s arguments about the “solder resist” are entirely fabricated based upon outside information and do not find support anywhere in the entire original disclosure. There is nothing whatsoever about the material of the solder resist in the specification. There is nothing whatsoever about the use of the solder resist with any solder at all. In fact, the purported “solder resist” is literally never mentioned in conjunction with solder at all. Accordingly, though the claim may state that there is a “solder resist”, the claim (and the original disclosure) have absolutely no requirement anywhere that the “solder resist” be a real solder resist. As such, the Applicant has acted as their own lexicographer with respect to the claimed “solder resist”, which finds some basic definition in pars. [0005, 0006, 0028, 0033, and 0048]. Therein it is disclosed that the “solder resist” is not at all a solder resist as understood in the art, but instead is nothing more than a layer which encloses other layers. The instant specification defines “solder resist” according to the following disclosures: “applying solder resist to enclose the laminate structure” (par. 0005); “an upper layer of solder resist covering a top of the laminate structure and a lower layer of solder resist underlying the laminate structure” (par. 0006); “The upper and lower layers of solder resist 112 enclose from a top to bottom perspective the laminate embedded core” (par. 0028); “by applying solder resist 112 after forming hole 422 avoids chipping or otherwise damaging the solder resist in the drilling process” (par. 0033); “Moreover, because solder resist is applied after hole formation, e.g., after mechanical drilling, the problem of solder resist being chipped out or otherwise damaged during drilling is avoided. Maintaining the structural integrity of solder resist also contributes to the improved isolation capability of the structures of the present disclosure” (par. 0048). It is unequivocally clear that the claimed solder resist is simply not a solder resist, and is instead nothing more than a protective layer. The cited solder resist layers (130b) of Kim, and (310a and 310b) of Parish are clearly anticipatory of this exceedingly broad limitation, and the Applicant’s argument is not compelling. By the Applicant’s own admission, the layer (130b) of Kim is explicitly recited as being a cover layer, which is exactly what the purported solder resist of the instant application is used for. In fact, Applicant has even admitted that: “Kim and Parish at best teach applying solder resist on cover layers 130a/b in Kim”. The Applicant is encouraged to rely upon facts and evidence in their arguments, rather than conclusory statements relying upon unsupported new matter.
Applicant continues by attempting to argue that Parish teaches away from the combination applied in the previous and current office action. This argument is not at all compelling, because it is factually incorrect. First, it is noted that the applicant is using “teaching away” in a much broader sense that it is legally accepted. For a reference to be considered to teach away from a proposed modification such reference must criticize, discredit, or otherwise discourage the proposed combination. The applicant is further advised that disclosed examples and/or preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, even if such nonpreferred embodiments are described as somewhat inferior. However, and more importantly, the Applicant is arguing against the applicability of Parish with respect to limitations that are not even being cited as taught by Parish. It is simply not germane that the Applicant would prefer that Parish not be applicable to “forming a second laminate on the first surface and in the through opening…” because Parish is not cited as teaching this limitation, because it was clearly anticipated by Kim.
The Applicant then continues by simply fabricating limitations to support their position, though these limitations are nowhere in the claims and are not cited as being taught by Parish. Applicant incorrectly states:
Thus, Parish explicitly teaches against applying solder resist directly on epoxy gel or another laminate (e.g., resin) that fills cavities. In fact, as shown in, for example, FIG. 5, Parish teaches against filling cavities such as through holes 306 and cavity 302 using a laminate (e.g., epoxy gel or resin). Instead, Parish explicitly teaches using cover layer 305 and two insulating layers 309 (that are explicitly described as NOT solder resist) on the surfaces of the insulating substrate 301 to seal the cavities and through holes, before applying the optional solder resist layer.
This argument is riddled with fabrications and fallacies. To state that Parish “explicitly teaches against applying solder resist directly on epoxy gel” is disingenuous at best. First, Parish doesn’t “explicitly” teach against any limitations, as noted above. Second, there is nothing in the claim which discloses “directly” applying a solder resist on anything, and in fact this argument was thoroughly refuted in the prior office action. Third, Parish is not relied upon for any of these argued limitations, the vast majority of which are nowhere in the claims.
For all of the very clear reasons noted above, it is evident that the prior art as cited teaches each and every limitation of the claims, and it is certain that the Applicant’s arguments are not compelling, are not based in factual evidence, are not directed to the limitations of the claims as they are actually presented, and are improperly importing limitations into the claims in the rare instances where the argued limitations actually find support in the instant original disclosure.
Put simply, the claimed solder resist is not a solder resist as commonly understood and is instead specially defined by the original disclosure, the solder resists of both Kim and Parish clearly anticipate the actually recited limitations of the solder resists (i.e. nothing more than cover layers). The combination of Kim and Parish is proper and rationale for combination was properly provided by the Examiner. Parish does not teach away from the combination, and the combination would not in any manner destroy the invention of Parish. Parish is not relied upon to anticipate or teach anything more than “applying a first solder resist on the second laminate, wherein the first solder resist and the second solder resist enclose the laminate embedded magnetic core and coil structure”. All of the remaining citations with respect to Parish and claim 1 are simply to demonstrate that Parish is clearly analogous art to Kim and is undoubtedly in the same field of endeavor. Accordingly, all of the rejections of the claims are proper, and are hereby maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see Park et al. (US 2016/0293316 A1), which is of particular relevance to the claimed invention. Park discloses at least laminates (60, 60’) applied on magnetic core (70) and coil structures (40) surrounding the core (figs. 6-7C; pars. 0103-0129).
THIS ACTION IS MADE FINAL. 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 Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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