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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/06/2025 has been entered.
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 1-9 and 21 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. Claim 1 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. There is no mention whatsoever of the materials of the first and second solder resist, and therefore there is no written support for the newly added limitation: “materials of the first solder resist and the second solder resist are different from materials of the first laminate and the second laminate”. Applicant is encouraged to amend the claims in line with the actually presented embodiments, rather than to amend the claims to disclose a narrower embodiment than was originally presented in an attempt to overcome the prior art, instead of disclosing the inventive concept in the claims.
Claims 2-9 and 21 are rejected by virtue of their dependence upon the unsupported new matter in claim 1. Claims 1-9 and 21 are examined as best understood.
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), wherein materials of the first solder resist and the second solder resist are different from materials of the first laminate and the second laminate (Kim discloses that “130b may be made of a same material as that of the first cover layer”, which makes it abundantly clear that it also may not be made of the same material, i.e. is made of a different material: par. 0085). 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 11/06/2025 have been fully considered but they are not persuasive. First, the Applicant argues that Kim does not “mention any solder resist”. This is true, 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. The closest the Applicant comes to defining the solder resist is in the newly added subject matter of claim 1; however, that subject matter finds no support whatsoever in the original disclosure and is thus moot. Even, ad arguendo, if the new subject matter did find support, it is still disclosed and taught by both Kim and Parrish, as detailed in the updated 103 rejection, above. Accordingly, this argument about preferred nomenclature for the cited layers is not compelling, as it is not based upon fact or the merits, but instead is entirely based upon the opinion about what should or should not be called a solder resist, with no support of evidence.
The next argument is directed to the newly added unsupported new matter in claim 1. It is very important to note that this language is not supported by the original disclosure, and thus any arguments directed to the newly added language are moot on their face, because they argue limitations which are not proper for inclusion in the claims in the first place. Nonetheless, the Examiner has shown that both Kim and Parrish do provide the argued new limitations as cited above. Accordingly, this argument is not compelling.
Subsequently, Applicant has argued that Parrish discloses that first and second isolation barriers (309a/b) are not solder resist layers. This is true; however, they are not currently cited as being solder resist layers, and thus this argument is moot. Layers 310a/b are cited as solder resist layers and are explicitly disclosed as such in Parrish.
Finally, Applicant argues that “Parrish discloses solder resist layers 310a and 310b, which are formed on the first isolation barrier 309a and the second isolation barrier 309b, respectively, rather than on substrate 301 (which allegedly corresponds to the first laminate of claim 1) or cover layer 305 (which allegedly corresponds to the second laminate of claim 1). In addition, in Parish, neither solder resist layer 310a nor solder resist layer 310b "contacts the second laminate and the magnetic core in the through opening."” These arguments are reliant upon the overly narrow interpretation of the claim that the solder resist layers (310a/b) must be directly on the first laminate and that they must directly contact the second laminate. There is nothing in the claim that requires such a narrow interpretations and under broadest reasonable interpretation, the solder resist layers (310a/b) are clearly on the first laminate and are in contact with the second laminate, as actually claimed. Moreover, the updated rejection above includes (309b) as part of the first laminate and (309a) as part of the second laminate, and therefore the argument is moot (even if the overly narrow interpretation were correct) because solder resist (310b) is directly on the cited first laminate and solder resist (310a) directly contacts the second laminate. As such, the argument is not compelling.
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.
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, Sunil Singh can be reached at (571)272-3460. 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