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 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 06/15/2026has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 1-5, 11-14 and 16-19 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “coils wound around portions of the bobbin” as recited in claim 1 and similar limitations in claims 11 and 16 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-5, 11-14 and 16-19 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.
Regarding claim 1, the originally filed specification does not disclose “coils wound around portions of the bobbin” as amended. Paragraph [0019] of the originally filed specification discloses “the coil or coil winding 104 (singular) may be wound around portions of the bobbin 106.” Accordingly, the present invention does not appear to have “coils (plural) around portions of the bobbin” as amended. Similar rejection is applied to claims 11 and 16.
Claims 2-5, 12-14 and 17-19 are rejected as being directly or indirectly dependent on claims 1, 11 or 16.
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 1-5, 11-14 and 16-19 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.
Regarding claim 1, it’s not clear what’s intended by “coils wound around portions of the bobbin” as amended. The examiner is required to interpret the claim limitations in light of the specification. As stated above, the originally filed specification teaches “a…coil or coil winding 104 may be wound around portions of the bobbin 106.” So, while the limitation in question may or may not be clear by itself, it is not clear when the limitation in question is interpreted in light of the specification. Specifically, the examiner is not clear whether a plurality of coils are wound around portions of the bobbin, a coil is wound around portions of the bobbin, turns of a coil is wound around portions of the bobbin, or else. For examination purpose the limitation in question is interpreted as “a coil wound around portions of the bobbin” consistent with the specification.
Similar rejection is applied to claims 11 and 16.
Claims 2-5, 12-14 and 17-19 are rejected as being directly or indirectly dependent on claims 1, 11 or 16 and therefore inheriting the indefiniteness thereof.
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)(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 1, 11 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Seo (U.S. PG. Pub. No. 2022/0215995 A1).
With respect to claim 1, best understood in view of 35 USC 112(b) rejection, Seo teaches an inductor 30 (FIGs. 3-6) comprising:
a bobbin 300 defining a cavity 305;
coils 320 wound around portions of the bobbin; and
a plug 200 (see FIG. 2 for illustration) inserted into the cavity, wherein the bobbin defines fluid paths (oil flow passage) between (i) an inlet (oil entry) and the cavity and (ii) the cavity and the coils, and wherein the plug is in fluid communication with the fluid paths and is configured to choke flow of fluid between the inlet and coils through the fluid paths (paras. [0027], [0036], [0037] and [0040]).
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With respect to claim 11, best understood in view of 35 USC 112(b) rejection, Seo teaches an inductor 30 (FIGs. 3-6) comprising:
a bobbin 300 defining a cavity 305;
coils 320 wound around the bobbin; and
a plug 200 (see FIG. 2 for illustration) inserted into the cavity, wherein the bobbin comprises a first fluid path (oil flow passage) between an inlet (oil entry) and the cavity and wherein the plug is configured to choke flow of fluid through the first fluid path (paras. [0027], [0036], [0037] and [0040]).
With respect to claim 16, best understood in view of 35 USC 112(b) rejection, Seo teaches an inductor 30 (FIGs. 3-6) comprising:
a bobbin 300;
coils 320 surrounding portions of the bobbin; and
a plug 200 (see FIG. 2 for illustration);
wherein the bobbin overhangs the coils (the flanges of the bobbin overhangs the coils), defines a cavity 305 that houses the plug, and comprises a first fluid path (oil flow passage) from an inlet (oil entry), wherein the plug chokes flow of fluid through the first fluid path (paras. [0027], [0036], [0037] and [0040]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-4, 12-14 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Seo, as applied to claims 1, 11 and 16 above, in view of Messer et al. (U.S. Patent No. 10,736,233 B1, hereinafter “Messer”).
With respect to claim 2, Seo teaches the inductor of claim 1. Seo does not expressly teach the plug comprises a plurality of fins that obstruct the flow of fluid through the plug.
Messer teaches an inductor (FIG. 5), wherein the plug 40 comprises a plurality of fins 120 that obstruct the flow of fluid through the plug (col. 7, lines 17-19).
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It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the plurality of fins as taught by Messer to the inductor of Seo to required flow path for the fluid to meet design requirements.
With respect to claim 3, Seo in view of Messer teaches inductor of claim 2, wherein the fins have a tined configuration (Messer, col. 7, lines 17-19).
With respect to claim 4, Seo in view of Messer teaches the inductor of claim 2, wherein the fins are of different dimensions (Messer, col. 7, lines 17-19). The fins at the top side are wider than the bottom side.
With respect to claim 12, Seo teaches the inductor of claim 11. Seo does not expressly teach the bobbin defines a second fluid path between the cavity and the coils.
Messer teaches an inductor (FIG. 5), wherein the bobbin 24 defines a second fluid path 80 and 120, or 160 between the cavity (left or right “channels” 120 and 80) and the coils 50 (col. 6, lines 29-33, and 40-44). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the second fluid path as taught by Messer to the inductor of Seo to improve cooling speed.
With respect to claim 13, Seo teaches the inductor of claim 11. Seo does not expressly teach the plug defines a plurality of fins that obstruct the flow of fluid through the first fluid path.
Messer teaches an inductor (FIG. 5), wherein the plug 40 defines a plurality of fins 120 that obstruct the flow of fluid through the first fluid path (col. 7, lines 17-19). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the plurality of fins as taught by Messer to the inductor of Seo to required flow path for the fluid to meet design requirements.
With respect to claim 14, Seo in view of Messer teaches the inductor of claim 13, wherein the fins are of different dimensions (Messer, col. 7, lines 17-19). The fins at the top side are wider than the bottom side.
With respect to claim 17, Seo teaches the inductor of claim 16. Seo does not expressly teach the bobbin comprises second fluid path between the cavity and the coils.
Messer teaches an inductor (FIG. 5), wherein the bobbin 24 comprises second fluid path 80 and 120, or 160 between the cavity (left or right “channels” 120 and 80) and the coils 50 (col. 6, lines 29-33, and 40-44). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the second fluid path as taught by Messer to the inductor of Seo to improve cooling speed.
With respect to claim 18, Seo teaches the inductor of claim 16. Seo does not expressly teach the plug comprises a plurality of fins that obstruct the flow of fluid therethrough.
Messer teaches an inductor (FIG. 5), wherein the plug comprises a plurality of fins that obstruct the flow of fluid therethrough col. 7, lines 17-19). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the plurality of fins as taught by Messer to the inductor of Seo to required flow path for the fluid to meet design requirements.
With respect to claim 19, Seo in view of Messer teaches the inductor of claim 18, wherein the fins are of different dimensions (Messer, col. 7, lines 17-19). The fins at the top side are wider than the bottom side.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Seo, as applied to claim 1 above, and further in view of Giordano et al. (U.S. PG. Pub. No. 2021/0217548 A1, hereinafter “Giordano”).
With respect to claim 5, Seo teaches the inductor of claim 2. Seo does not expressly teach in alternating ones of the fins extend from opposite sides of the plug toward an axial center thereof to define a tortuous path for the flow of fluid through the plug.
Giordano teaches bobbin 1 (Fig. 1), wherein in alternating ones of the fins 2a (annotated Fig. 1) extend from opposite sides of the plug toward an axial center thereof to define a tortuous path for the flow of fluid through the plug (para. [0058]). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the fins as taught by Giordano to the inductor of Seo to regulate the fluid speed as desired to meet design requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANGTIN LIAN whose telephone number is (571)270-5729. The examiner can normally be reached Monday-Friday 0800-1700.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki S. Ismail can be reached at 571-272-3985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837
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