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 Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims 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.
Claim Rejections - 35 USC § 112
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 1-2, 4-6, 9, and 11-12 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.
Claim 1 recites “the coil surrounds a hollow portion consisting of the permeability member, and the hollow portion is merely filled by the permeability member”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation hollow portion is merely filled, and the claim also recites hollow portion consisting of the permeability member which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 recites that the hollow portion is fully filled by the permeability member has the same interpretation that of the hollow portion consisting of the permeability member in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-2, 4-6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US 6,392,525).
Regarding claims 1, 5-6, and 9, Kato discloses a magnetic device comprising an upper magnetic core (2a), a lower magnetic core (2b), a coil (3) having an annular structure (Fig. 12), and a permeability member (1), disposed between the upper magnetic core and the lower magnetic core, wherein the coil is enclosed by the permeability member (Fig. 3-4), and the coil surrounds a hollow portion consisting of the permeability member (Fig. 3-4). Kato further discloses that the permeability member comprises of a metallic magnetic powder and a thermosetting resin and the first and second magnetic cores comprises of a ferrite sintered body or a pressed powder magnetic body of metallic magnetic powder (col. 3, lines 17-22). Given that Kato discloses that the permeability member additionally comprise of a resin and the cores comprises of pure magnetic material, Kato discloses that an initial permeability of the upper magnetic core and lower magnetic core is larger than an initial permeability of the permeability member.
Kato teachings of an annual structure comprising coil and permeability member and the magnetic core comprises two lateral pillars from a planar surface (Fig. 12), however, fails to explicitly disclose that these two embodiments are present together, thereby resulting a portion of the permeability member is exposed from the upper magnetic core and the lower magnetic core and at least a portion of the upper surface of the lower magnetic core is exposed from the permeability member. However, it would have been obvious to one of ordinary skill in the art to form the upper and lower magnetic cores to form two lateral pillars, thereby achieving a portion of the permeability member is exposed and upper surface of the lower magnetic core is exposed from the permeability member, as Kato discloses that this is a typical configuration well known in the art to support the coil and permeability member.
Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features of Figs. (3-4) and 12 as a functionally equivalent design option (planar magnetic core and planar magnetic core with lateral pillars) with a reasonable expectation of success in obtaining a suitable magnetic device.
Regarding claims 2 and 4, please see Fig. 3-4.
Claims 1-2, 4-6, 9, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun (US 20103/0169403) as evidenced by ((Giger et al. (Permeability evolution in quartz fault gouges under hydrothermal conditions) OR Mansurov (Some Applications of Nanocarbon Materials for Novel Devices)) in view of Kato et al. (US 6,392,525).
Regarding claim 1, Sun discloses a magnetic device comprising an upper magnetic core (301), a lower magnetic core (302), a coil (304) having an annual structure surrounding a hollow portion, and a permeability member (303, [0048]), disposed between the upper magnetic core and the lower magnetic core, wherein the coil is enclosed by the permeability member [0048], wherein the lower magnetic core has an upper surface facing the permeability member and the upper magnetic core, and at least a portion of the upper surface is exposed from the permeability member (Figs. 5-7). Sun fails to explicitly disclose that an initial permeability of the upper and/or lower magnetic core is larger than an initial permeability of the permeability member, however, Sun discloses that the upper and lower magnetic core comprises of a magnetic material and the permeability member comprise of an insulating material of powder and adhesive glue [0045, 0048]. One of ordinary skill in the art would have immediate envisage that a magnetic material has a higher permeability than that of an insulating material.
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).
Furthermore, although Sun discloses adhesive glue (resin) and quartz powder, Sun fails to explicitly disclose that quartz powder has permeability. Ginger and Mansurov discloses that it is known in the art that quartz has permeability (Ginger: Abstract, Introduction; Mansurov: Table 1). Thereby, Sun discloses a quartz powder with permeability.
Sun fails to explicitly disclose that the coil surrounds a hollow portion consisting of the permeability member.
Sun discloses the claimed invention except that it uses a structure of protruding portions at the hollow portion instead of just a permeability member. Kato shows that using only a permeability member within the hollow portion is an equivalent structure known in the art (Fig. 1-4). Therefore, because these two structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute protruding portion for permeability member in the invention of Sun. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features as a functionally equivalent design option with a reasonable expectation of success in obtaining a suitable magnetic device.
Regarding claim 2, Sun discloses the structure as claimed (Fig. 7).
Regarding claims 4-6, 9, and 12, Sun in view of Kato discloses the structure as claimed (Fig. 5-7).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 20103/0169403) as evidenced by ((Giger et al. (Permeability evolution in quartz fault gouges under hydrothermal conditions) OR Mansurov (Some Applications of Nanocarbon Materials for Novel Devices)) in view of Kato et al. (US 6,392,525), as applied to claim 1 above, and further in view of Nakamura et al. (JP 2014-053453).
Regarding claim 11, Sun discloses a magnetic device as claimed, however, fails to explicitly disclose a winding frame having a plurality of leads with its structure as claimed.
Nakamura discloses a magnetic device comprising the upper magnetic core comprises two lateral pillars with its structure as claimed and winding frame having plurality of leads with its structure as claimed (All Figs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sun’s magnetic device to additional comprise a winding frame with plurality of leads as presently claimed, since Nakamura discloses that this is a known magnetic device structure and in order to secure alignment properties and insulation properties (Abstract).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 20103/0169403) as evidenced by ((Giger et al. (Permeability evolution in quartz fault gouges under hydrothermal conditions) OR Mansurov (Some Applications of Nanocarbon Materials for Novel Devices)) in view of Kato et al. (US 6,392,525), as applied to claim 1 above, and further in view in view of Yang et al. (US 7,646,276).
Regarding claim 11, Sun discloses a magnetic device as claimed, however, fails to explicitly disclose a winding frame having a plurality of leads with its structure as claimed.
Yang discloses a magnetic device comprising the upper magnetic core comprises two lateral pillars with its structure as claimed and winding frame having plurality of leads with its structure as claimed (All Figs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sun’s magnetic device to additional comprise a winding frame with plurality of leads as presently claimed, since Yang discloses that this is a known magnetic device structure to provide enough voltage and current value (col. 1-2).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 20103/0169403) as evidenced by ((Giger et al. (Permeability evolution in quartz fault gouges under hydrothermal conditions) OR Mansurov (Some Applications of Nanocarbon Materials for Novel Devices)) Kato et al. (US 6,392,525), as applied to claim 1 above, and further in view in view of Tsai et al. (US 9,349,521).
Regarding claim 11, Sun discloses a magnetic device as claimed, however, fails to explicitly disclose a winding frame having a plurality of leads with its structure as claimed.
Tsai discloses a magnetic device comprising the upper magnetic core comprises two lateral pillars with its structure as claimed and winding frame having plurality of leads with its structure as claimed (All Figs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sun’s magnetic device to additional comprise a winding frame with plurality of leads as presently claimed, since Tsai discloses that this is a known magnetic device structure and to increase the universal usability and assembling speed (col. 1, lines 6-10).
Response to Arguments
Applicant’s arguments with respect to claim 1 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.
Conclusion
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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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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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785