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 .
Election/Restrictions
Applicant’s election of Species II in the reply filed on 01/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species I and III-VI, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/16/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,205,740 in view of O’Brien et al. [U.S. Pub. 2016/0104566].
Regarding Claim 1, U.S. Patent No. 12,205,740 in claim 1 shows a planar coil comprising: a base comprising a first surface; a metal layer located on the first surface and comprising a plurality of voids.
U.S. Patent No. 12,205,740 does not explicitly show a through hole and a first fixing tool inserted through the through hole and fixing the metal layer to the first surface side of the base.
O’Brien et al. shows a coil device (Figs. 1a-1b) teaching and suggesting a metal layer (50) located on the first surface (see Figs. 1a-1b) and comprising a through hole (through hole formed by element 61) and a first fixing tool (61) inserted through the through hole (see Figs. 1a-1b) and fixing the metal layer to the first surface side of the base (see Figs. 1a-1b, element 61 will fix element 50 to the top surface of element 10).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a through hole and a first fixing tool inserted through the through hole and fixing the metal layer to the first surface side of the base as taught by O’Brien et al. for the device as disclosed by U.S. Patent No. 12,205,740 to facilitate mechanical stability and reliability and provide electrical connection (Paragraph [0033]).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,205,740 in view of Yang et al. [CN 109378188].
Regarding Claim 1, U.S. Patent No. 12,205,740 in claim 1 shows a planar coil comprising: a base comprising a first surface; a metal layer located on the first surface and comprising a plurality of voids.
U.S. Patent No. 12,205,740 does not explicitly show a through hole and a first fixing tool inserted through the through hole and fixing the metal layer to the first surface side of the base.
Yang et al. shows a coil device (Figs. 1-6) teaching and suggesting a metal layer (2) located on the first surface (see Figs. 1-2) and comprising a through hole (56) and a first fixing tool (element 3 with element 33) inserted through the through hole (56, see Figs. 1-2) and fixing the metal layer to the first surface side of the base (see Figs. 1-2, element 3 with element 33 will fix element 2 to the top surface of element 41).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a through hole and a first fixing tool inserted through the through hole and fixing the metal layer to the first surface side of the base as taught by Yang et al. for the device as disclosed by U.S. Patent No. 12,205,740 to facilitate mechanical stability and reliability and improve product efficiency and increase power density (Abstract, Advantage, see English translation).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taracila et al. [U.S. Patent No. 8,674,799].
Regarding Claim 1, Taracila et al. shows a planar coil (Figs. 2-5) comprising:
a base (102) comprising a first surface (top surface);
a metal layer (120, Col. 7, Lines 41-53) located on the first surface (see Figs. 2 and 4) and comprising a through hole (element 180 with element 184) and a plurality of voids (elements 180 without any elements such as element 184); and
a first fixing tool (184) inserted through the through hole (element 180 with element 184, see Figs. 2 and 4) and fixing the metal layer to the first surface side of the base (see Figs. 2 and 4, element 184 being soldered or brazed will fix element 120 to the top surface of element 102, Col. 6, Lines 50-67 to Col. 7, Lines 1-8).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taracila et al. in view of Han et al. [U.S. Pub. No. 2009/0174407].
Regarding Claim 20, Taracila et al. shows the claimed invention as applied above but does not show the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough.
Han et al. shows a coil device (Fig. 7 with teachings from Figs. 12(a)-(f) and Fig. 1) teaching and suggesting the base (44 or 6) comprises a channel (56 or 2) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraphs [0045], [0048]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough as taught by Han et al. for the device as disclosed by Taracila et al. to accomplishing heat transfer (Paragraph [0038]).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taracila et al. in view of Bertels [U.S. Pub. No. 2016/0163445].
Regarding Claim 20, Taracila et al. shows the claimed invention as applied above but does not show the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough.
Bertels shows a coil device (Fig. 8 with teaching from Fig. 2) teaching and suggesting the base (72, Paragraph [0153]) comprises a channel (99) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraph [0153]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough as taught by Bertels for the device as disclosed by Taracila et al. to achieve cooling coil from overheating (Paragraph [0153]).
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. [U.S. Pub. No. 2016/0104566] in view of Konoue et al. [U.S. Pub. No. 2004/0084131].
Regarding Claim 1, O’Brien et al. shows a planar coil (Figs. 1a-1b) comprising:
a base (10) comprising a first surface (top surface);
a metal layer (50) located on the first surface (see Figs. 1a-1b) and comprising a through hole (through hole formed by element 61); and
a first fixing tool (61) inserted through the through hole (see Figs. 1a-1b) and fixing the metal layer to the first surface side of the base (see Figs. 1a-1b, element 61 will fix element 50 to the top surface of element 10).
O’Brien et al. does not explicitly disclose a metal layer comprising a plurality of voids.
Konoue et al. shows a coil device (Figs. 1-3) teaching and suggesting a metal layer (3) comprising a plurality of voids (8).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a metal layer comprising a plurality of voids as taught by Konoue et al. for the device as disclosed by O’Brien et al. to prevent tensile stress and avoid structural defects such as cracks therefore obtaining high reliability (Paragraphs [0078], [0122]).
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. [U.S. Pub. No. 2016/0104566] in view of Markham et al. [U.S. Pub. No. 2015/0310963].
Regarding Claim 1, O’Brien et al. shows a planar coil (Figs. 1a-1b) comprising:
a base (10) comprising a first surface (top surface);
a metal layer (50) located on the first surface (see Figs. 1a-1b) and comprising a through hole (through hole formed by element 61); and
a first fixing tool (61) inserted through the through hole (see Figs. 1a-1b) and fixing the metal layer to the first surface side of the base (see Figs. 1a-1b, element 61 will fix element 50 to the top surface of element 10).
O’Brien et al. does not explicitly disclose a metal layer comprising a plurality of voids.
Markham et al. shows a wire structure (Fig. 18 with teachings from Figs. 1-17) teaching and suggesting a metal layer (55 or 50) comprising a plurality of voids (80).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a metal layer comprising a plurality of voids as taught by Markham et al. for the device as disclosed by O’Brien et al. to improve conductivity, flexibility, reduced breaks, and reduced performance variability (Paragraph [0019]).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. in view of Konoue et al. OR O’Brien et al. in view of Markham et al. as applied to claim 1 above, and further in view of Han et al. [U.S. Pub. No. 2009/0174407].
Regarding Claim 20, O’Brien et al. in view of Konoue et al. OR O’Brien et al. in view of Markham et al. shows the claimed invention as applied above but does not show the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough.
Han et al. shows a coil device (Fig. 7 with teachings from Figs. 12(a)-(f) and Fig. 1) teaching and suggesting the base (44 or 6) comprises a channel (56 or 2) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraphs [0045], [0048]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough as taught by O’Brien et al. in view of Konoue et al. OR O’Brien et al. in view of Markham et al. for the device as disclosed by Taracila et al. to accomplishing heat transfer (Paragraph [0038]).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. in view of Konoue et al. OR O’Brien et al. in view of Markham et al. as applied to claim 1 above, and further in view of Ueda et al. [U.S. Pub. No. 2018/0254136].
Regarding Claim 20, O’Brien et al. in view of Konoue et al. OR O’Brien et al. in view of Markham et al. shows the claimed invention as applied above but does not show the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough.
Ueda et al. shows a coil device (Fig. 4 with teaching from Figs. 2-3) teaching and suggesting the base (22) comprises a channel (40 or 30) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraph [0072]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough as taught by Ueda et al. for the device as disclosed by O’Brien et al. in view of Konoue et al. OR O’Brien et al. in view of Markham et al. to improve cooling efficiency (Paragraph [0073]).
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. [CN 109378188] in view of Markham et al. [U.S. Pub. No. 2015/0310963].
Regarding Claim 1, Yang et al. shows a planar coil (Figs. 1-6) comprising:
a base (41) comprising a first surface (top surface);
a metal layer (2) located on the first surface (see Figs. 1-2) and comprising a through hole (56); and
a first fixing tool (element 3 with element 33) inserted through the through hole (56, see Figs. 1-2) and fixing the metal layer to the first surface side of the base (see Figs. 1-2, element 3 with element 33 will fix element 2 to the top surface of element 41).
Yang et al. does not explicitly disclose a metal layer comprising a plurality of voids.
Markham et al. shows a wire structure (Fig. 18 with teachings from Figs. 1-17) teaching and suggesting a metal layer (55 or 50) comprising a plurality of voids (80).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a metal layer comprising a plurality of voids as taught by Markham et al. for the device as disclosed by Yang et al. to improve conductivity, flexibility, reduced breaks, and reduced performance variability (Paragraph [0019]).
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. [CN 109378188] in view of Konoue et al. [U.S. Pub. No. 2004/0084131].
Regarding Claim 1, Yang et al. shows a planar coil (Figs. 1-6) comprising:
a base (41) comprising a first surface (top surface);
a metal layer (2) located on the first surface (see Figs. 1-2) and comprising a through hole (56); and
a first fixing tool (element 3 with element 33) inserted through the through hole (56, see Figs. 1-2) and fixing the metal layer to the first surface side of the base (see Figs. 1-2, element 3 with element 33 will fix element 2 to the top surface of element 41).
Yang et al. does not explicitly disclose a metal layer comprising a plurality of voids.
Konoue et al. shows a coil device (Figs. 1-3) teaching and suggesting a metal layer (3) comprising a plurality of voids (8).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a metal layer comprising a plurality of voids as taught by Konoue et al. for the device as disclosed by Yang et al. to prevent tensile stress and avoid structural defects such as cracks therefore obtaining high reliability (Paragraphs [0078], [0122]).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. in view of Markham et al. OR Yang et al. in view of Konoue et al. as applied to claim 1 above, and further in view of El-Barbari et al. [U.S. Pub. No. 2010/0148909].
Regarding Claim 20, Yang et al. in view of Markham et al. OR Yang et al. in view of Konoue et al. shows the claimed invention as applied above but does not show the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough.
El-Barbari et al. shows an inductor (Figs. 1-5) teaching and suggesting the base (78 or 102) comprises a channel (88 or 112) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraphs [0021], [0029]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough as taught by Bertels for the device as disclosed by Yang et al. in view of Markham et al. OR Yang et al. in view of Konoue et al. to achieve efficient cooling capabilities (Paragraph [0006]).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. in view of Markham et al. OR Yang et al. in view of Konoue et al. as applied to claim 1 above, and further in view of Bertels [U.S. Pub. No. 2016/0163445].
Regarding Claim 20, Yang et al. in view of Markham et al. OR Yang et al. in view of Konoue et al. shows the claimed invention as applied above but does not show the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough.
Bertels shows a coil device (Fig. 8 with teaching from Fig. 2) teaching and suggesting the base (72, Paragraph [0153]) comprises a channel (99) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraph [0153]).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have the base comprises a channel configured to allow a temperature control medium or a process gas to flow therethrough as taught by Bertels for the device as disclosed by Yang et al. in view of Markham et al. OR Yang et al. in view of Konoue et al. to achieve cooling coil from overheating (Paragraph [0153]).
Claim(s) 1 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. [U.S. Pub. No. 2009/0174407] in view of O’Brien et al. [U.S. Pub. No. 2016/0104566] and Konoue et al. [U.S. Pub. No. 2004/0084131].
Regarding Claim 1, Han et al. shows a planar coil (Fig. 7 with teachings from Figs. 12(a)-(f) and Fig. 1) comprising:
a base (44 or 6) comprising a first surface (top surface);
a metal layer (50 or 4) located on the first surface (see Fig. 7 with teachings from Figs. 12(a)-(f) and Fig. 1).
Han et al. does not explicitly show a metal layer comprising a through hole and a plurality of voids; and a first fixing tool inserted through the through hole and fixing the metal layer to the first surface side of the base.
O’Brien et al. shows a coil device (Figs. 1a-1b) teaching and suggesting a metal layer (50) located on the first surface (see Figs. 1a-1b) and comprising a through hole (through hole formed by element 61) and a first fixing tool (61) inserted through the through hole (see Figs. 1a-1b) and fixing the metal layer to the first surface side of the base (see Figs. 1a-1b, element 61 will fix element 50 to the top surface of element 10).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a through hole and a first fixing tool inserted through the through hole and fixing the metal layer to the first surface side of the base as taught by O’Brien et al. for the device as disclosed by Han et al. to facilitate mechanical stability and reliability and provide electrical connection (Paragraph [0033]).
Han et al. in view of O’Brien et al. does not explicitly show a metal layer comprising a plurality of voids.
Konoue et al. shows a coil device (Figs. 1-3) teaching and suggesting a metal layer (3) comprising a plurality of voids (8).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to have a metal layer comprising a plurality of voids as taught by Konoue et al. for the device as disclosed by Han et al. in view of O’Brien et al. to prevent tensile stress and avoid structural defects such as cracks therefore obtaining high reliability (Paragraphs [0078], [0122]).
Regarding Claim 20, Han et al. shows the base (44 or 6) comprises a channel (56 or 2) configured to allow a temperature control medium or a process gas to flow therethrough (Paragraphs [0045], [0048]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TSZFUNG J CHAN whose telephone number is (571)270-7981. The examiner can normally be reached M-TH 8:00AM-6:00PM.
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/TSZFUNG J CHAN/Primary Examiner, Art Unit 2837