Attorney Docket Number: T101565US01
Filing Date: 07/26/2022
Claimed Priority Date: none
Inventors: Yan et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the amendment filed on 01/14/2026.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Amendment Status
The amendment filed on 01/14/2026 in reply to the previous Office action mailed on 07/16/2025 has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 1-20, with claims 4-6, 10, and 16-20 remaining withdrawn from consideration, wherein claims 11 and 12 have been rejoined in view of Applicant’s amendments to their corresponding claim dependency.
Claim Objections
Applicant is advised that should claims 13 and 15 be found allowable, the limitations of claim 11 and 12, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
The claims are objected to because of the following informalities:
In line 2 of claim 23, “the first substrate substrate.” should read “the first substrate.”
Appropriate correction is required. No new matter should be entered.
Claim Rejections - 35 USC § 112
The following are quotations of 35 U.S.C. 112(a) and 35 U.S.C. 112(b):
(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.
(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.
Claims 23-24 and 27-28 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claims 23 and 27 have been newly added and both individually recite at least the new limitations “wherein the second winding is in the portion of the first substrate” and “the portion of the first substrate that overlaps the first substrate”. Applicant has not alleged where support for the claimed limitations can be found. Additionally, a review of the written description fails to find any support for the claimed “second winding… in the portion of the first substrate” and “portion of the first substrate that overlaps the first substrate” features, as the specification as originally filed is devoid of such terminology. Similarly, a review the Drawings fails to identify a “second winding [in a] portion of the first substrate” and a “portion of the first substrate that overlaps the first substrate”. Accordingly, the newly added limitations are directed to New Matter.
The applicant may cancel the claims, amend the claims, or demonstrate explicit support for the claimed subject matter in the original disclosure (e.g., by citing specific excerpts from Specification or features in Drawings related to the claimed embodiment, as originally filed). A broad statement alleging support for the claimed subject matter will be considered non-persuasive.
Claim 24 depends from claim 23 and thus inherits the deficiencies identified supra.
Claim 28 depends from claim 27 and thus inherits the deficiencies identified supra.
Claims 23-24 and 27-28 are rejected under 35 U.S.C. 112(b) for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 23 and 27 each individually recite the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate…”. All dependent claims must inherit the features of the claims from which they depend. As claim 23 is dependent upon claim 1 and claim 27 is dependent upon claim 9, the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate…” must be consistent with and in addition to the limitation “a second substrate including… a second winding”, respectively recited in both parental claims 1 and 9. Accordingly, this limitation in the claims is indefinite as the claim language does not clearly render how the second winding may be simultaneously present in both the first and second substrates.
Claim 23 recites the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate…”. It is unclear in the claim how the orientation or geometry of a first substrate would allow it to overlap itself so as to allow hosting of a second winding in the overlapped section. Accordingly, this limitation in the claim is indefinite.
Claim 23 recites the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate…”. No “portion of the first substrate that overlaps the first substrate” has been sufficiently previously recited in the claim or in any parental claim. Accordingly, there is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites the limitation “wherein the first and second windings in the first and second substrates are in the portions of the first and second substrates that overlap each other”. All dependent claims must inherit and be in addition to the features of the claims from which they depend. Accordingly, this limitation recited in claim 24 must be consistent with and in addition to the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate” recited in parental claim 23. Accordingly, this limitation in the claim is indefinite as the claim language does not clearly render how the second winding may be simultaneously present in both the first and second substrates.
Claim 24 recites the limitation “wherein the first and second windings in the first and second substrates are in the portions of the first and second substrates that overlap each other”. No “portions of the first and second substrates that overlap each other” have been previously sufficiently recited in the claim or in any parental claim. Accordingly, there is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate…”. It is unclear in the claim how the orientation or geometry of a first substrate would allow it to overlap itself so as to allow hosting of a second winding in the overlapped section. Accordingly, this limitation in the claim is indefinite.
Claim 27 recites the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate…”. No “portion of the first substrate that overlaps the first substrate” has been sufficiently previously recited in the claim or in any parental claim. Accordingly, there is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites the limitation “wherein the first and second windings in the first and second substrates are in the portions of the first and second substrates that overlap each other”. All dependent claims must inherit and be in addition to the features of the claims from which they depend. Accordingly, this limitation recited in claim 28 must be consistent with and in addition to the limitation “wherein the second winding is in the portion of the first substrate that overlaps the first substrate” recited in parental claim 27. Accordingly, this limitation in the claim is indefinite as the claim language does not clearly render how the second winding may be simultaneously present in both the first and second substrates.
Claim 28 recites the limitation “wherein the first and second windings in the first and second substrates are in the portions of the first and second substrates that overlap each other”. No “portions of the first and second substrates that overlap each other” have been previously sufficiently recited in the claim or in any parental claim. Accordingly, there is insufficient antecedent basis for this limitation in the claim.
Claim 24 depends from claim 23 and thus inherits the deficiencies identified supra.
Claim 28 depends from claim 27 and thus inherits the deficiencies identified supra.
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 9, 11, 13, and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Male (US 2019/0057942) in view of Sato (US 2021/0343662).
Regarding claim 9, Male (see, e.g., fig. 5) shows most aspects of the instant invention, including a transformer 548 comprising:
a first substrate (542 above 506) including a first patterned conductive feature 510 with multiple turns that form a first winding 510;
a first material 514 that encloses a portion of the first patterned conductive feature;
an adhesive layer 544 on a side of the first substrate;
a second substrate 542a including a second patterned conductive feature 510a with multiple turns that form a second winding 510a; and
a second material 514a that encloses a portion of the second patterned conductive feature
wherein:
the second substrate 542a extends on the adhesive layer 544 to magnetically couple the first and second windings (see, e.g., par.0044/ll.16-20)
Although Male teaches that the first and second patterned conductive features are enclosed by first and second materials, Male fails to specify that the materials are molded magnetic materials. Sato, in the same field of endeavor, teaches that using molded magnetic material to enclose a patterned conductive feature, shown to form a winding, can increase the inductance and operation of the patterned conductive feature and can further protect the electronic components of a device from the environment and electromagnetic interference (see, e.g., Sato: par.0031).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to use molded magnetic material as Male’s first and second materials, as taught by Sato, so as to increase the inductance and operation of Male’s patterned conductive features, and to further protect the electronic components of Male’s device from the environment and electromagnetic interference.
Regarding claims 11 and 13, Male (see, e.g., par.0044/ll.15-25) shows that the adhesive layer 544 is non-conductive.
Regarding claim 27, Male (see, e.g., fig. 5) shows that the second winding 510a is in a portion of a substrate (e.g., 542a) that overlaps the first substrate.
With regards to other language recited in claim 27, see the comments stated above in paragraphs 7-23.
Regarding claim 28, Male (see, e.g., fig. 5) shows that the first 510 winding is in the first (542 above 506) substrate.
With regards to other language recited in claim 28, see the comments stated above in paragraphs 7-23.
Claims 1-3, 7-8, 12, 14-15, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Male in view of Sato and Ho (US 2010/0259909).
Regarding claim 1, Male (see, e.g., fig. 5) shows most aspects of the instant invention, including an electronic device 548 comprising:
a first substrate (542 above 506) including a first patterned conductive feature 510 with multiple turns that form a first winding 510;
a first material 514 that encloses a portion of the first patterned conductive feature;
an adhesive layer 544 on a side of the first substrate;
a second substrate 542a including a second patterned conductive feature 510a with multiple turns that form a second winding 510a; and
a second material 514a that encloses a portion of the second patterned conductive feature
wherein:
the second substrate 542a extends on the adhesive layer 544 to magnetically couple the first and second windings (see, e.g., par.0044/ll.16-20)
Although Male teaches that the first and second patterned conductive features are enclosed by first and second materials, Male fails to specify that the materials are molded magnetic materials. Sato, in the same field of endeavor, teaches that using molded magnetic material to enclose a patterned conductive feature, shown to form a winding, can increase the inductance and operation of the patterned conductive feature and can further protect the electronic components of a device from the environment and electromagnetic interference (see, e.g., Sato: par.0031). See the comments stated above in paragraphs 26-28, which are considered to be repeated here.
Furthermore, although Male (see, e.g., par.0082) states that further modifications are possible within the scope of Male’s device, Male fails to specify that these modifications may include a package structure that encloses the first and second substrates. Ho, in a similar device to Male, teaches that a package structure, shown to enclose a first (bottom layer of 10a) and second (top layer of 10a) substrate, can encapsulate a device and can further help control undesired thermal expansion (see, e.g., Ho: fig. 1 and par.0034/ll.1-6).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to include the package structure of Ho in the device of Male, structured to enclose the first and second substrates of Male, as taught by Ho, so as to consolidate the elements of Ho’s device and to help control undesired thermal expansion.
Regarding claim 2, Male (see, e.g., fig. 5) shows the electronic device 548 further comprising another adhesive layer 506 between another side of the first substrate (542 above 506) and a die attach pad 502.
Regarding claims 3 and 7, Ho (see, e.g., fig. 1) shows:
a first semiconductor die 64a enclosed by the package structure 80 and having a first circuit electrically coupled 54a to the first substrate (bottom layer of 10a); and
a second semiconductor die 60a enclosed by the package structure and having a second circuit electrically coupled 48a to the second substrate (top layer of 10a)
Regarding claim 8, Male see, e.g., par.0044/ll.15-25) shows that the adhesive layer 544 is non-conductive.
Regarding claims 12, 14, and 15, Male/Sato shows most aspects of the instant invention (see paragraphs 26-29 above). However, although Male (see, e.g., par.0082) states that further modifications are possible within the scope of Male’s device, Male fails to specify that these modifications may include a non-magnetic molded package structure that encloses the first and second substrates and the adhesive layer. Ho, in a similar device to Male, teaches that using a non-magnetic molded package structure, shown to enclose an adhesive layer 25a and a first (bottom layer of 10a) and second (top layer of 10a) substrate, can encapsulate a device and can further help control undesired thermal expansion (see, e.g., Ho: fig. 1 and par.0034/ll.1-6).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to include the non-magnetic molded package structure of Ho in the device of Male, structured to enclose the first and second substrates and adhesive layer of Male, as taught by Ho, so as to consolidate the elements of Male’s device and to help control undesired thermal expansion.
Regarding claim 23, Male (see, e.g., fig. 5) shows that the second winding 510a is in a portion of a substrate (e.g., 542a) that overlaps the first substrate substrate.
With regards to other language recited in claim 23, see the comments stated above in paragraphs 7-23.
Regarding claim 24, Male (see, e.g., fig. 5) shows that the first 510 winding is in the first (542 above 506) substrate.
With regards to other language recited in claim 24, see the comments stated above in paragraphs 7-23.
As necessitated by Applicant’s amendments, claims 9 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Male/Sato in view of Fouquet (US 2010/0176660).
As necessitated by Applicant’s newly added claims, regarding claims 9 and 25, Male in view of Sato shows most aspects of the instant invention. See the comments stated above in paragraphs 26-28, which are considered to be repeated here. Male (see, e.g., fig. 5) also shows that the first substrate (542 above 506) and the second substrate 542a only partially overlap and that the second substrate only partially overlaps the first substrate. However, Male fails to explicitly specify that the first substrate only partially overlaps the second substrate. Fouquet, in the same field of endeavor, teaches a first and second winding-comprising transformer/electronic device having a first substrate 132/134 and a second substrate 131/135, wherein the first substrate and the second substrate only partially overlap each other (see, e.g., Fouquet: fig. 10). Fouquet teaches that such a substrate design reduces the amount of horizontal surface area needed to mount the substrates and device with other electronic components while simultaneously reducing the space used by the windings, providing a cost-effective solution that promotes miniaturization and increased integration (see, e.g., Fouquet: par.0032).
Fouquet is evidence showing that one of ordinary skill in the art would appreciate that having a first and second substrate only partially overlapping each other would be equivalent to having a first and second substrate only partially overlapping, and that such differences would result in no unexpected changes in the performance of the device of Male. That is, the substrate designs of both Male and Fouquet would yield the predictable result of providing suitable structural members capable of supporting first and second windings and integrating with various conductive and insulating layers in a transformer/electronic device.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either a first substrate and a second substrate only partially overlap each other, as taught by Fouquet, or a first and second substrate partially overlap, as taught by Male, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing suitable structural members capable of supporting first and second windings and integrating with various conductive and insulating layers in a transformer/electronic device. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Furthermore, Fouquet is evidence that it would have been obvious at the time of filing the invention that one of ordinary skill in the art would have particular incentive to have Male’s first substrate only partially overlap Male’s second substrate (i.e., to have the first substrate and the second substrate only partially overlap each other), as taught by Fouquet, so as to reduce the amount of horizontal surface area needed to mount the substrates and Male’s device with other electronic components while simultaneously reducing the space used by the windings, thereby cost-effectively promoting the miniaturization and increased integration of Male’s device.
Regarding claim 26, Male (see, e.g., fig. 5) shows that the first winding 510 is in the portion of the first substrate (542 above 506) that overlaps the second substrate. Additionally, Fouquet (see, e.g., fig. 10) shows that the first winding 134 is in the portion of the first substrate 132/134 that overlaps the second substrate 131/135.
As necessitated by Applicant’s amendments, claims 1 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Male/Sato/Ho in view of Fouquet.
As necessitated by Applicant’s newly added claims, regarding claims 1 and 21, Male in view of Sato and Ho shows most aspects of the instant invention. See the comments stated above in paragraphs 35-38, which are considered to be repeated here. Male (see, e.g., fig. 5) also shows that the first substrate (542 above 506) and the second substrate 542a only partially overlap and that the second substrate only partially overlaps the first substrate. However, Male fails to explicitly specify that the first substrate only partially overlaps the second substrate. Fouquet, in the same field of endeavor, teaches a first and second winding-comprising electronic device having a first substrate 132/134 and a second substrate 131/135, wherein the first substrate and the second substrate only partially overlap each other (see, e.g., Fouquet: fig. 10). Fouquet teaches that such a substrate design reduces the amount of horizontal surface area needed to mount the substrates and device with other electronic components while simultaneously reducing the space used by the windings, providing a cost-effective solution that promotes miniaturization and increased integration (see, e.g., Fouquet: par.0032).
Fouquet is evidence showing that one of ordinary skill in the art would appreciate that having a first and second substrate only partially overlapping each other would be equivalent to having a first and second substrate only partially overlapping, and that such differences would result in no unexpected changes in the performance of the device of Male. That is, the substrate designs of both Male and Fouquet would yield the predictable result of providing suitable structural members capable of supporting first and second windings and integrating with various conductive and insulating layers in an electronic device.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either a first substrate and a second substrate only partially overlap each other, as taught by Fouquet, or a first and second substrate partially overlap, as taught by Male, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing suitable structural members capable of supporting first and second windings and integrating with various conductive and insulating layers in an electronic device. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Furthermore, Fouquet is evidence that it would have been obvious at the time of filing the invention that one of ordinary skill in the art would have particular incentive to have Male’s first substrate only partially overlap Male’s second substrate (i.e., to have the first substrate and the second substrate only partially overlap each other), as taught by Fouquet, so as to reduce the amount of horizontal surface area needed to mount the substrates and Male’s device with other electronic components while simultaneously reducing the space used by the windings, thereby cost-effectively promoting the miniaturization and increased integration of Male’s device.
Regarding claim 22, Male (see, e.g., fig. 5) shows that the first winding 510 is in the portion of the first substrate (542 above 506) that overlaps the second substrate 542a. Additionally, Fouquet (see, e.g., fig. 10) shows that the first winding 134 is in the portion of the first substrate 132/134 that overlaps the second substrate 131/135.
Response to Arguments
Applicant’s amendments to the specification, filed on 01/14/2025, have overcome the objections to the drawings put forth in the previous Office action mailed on 07/16/2025. Accordingly, the objections to the drawings put forth in the previous Office action are hereby withdrawn.
With respect to the claims, Applicant argues:
Nowhere in [0044], or anywhere else in Male is there any explanation of what reference number 544 comprises. The bracket to the right of 544 in FIG. 5 strongly suggests that 544 includes dielectric bonding material 532, dielectric 534, magnetic core material 536 and dielectric bonding material 538 altogether connect interconnect layer 514 to 514a. Indeed, even if magnetic core material 536 is optional, there is no teaching in above [0044] that interconnect layer 514 can be coupled to interconnect layer 514a without at least dielectric bonding material 532, dielectric 534 and dielectric bonding material 538. There is simply no teaching in the above for an adhesive layer to couple the first and second windings in interconnect layers 514 & 514a. As such, Male fails to teach or suggest, “an adhesive layer on a side of the first substrate” and “a second substrate including a second patterned conductive feature with multiple turns that form a second winding, and a second molded magnetic material that encloses a portion of the second patterned conductive feature, the second substrate extending on the adhesive layer to magnetically couple the first and second windings”
Moreover, as Sato or Sato & Ho is not relied upon for this teaching, any combination of Male & Sato or Male, Sato, & Ho yet fails to teach or suggest, “an adhesive layer on a side of the first substrate” and “a second substrate including a second patterned conductive feature with multiple turns that form a second winding, and a second molded magnetic material that encloses a portion of the second patterned conductive feature, the second substrate extending on the adhesive layer to magnetically couple the first and second windings”, as required by Claims 9 and 1. Through various recited case law, Examiner’s determination is supposition not supported by fact and must be withdrawn.
The Examiner responds:
Applicant argues that Male fails to teach “an adhesive layer on a side of the first substrate” and “the second substrate extending on the adhesive layer to magnetically couple the first and second windings”, asserting that reference number 544 is not described in the text and therefore an “adhesive layer” as claimed cannot be described. This is not found persuasive. A reference must be considered as a whole, including both the written description and the figures, and the absence of explicit text describing a particular reference numeral does not preclude interpreting the structure shown in the figure. As acknowledged by Applicant (see “Applicant Arguments/Remarks Made in an Argument” filed on 01/14/2026, pg.13/ll.15-17), the bracket adjacent reference numeral 544 in figure 5 indicates that element 544 encompasses elements 532, 534, 536, and 538, to which the Examiner agrees. Accordingly, the absence of a particular reference numeral from the text does not prohibit interpreting the structure as illustrated and identifying the components that form element 544.
Furthermore, the term “adhesive layer” alone describes a structure that performs the function of adhesively bonding adjacent components. Accordingly, as described below, layer 544 teaches the claimed features. Par.0044 of Male states that elements 542 and 542a “may be bonded together with a dielectric bonding material, 532 and 538” and that the element 536 is bonded to element 542a using “a dielectric adhesive 532” and to an underlying structure 542 “also using a dielectric adhesive 538”. Thus, as acknowledged by Applicant, the structure identified by reference numeral 544 comprises adhesive bonding materials 532 and 528 at outermost surfaces. Accordingly, the opposing bonding surfaces of reference numeral 544, which consist of 532 and 538, necessarily include adhesive bonding material, and therefore the layer 544 adhesively bonds the substrates of Male’s device through its adhesive uppermost and bottommost surfaces. Accordingly, the layer represented by 544 (wherein it is noted that even Male uses a single reference numeral to describe such a layer) constitutes an adhesive bonding layer disposed between the substrates. That is, the first (542 above 506) and second 542a substrates of Male are adhesively bonded together by layer 544, which comprises adhesive material at the interfaces between layer 544 and the substrates. Therefore, the layer 544 shown in figure 5, which again includes adhesive bonding materials at its interfaces with the first and second substrates, constitutes an adhesive layer on a side of the first substrate.
Furthermore, Male also teaches that Male’s adhesive layer is arranged so as to magnetically couple the windings. Specifically, par.0044 explains that magnetic element 536, comprised in layer 544, “improve[s] coupling between” the first and second windings. As further described in figure 5, magnetic element 536 is physically coupled to the first and second substrates through the outermost surfaces of layer 544, which are adhesive structures. Accordingly, the layer identified by reference numeral 544 includes an element positioned between the first and second windings dedicated to magnetically coupling the first and second windings. As figure 5 illustrates, because this magnetic material is disposed within the same composite layer 544 that adhesively bonds the first and second substrates, the second substrate necessarily extends on the adhesive layer 544 while the magnetic material disposed therein magnetically couples the first and second windings. Therefore, Male teaches a structure in which a second substrate extends on the adhesive layer to magnetically couple the first and second windings. Accordingly, as congruent with Applicant’s remarks regarding the components of 544, Male illustrates the claimed features as shown.
With respect to the claims, Applicant additionally argues:
The 35 U.S.C. 103 rejections cited by the Examiner are improper in view of various cited case law.
The Examiner responds:
Applicant further asserts that the 35 U.S.C. 103 rejections set forth in the previous Office action mailed on 07/16/2025 are improper, and supports such arguments through various cited case law. However, Applicant does not specifically identify any error in the Examiner’s factual findings or articulated reasoning set forth in the previous Office action. Instead, Applicant provides only general statements that the rejections are improper without examining how the cited case law applies to the specific teachings of the references relied upon in the rejections.
Such conclusory statements do not constitute a substantive traversal of the rejection. Under 37 CFR 1.111(b), Applicant is required to distinctly and specifically point out the supposed errors in the Examiner’s action. As stated in 37 CFR 1.111(b), the reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied reference. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section. Merely citing legal authority or making conclusory statements that a rejection is improper, without addressing the Examiner’s specific findings regarding the prior art and the rationale for combining the references, does not constitute a substantive traversal of the rejection.
Because Applicant has not specifically identified any error in the Examiner’s finding of fact or reasoning supporting the 35 U.S.C. 103 rejections, the arguments are not persuasive. Attorney or legal argument unsupported by specific evidence or technical explanation is entitled to little probative value where it fails to address the teachings of the applied references. See MPEP § 2145. Accordingly, the rejections under 35 U.S.C. 103 set forth in the previous Office action are maintained.
Applicant’s other arguments with respect to the claims have been considered but are moot in view of the new and/or maintained grounds of rejection.
Conclusion
Applicant’s amendment necessitated the new and/or maintained grounds 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.
Papers related to this application may be submitted directly to Art Unit 2814 by facsimile transmission. Papers should be faxed to Art Unit 2814 via the Art Unit 2814 Fax Center. The faxing of such papers must conform to the notice published in the Official Gazette, 1096 OG 30 (15 November 1989). The Art Unit 2814 Fax Center number is (571) 273-8300. The Art Unit 2814 Fax Center is to be used only for papers related to Art Unit 2814 applications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shamita Hanumasagar at (703) 756-1521 and between the hours of 7:00 AM to 5:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Shamita.Hanumasagar@uspto.gov. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy, can be reached on (571) 272-1705.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (in USA or Canada) or 571-272-1000.
/Shamita S. Hanumasagar/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814