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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/20/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 “an insulating substrate including a first side, a second side opposite the first side, and a cavity, a magnetic core included in the cavity and including an inner periphery and an outer periphery” as recited in claim 1, the “a first isolation layer located on the first side of the insulating substrate between the first electrical winding and the second electrical winding; and a second isolation layer located on the second side of the insulating substrate between the first electrical winding and the second electrical winding” as claimed in claim 7, the “some or all of the electronic components are located between the substrate and the embedded magnetic component device” of claim 11, the “the inner vias of the first winding are arranged in first and second rows; and the inner vias of the second winding are arranged in a third row” as recited in claim 26 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 Objections
Claim 5 is objected to because of the following informalities:
Regarding claim 5, it appears “the lower traces of the first electrical winding are on a different layer than the upper traces of the second electrical winding” should be --the lower traces of the first electrical winding are on a different layer than the lower traces of the second electrical winding--.
Appropriate correction is required.
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.
Claim 31 recites the limitation “the embedded magnetic component device” in line 2. There is insufficient antecedent basis for this limitation in the claim. Applicant should also clarify if “a substrate” is the same or different from “a substrate” as recited in claim 24.
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.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,444,531, and claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,444,531. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 and 11 of U.S. Patent No. 12,444,531 contains all the limitations of claims 1-12 of the instant application.
Also, claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/035614 (reference application); claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/035614 (reference application); and claims 24-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-25 of copending Application No. 18/035614 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 and 23-25 of copending Application No. 18/035614 contains all the limitations of claims 1-12 and 24-31 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In addition, claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/565410 (reference application); claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/565410 (reference application); and claims 24-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-15 of copending Application No. 18/565410 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 and 11-15 of copending Application No. 18/035614 contains all the limitations of claims 1-12 and 24-31 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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)(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.
Claims 1, 3-5, 7-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otsubo et al. (U.S. PG. Pub. No. 2017/0018349 A1).
With respect to claim 1, Otsubo et al., hereinafter referred to as “Otsubo,” teaches an embedded magnetic component device 1d (FIG. 18) comprising:
an insulating substrate (substrate made by insulating layers 31, 220b, 220c, 120b and 120c, annotated FIG. 18) including a first side (upper side), a second side (lower side) opposite the first side, and a cavity (space in which magnetic core 11 is disposed);
a magnetic core 11 included in the cavity and including an inner periphery (inner side surface) and an outer periphery (outer side surface);
first and second electrical windings 12b and 12a that extend through the insulating substrate and around the magnetic core, each of the first and the second electrical windings including:
upper traces 116 and 316 located on the first side of the insulating substrate;
lower traces 16 and 216 located on the second side of the insulating substrate;
inner conductive connectors 14b and 14a extending through the insulating substrate adjacent to the inner periphery of the magnetic core, the inner conductive connectors respectively defining electrical connections between respective upper traces and respective lower traces; and
outer conductive connectors 13b and 13a extending through the insulating substrate adjacent to the outer periphery of the magnetic core, the outer conductive connectors respectively defining electrical connections between the respective upper traces and the respective lower traces,
a top covering 220a (annotated FIG. 18) on the upper traces of the second electrical winding; and
a bottom covering 120 and or 120a on the lower traces of the second electrical winding, wherein the first electrical winding is closer to the magnetic core than the second electrical winding (paras. [0156]-[0162]).
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With respect to claim 3, Otsubo teaches the embedded magnetic component device of claims 1, wherein the second electrical winding includes two outer conductive connectors 13a between each of the respective upper traces and each of the respective lower traces (para. [0156]).
With respect to claim 4, Otsubo teaches the embedded magnetic component device of claim 1, wherein the second electrical winding overlaps the first electrical winding (para. [0158]).
With respect to claim 5, Otsubo teaches the embedded magnetic component device of claim 1, wherein
the upper traces of the first electrical winding are on a different layer of the insulating substrate than the upper traces of the second electrical winding, and
the lower traces of the first electrical winding are on a different layer than the upper traces of the second electrical winding (paras. [0160]-[0163]).
With respect to claim 7, Otsubo teaches the embedded magnetic component device of claim 1, further comprising:
a first isolation layer 220b located on the first side of the insulating substrate between the first electrical winding and the second electrical winding; and
a second isolation layer 120b located on the second side of the insulating substrate between the first electrical winding and the second electrical winding (paras. [0160]-[0163]).
With respect to claim 8, Otsubo teaches the embedded magnetic component device of claim 7, wherein the first isolation layer and/or the second isolation layer include a single layer (paras. [0160]-[0163]).
With respect to claim 9, Otsubo teaches the embedded magnetic component device of claim 1, further comprising mounting members 24 on the top and/or bottom coverings (para. [0112]).
With respect to claim 10, Otsubo teaches the an electrical circuit (FIG. 18) comprising:
the embedded magnetic component device of claim 1; and
electronic components 2 (see FIG. 1 for illustration) mounted on the top covering and/or the bottom covering (para. [0067]).
With respect to claim 12, Otsubo teaches a method of manufacturing an embedded magnetic component device 1d (FIG. 18), the method comprising:
forming a cavity (space in which magnetic core 11 is disposed) in an insulating substrate (substrate made by insulating layers 31, 220b, 220c, 120b and 120c, annotated FIG. 18) that includes a first side (upper side) and a second side (lower side) opposite the first side;
installing a magnetic core 11 in the cavity, the magnetic core including an inner periphery (inner side surface) and an outer periphery (outer side surface);
forming first and second electrical windings 12b and 12a that extend through the insulating substrate and around the magnetic core, each of the first and the second electrical windings including:
upper traces 116 and 316 located on the first side of the insulating substrate;
lower traces 16 and 216 located on the second side of the insulating substrate;
inner conductive connectors 14b and 14a extending through the insulating substrate adjacent to the inner periphery of the magnetic core, the inner conductive connectors respectively defining electrical connections between respective upper traces and respective lower traces; and
outer conductive connectors 13b and 13a extending through the insulating substrate adjacent to the outer periphery of the magnetic core, the outer conductive connectors respectively defining electrical connections between the respective upper traces and the respective lower conductive traces;
forming a top covering 220a (annotated FIG. 18 above) on the upper traces of the second electrical winding; and
forming a bottom covering 120 and or 120a on the lower traces of the second electrical winding, wherein
the first electrical winding is closer to the magnetic core than the second electrical winding (paras. [0156]-[0162]).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Otsubo, as applied to claim 1 above, and further in view of Shelly (U.S. Patent No. 4,536,733).
With respect to claim 2, Otsubo teaches the embedded magnetic component device of claim 1. Otsubo does not expressly teach the upper and lower traces of the second electrical winding are wider than the upper and lower traces of the first electrical winding.
Shelly teaches a magnetic component (Fig. 4), wherein the upper and lower traces C1-16 and 26-32 of the second electrical winding 18 are wider than the upper and lower traces of the first electrical winding 16 (col. 4, lines 14-16, 35-37 and 47-51). 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 wider second winding traces as taught by Shelly to the embedded magnetic component device of Otsubo to reduce the resistance of the second electrical winding.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Otsubo, as applied to claim 1 above, in view of Finnemore et al. (U.S. Patent No. 6,246,311).
With respect to claim 6, Otsubo teaches the embedded magnetic component device of claim 1. Otsubo does not expressly teach the magnetic core is octagonally shaped.
Finnemore et al., hereinafter referred to as “Finnemore,” teaches a magnetic component device (FIG. 1), wherein the magnetic core 11 is octagonally shaped (col. 3, lines 4-7). 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 octagonally shaped magnetic core as taught by Finnemore to the embedded magnetic component device of Otsubo to provide the required geometry for the shield to reduce demagnetization and flux leakage (col. 3, lines 14-17).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Otsubo, as applied to claim 10 above, in view of Pagaila et al. (U.S. Patent No. 7,648,911 B2).
With respect to claim 11, Otsubo teaches the electrical circuit of claim 10, further comprising a substrate (circuit board, not expressly shown) on which the embedded magnetic component device is mounted (para. [0112]). Otsubo does not expressly teach
some or all of the electronic components are located between the substrate and the embedded magnetic component device.
Pagaila et al., hereinafter referred to as “Pagaila,” teaches an electric circuit 90 (Fig. 3e), wherein some or all of the electronic components 94 and or 100 are located between the substrate 92 and the embedded magnetic component device 122a-122l (col. 6, lines 11-14 and col. 8, lines 9-11). 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 electronic components between the substrate and the magnetic component as taught by Pagaila to the electrical circuit of Otsubo to provide the required connectivity with other electronic components to meet design requirements.
Claims 24, 25 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Otsubo in view of Shih et al. (U.S. Pg. Pub. No. 2012/0133473 A1).
With respect to claim 24, Otsubo teaches a device 1d (FIG. 18) comprising:
a substrate 31;
a magnetic core 11 in the substrate and including a hole (middle opening of toroidal magnetic core 11);
a first winding 12b extending through the hole and around the magnetic core;
a second winding 12a extending through the hole, around the magnetic core, and around a portion of the first winding;
a first covering 220a (annotated FIG. 18 above) located on a first surface (upper surface) of the substrate and over a first portion 316 of the second winding; and
a second covering 120 and or 120a located on a second surface (lower surface) of the substrate and over a second portion 216 of the second winding (paras. [0156]-[0162]). Otsubo does not expressly teach the first and the second windings only extend around a same half of the magnetic core.
Shih et al., hereinafter referred to as “Shih,” teaches a device 400 (FIGs. 7 and 8)
wherein the first and the second windings (windings formed by the conductive trances) only extend around a same half of the magnetic core (para. [0034]). 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 windings wound on the same half of the magnetic core as taught by Shih to the device of Otsubo to obtain the desired input/output voltage to meet design requirements.
With respect to claim 25, Otsubo in view of Shih teaches the device of claim 24, wherein
each of the first and the second windings includes top and bottom traces 116, 316, 16 and 216 connected by inner and outer traces 14b, 14a, 13b and 13a;
the top traces 116 of the first winding and the top traces 316 of the second winding are on different layers of the substrate;
the bottom traces 16 of the first winding and the bottom traces 216 of the second winding are on different layers of the substrate;
inner vias 14b of the first and the second windings are located within the hole; and
outer vias 14a of the first and the second windings are located on an exterior of the magnetic core (Otsubo, paras. [0156]-[0162]).
With respect to claim 28, Otsubo in view of Shih teaches the device of claim 25, further comprising an insulation layer 220b between the top traces of the first winding and the top traces of the second winding (Otsubo, para. [0160]).
With respect to claim 29, Otsubo in view of Shih teaches the module (FIG. 18) comprising:
the device of claim 24; and
electronic components 2 (see FIG. 1) mounted on the first covering and/or the second covering (para. [0067]).
With respect to claim 30, Otsubo in view of Shih teaches the module of claim 29, wherein the module is a resonant converter with a resonant frequency determined by an overlap of the first and the second windings (Otsubo, para. [0158]).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Otsubo in view of Shih, as applied to claim 25 above, and further in view of Dalmia et al. (U.S. PG. Pub. No. 2011/0291789 A1).
With respect to claim 26, Otsubo in view of Shih teaches the device of claim 25. Otsubo in view of Shih does not expressly teach
the inner vias of the first winding are arranged in first and second rows; and
the inner vias of the second winding are arranged in a third row.
Dalmia et al., hereinafter referred to as “Dalmia,” teaches a device 1500 (FIG. 13), wherein
the inner vias 1606 of the first winding 1600 are arranged in first and second rows 1606a and 1606b (annotated FIG. 13); and
the inner vias 1512A of the second winding 1500 are arranged in a third row 1512a1 (para. [0109] and [0113]).
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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 vias rows as taught by Dalmia to the device of Otsubo in view of Shih to provide the required spacing between the inner vias to ensure the isolation between the vias.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Otsubo in view of Shih, as applied to claim 25 above, in view of Finnemore.
With respect to claim 27, Otsubo in view of Shih teaches the device of claim 25. Otsubo in view of Shih does not expressly teach
the magnetic core has an octagonal shape; and
the outer vias of the primary windings and the secondary windings are arranged along three sides of the magnetic core.
Finnemore teaches a device (FIG. 1), wherein
the magnetic core 11 has an octagonal shape; and
the outer vias of the primary windings 16a 19a and 19b and the secondary windings 16b, 19c and 19d are arranged along three sides of the magnetic core (col. 3, lines 4-7 and 18-26). 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 octagonally shaped magnetic core as taught by Finnemore to the embedded magnetic component device of Otsubo to provide the required geometry for the shield to reduce demagnetization and flux leakage (col. 3, lines 14-17).
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Otsubo in view of Shih, as applied to claim 29 above, in view of Pagaila.
With respect to claim 31, Otsubo in view of Shih teaches the module of claim 29, further comprising a substrate (circuit board, not expressly shown) on which the embedded magnetic component device is mounted (para. [0112]). Otsubo in view of Shih does not expressly teach
some or all of the electronic components are located between the substrate and the device.
Pagaila teaches a module 90 (Fig. 3e), wherein
some or all of the electronic components 94 and or 100 are located between the substrate 92 and the embedded magnetic component device 122a-122l (col. 6, lines 11-14 and col. 8, lines 9-11). 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 electronic components between the substrate and the magnetic component as taught by Pagaila to the electrical circuit of Otsubo in view of Shih to provide the required connectivity with other electronic components to meet design requirements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. A list of pertinent prior art is attached in form PTO-892.
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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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837