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 without traverse of Group I and “Embodiment shown in Figs. 1C, 4, and 8B” in the reply filed on 10/23/2025 is acknowledged.
Examiner’s Comment
The Examiner has cited particular columns and line numbers or figures in the references as applied to the claims below 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.
Regarding the limitation(s) "adjacent" in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that “adjacent” still allows for unrecited components to be therebetween (i.e. “adjacent” is taken to be synonymous with “near”). Should Applicants desire to exclude other components from located therebetween, the Examiner suggests using the wording “directly adjacent” or “in contact with”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23 and 27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 23 recites “at least a portion of the barrier is embedded in a dielectric layer of the housing” (emphasis added). Examiner was unable to find support for the instant limitation.
Claim 27 recites “the barrier comprises a non-conducting material”. Therefore, Claim 27 requires the barrier to comprise a non-conducting magnetic permeable material due to being dependent on Claim 2. However, the Examiner was unable to find support in Applicant’s Specification for the barrier to comprise a material that is both non-conducting and magnetic.
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 11 is 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 11 recites the limitation "the surrounding structure". There is insufficient antecedent basis for this limitation in the claim.
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 1-12, 21, 23, 25-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 20170025363 (“Tsai et al.”).
With regards to Claim 1, Tsai et al. teaches an electronic device comprising a coil element configured to provide an electromagnetic field ([0022]-[0023]), a housing comprising an EMI (electromagnetic Interference) shielding layer (23a and relevant thereof) and accommodating the coil element, and a barrier (23a, 23b, 23c, and relevant thereof) configured to block an electromagnetic induction effect caused by the electromagnetic field and the EMI shielding layer (Abstract, Figs. 1A-2B, [0003], [0005], [0006], [0008], [0009], [0023], [0026], [0030]-[0036], and [0043]).
With regards to Claim 2, Tsai et al. teaches the barrier comprises a magnetic permeable material [0031].
With regards to Claim 3, Tsai et al. teaches in a cross-sectional view, the barrier is disposed adjacent to at least two sides of the coil element (Figs. 1B and 2B).
With regards to Claim 4, Tsai et al. teaches in a top view perspective, the barrier substantially surrounds the coil element (Figs. 1B and 2B).
With regards to Claim 5, Tsai et al. teaches at least a portion of the barrier is arranged within the housing (Fig. 2B).
With regards to Claim 6, Tsai et al. teaches the housing comprises a first conductive portion (another 23a) and a second conductive portion (another 23a), and wherein the first conductive portion is arranged over the coil element, the second conductive portion is arranged to be adjacent to at least two sides of the coil element, and wherein the first conductive portion and the second conductive portion are configured to block the electromagnetic field (Abstract, Figs. 1B, 2B, [0035], and [0036]).
With regards to Claim 7, Tsai et al. teaches the second conductive portion defines an opening accommodating the coil element, and wherein the first conductive portion covers the coil element and is connected to the second conductive portion through a first solder material (23d) (Fig. 2B and [0036]).
With regards to Claim 8, Tsai et al. teaches the first conductive portion, the second conductive portion and the first solder material are collectively configured to block the electromagnetic field (Fig. 1B and Fig. 2B).
With regards to Claim 9, Tsai et al. teaches its electronic device further comprising a circuit board (10) under the coil element and electrically connected to the second conductive portion, wherein the circuit board is configured to block the electromagnetic field [0021].
With regards to Claim 10, Tsai et al. teaches the circuit board is connected to the second conductive portion through a second solder material (10c), and wherein the circuit board, the second solder material and the housing are collectively configured to block the electromagnetic field (Figs. 1B and 2B, [0021]).
With regards to Claim 11, Tsai et al. teaches the EMI shielding layer is configured to block an affection by the electromagnetic field to a component disposed outside the surrounding structure [0037].
With regards to Claim 12, Tsai et al. teaches the housing has an opening configured to receive an external device being charged by the electromagnetic field (Title, Figs. 1A, 1B and 2B, [0003], [0009], [0022], and [0023]).
With regards to Claim 21, Tsai et al. teaches a distance between the barrier and the coil element is shorter than a distance between the coil element and the EMI shielding layer (Fig. 2B, [0035], and [0036]).
With regards to Claim 23, Tsai et al. teaches at least a portion of the barrier is embedded in a dielectric layer (23b) of the housing (Fig. 2B, [0035], and [0036]).
With regards to Claim 25, Tsai et al. teaches the housing comprises an upper printed circuit board (14 and 15), a lower printed circuit board (10), and an interposer (15c) between the upper printed circuit board and the lower printed circuit board (Figs. 1A, 1B, [0021], [0027], and [0028]).
With regards to Claim 26, due to Tsai et al. teaching its barrier substantially surrounding the coil element, it is inherent that Tsai et al.’s barrier is configured to increase an inductance and a quality factor of the coil element.
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).
With regards to Claim 27, Tsai et al. teaches the barrier (23b) comprises a non-conducting material [0036].
With regards to Claim 28, Tsai et al. teaches an interposer (15c) between the coil element and the EMI shielding layer, wherein at least a portion of the barrier is arranged within the interposer (Fig. 2B).
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 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20170025363 (“Tsai et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20190348863 (“De Masi et al.”).
With regards to Claims 22 and 24, Tsai et al. teaches a coil element, such as an inductor [0023], and the barrier having a blank (Figs. 1B and 2B).
Tsai et al. does not teach its coil element comprising a ring-shaped body and a gap.
However, De Masi et al. teaches a coil element comprising a ring-shaped body and a gap (Abstract and Fig. 1A-1D). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Tsai et al.’s inductor be a ring shaped with a gap in order to provide sufficient electromagnetic field useful in charging a device (Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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 Patent Center and https://www.uspto.gov/patents/docx for 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.
/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785