DETAILED ACTION
Response to Amendment
Amendments to the claims, filed on November 13, 2025, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
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 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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Specification
The specification amendment filed November 13, 2025 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: there is no indication where it should be entered into the specification (it is not proper for the first paragraph). The Examiner also notes that this information is already present in the specification at Paragraphs 24 – 32.
The first paragraph of Applicants' specification should be updated to reflect the current status of any listed related U.S. patent applications. I.e. this application is a Continuation-in-part of 17/900,803 and has a Provisional Application. These should be listed in the first paragraph as follows (exemplary screen capture from U.S. Patent App. No. 2024/0083588 A1, for example purposes only):
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E.g. for this Application, the first Paragraph should state:
This application is a U.S. Non-Provisional and Continuation-in-Part (CIP) patent application that claims priority to U.S. Non-Provisional patent application Ser. No. 17/900,803 filed on August 31, 2022 and published as U.S. Patent No. 12,077,877, which claims priority to U.S. Provisional Patent Application Ser. No. 63/327,789 filed on April 5, 2022, the contents of which are hereby incorporated by reference herein in their entirety.
Claim Objections
Claims 13, 14 and 16 – 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 22 – 43 are not present in the latest claim set and it is unclear if this is because they are withdrawn or cancelled. Subsequent amendments should include all the claims with the proper claim designators (“Withdrawn” or “Canceled”).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 10 recites the limitation "the core" in line 3. There is insufficient antecedent basis for this limitation in the claim since no ‘core’ has been recited previously. This rejection can be overcome by changing the dependency to depend from claim 12 or to change “the core” to “a core”.
Claim 11 is rejected for the same reasons as set forth above, as claim 2 recites “the second magnetic material layer extends through the plurality of voids” yet this claim attempts to “fill” the voids with non-magnetic material (“… wherein the material filling the voids of the internal insulative layer is a non-magnetic metal”). It can’t be both “the second magnetic material” and “a non-magnetic metal” as the material filling the voids. No art has been applied to this claim as it is deemed indefinite to the point of non-reason; however, the Examiner notes that all the art applied teaches the insulating material making up the insulative layer are all non-magnetic, though usually oxides, etc. not a “metal”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 2 – 6 and 8 – 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Horng et al. (U.S. Patent App. No. 2012/0135273 A1) for the reasons of record as set forth in Paragraph No. 15 of the Office Action mailed on May 13, 2025.
Regarding the amended language to claim 1, Horng et al. discloses the claimed structure in Figure 3:
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, noting that layer 50 is the first magnetic material layer, layer 51 (specifically the multiple portions labeled 51b) is the insulative layer, and layers 51a and 52 make up the second magnetic material layer, noting that both 51a and 52 include Co, Fe, etc.; i.e. are the same magnetic material. Since these nano-current columns 51b stretch from layer 52 to layer 50, they “extend through the plurality of voids [between elements 51b] to connect with the first ferromagnetic layer 50.
The remaining claims are met for the reasons previously set forth.
Claims 1, 2, and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Suzuki et al. (U.S. Patent App. No. 2023/0126614 A1) as evidenced by Miura et al. (U.S. Patent App. No. 2020/0367360 A1) and Komuro (U.S. Patent App. No. 2009/0239098 A1).
Regarding claim 1, Suzuki et al. discloses a magnetic mass (Figures; e.g. Figure 2) comprising at least one magnetic material (
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- black shaded portion; e.g. magnetic material M1) having a porous insulative layer on an external surface1 of the magnetic material (
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: black shaded regions formed from insulating layers 90, 91, 92, … 98, etc.), wherein the porous insulative layer comprises a plurality of voids (black regions in graphic above) extending therethrough to the magnetic material, and wherein the magnetic material is configured to serve as an electrode in a plating bath for electroplating a subsequent material through the voids (noting teaching in Paragraphs 0042 – 0043 of electroplating and implication that it applies to magnetic material M2 and M3)2.
Regarding claim 2, Suzuki et al. disclose a hybrid magnetic material (Figures; e.g. Figure 2) comprising a first magnetic material layer (
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), an internal insulative layer on a surface of the first magnetic material layer (
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), and a second magnetic material layer on a surface of the internal insulative layer (
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- black shaded portions, i.e. M2 and M3 magnetic material layers), wherein the internal insulative layer is porous (as above), and wherein the internal insulative layer comprises a plurality of voids (essentially same as saying it is porous, but:
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) extending therethrough (ibid), and wherein the second magnetic material layer extends through the plurality of voids to connect with the first magnetic material layer (
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).
Regarding claim 12, Suzuki et al. disclose the use as a transformer, i.e. ‘core’ with coils (at least Paragraphs 0002 – 0019).
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 of this title, 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 7 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Horng et al. as applied above, for the reasons of record as set forth in Paragraph No. 17 of the Office Action mailed on May 13, 2025.
Horng et al. is relied upon as previously set forth.
Claims 4, 5, 8 - 10 and 15 rejected under 35 U.S.C. 103(a) as being unpatentable over Suzuki et al. as applied above, and further evidenced by Sakai (U.S. Patent App. No. 2022/0328230 A1) and Mizukoshi et al. (U.S. Patent App. No. 2006/0084253 A1).
Suzuki et al. is relied upon as described above.
Regarding claims 4 and 5, Suzuki et al. fail to explicitly disclose specific materials or dimensions other than illustrations in the indicated Figures, above.
However, regarding claim 4, layers M1, M2 and M3 are taught as magnetic but no details are provided. The Examiner takes Official Notice that a skilled artisan would readily appreciate that these can be the same or different magnetic materials given the different nomenclature for the layers (versus calling them all “M1”). Similarly, regarding claim 5, the thickness of layer M1 is illustrated as a small fraction of the thickness of layer M2+M3 as shown above. The Examiner takes Official Notice that a skilled artisan would readily appreciate that one could optimize the thickness of the underlying layer, as well as the combined thickness of the layer between the insulating columns and the top magnetic layer.
Regarding claim 4, substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, having magnetic layer M1 being different than magnetic layers M2 + M3 versus embodiments wherein all three magnetic materials are the same is a functional equivalent in the field of suitable magnetic bodies to encapsulate coils, etc.. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative thickness values through routine experimentation, especially given the teaching in Suzuki et al. (based on scale in Figures) regarding the desire to have the magnetic layer M1 be smaller in thickness than the combined thickness values of M2 and M3. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 8 and 15, Suzuki et al. disclose the use as a semiconductor, but fails to explicitly teach a “base”. However, it is conventional to form a semiconductive inductor on a substrate/support, which reads on a base, as evidenced by Mizukoshi et al. (Abstract; Figures) as this allows patterning to allow for good adhesion of the plating seed film (entire disclosure).
Regarding claims 9 and 10, the Examiner takes Official Notice that magnetic materials formed from Fe, Co, and Ni are conventional in the magnetic arts, especially the magnetic inductor arts as evidenced by Sakai (at least Abstract, but see entire disclosure) and that having non-magnetic additives (i.e. “core additive”) within the magnetic material core is also well established in the art to improve the properties of the core (as evidenced above, noting that Zn, Cu, Si are all non-magnetic materials improving the phase boundary and magnetic properties of the taught magnetic material core).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 13, 14 and 16 – 22 are deemed allowable for the reasons previously set forth.
For additional clarity, the Examiner notes that amendments to cancel claims 1 and 13 and amend claim 2 to positively recite: “and including a second hybrid magnetic material and a metallic coil operably placed between the first hybrid magnetic material and the second hybrid magnetic material” would appear to bring the case into condition for allowance based on the reasons set forth previously and the relied upon subject matter in the rejections set forth above. The Examiner acknowledges that there are other potential pathways for allowability and that this is simply one that incorporates the allowable subject matter indicated above.
Response to Arguments
The Double Patenting rejection of claims
The filed terminal disclaimer has obviated these rejections.
The objection of the Specification
Applicants attempted to address this but there appears to have been some confusion over what the Examiner was referencing. The Examiner notes that this information can either appear in an Application Data Sheet or as the first sentence (typically termed the ‘first paragraph’) of the specification – see MPEP 202. The Examiner notes that it does not appear that the Application Data Sheet correctly identifies the parent Application as having matured into the indicated patent, hence the requirement to include this as the first paragraph/sentence of the specification.
The rejection of claims under 35 U.S.C § 112
With regard to claims 10 and 11, the proposed response/amendment either added a new issue (antecedence in claim 10) or failed to address the concern raised by the Examiner (that the material filling the voids is expressly called as both magnetic _and_ non-magnetic by virtue of the language in claim 11, which is impossible as the two are mutually exclusive). If the Examiner is missing something from claim 11, Applicants are asked to explain in more detail how the second magnetic material and a non-magnetic material can both be recited as filling the voids (when the second magnetic material must make contact with the first magnetic material and exist on a surface of the insulative layer).
The rejection of claims under 35 U.S.C § 102 – All _but_ Horng et al.
The above noted rejection has been withdrawn because Applicants’ amendment(s) and arguments have been found persuasive and have overcome these rejections.
The rejection of claims under 35 U.S.C § 102/103 – Horng et al.
Applicant(s) argue(s) that Horng et al. fails to teach claim 1 due to the language “external surface”. The Examiner respectfully disagrees. However, the other amended language of “configured to … subsequent material through the plurality of voids” is not taught nor rendered obvious by Horng et al., as Horng et al. discloses a different methodology where the “voids” and magnetic columns are formed together; i.e. no capability of plating through the plurality of voids.
Regarding claim 2 and its dependents, Applicants argue that “The structure of claim 2 … would create a direct electrical short circuit if applied to Horng's device”. The Examiner respectfully disagrees.
As noted in Horng et al., they explicitly desire the metal grains to ‘short circuit’ the pathway to lower the resistance (i.e. tailoring the resistance) of the barrier layer. So, in fact, Horng et al. explicitly wants the two magnetic layers to be directly connected to each other via the channels (and only the channels …. with the insulative layer material serving as the main/bulk material to still provide the appropriate resistance). See Horng et al., Paragraphs 0007, 0020, 0033 and 0051. As such, since Horng et al. teaches both that the columns should extend all the way through and that the (switching) current primarily travels through these columns, the Examiner does not find Applicants’ arguments convincing.
The rejection of claims under 35 U.S.C § 102/103 – Suzuki et al.
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Applicants’ amendment resulted in embodiments not previously considered (i.e. amendments to claims 1 and 2) which necessitated the new grounds of rejection, and hence the finality of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
January 8, 2026
1 The examiner notes that “external surface” does not exclude additional materials/layers being deposited on said surface, as the present claims are cast in open (i.e. “comprising”) language. Should Applicants desire to exclude additional layers from being present on the structure of claim 1, they should consider ‘consisting of’ instead of ‘comprising’.
2 As additional evidence that magnetic materials in inductor structures such as Suzuki et al. are conventionally applied via plating, the Examiner points to evidentiary references Komuro (at least Paragraph 0063) and Miura et al. (at least Paragraphs 0017 – 0023), both of which teach that plating is a conventional methodology to apply magnetic films in these types of structures.