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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/16/2023 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 “helical coil wound with more than one turn” as recited in claim 1, “a plurality of electronic components mounted on the substrate” as claimed in claim 15 and “the outer terminal end of the first coil is connected to one end of an upper surface of the substrate on which the plurality of electronic components are mounted; the outer terminal end of the second coil is connected to another end of the upper surface of the substrate on which the plurality of electronic components are mounted” of claim 19 and similar limitation in claim 20 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 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 11, 12 and 15-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11, it’s not clear what’s intended by “a distance between adjacent conductors is about 0.01 mm or smaller in each of the first coil and the second coil” as recited. Does applicant mean the pitch or spacing between turns of the respective first coil and second coil? Similar rejection is applied in claim 12.
Regarding claim 15, applicant should clarify if “a substrate” of line 2 is the same as or different from the “substrate” as recited in claim 1.
Regarding claim 19, it’s not clear what’s intended by “the outer terminal end of the first coil is connected to one end of an upper surface of the substrate on which the plurality of electronic components are mounted;
the outer terminal end of the second coil is connected to another end of the upper surface of the substrate on which the plurality of electronic components are mounted” as claimed. Specifically, it’s not clear if the “substrate” refers to the substrate of the circuit module or the substrate of the inductor device. Similar rejection is applied in claim 20.
Claims 16-18 are rejected as being dependent on claim 15.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15 and 16 of U.S. Patent No. 12,341,496. Claims 2-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-14 of U.S. Patent No. 12,341,496. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of US Patent No. 12,341,496 contains all the limitations of claims 1-20 of the instant application.
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)(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.
Claims 1, 4, 5, 7, 13-15, 18 and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Schiek et al. (U.S. PG. Pub. No. 2021/0203303 A1).
With respect to claim 1, Schiek et al., hereinafter referred to as “Schiek,” teaches an inductor device (FIGs 1 and 2A) comprising:
a substrate SU and BM;
a first coil WG1 or WG2 and a second coil (the other of WG1 or WG2) in the substrate and connected in series;
a first terminal A or D connected to the first coil; and
a second terminal (the other of terminal A or D) connected to the second coil; wherein
each of the first coil and the second coil is a spiral coil or a helical coil wound with more than one turn;
at least a portion of the first coil overlaps at least a portion of the second coil when seen in a plan view (as seen in FIG 1) from a direction perpendicular or substantially perpendicular to the substrate; and
a direction of a magnetic field generated by the first coil is opposite to a direction of a magnetic field generated by the second coil (paras. [0032], [0033] and [0037]).
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With respect to claims 4 and 18, Schiek teaches the inductor device according to claim 1 and the circuit module of claim 15, respectively, wherein the first coil and the second coil are wound in the same direction when seen in a plan view from the direction perpendicular or substantially perpendicular to the substrate (para. [0037]).
With respect to claim 5, Schiek teaches the inductor device according to claim 4, wherein
each of the first coil and the second coil includes an outer terminal end (external end) and an inner terminal end (internal end);
the outer terminal end of the first coil is connected to the first terminal;
the outer terminal end of the second coil is connected to the second terminal; and
the inner terminal end of the first coil and the inner terminal end of the second coil are connected (para. [0033]).
With respect to claim 7, Schiek teaches the inductor device according to claim 4, wherein the first coil and the second coil have the same or substantially the same shape and the same or substantially the same dimensions and overlap when seen in a plan view from the direction perpendicular or substantially perpendicular to the substrate (para. [0033]).
With respect to claim 13, Schiek teaches the inductor device according to claim 1, wherein
the substrate includes a dielectric layer BM in which a plurality of dielectrics LIs are stacked; and
the first coil and the second coil are provided in layers in the dielectric layer that are different from each other (paras. [0032], [0033] and [0041]).
With respect to claim 14, Schiek teaches the inductor device according to claim 13, wherein
the dielectric layer includes a wiring layer HI therein; and
the first coil and the second coil are provided in the wiring layer (para. [0033]).
With respect to claim 15, best understood in view of 35 USC 112(b) rejection, Schiek teaches a circuit module (para. P0001]) comprising:
a substrate (circuit board on which the inductor device is mounted, not expressly shown);
a plurality of electronic components (not expressly shown) mounted on the substrate; and
the inductor device according to claim 1; wherein
the substrate includes a support substrate SU and a wiring layer BM on the support substrate;
the wiring layer includes wiring (wiring of the first and second coils) to connect the plurality of electronic components to each other; and
the inductor device is provided in the wiring layer (para. [0032] and [0033]).
With respect to claim 19, best understood in view of 35 USC 112(b) rejection, Schiek teaches the circuit module according to claim 18, wherein
each of the first coil and the second coil includes an outer terminal end (external end) and an inner terminal end (internal end);
the outer terminal end of the first coil is connected to one end of an upper surface of the substrate on which the plurality of electronic components are mounted;
the outer terminal end of the second coil is connected to another end of the upper surface of the substrate on which the plurality of electronic components are mounted; and
the inner terminal end of the first coil and the inner terminal end of the second coil are connected (paras. [0032], [0033] and [0037]).
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, 4, 6, 15, 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Andoh et al. (U.S. Patent No. 5,095,357).
With respect to claim 1, Andoh et al., hereinafter referred to as “Andoh,” teaches an inductor device (FIG. 16a) comprising:
a substrate 1 and 61 or (substrates 1 and 20-50 as shown in FIG. 3(c) PRIOR ART);
a first coil 2 and a second coil 62 in the substrate and connected in series;
a first terminal 7 connected to the first coil; and
a second terminal 71 connected to the second coil; wherein
each of the first coil and the second coil is a spiral coil or a helical coil wound with more than one turn;
at least a portion of the first coil overlaps at least a portion of the second coil when seen in a plan view from a direction perpendicular or substantially perpendicular to the substrate; and
a direction of a magnetic field generated by the first coil is opposite to a direction of a magnetic field generated by the second coil (col. 11, lines 49-65).
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With respect to claims 4 and 18, Andoh teaches the inductor device according to claim 1 and the circuit module of claim 15, respectively, wherein the first coil and the second coil are wound in the same direction when seen in a plan view from the direction perpendicular or substantially perpendicular to the substrate (col. 11, line 67 to col. 12, line 1).
With respect to claim 6, Andoh teaches the inductor device according to claim 4, wherein
each of the first coil and the second coil includes an outer terminal end 3 and an inner terminal end 4;
the inner terminal end of the first coil is connected to the first terminal;
the inner terminal end of the second coil is connected to the second terminal; and
the outer terminal end of the first coil and the outer terminal end of the second coil are connected (col. 10, lines 48-53 and col. 11, lines 49-58).
With respect to claim 15, best understood in view of 35 USC 112(b) rejection, Andoh teaches a circuit module (col. 1, lines 6-10) comprising:
a substrate (circuit board on which the inductor device is mounted, not expressly shown);
a plurality of electronic components (not expressly shown) mounted on the substrate; and
the inductor device according to claim 1; wherein
the substrate includes a support substrate 1 and a wiring layer (layers 61 and 63) on the support substrate;
the wiring layer includes wiring (wiring of the first and second coils) to connect the plurality of electronic components to each other; and
the inductor device is provided in the wiring layer (col. 10, lines 48-56 and col. 11, lines 59-60).
With respect to claim 20, best understood in view of 35 USC 112(b) rejection, Andoh teaches the circuit module according to claim 18, wherein
each of the first coil and the second coil includes an outer terminal end 3 and an inner terminal end 4;
the inner terminal end of the first coil is connected to one end of an upper surface of the substrate on which the plurality of electronic components are mounted;
the inner terminal end of the second coil is connected to another end of the upper surface of the substrate on which the plurality of electronic components are mounted; and
the outer terminal end of the first coil and the outer terminal end of the second coil are connected (col. 10, lines 48-56 and col. 11, lines 59-60).
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.
Claims 2, 3, 11, 12, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Schiek or Andoh, as applied to claims 1 and 15 above, in view of Viala (U.S. PG. Pub. No. 2019/0371518 A1).
With respect to claims 2 and 16, Schiek or Andoh teaches the inductor device according to claim 1 or circuit module according to claim 15, respectively. Schiek or Andoh does not expressly teach a distance between the first coil and the second coil in the direction perpendicular or substantially perpendicular to the substrate is about 0.1 mm or smaller.
Viala teaches an inductor 2 (Fig. 1), wherein a distance (thickness of dielectric layer 30) between the first coil 42 and the second coil 40 in the direction perpendicular or substantially perpendicular to the substrate 20 is about 0.1 mm or smaller (para. [0040]). 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 distance as taught by Viala to the inductor device of Schiek or Andoh to provide the desired magnetic coupling coefficient k (para. [0040]).
With respect to claims 3 and 17, Schiek in view of Viala or Andoh in view of Viala teaches the inductor device according to claim 2 or circuit module according to claim 15, respectively, wherein the distance between the first coil and the second coil in the direction perpendicular or substantially perpendicular to the substrate is about 0.01 mm or larger (Viala, para. [0040]).
With respect to claim 11, Schiek or Andoh teaches the inductor device according to claim 1. Schiek or Andoh does not expressly teach a distance between adjacent conductors is about 0.01 mm or smaller in each of the first coil and the second coil.
Best understood in view of 35 USC 112(b) rejection, Viala teaches an inductor 2 (Fig. 3), wherein a distance I between adjacent conductors is about 0.01 mm or smaller in each of the first coil 40 and the second coil 42 (para. [0048] and [0052]). 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 distance as taught by Viala to the inductor device of Schiek or Andoh to provide the desired magnetic coupling (para. [0052]).
With respect to claim 12, Schiek in view of Viala or Andoh in view of Viala teaches the inductor device according to claim 1, wherein a distance between adjacent conductors is about 0.002 mm or larger in each of the first coil and the second coil (Viala, para. [0048] and [0052]).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Schiek or Andoh, as applied to claim 1 above, in view of Wasson et al. (U.S. PG. Pub. No. 2012/0029343 A1).
With respect to claim 8, Schiek or Andoh teaches the inductor device according to claim 1. Schiek or Andoh does not expressly teach wherein the first coil and the second coil are wound in directions opposite to each other when seen in a plan view from the direction perpendicular or substantially perpendicular to the substrate.
Wasson et al., hereinafter referred to as “Wasson,” teaches an inductor device (FIG. 4), wherein the first coil (any of coil 100-1 to 100-3) and the second coil (any of coil 100-1 to 100-3 that is not first coil) are wound in directions opposite (CW and CCW) to each other when seen in a plan view from the direction perpendicular or substantially perpendicular to the substrate (para. [0049]). 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 winding direction as taught by Wasson to the inductor device of Schiek or Andoh to provide the required foldability to facilitate manufacturing (para. [0050]).
With respect to claim 9, Schiek in view of Wasson or Andoh in view of Wasson teaches the inductor device according to claim 8, wherein
each of the first coil and the second coil includes an outer terminal end (external end) and an inner terminal end (internal end);
the outer terminal end of the first coil 100-3 is connected to the first terminal (hatched terminal connected to external end of coil 100-3);
the inner terminal end (internal end of coil 100-2 connected to hatched terminal) of the second coil is connected to the second terminal (hatched terminal connected to internal end); and
the inner terminal end of the first coil 100-3 and the outer terminal end of the second coil 1002-2 are connected (Wasson, para. [0049]).
With respect to claim 10, Schiek teaches the inductor device according to claim 8, wherein
each of the first coil and the second coil includes an outer terminal (external end) end and an inner terminal end (internal end);
the inner terminal end of the first coil 100-2 is connected to the first terminal (hatched terminal connected to internal end);
the outer terminal end of the second coil 100-3 is connected to the second terminal (hatched terminal connected to exterior end); and
the outer terminal end of the first coil 1000-2 and the inner terminal end of the second coil are 100-3 connected (Wasson, para. [0049]).
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