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 Species II, Figure 3 and Claims 1-11 in the reply filed on 12/15/2025 is acknowledged.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Visser [US 6,577,219 B2].
Regarding claim 1, Visser discloses an inductor device, comprising:
- a first trace [220, L as left side in figure 2], comprising: a first sub-trace [220a-L], comprising a plurality of first wires; and
- a second sub-trace [220b-L], comprising a plurality of second wires, wherein the first wires and the second wires are located on a same layer, and the first wires and the second wires are disposed to each other in an interlaced manner [figure 2]; and
- a second trace [220 on right of figure 2, consider as R], comprising: a third sub-trace; and a fourth sub-trace; and
- a capacitor [320, figure 3] coupled to the coil.
Visser disclose the instant claimed invention except for the specific location/arrangement of the second sub-trace and the capacitor coupling.
The specific arrangement [at the corner of the inductor] of the of the sub-trace and specific coupled of the capacitor would have been an obvious design consideration for the purpose of improve noise filtering and internal connections.
Regarding claim 2, Visser further discloses the third sub-trace comprises: a plurality of third wires; wherein the fourth sub-trace comprises: a plurality of fourth wires, wherein the third wires and the fourth wires are located on a same layer, the third wires and the fourth wires are disposed to each other in an interlaced manner [figure 2, located at the right side of the inductor]
The specific arrangement, at the corner of the inductor, would have been an obvious design consideration for the purpose of optimizing magnetic, thermal and electrical performance.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,205,748 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both claiming the same subject matter of an inductor with traces coupled to a capacitor.
Allowable Subject Matter
Claims 3-11 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.
The following is a statement of reasons for the indication of allowable subject matter: the first trace further comprises a fifth sub-trace comprising a plurality of fifth wires, located above the first wires, and coupled to the first wires; and a sixth sub-trace comprising a plurality of six-wires, located above the second wires, and coupled to the second wires, wherein the fifth wires and the sixth wires are disposed to each other in an interlaced manner, and located at the first corner of the inductor device.
Conclusion
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/TUYEN T NGUYEN/Primary Examiner, Art Unit 2837
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