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 .
Claims 1-18 are pending.
Response to Arguments
Applicant’s arguments, see Page 5, filed 01/30/2026, with respect to the drawings have been fully considered and are persuasive. The objection of claim 16 has been withdrawn.
Applicant’s arguments, see Page 6, filed 01/30/2026, with respect to claim 2 have been fully considered and are persuasive. The objection of claim 2 has been withdrawn.
Applicant’s arguments, see Pages 6-8, filed 01/30/2026, with respect to 35 U.S.C. 112 have been fully considered and are persuasive. The rejection of claims 1-18 have been withdrawn.
Applicant’s arguments, see Pages 8-10, filed 01/30/2026, with respect to 35 U.S.C. 102/103 have been fully considered and are persuasive. The rejection of claims 1-9, 11-13, and 16-18 have been withdrawn.
Applicant's arguments, see Pages 8-10, filed 01/30/2026, with respect to amended claim 1 have been fully considered but they are not persuasive. See arguments below regarding Double Patenting.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,600,422. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are directed to a connection structure of an inductive element comprising a circuit substrate; at least one connection part/wire having a first end connected to the inductive element and a second end being opposite to the first end and having a fixed terminal disposed on the second end; a supporting element arranged in a contact manner with and inside the inductive element; a positioning part configured to the supporting element; and a connecting element having a first connecting part and a second connecting part, and the first connecting part connected to the fixed terminal and the second connecting part fixed to circuit substrate and the supporting element configured to support the connection part/wire and the connecting element.
Claim 1 of U.S. Patent 11,600,422 recites additional structure not present in the instant application. The instant application claims the same fundamental connection structure without the additional structure present in the reference claim. As for the slight differences between the two claims, it would have been obvious for a person of ordinary skill in the art to try without undue experimentation as the additional features do no alter the fundamental relationship between the supporting element, the connecting element, and the inductive element.
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As shown in Fig. 4 above, which is identical across both applications, the fundamental connection structure comprising the inductive element, circuit substrate, supporting element, connection part/wire, positioning part, first and second connecting part, and connecting element are the same physical structure. The instant claim is broader than the reference claim and otherwise directed to the same fundamental invention as the reference claim. The instant claim is not patentably distinct from the reference claim.
Allowable Subject Matter
Claims 2-18 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.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Mountain whose telephone number is (703)756-1939. The examiner can normally be reached Monday - Friday 9:30am - 6:30pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tulsidas Patel can be reached at (571)272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY MOUNTAIN/ Examiner, Art Unit 2834
/TULSIDAS C PATEL/ Supervisory Patent Examiner, Art Unit 2834
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