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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/22/23 has been considered by the examiner.
Claim Rejections - 35 USC § 112
Claims 2-4 and 6-8 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.
The claims all use the language “and/or”. “And” is inclusive and “or” implies choosing one. In claim 2, greater than or equal to 20 wt.% AND less than or equal to 50 wt.% defines a range of 20 to 50 wt.%. Greater than or equal to 20 wt.% OR less than or equal to 50 wt.% implies two different ranges. The same can be said for claims 3, 6 and 7.
In claim 4, does the iron alloy include both crystal structures or one?
In claim 8, is the article a PCB, film, FCB or a coil? Or one of each?
Clarification is required.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 6-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0116340 (SONG ET AL).
In regard to claim 1: The reference discloses a coil having a metal alloy coated thereon where the coil is partially coated with the alloy. It is recognized that the reference does not specify an iron alloy. However, one of the preferable alloy coating is an iron alloy. See [0097] for iron alloy. See claim 1 for coil. See Figures 7-8 for partial coating, i.e. at least a portion of the surface of the coil is free of the coating. The bottom surface, side surface or top surface may be free of the coating.
Regarding claim 2: The reference discloses the alloy may be a Fe-Ni alloy. Further Co is listed as a possible alloy metal. While the wt. %s are not disclosed, it would have been obvious to one of ordinary skill in the art to vary the amounts to optimize permeability as discussed in [0097].
Regarding claim 3: The thickness of the alloy coating is disclosed in [0098].
Regarding claim 6 and 7: The reference does not specify the surface area covered by the alloy coating. However, as shown in Figures 7 and 8, one to three sides are covered which would equate to 25% to 75%.
Regarding claim 8: The article may be a PCB, Flexible circuit board, inductor coil, etc. See [0063-65].
Regarding claim 9: The coil (wiring, trace) may be formed on a Printed Circuit Board. See [0063-65]. The coil has a metal alloy coated thereon where the coil is partially coated with the alloy. It is recognized that the reference does not specify an iron alloy. However, one of the preferable alloy coating is an iron alloy. See [0097] for iron alloy. See claim 1 for coil. See Figures 7-8 for partial coating, i.e. at least a portion of the surface of the coil is free of the coating. The bottom surface, side surface or top surface may be free of the coating.
Regarding claim 10: The wiring is copper. See [0055].
Regarding claim 11: The wiring may have three or more surface where one is free of the alloy coating. See Figures 7-8.
Regarding claim 12-13: The wiring is coil shaped. See [0065].
Regarding claim 14: The method steps of forming a coil and coating a metal alloy on the coil where the coil is partially coated with the alloy is disclosed in claim 8. It is recognized that the reference does not specify an iron alloy. However, one of the preferable alloy coating is an iron alloy. See [0097] for iron alloy. See claim 1 for coil. See Figures 7-8 for partial coating, i.e. at least a portion of the surface of the coil is free of the coating. The bottom surface, side surface or top surface may be free of the coating. The coil may be a wiring for a printed circuit board. See [0063-65].
Regarding claim 15: At least one surface of the wiring is free of the alloy coating. See Figures 7-8.
Regarding claim 16: More than one coil may be formed on the circuit board. See [0065].
Regarding claim 17: The method step of etching is found in claim 7.
Regarding claim 18: The wiring is coil shaped. See [0065].
Regarding claim 19: The method step of electroplating is found in claim 4.
Allowable Subject Matter
Claim 5 is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH EVANS MULVANEY whose telephone number is (571)272-1527. The examiner can normally be reached 8am-4:30pm M-F.
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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.
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/ELIZABETH E MULVANEY/Primary Examiner, Art Unit 1785