The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 August 2026 has been entered.
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1 August 2025.
The disclosure is objected to because of the following informalities: Page 1, in paragraph [0005],6th line therein, note that --the-- should be inserted prior to “sine” for idiomatic clarity; 7th lined therein, note that the pronoun “we” should be rewritten for a more appropriate characterization. Page 2, in paragraph, note that reference to the “term” is vague in meaning, especially since it is unclear as to which “term” is intended and thus appropriate clarification is needed. At all instances throughout the specification, note that the term “tenability” is vague in meaning and thus appropriate clarification is needed. Should the term “tenability” be rewritten as --tunability-- for an appropriate characterization? Page 6, in paragraph [0019], note that the reference to “FIG. 1” should be rewritten as --FIG. 1A-- for consistency with the drawing numbering. Page 7, in paragraphs [0026] & [0027] and page 14, in paragraph [0053], 6th line therein, note that use of the symbol “Py” is vague in meaning, especially since such a symbol does not appear to have been previously defined and thus appropriate clarification is needed. Page 10, in paragraph [0044], first line therein, note that the pronoun “its” should be deleted, as being unnecessary. Page 12, in paragraph [0046], 9th line therein, note that the recitation of “retaining significantly solves” appears incomplete and thus appropriate clarification is needed. Page 17, in paragraph [0061], second line therein, note that the recitation of “inductance and quality factor” should be rewritten as --inductance L and quality factor Q-- for an appropriate characterization. Page 20, in paragraph [0070], 8th line therein, note that --the-- should precede “easy” for idiomatic clarity; 17th line therein, note that parameters {Ms(T), Ms(0)} need to be respectively defined (i.e. in words) for clarity and completeness of description. Page 22, in paragraph [0079], first line therein, note that --φ21-- should be inserted after “phase” for an appropriate characterization. Page 24, in paragraph [0084], 11th line therein, note that the recitation of “is performed in FIGS. 2 and 2A” is vague in meaning, especially since no FIG. 2 is present in the drawings and thus appropriate clarification is needed. Page 24, in paragraph [0087], third line therein, note that the recitation of “is performed with (3)-(11)” is vague in meaning and thus appropriate clarification is needed. Page 26, in paragraph [0091], third line therein, note that --Z0-- should be inserted after “impedance” for an appropriate characterization. Page 26, in paragraph [0093], second line therein, note that --θ-- should be inserted after “length” for an appropriate characterization. Appropriate correction is required.
The disclosure is objected to because of the following informalities: Note that the following reference labels and descriptive wording appearing in the indicated drawings need to be correspondingly described in the specification description of those indicated drawings for clarity and completeness of description: FIGURE 1A, 8, the respective dimensions therein; FIGURE 2A, the descriptive wording in each step depicted therein; FIGURE 3, the descriptive wording therein; FIGURES 4A, 4B, 6, 7, 10B, 11, 12, 14, 15, the axes parameters and the contents of the legend box; FIGURES 5, 13, 16, the descriptive wording and numerical values in the respective Table; FIGURES 9, 10A, the features respectively depicted in each drawing. Appropriate correction is required.
The use of the term Permalloy, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-11 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.
In claim 1, line 6, note that it is unclear how “biasing DC currents and/or DC voltages”, as recited herein would relate to the “DC currents” & “DC voltages” recited earlier in this claim (i.e. one in the same features, separate and distinct features, etc.) and thus appropriate clarification is needed; lines 14, 15, note that it is unclear how the recitation of “a ferromagnetic thin-film magnetic core” (i.e. line 14) and “a ferroelectric metal-insulator-metal capacitor” (i.e. line 15) would respectively relate to the earlier recitation of “ferromagnetic material” and “ferroelectric material” (i.e. the same features, separate and distinct features, etc.) and thus appropriate clarification is needed.
Claims 3, 4 contains the trademark/trade name Permalloy. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a particular magnetic material and, accordingly, the identification/description is indefinite.
In claim 9, line 1, note that it is unclear, even in light of the specification, as to what characterizes “equivalent characteristic impedance” and thus appropriate clarification is needed; lines 2 & 3, similarly it is unclear, even in light of the specification, as to what characterizes “providing selectively DC biasing conditions” and thus appropriate clarification is needed.
The following claims have been found to be objectionable for reasons set forth below:
In claim 1, lines 2 & 3, note that “inductive tuning by DC current applied to” should be deleted as being unnecessary; lines 3 & 4, note that “capacitive tuning by DC voltage applied to” should be deleted as being unnecessary; line 6, note that --to the at least one tunable solenoid inductor and the at least one tunable capacitor-- should be inserted after “provided” for an appropriate characterization; lines 7-9, note that the paragraph “wherein the tunable phase shifter further … in the tunable capacitor,” should be deleted in its entirety as being unnecessary; line 13, note that the “;” should be deleted for grammatical clarity.
In claim 2, lines 1 & 2, note that “wherein when phase is tuned impedance is kept constant” should be rewritten as --wherein impedance is kept constant when phase is tuned--for an appropriate characterization.
In claim 3, line 2, note that “PERMALLOY TM” should be rewritten as --a nickel-iron magnetic alloy-- to address the improper use of trademarks in a claim by providing the generic terminology associated with the trademark.
In claim 4, in view of the suggested amendment to claim 3, then claim 4 is deemed no longer necessary and thus should be deleted.
In claim 6, in view of the incorporation of the subject matter found in claim 6 into amended independent claim 1, then claim 6 is deemed no longer necessary and thus should be deleted.
In claim 7, note that --the-- should be inserted prior to each instance of “DC” therein to avoid potential antecedent basis issues.
Applicant's arguments filed 3 August 2026 have been fully considered but they are not persuasive.
Regarding the rejections based on indefiniteness under 35 USC 112, paragraph (b), the examiner has considered applicants’ response. Accordingly, it is noted that applicants’ amendments to the claims, especially with respect to independent claim 1, still do not resolve certain issues of indefiniteness, as set forth above in the above grounds of rejection based on 35 USC 112, paragraph (b). Accordingly, to assist applicants’ in addressing the outstanding issues of indefiniteness, the examiner is offering specific suggested amendments, if adopted by applicants’, would satisfactorily overcome the outstanding issues of indefiniteness. Additionally, it is again noted that use of a trademark in a claim (e.g. with respect to claims 3 & 4) is improper and thus such a trademark needs to be removed from the claim in question and replaced by the appropriate generic terminology (e.g. see the suggestions provided by the examiner). Regarding claim 9, applicants’ still need to specifically address this ground of indefiniteness.
Regarding the objections to the disclosure, it is noted that applicants’ proposed amendments to the specification in the after final response, while satisfactorily addressing the merits of the objections, unfortunately is not in a form or format (i.e. amendments need in the form of entire replacement paragraphs as required by 37 CFR 1.121) that can be entered into the record. Accordingly, the examiner must sustain and thus repeat the same grounds of objection. Therefore, the examiner suggests that applicants’ either amend the specification by providing complete replacement paragraphs with the appropriate markings (i.e. as per 37 CFR 1.121) or provide a substitute specification including “marked-up” and “clean” copies of the substitute specification (i.e. as per 37 CFR 1.125).
Claims 1-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office action.
Any inquiry concerning this communication should be directed to BENNY T LEE at telephone number (571) 272-1764.
/BENNY T LEE/PRIMARY EXAMINER
ART UNIT 2843
B. Lee
