The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.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, lines 3, 4, note that the recitation of “the at least one solenoid inductor” (i.e. line 3) and the recitation of “the at least one tunable capacitor” (i.e. line 4), respectively lack strict antecedent basis, especially since these features have not been previously established and thus appropriate clarification is needed; 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 10, 11, note that it is unclear how “at least one 3-D solenoid inductor and at least one shunt capacitor”, as recited herein would relate to the earlier recitation of “at least one tunable solenoid inductor” and “at least one tunable capacitor (i.e. one in the same features, separate and distinct features, etc.) and thus appropriate clarification is needed; lines 13-15, note that it is unclear how “at least one tunable solenoid inductor” (i.e. lines 13 & 14) and “at least one tunable capacitor” (i.e. lines 14 & 15), as recited herein would relate to the earlier recitation of “at least one tunable solenoid inductor” and “at least one tunable capacitor” (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 whether 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 be consistent with the earlier recitation of “3-D lumped elements” in this claim, especially since thin-film and lumped elements are separate and distinct structures and thus appropriate clarification is needed.
In claim 2, note that the recitation of “tuned over a range” is vague in meaning, especially since is unclear, even in light of the specification, as to what would constitute the “range” that would provide the constant impedance. 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 7, lines 1 & 2, note that the recitation of “is tuned fully electrically by …” is vague in meaning and thus appropriate clarification is needed; lines 2 & 3, note that the recitation of “without introducing extra an biasing network” is vague in meaning and thus appropriate clarification is needed.
In claim 8, note that the term “tenability” is vague in meaning. Should the term “tenability” be rewritten as --tunability-- for an appropriate characterization?
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.
In claim 10, line 2, note that it is unclear how “a thin film enabled 3-D solenoid inductor”, as recited herein would relate to “at least one 3-D solenoid inductor” as recited earlier in independent claim 1 (i.e. one in the same feature, separate and distinct features, etc.) and thus appropriate clarification is needed; lines 3 & 4, note that it is unclear how “ferromagnetic thin films forming a magnetic core”, as recited herein would relate to “a ferromagnetic thin film magnetic core” as recited earlier in independent claim 1 (i.e. one in the same feature, separate and distinct features, etc.) and thus appropriate clarification is needed.
In claim 11, lines 2 & 3, note that it is unclear how “inductance is tunable by DC current and capacitance is tunable by DC voltage”, as recited herein would relate to the earlier recitation of “inductive tuning by DC currents … capacitive tuning by DC voltages” in independent claim 1 (i.e. one in the same feature, separate and distinct features, etc.). Appropriate clarification is needed.
Applicant's arguments filed 14 April 2026 have been fully considered but they are not persuasive.
Regarding the rejections based on prior art, and based on obviousness double patenting, the examiner acknowledges that amendments made to independent claim 1 distinguish over the prior art of record and also overcome the obviousness double patenting rejection. Accordingly, the examiner has withdrawn these grounds of rejection.
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 appear to introduce additional issues of indefiniteness, as set forth above in the grounds of rejection based on 35 USC 112, paragraph (b). It should be noted that these additional issues of indefiniteness raise significant questions as to whether independent claim 1 can now properly point out and distinctly claim applicants’ invention. Additionally, it is again noted that use of trademarks in claims (e.g. with respect to claims 3 & 4) are improper and thus such trademarks need to be removed from the claims in question.
Regarding the objections to the disclosure, it is noted that applicants’ request that these objections be held in abeyance pending resolution of issues involving rejections of the claims. As a general matter, applicants’ are required to address all outstanding issues set forth in the Office action, including objections to the disclosure. Accordingly, when applicants’ do not address all outstanding issues, those issues which remain unaddressed may be construed as being non-responsive and thus would lead to an undesirable prolongation of prosecution.
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.
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 extension fee 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 date of this final 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
Prosecution Insights