DETAILED ACTION
This office action is in response to the election filed 4/2/2026.
Currently, claims 1-19 are pending. Claims 3, 5, and 9 have been withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Species I and VII is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
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 1-2, 4, 6-8 and 10-19 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.
Claim 1 recites the limitations “the first pad” in line 12 and “the second pad” in lines 13 and 16. There is insufficient antecedent basis for these limitations. It is noted that the limitations “a first electrically conductive pad” and “a second electrically conductive pad” are recited in lines 3 and 6, respectively. Amending “the first pad” to instead recite “the first electrically conductive pad” and amending “the second pad” to instead recite “the second electrically conductive pad” would overcome the rejection.
Similarly, each of claims 2, 4, 6, 7, 8, 17, and 18 recite “the [nth] pad” (n being one of first, second, third, fourth, and fifth). Again, amending these claims to include “electrically conductive” would overcome the rejections.
Allowable Subject Matter
The claims are not currently in condition for allowance as discussed above. However, the claims do contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter:
Although the prior art teaches many features of the claimed invention, it does not teach the claimed invention as a whole. For example, as it pertains to claim 1, Laporte et al. (US 9,117,693) shows, with reference to FIG. 2, an apparatus, comprising:
a substrate (21);
a first electrically conductive pad (34) arranged in a second layer (M2) above the substrate and forming a first connection of the apparatus;
a second electrically conductive pad (35) arranged in the second layer and forming a second connection of the apparatus;
a first electrically conductive element (28) arranged in a first layer (M1) spaced apart from the second layer, wherein the first electrically conductive element forms a part of a first capacitor (col. 1, lines 56-65); and
a first coil (10) formed in the first layer and/or the second layer, a first end (10e) of the first coil being connected to the second pad.
However, the claim requires the first electrically conductive element to form the first capacitor with either the first pad or the second pad. While Laporte teaches a capacitor (12) that is formed using the first electrically conductive element (see col. 1, lines 56-65), the capacitor is formed from the first electrically conductive element and a lower electrode (24) with an intervening dielectric (26). Thus, the claimed invention is patentably distinguishable from Laporte.
Other prior art references such as Pizzi et al. (US 2022/0384585), Yamamoto (US 9,054,072) and Degani et al. (US 7,936,043) teach features similar to the claimed invention, but do not teach the claimed invention as a whole.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL M LUKE whose telephone number is (571)270-1569. The examiner can normally be reached Monday-Friday, 9am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Kraig can be reached at (571) 272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL LUKE/Primary Examiner, Art Unit 2896
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