DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments with respect to claims 1-3 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. .
Regarding claim 1, the originally filed specification does not disclose “a first metal member having two legs with each leg disposed between the first magnetic core and the second magnetic core” as amended claim 1.
Claims 2 and 3 are rejected as being dependent on claim 1.
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 1-3 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.
Regarding claim 1, it’s not clear what’s intended by “a first metal member having two legs with each leg disposed between the first magnetic core and the second magnetic core” as amended claim 1. Specifically, it’s not clear which portions of the metal member 3 of the present invention are considered as the “two legs” because there is no detailed explanation/description in the originally filed specification about the “two legs” as currently claimed. As seen in Fig. 1, the metal member 3 has two vertical bent portions from the top horizontal portion and two horizontal bent portions from the lower end of the two vertical bent portions, respectively. So, it’s not clear if the two vertical bent portions or the two horizontal bent portions are considered as claimed “two legs” as amended. Applicant states in the arguments section that Hsieh teaches only one leg of the wire 12 is disposed between the first and second magnetic cores 10 and 14. Based on this argument, the examiner interprets the two vertical bent portions as the “two legs” as amended claim 1.
Claims 2 and 3 are rejected under 35 USC 112(b) as being dependent from claim 1 and therefore inheriting the indefiniteness thereof.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (U.S. PG. Pub. No. 2021/0358678 A1, hereinafter “Wang”).
With respect to claim 1, best understood in view of 35 USC 112(b) rejection, Wang teaches an assembled inductor (FIGs. 1A-3), comprising:
a first magnetic core 20a;
a second magnetic core 20b;
at least a first metal member 30 having two legs 31 and 32 with each leg disposed between the first magnetic core and the second magnetic core; and
a plurality of gaps G1-G3 formed among the first magnetic core, the second magnetic core, and the at least first metal member (paras. [0040], [0047] and [0052]).
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With respect to claim 2, Wang teaches the assembled inductor of claim 1, wherein the first magnetic core includes a plurality of inner projections 22a and 23a facing the second magnetic core (para. [0042]).
With respect to claim 3, Wang teaches the assembled inductor of claim 1, further comprising a second metal member 40 disposed in the at least first metal member (para. [0040]).
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 MANGTIN LIAN whose telephone number is (571)270-5729. The examiner can normally be reached Monday-Friday 0800-1700.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki S. Ismail can be reached at 571-272-3985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837
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