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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, drawn to a preparation method for an integrated co-fired inductor, in the reply filed on 05/28/2026 is acknowledged. Claims 11 and 12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement (IDS)s submitted on 06/01/2023 and 11/08/2024 have been considered by the examiner.
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 4-10 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.
Claims 4-10 recite the phrase “preferably” which renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Furthermore, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, each claim recites the broad recitation (the limitation before “preferably”), and the claim also recites the limitations after “preferably” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yu et al. (CN107749340A-of record _Machine Translation provided herewith).
With respect to claim 1, Yu teaches a preparation method for an integrated co-fired inductor (“A method for manufacturing a high-reliability, high-current molded inductor”, Pa [0018]), comprising:
filling a mold cavity with a magnetic powder, embedding at least one wire into the magnetic powder, wherein two ends of the wire extend out of the mold cavity (“S2. Place a straight wire on the mold”, Pa [0020]; “S3. Embed the middle part of the straight wire in the magnetic powder”, Pa [0021]), then performing compression molding and heat treatment in sequence to obtain a magnetic core (“press it so that the wire and the magnetic powder become one”, Pa [0021]; “S4. Perform heat treatment”, Pa [0022]), and bending and tin-attaching the wire extending out of the magnetic core to obtain the co-fired inductor (“S5. Bend the exposed wires at both ends of the magnet to form electrodes”, Pa [0023]; “the bent wire is subjected to tin-immersion treatment”, Pa [0084]).
With respect to claim 2, Yu as applied to claim 1 above further teaches that the wire is a bare wire without paint layer (“the conductor has no enameled film”, Pa [0085]).
With respect to claim 3, Yu as applied to claim 1 above further teaches that the wire is a copper wire (“The conductor… its material is one or more metals such as copper”, Pa [0049]).
With respect to claim 4, Yu as applied to claim 1 above further teaches that the wire is a flat wire having a rectangular cross section (“The conductor is a flat wire”, Pa [0049]).
With respect to claim 5, Yu as applied to claim 1 above further teaches that the compression molding is performed in a manner of hot pressing or non-hot pressing (“The pressing refers to either cold pressing or hot pressing”, Pa [0027]).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (CN107749340A-of record _Machine Translation provided herewith) as applied to claim 1 above, and further in view of Yoshinaka et al. (JP2020017621A-of record _Machine Translation provided herewith).
With respect to claim 6, Yu as applied to claim 1 above does not explicitly teach impregnating and spray-coating the magnetic core in sequence before the bending and tin-attaching.
In the same field of endeavor, the manufacturing method of a coil array component, Yoshinaka teaches that a protective layer 7 is formed on the entire surface of the individualized substrate 2 (Figure 15(1)) (Pa [0101]); the protective layer can be formed using known methods, such as spraying an insulating material to coat the surface of the element, or impregnating the element with an insulating material (Pa [0102]) before forming the extraction electrodes (Pa [0102]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Yu with the teachings of Yoshinaka to spray and impregnate the magnet with an insulating material before bending the electrode in order provide the protective layer on the magnet. It has been held that Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (CN107749340A-of record _Machine Translation provided herewith) as applied to claim 1 above, and further in view of Guo (CN109285682A-of record _Machine Translation provided herewith).
With respect to claim 7, Yu as applied to claim 1 above further teaches the preparation of magnetic powder for pressing (Pa [0056]), but does not explicitly teach that the magnetic powder is prepared by the following method: subjecting a soft magnetic powder to insulation coating, secondary coating and pelletizing treatment in sequence to obtain the magnetic powder.
In the same field of endeavor, a preparation method of an iron-silicon-chromium material used for integrated inductance, Guo teaches that the method includes the following steps: a) raw material selection; b) insulation coating; c) secondary coating; d) granulation (Pa [0014]), and through material selection and the adoption of a special insulating coating method, the performance level of gas-atomized powder is achieved, and the powder has low cost and excellent insulation performance (Pa [0007]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Yu with the teachings of Guo to substitute Guo’s preparation method of an iron-silicon-chromium material for Yu’s preparation of magnetic powder for the purpose of benefits of low cost and excellent insulation performance.
With respect to claim 8, Guo as applied in the combination regarding claim 7 above further teaches that a coating process used for the insulation coating comprises phosphating, acidification (“b) Insulation coating: Surface treatment is performed by adding 0.2-1.0 wt% of phosphoric acid from water-atomized iron-silicon-chromium raw powder”, Pa [0012]).
With respect to claim 9, Guo as applied in the combination regarding claim 7 above further teaches that the secondary coating comprises: mixing and stirring a coating material and the soft magnetic powder after the insulation coating (“the specific process for the secondary coating in step c) is to mix the coating material with the water-atomized iron-silicon-chromium raw powder that has been insulated and coated, and then stir for 60 to 90 minutes.”, Pa [0020]).
With respect to claim 10, Guo as applied in the combination regarding claim 7 above further teaches that the pelletizing treatment comprises: pelletizing the soft magnetic powder after the secondary coating, and drying and cooling the soft magnetic powder in sequence after the pelletizing to obtain the magnetic powder (“Granulate the secondary coated powder. The powder should be dried for no less than 3 hours. After granulation, sieve out any lumps and bake at 50-70℃ for 0.8-1.2 hours. After naturally cooling to room temperature”, Pa [0014]), but is silent to airing. Guo further teaches air dry in a ventilated environment for 2 to 4 hours in step b) (Pa [0016]), thus one would have found it obvious to perform air dry in a ventilated environment after granulating for the purpose of drying the granulated secondary coated powder.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8 and 9 of copending Application No. 18/255,538 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because;
With respect to claim 1, the claim 1 of copending Application No. 18/255,538 teaches that claim.
With respect to claim 2, the claim 8 of copending Application No. 18/255,538 teaches that claim.
With respect to claim 3, the claim 8 of copending Application No. 18/255,538 teaches that claim.
With respect to claim 5, the claim 9 of copending Application No. 18/255,538 teaches that claim.
With respect to claim 7, the claims 2 and 3 of copending Application No. 18/255,538 teaches that claim.
With respect to claim 8, the claim 4 of copending Application No. 18/255,538 teaches that claim.
With respect to claim 9, the claim 5 of copending Application No. 18/255,538 teaches that claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742
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