FINAL OFFICE ACTION
This Final Office action addresses U.S. Application Serial No. 18/349,266, entitled VOLTAGE ISOLATED INTEGRATED CIRCUIT PACKAGES WITH PIN-COUPLED COILS.
Claims 1-13, 15-28 and 31-34 are pending in this application.
Claims 1-13, 15-28 and 31 are rejected.
Claims 32-34 are allowed.
I. STATUS OF CLAIMS AND APPLICATION
Applicant filed an amendment on June 12, 2026 (hereinafter the “June 2026 Amendment”) in response to the non-final Office actin mailed June 4, 2026 (hereinafter the “June 2026 NF Action”). In the May 2026 Amendment, claims 1-13, 15-28 and 31-34 were unchanged and the specification was amended. Therefore, claims 1-13, 15-28 and 31-34 are pending and examined in this application.
II. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner, the Examiner is unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiner is unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiner further finds that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiner concludes that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiner’s findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
III. OBJECTIONS TO THE SPECIFICATION
The amendment filed June 2026 Amendment is objected to under 35 U.S.C. §132(a) because it introduces new matter into the disclosure. 35 U.S.C. §132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the conductive pins “maintain a space between substrates 110 and 120.” As provided in the new matter rejection in the June 2026 NF Action and maintained herein, the limitation, and now the disclosure, the limitation and disclosure that the conductive pins actively maintain a space is new matter. Following a careful review of the specification, Examiner is unable to find support that the conductive pins are structures that “maintain” anything. Examiner find the specification merely states in several places that the conductive pins are coupled to the conductive traces on the substrates. However, Examiner finds no discussion or mention that the conductive pins are structurally sufficient or designed to “maintain” such a spaced apart arrangement. Nor does Examiners find any mention of “maintaining.” Applicant is required to cancel the new matter in the reply to this Office Action.
IV. CLAIM REJECTIONS – 35 U.S.C. §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.
Claims 1-13, 15-28 and 31 are rejected under 35 U.S.C. §112(a) 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 at the time the application was filed, had possession of the claimed invention.
Examiner finds claims 1-13 and 15-19 has been amended to recited the feature that first and second substrate are spaced apart “to define an open space between the first and second substrates.” Following a review of the specification, Examiner is unable to find any mention of a “space” between the substrates or even whether this “space” is “open.” Furthermore, regarding the recited “spaced apart” aspect of these substrates, Examiner finds the specification states “[a] molding material can be molded to cover (overmold) the first and second coil structures and the transformer core, forming a package body, as described at 510.” See specification at ¶0031. Thus, Examiner find no mention of any “open space” within the specification and further find any spaced apart shown in the drawings is filled with a molding material. Finally, as even argued by Applicant, the overmolding flows into and/or fills the space to “cover the first and second pine-couple coil structures and soft magnetic core.” See June 2026 Amendment pages 3-4. Accordingly, within the context of the specification, Examiner find no written description support for an “open space” as now being claimed and thus conclude such a feature lacks a clear written description and is new matter. Rather a molding material, a core and insulating layers are provided in the space and thus the space is not open.
Examiner further finds claims 20-28 and 30 recite within the context of a method claim that the plurality of conductive pins connected to perform the function “to maintain the space between the first substrate and the second substrate.” Following a careful review of the specification, Examiner is unable to find support that the conductive pins are structures that “maintain” anything. Examiner find the specification merely states in several places that the conductive pins are coupled to the conductive traces on the substrates. However, Examiner finds no discussion or mention that the conductive pins are structurally sufficient or designed to “maintain” such a spaced apart arrangement. Furthermore, as noted above, the entire device is overmolded in which the molding material would provide such “maintaining.” Accordingly, within the context of the specification, Examiner find no written description support for the method step wherein the conductive pins are connected “to maintain the space” being claimed and thus conclude such a feature lacks a clear written description and is new matter.1
V. ALLOWABLE SUBJECT MATTER
Claims 32-24 are allowed. These claims are allowed for the same reasons as outlined in the 2026 Final Action on pages 15-16 thereof.
Claims 1-13, 15-28 and 31 are allowed, but only on the basis of the new matter discussed above. For example, regarding claims 1-13 and 15-19, Examiner does not find the prior art of record discloses or teaches the substrates separated “to define an open space” and the conductive pins “disposed through the open space” as recited in the claims and in combination with the other features of the claims. Further, regarding claims 20-28 and 31, Examiner does not find the prior art of record discloses or teaches the conductive pins connected “to maintain the space between” the substrates.
VI. EXAMINER’S RESPONSE TO APPLICANT’S ARGUMENTS
Examiner has fully considered the Applicant’s arguments provided in the June 2026 Amendment. However, Examiner does not find them persuasive to overcome the rejections provided in the June 2026 NF Action.
On page 3 of the June 2026 Amendment, Applicant argues:
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Examiner disagrees. First, Examiner does not find that simply of use “columns, cylinders, plugs, etc.” implies an understanding they are “rigid” sufficient to “inherently” maintain spacing. Furthermore, Examiner finds no inherency. Examiner finds the spacing during manufacturing of the transformer could be maintained in a variety of ways, i.e., via holders for the substrates, none of which are disclosed or discussed in the specification. The specification as filed provides no explicit guidance or disclosure for this maintaining feature and thus for Applicant now attempt to add this new feature into the claims (via the amendment filed April 22, 2026) and now add this new feature into specification (via the June 2026 Amendment) is new matter.
Further, Examiner does not find Applicant has address the new matter relating to the “open space” in the June 2026 Amendment. Thus, Examiner finds no response is necessary and this new matter rejection is maintained.
On page 3 of the June 2026 Amendment, Applicant states that the amendments merely describe what is shown in FIG. 1. Examiners disagree in part. Examiners first note what is shown in FIG. 1 is an incomplete transformer, i.e., a transformer merely at one stage of manufacturing. As noted above in the rejections, the “open space” according to the specification and as stated by Applicant is filled with molding material, a core and insulating layers. Thus, Examiners submit a complete transformer of the invention would NOT have an open space.
VII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this application.
VIII. CONCLUSION
Claims 1-13, 15-28 and 31-34 are pending in this application.
Claims 1-13, 15-28 and 31 are rejected.
Claims 32-34 are allowed.
Applicant's amendment necessitated the new objection 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 C.F.R. §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 C.F.R. §1.17(a)) pursuant to 37 C.F.R. §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 KENNETH WHITTINGTON whose telephone number is (571)272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-9900.
/KENNETH WHITTINGTON/ Primary Examiner, Art Unit 3992
1 Examiners note this limitation was not part of the application as filed, but was added to claim 20 in the amendment filed April 22, 2026.
Prosecution Insights