NON-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 19-28 and 31 are rejected.
Claims 1-13, 15-18 and 32-34 are allowed.
I. REQUEST FOR CONTINUED EXAMINTION
A request for continued examination under 37 C.F.R. §1.114, including the fee set forth in 37 C.F.R. §1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. §1.114, and the fee set forth in 37 C.F.R. §1.17(e) has been timely paid, the finality of the final Office action mailed June 3, 2026 (hereinafter the “June 2026 Final Action”) has been withdrawn pursuant to 37 C.F.R. §1.114. Applicant's response filed on August 14, 2026 (hereinafter the “Aug 2026 Response”) has been entered.
II. STATUS OF CLAIMS
In the Aug 2026 Response, no claim amendments were made, but Applicant did provide arguments traversing the rejections provided in the June 2026 Final Action. Examiners find these arguments persuasive in part, but the arguments raise new issues that are addressed in this Office action.
The claims’ status is the same as noted in the June 2026 Final Action. Therefore, claims 1-13, 15-28 and 31-34 are pending and examined in this application.
III. 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).
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.
(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.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
IV.A. Failure to Further Limit
Claim 19 is rejected under 35 U.S.C. §112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. First, Examiner finds claim 1 requires that the plurality of conductive pins being “disposed through the space” which is “an open space” and that the “conductive pins comprise first and second pin-coupled coil structures. Second claim 19 (depending from claim 1) recites the molding material configured “to cover the first and second pin-coupled coil structures.” Thus, in claim 1 the conductive pins are disposed in an open space whereas in claim 19, the conductive pins are covered by the molding material. Thus, claim 19 does not further limit claim 1 with regard to these requirements, rather they are inconsistent and are not capable of existing at the same time.
As an example, a potential infringer would be required to leave conductive pins in an open space to infringe claim 1 but would be required to cover the conductive pins with molding material to infringe claim 19. Specifically, a potential infringer would be able to avoid infringement of independent claim 1 by simply covering the conductive pins with molding material, but would continue to infringe dependent claim 19. Thus, claim 19 cannot further limit claim 1. If claim 19 were proper under 35 U.S.C. §112(d), then any infringement of claim 19 would infringe claim 1 based on dependency.
IV.B. Indefiniteness and Missing Essential Elements
Claims 20-28 and 31 are rejected under 35 U.S.C. §112(b) as being indefinite for not particularly pointing out and distinctly claiming the subject matter and as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP §2172.01. The indefiniteness and omitted elements are related to claim language that the conductive pins “maintain” a space.
Examiner first finds that claims 28-28 and 31 require that the conductive pins are connected to the conductive traces “to maintain the space between the first substrate and the second substrate.” Second, Examiner finds that the specification does not explicitly describe or disclose the nature of the conductive pins maintaining such space. Rather, the specification only discloses the conductive pines are for example, “columns, cylinders, plugs, etc.” See specification ¶0022.
Applicant in the Aug 2026 Response relies solely on the definition of “columns” to provide the support for the noted “maintain the space” features of the conductive pins. Specifically, Applicant states:
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Thus, for the claims to have full support from the specification, Applicant is arguing that it is essential the conductive pins be “columns” because as stated by Applicant, that is the scope of conductive pins that would provide “support” to maintain the space between the first and second substrates. Applicant has not asserted that any other type of conductive pin (cylinders, plugs, etc.) would provide the required support or “maintain” function. Nor do Examiners find any evidence that plugs or cylinders as conductive pins would provide the support or “maintain” function.
However, Examiners find the claims generically only require “conductive pins” for the “maintain” function, but not all conductive pins contemplated by the specification are capable of performing this function as noted by Applicant above. Specifically, simple recitation of the pin does not imply a definite structure capable of performing this maintain/support function. Thus, Examiners find the claims unclear how a conductive pins, without more, can perform the function of maintaining a space between the first and second substrates.
Furthermore, the only type of conductive pin contemplated in the specification capable of performing this maintain/support function as argued by Applicant is when the conductive pins are “columns.” Thus, for claims 20-28 and 31 to have clear scope of how the conductive pins can maintain the space or support the first and second substrates, Examiners find in view of Applicant’s own assertions and the specification, these conductive pins must be columns and not simply plugs or cylinders. Thus, Examiners find the claims must recite the essential feature that the conductive pins are columns. In view of the specification and Applicant’s admissions, only when the conductive pins are “columns” can the conductive pins perform the maintain/support function.
V. ALLOWABLE SUBJECT MATTER
Claims 1-13 and 32-24 are allowed.
Claims 32-34 are allowed for the same reasons as outlined in the Office action mailed May 6, 2026, on pages 15-16 thereof.
Claims 1-13 are allowed on the basis that the prior art or record herein does not show or teach 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.
Examiners further note that claims 20-28 and 31 would be allowed if the rejection under 35 U.S.C. §112(b) above were overcome. Regarding these claims, Examiners do not find the prior art of record in this application particularly disclose or teach the required steps order of making the transformer as required in the claims. For example, for both the disposing the core and the connecting of the conductive pins to maintain the space, the first and second substrates must already be provided and defining the space therebetween.
VI. EXAMINER’S RESPONSE TO APPLICANT’S ARGUMENTS
Examiner has fully considered the Applicant’s arguments provided in the Aug 2026 Response. However, Examiner finds them moot in view of the new grounds of rejection provided in this Office action.
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 19-28 and 31 are rejected.
Claims 1-13, 15-18 and 32-34 are allowed.
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
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