DETAILED ACTION
Response to Amendment
Amendments, filed on November 13, 2025, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Request for Continued Examination
A Request for Continued Examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 13, 2025 has been entered.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,783,983 B2 (parent) for the reasons of record as set forth in Paragraph No. 7 of the Office action mailed on July 21, 2025, which refers back to Paragraph No. 6 of the Office Action mailed on March 3, 2025, the above now evidenced by Choi et al. (U.S. Patent App. No. 2016/0336105 A1) and Kim et al. (U.S. Patent No. 11,600,434 B2).
Regarding the amended language, the Examiner takes Official Notice that forming inductors with multiple “wirings” is conventional in the art as evidenced by both Choi et al. and Kim et al. (see Figures below).
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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.
(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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 - 4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kawarai (U.S. Patent App. No. 2009/0002117 A1) for the reasons of record as set forth in Paragraph No. 8 of the Final Office action mailed on July 21, 2025, which refers back to Paragraph No. 8 of the Office Action mailed on March 3, 2025. This rejection is further evidenced by Choi et al. (U.S. Patent App. No. 2016/0336105 A1) and newly added Kim et al. (U.S. Patent No. 11,600,434 B2).
Kawarai and Choi et al. are relied upon as described previously.
Regarding the amended language that the plurality of wirings are parallel with and adjacent to each other at spaced intervals, the Examiner notes that this is disclosed by Kawarai.
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However, should Applicants argue that this is one “wiring” that is coiled around itself and, therefore cannot be considered ‘at spaced intervals’, the Examiner takes Official Notice that forming inductors with multiple “wirings” is conventional in the art as evidenced by both Choi et al. and Kim et al. (see Figures below).
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Claims 2 – 4 are met for the reasons previously set forth.
Claims 1 – 5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Pulugurtha et al. (WO 2019/099011 A1).
The Examiner notes that WU ‘011 A1 shares a common assignee but qualifies as prior art outside the 1 year exception since the February 17, 2020 Foreign Priority date has not been perfected by the filing of a certified English Translation. Perfection of the claim for Foreign Priority and a statement of common ownership (if applicable) would obviate this rejection (among other ways).
Regarding claim 1, Pulugurtha et al. disclose a laminated sheet comprising: a sheet-shaped inductor including a plurality of wirings (Figures 1, 2 and 4 and page 7, lines 10 – 11 and page 8, lines 5 – 23; “windings”) and a magnetic layer embedding the plurality of wirings (ibid: e.g. Figure 2E, element 260 embedding wirings 110), and a processing stability layer disposed on the inductor (elements 220 and 230), wherein the plurality of wirings are parallel with and adjacent to each other at spaced intervals (as clearly shown in Figures), the magnetic layer has a first surface and a second surface spaced from the first surface (ibid), the magnetic layer includes a binder, and a magnetic particle having a generally flat shape and whose material is a metal (page 7, lines 10 – 20; page 9, lines 5 – 18; and page 10, lines 1 – 8; e.g. all three of the layers 220, 230 and 260 can comprise magnetic metal (Fe, NiFe, etc) flat flakes in a binder); the processing stability layer includes a cured product of a thermosetting resin composition; and the thermosetting resin composition includes: a thermosetting resin (pages 11 – 12: noting that ‘epoxy’ is a thermosetting resin), and at least one particle selected from the group consisting of a first particle having a generally spherical shape (while not a preferred embodiment, spherical NiFe particles are taught on page 12 as a possible embodiment) and a second particle having a generally flat shape (as noted above, all of 220, 230 and 260 can comprise flat flake magnetic particles) and whose material is an inorganic compound (see pages 7 and 8 citations above re: magnetic materials), and any combinations thereof; and wherein the processing stability layer is in contact with the first surface of the magnetic layer (as clearly shown in Figures; e.g. Figure 2E).
Regarding claims 2 – 4, these limitations are met as set forth above regarding both processing stability layers 220 and 230.
Regarding claim 5, as noted above, while flat flake particles are preferred, Pulugurtha et al. does disclose embodiments using spherical NiFe particles (see citations above).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1 — 5 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kawarai (‘117 A1) as evidenced by Choi et al. and Kim et al. as applied above, and further in view of one or both of Yoshioka et al. (U.S. Patent App. No. 2021/0343468 A1) and/or Suetsuna et al. (U.S. Patent App. No. 2013/0228716 A1) for the reasons of record as set forth in Paragraph No. 9 of the Final Office Action mailed on July 21, 2025 which refers back to Paragraph No. 10 of the Office Action mailed on March 3, 2025.
Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kawarai as evidenced by Choi et al. and Kim et al. in view of one or both of Yoshioka et al. and/or Suetsuna et al. as applied above in Paragraph No. 12, and further in view of Matsuura (U.S. Patent App. No. 2019/0392978 A1) for the reasons of record as set forth in Paragraph No. 10 of the Final Office Action mailed on July 21, 2025. The above as evidenced by Gibu (‘185 A1) for the reasons of record as set forth in Paragraph No. 11 of the Office Action mailed on March 3, 2025.
Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kawarai as evidenced by Choi et al. and Kim et al. in view of one or both of Yoshioka et al. and/or Suetsuna et al. as applied above in Paragraph No. 12, and further in view of Gibu (U.S. Patent App. No. 2021/0098185 A1) for the reasons of record as set forth in Paragraph No. 11 of the Final Office Action mailed on July 21, 2025, which refers back to Paragraph No. 12 of the Office Action mailed on March 3, 2025.
Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Pulugurtha et al as applied above, and further in view of Matsuura (U.S. Patent App. No. 2019/0392978 A1).
Pulugurtha et al. is relied upon as set forth above.
Pulugurtha et al. fails to disclose the specific testing conditions to control the response of change of permeability due to corrosion effects (effectively).
However, Matsuura teaches that a skilled artisan is clearly cognizant of the change in magnetic properties, including the change in permeability in inductors due to corrosion effects/oxidation effects and that it is well established that one wants to minimize (i.e. reduce to 0%) any change in magnetic properties, regardless of the measurement techniques employed (Matsuura, at least Paragraph 0105). While Matsuura fails to teach the specific in-House developed characterizing tests claimed by Applicants, they all essentially seek to characterize the inductor in the following manner: the magnetic properties do not change due to exterior corrosive/oxidative conditions. This concept is recognized by the prior art, as exemplified by Matsuura, and – as such – the Examiner deems that the claimed characterization methods are necessarily rendered obvious as 0% change in magnetic properties across all testing conditions is the desired goal.
That being said, the Examiner acknowledges that Applicants’ may be able to present evidence that by using a specific choice of materials, thickness values, etc. for the magnetic layer and processing stability layer, they are able to achieve an unexpected improvement in change in permeability versus inductors that have magnetic layers and processing stability layers outside the specific properties required. However, no such evidence has been presently made of record. Specifically, Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986). In addition, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Pulugurtha et al. to control the rate of change of permeability regardless of how measured to be 0% as taught by Matsuura, as it is clearly recognized in the art that one desires uniform and constant performance of the inductor regardless of the conditions under which it must operate.
Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over Pulugurtha et al. as applied, and further in view of Gibu (U.S. Patent App. No. 2021/0098185 A1).
Pulugurtha et al. is relied upon as set forth above.
Pulugurtha et al. fail to disclose the Ra limitation as claimed.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the Ra of one surface in the thickness direction through routine experimentation, especially given the teaching in Gibu regarding the desire to tailor the Ra values at various locations, including the exterior surfaces, to values meeting the claimed magnitude (see entire Gibu disclosure, but especially claims 11 – 14). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Pulugurtha et al. to control the known results effective variable of Ra as taught by Gibu, as it is clearly recognized in the art that the Ra is important and optimization of a known results effective variable is within the knowledge of a person of ordinary skill in the art.
Allowable Subject Matter
The following is a duplicate of the statement of reasons for the indication of allowable subject matter as set forth in the prior Final office action: as indicated in the parent application, claims that require a specific structural arrangement that is not deemed anticipated by, nor rendered obvious in view of art that uses a magnetic “processing stability layer’ would be allowable in this, child application (see Paragraph No. 12 of the Final Office Action in the parent Application mailed on February 9, 2023) . The prior art of record only recognizes “processing stability layers” wherein at least one of the first or second particles are magnetic particles and there is no teaching or suggestion to form the claimed vias or slits having the sides, pathway, etc. all meeting the claimed limitations.
Response to Arguments
The Double Patenting rejection
No arguments presented.
The rejection of claims 1 - 7 under 35 U.S.C § 102/103 – Kawarai
Applicant(s) argue(s) that Kawarai fails to teach the added language, adding that “the plurality of wirings of the present invention have no overlapping or coextensive components” (page 8 of response). The Examiner respectfully disagrees.
First, the Examiner notes that the present claim language does not recite any language regarding a lack of overlapping or lack of coextensive components vis a vis the wirings. As shown in the Figures above, the wirings are parallel (whether a single looping with multiple circles or multiple separate loops spaced apart vertically in the inductor), are adjacent to each other (whether a single looping with multiple circles or multiple separate loops spaced apart vertically in the inductor), and are adjacent to each other at spaced intervals (whether a single looping with multiple circles or multiple separate loops spaced apart vertically in the inductor).
Second, the Examiner can find nothing in the as-filed disclosure (either in the specification or supporting drawings) that support that the added language must necessarily be taken to “have no overlapping or coextensive components”. The as-filed disclosure does not use the terms coextensive or overlapping:
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and, as such, the Examiner does not find Applicants’ arguments convincing that the claimed terms necessarily require the argued lack of coextensive or overlapping nature.
In addition, in WO ‘011 A1, which has a common assignee, clearly states on page 8 that the Figures show planar inductors having one or more windings (while they use the term ‘winding’, it can be taken as an equivalent term to ‘wiring’). Just like in Kawarai, this terminology appears to be ubiquitous in the art and Applicants’ arguments are not found convincing.
Finally, even if Applicants successfully convey that the plurality of ‘wirings’ in Kawarai do not meet the claimed limitations, the Examiner has newly cited art supporting the position that vertically displaced wirings (which are parallel, adjacent to and spaced apart from each other) are old in the art and are conventional multilayered wiring inductor structures (see rejection of record).
The rejection of claims under 35 U.S.C § 102/103 – WO ‘011 A1
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. As noted in the rejection of record, this rejection can potentially be overcome by obviating the reference under 35 USC 102(b) exceptions upon perfection of the claim to foreign priority as the effective filing date of WO ‘011 A1 is less than one year prior to the effective filing date of the foreign priority document.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
November 22, 2025