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 Amendment
Applicant’s amendment dated 05/18/2026, in which claims 1-2, 13, 16, 19 and 20 were amended, claims 7-9, 14 were cancelled, claims 21-24 were added, has been entered.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification fails to provide a clear definition of the claim terms “first winding”, “second winding”, “third winding”, “fourth winding”, “fifth winding”, “sixth winding”, “seventh winding”, “eighth winding”, “ninth winding”. The descriptive portion of the specification fails to identify which part or parts of the drawing to which the term applies.
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies.
Applicant stated in page 8 of Applicant’s remarks that the same claim terms refer to different parts and the same part is identified by different claim terms.
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“The use of a confusing variety of terms for the same thing should not be permitted.” MPEP 608.01 (o).
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 1-6, 10-13, 15-24 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 claims 1-6, 10-13, 15-24, according to Applicant’s argument in page 8 of Applicant’s remarks, the same claim term refers to different parts of the drawing and different claim terms refer to the same part. The use of a confusing variety of terms for the same thing create confusion and is not permitted.
“The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies …The use of a confusing variety of terms for the same thing should not be permitted.” MPEP 608.01 (o).
“Until the meaning of a term or phrase used in a claim is clear, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate.” MPEP 2173.05 (a).
Appropriate correction is required.
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, 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 1-6, 10-13, 15-24 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US Pub. 20140110821) in view of Kim et al. (US Pub. 20150130021).
Regarding claims 1-6, 10-13, 15, Barry et al. discloses in Fig. 7A, paragraph [0011]-[0014], [0016], [0021], [0030]-[0058], [0160]-[0162] a structure identical to structure of Fig. 10 of the pending application.
Pending Application
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Therefore, Barry et al. discloses in Fig. 7A all limitations of claims 1-6, 10-13, 15 except the following limitations:
the inductor extends from a first terminal to a second terminal;
wherein the first terminal is coupled to the first metallization layer, the second terminal is coupled to the third metallization layer, and a conductive via couples the first metallization layer to the second metallization layer at a location that is interposed between the first terminal and the second terminal.
Kim et al. discloses in Fig. 3, paragraph [0062]
the inductor [200] extends from a first terminal [207] to a second terminal [209];
wherein the first terminal [207] is coupled to the first metallization layer [212], the second terminal [209] is coupled to the third metallization layer [216], and a conductive via [M1-M2 via 234] couples the first metallization layer [212] to the second metallization layer [214] at a location that is interposed between the first terminal [207] and the second terminal [209].
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Kim et al. into the method of Barry et al. to include the inductor extends from a first terminal to a second terminal; wherein the first terminal is coupled to the first metallization layer, the second terminal is coupled to the third metallization layer, and a conductive via couples the first metallization layer to the second metallization layer at a location that is interposed between the first terminal and the second terminal. The ordinary artisan would have been motivated to modify Barry et al. in the above manner for the purpose of providing a solenoid inductor having better inductance performance, lower resistance and better quality factor value [paragraph [0006]-[0007], [0069] of Kim et al.].
It is noted that the limitation “the inductor is configured to pass current from the first terminal to the second winding through the first winding, from the first winding to the third winding through the second winding, and from the third winding to the second terminal through the fourth winding” directs to manner of operation of the device. “A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647.” MPEP 2114 II.
Regarding claims 16-18, 23, Barry et al. discloses in Fig. 7A, paragraph [0011]-[0014], [0016], [0021], [0030]-[0058], [0160]-[0162] a structure identical to structure of Fig. 10 of the pending application.
Pending Application
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Therefore, Barry et al. discloses in Fig. 7A all limitations of claims 16-18 and 23 except the following limitations:
wherein the first, second, third, fourth, and fifth windings follow rectangular paths on the substrate;
the inductor extends from a first terminal to a second terminal, the first metallization layer is coupled to the second metallization layer by a conductive via, and the conductive via is at a location that is laterally between the first and second terminals.
Kim et al. discloses in Fig. 3, paragraph [0062], [0069]
wherein the first, second, third, fourth, and fifth windings follow rectangular paths on the substrate [paragraph [0069], “the set of windings may be non-circular (e.g., oval, square, rectangular, hexagonal, octagonal)”];
the inductor [200] extends from a first terminal [207] to a second terminal [209], the first metallization layer [212] is coupled to the second metallization layer [214] by a conductive via [M1-M2 via 234] at a location that is laterally between the first [207] and second [209] terminals.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Kim et al. into the method of Barry et al. to include wherein the first, second, third, fourth, and fifth windings follow rectangular paths on the substrate; the inductor extends from a first terminal to a second terminal, the first metallization layer is coupled to the second metallization layer by a conductive via, and the conductive via is at a location that is laterally between the first and second terminals. The ordinary artisan would have been motivated to modify Barry et al. in the above manner for the purpose of providing a solenoid inductor having better inductance performance, lower resistance and better quality factor value [paragraph [0006]-[0007], [0069] of Kim et al.].
Regarding claims 19-22, 24, Barry et al. discloses in Fig. 7A, paragraph [0011]-[0014], [0016], [0021], [0030]-[0058], [0160]-[0162] a structure identical to structure of Fig. 10 of the pending application.
Pending Application
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Therefore, Barry et al. discloses in Fig. 7A all limitations of claims 19-22, 24 except the following limitations:
the inductor extending along a rectangular path on the substrate;
wherein the inductor extends from a first terminal to a second terminal, the first metallization layer is coupled to the second metallization layer by a conductive via, and the conductive via is at a location that is laterally between the first and second terminals.
Kim et al. discloses in Fig. 3, paragraph [0062], [0069]
the inductor extending along a rectangular path on the substrate [paragraph [0069], “the set of windings may be non-circular (e.g., oval, square, rectangular, hexagonal, octagonal)”];
the inductor [200] extends from a first terminal [207] to a second terminal [209], the first metallization layer [212] is coupled to the second metallization layer [214] by a conductive via [M1-M2 via 234] at a location that is laterally between the first [207] and second [209] terminals.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Kim et al. into the method of Barry et al. to include the inductor extending along a rectangular path on the substrate; the inductor extends from a first terminal to a second terminal, the first metallization layer is coupled to the second metallization layer by a conductive via, and the conductive via is at a location that is laterally between the first and second terminals. The ordinary artisan would have been motivated to modify Barry et al. in the above manner for the purpose of providing a solenoid inductor having better inductance performance, lower resistance and better quality factor value [paragraph [0006]-[0007], [0069] of Kim et al.].
Response to Arguments
Applicant’s arguments with respect to claims 1-6, 10-13, 15-24 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.
Overall, Applicant’s arguments are not persuasive. The claims stand rejected and the Action is made FINAL.
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 SOPHIA T NGUYEN whose telephone number is (571)272-1686. The examiner can normally be reached 9:00am -5:00 pm, Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRITT D HANLEY can be reached at (571)270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893
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