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Applicant’s amendment dated 01/20/2026, in which claims 12-13, 15, 17 and 20 were amended, claims 7-9, 14 were withdrawn, has been entered.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.
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, 15-20 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, 15-20, it is unclear which part or parts of the drawing to which the terms “first winding”, “second winding”, “third winding”, “fourth winding”, “fifth winding”, “sixth winding”, “seventh winding”, “eighth winding”, “ninth winding” apply.
In addition, it appears the same claim term may refer to different parts of the drawing. For example, “a fifth winding” in claim 4 or claim 15 or claim 16 is formed from the second metallization layer while “a fifth winding” in claim 13 is formed from the third metallization layer; “a sixth winding” in claim 6 or claim 15 or claim 16 is formed from the first metallization layer while “a sixth winding” in claim 13 is formed from the second metallization layer.
“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).
For the purpose of this Action, if the prior art discloses structure of Fig. 10, it discloses limitations of claims 1-6, 10-13, 15-20.
Appropriate correction is required.
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.
Claims 1-6, 10-13, 15-20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Barry et al. (US Pub. 20140110821).
Regarding claims 1-6, 10-13, 15-20, Barry et al. discloses in Fig. 2, 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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499
645
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Barry et al.
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332
278
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374
299
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Therefore, as stated in 112b rejection above, Barry et al. discloses all limitations of claims 1-6, 10-13, 15-20.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art discloses similar materials, devices and methods.
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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893