DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election of Species VII, FIGs. 3B and 3C, claims 1-6 and 8-9 in the reply filed on 05/25/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 7 and 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Drawings
The drawings received on 03/21/2024 are acceptable.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,967,446 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of U.S. Patent No. 11,967,446 B2 contain all the limitations of claims 1-6 and 8-9 of the instant application.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 and 8-9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ogawa et al. (U.S. PG. Pub. No. 2012/0188040 A1, hereafter “Ogawa”) in view of Nakada et al. (U.S. PG. Pub. No. 2009/0058591 A1, hereinafter “Nakada”).
With respect to claim 1, Ogawa teaches a magnetic device 10-1 (FIGs. 1-4), comprising:
a T-shaped magnetic core 11, comprising a magnetic powder (para. [0044]), wherein the T-shaped magnetic core comprises a base 11a and a pillar 11b, wherein the base comprises a top surface (upper surface) and a bottom surface (lower surface) opposite to the top surface, and the pillar is located on the top surface of the base;
a coil 14, wound on the pillar; and
a magnetic body 15, encapsulating the pillar and the coil, wherein the magnetic body and the bottom surface of the base form an outer surface of the magnetic device;
said two electrodes ET1 and ET2 being electrically connected to two leads 14b and 14c of the coil (paras. [0043], [0044] and [00489]).
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Ogawa does not expressly teach
wherein μC×Hsat(Oe) ≥ 1800, where μC is a permeability of the T-shaped magnetic core, and Hsat(Oe) is a strength of the magnetic field at 80% of μC0, where μC0 is the permeability of the T-shaped magnetic core when the strength of the magnetic field is 0.
However, in paragraph [0025] of the originally specification of the present invention, the T-shaped magnetic core is made with, for example, “Fe-Si alloy powder, Fe-Si-Al alloy power, Fe-Ni alloy power, Fe-Ni-Mo alloy powder” or “a combination of two or more thereof.” Similarly, in Ogawa, the T-shaped magnetic core is made with Fe-Si-Al alloy (para. [0044]). Therefore, the T-shaped magnetic core of Ogawa would have the “wherein μC×Hsat(Oe) ≥ 1800, where μC is a permeability of the T-shaped magnetic core, and Hsat(Oe) is a strength of the magnetic field at 80% of μC0, where μC0 is the permeability of the T-shaped magnetic core when the strength of the magnetic field is 0” as claimed, or a person with ordinary skill in the art could derive the claimed limitations, without undue experimentations, to get the needed magnetic properties. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the claimed limitation, as would be obvious over Ogawa, to provide the desired permeability and or saturation characteristics to meet design requirements.
Ogawa does not also expressly teach
wherein two electrodes are embedded in the base,
wherein the base has two recesses respectively located on two lateral sides of the base, the two recesses respectively receiving said two leads of the coil with said two leads being respectively in contact with the two electrodes via the two recesses.
Nakada teaches a magnetic device 10 (FIGs. 1 and 2),
wherein two electrodes 16A and 16B are embedded in the base 11c,
wherein the base has two recesses 15 respectively located on two lateral sides of the base, the two recesses respectively receiving said two leads 13A and 13B of the coil 13 with said two leads being respectively in contact with the two electrodes via the two recesses (paras. [0034], [0036] and [0039]).
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It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to recess and the lead connection to the electrodes as taught by Nakada to the magnetic device of Ogawa to improve solder wettability of the electrodes (para. [0021]).
With respect to claim 2, Ogawa in view of Nakada teaches the magnetic device of claim 1, wherein the magnetic device is an inductor (Ogawa, para. [0004], Nakada, para. [0004]).
With respect to claim 3, Ogawa in view of Nakada teaches the magnetic device of claim 2. Ogawa in view of Nakada does not expressly teach the wherein μCx Hsat ≥ 2250. However, as stated in the rejection of claim 1, the present invention and Ogawa use the same magnetic material. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the claimed limitation, as would be obvious over Ogawa, to provide the desired permeability and or saturation characteristics to meet design requirements.
With respect to claim 4, Ogawa in view of Nakada teaches the magnetic device of claim 2. Ogawa in view of Nakada does not expressly teach the wherein μCx Hsat≥2520. However, as stated in the rejection of claim 1, the present invention and Ogawa use the same magnetic material. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the claimed limitation, as would be obvious over Ogawa, to provide the desired permeability and or saturation characteristics to meet design requirements.
With respect to claim 5, Ogawa in view of Nakada teaches the magnetic device of claim 2. Ogawa in view of Nakada does not expressly teach the magnetic powder comprises Fe—Si alloy powder, wherein the permeability of the T-shaped magnetic core is between 48 and 108. However, as stated in the rejection of claim 1, the present invention and Ogawa use the same magnetic material. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the claimed limitation, as would be obvious over Ogawa, to provide the desired permeability and or saturation characteristics to meet design requirements.
With respect to claim 6, Ogawa in view of Nakada teaches the magnetic device of claim 2, wherein the magnetic powder comprises Fe—Si—Al alloy powder (Ogawa, para. [0044]). Ogawa in view of Nakada does not expressly teach the permeability of the T-shaped magnetic core is between 48 and 150. However, as stated in the rejection of claim 1, the present invention and Ogawa use the same magnetic material. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the claimed limitation, as would be obvious over Ogawa, to provide the desired permeability and or saturation characteristics to meet design requirements.
With respect to claim 8, Ogawa in view of Nakada teaches the magnetic device of claim 2. Ogawa in view of Nakada does not expressly teach μB×Hsat_B(Oe)≥2250, where μB is a permeability of the magnetic body, and Hsat_B(Oe) is a strength of the magnetic field at 80% of μB0, where μB0 is the permeability of the magnetic body when the strength of the magnetic field is 0. However, as stated in the rejection of claim 1, the present invention and Ogawa use the same magnetic material. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the claimed limitation, as would be obvious over Ogawa, to provide the desired permeability and or saturation characteristics to meet design requirements.
With respect to claim 9, Ogawa in view of Nakada teaches the magnetic device of claim 1, wherein the magnetic device is a choke (Ogawa, para. [0004], Nakada, para. [0004]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. A list of pertinent prior art is attached in form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANGTIN LIAN whose telephone number is (571)270-5729. The examiner can normally be reached Monday-Friday 0800-1700.
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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837
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