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 .
Election/Restrictions
Applicant’s election of Species IV, FIGs. 13-16, and claims 1-4 and 6-8 in the reply filed on 05/20/2026 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 Claims 5 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “coils” as recited in claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,984,255 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of U.S. Patent No. 11,984,255 B2 contains all the limitations of claims 1-4 and 6-8 of the instant application.
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 7 and 8 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 claim 7, it’s not clear what’s intended by “coils” in line 2. While “coils” in itself is clear, the drawings show sensor “coils 122” being a single wire with multiple turns. So, when claims are interpreted in light of the specification, it’s not clear if “coils” mean multiple different coils made of different wires or a coil with a single wire having multiple turns. To be consistent with the specification, the limitation in question is interpreted as a coil having a plurality of turns.
Claim 8 is rejected as being dependent on claim 7.
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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fornage et al. (U.S. PG. Pub. No. 2011/0260824 A1, hereinafter “Fornage”).
With respect to claim 1, Fornage teaches an integrated magnetic element (FIGs. 3 and 4), comprising:
a base (board on which the transformer is mounted, not expressly shown) ;
a current sensor 370 disposed on the base; and
a transformer 300 provided on the base through which the current sensor and the transformer are integrated into one part, the transformer comprising a magnetic core 302 and or 306, a first winding 318 comprising at least one wire (wire of first winding), and a second winding 322, wherein a part of section of the one wire of the first winding passes through the current sensor, and current value of the part of section of the one wire is detected by the current sensor so as to obtain a total current value of the first winding of the transformer (paras. [0033], [0036], [0038], [0040] and [0046]).
With respect to claim 4, Fornage teaches the integrated magnetic element according to claim 1 wherein the first winding is a primary winding or a secondary winding (para. [0036]).
Claim 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lazzerini et al. (U.S. Patent No. 9,000,878, hereinafter “Lazzerini”).
With respect to claim 1, Lazzerini teaches an integrated magnetic element (FIGs. 1-11), comprising:
a base 14 ;
a current sensor 16 disposed on the base; and
a transformer 10 provided on the base through which the current sensor and the transformer are integrated into one part, the transformer comprising a magnetic core 12, a first winding 20 comprising at least one wire (wire of first winding), and a second winding 50, wherein a part of section of the one wire of the first winding passes through the current sensor, and current value of the part of section of the one wire is detected by the current sensor so as to obtain a total current value of the first winding of the transformer (col. 4, lines 29-36 and 47-61, and col. 7, lines 11-14).
With respect to claim 6, Lazzerini teaches the integrated magnetic element according to claim 1, wherein the first winding comprises at least one sub-winding 122 and or 124, each sub-winding comprising a plurality of wires (col. 5, lines 14-16).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Fornage.
With respect to claim 2, Fornage teaches the integrated magnetic element according to claim 1. the wire comprises a first branch wire 317 and a second branch wire 318, the first branch wire passes through the first magnetic core of the current sensor, the cross-sectional area of the first branch wire is B, B = l2 × t2, wherein l2 is the width of the first branch wire, t2 is the thickness of the first branch wire; the cross-sectional area of the second branch wire is C, C = l3 × t3, where l3 is the width of the second branch wire and t3 is the thickness of the second branch wire (para. [0040]). Fornage does not expressly teach the cross section of the wire is D, D = B + C; the first branch wire and the second branch wire are connected in parallel and directly fixed on the base, and the spatial position relationship between the first branch wire, the second branch wire and the current sensor is fixed even thought drawings reasonably show such features. Nonetheless, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the claimed cross section D relationship with the cross sections B and C an the first and second branch wires structure to meet the required electrical and or mechanical properties. Accordingly, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the claimed cross section D and the wire branches to provide the required current density on the branches and to improve ease of connection of the branches to the base.
With respect to claim 3, Fornage teaches the integrated magnetic element according to claim 2. Fornage does not expressly teach the ratio of the total current value of the first winding to the detected current of the first branch wire is proportional to D/B even though Fornage could have the claimed limitations based on the similarities of the physical structure between Fornage and the present invention. Nonetheless, it would be within the skill of a person with ordinary skill in the art to use the claimed proportion to provide the required electrical characteristics. Accordingly, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the claimed proportion to provide the required current density to meet design requirements.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fornage, as applied to claim 1 above, and further in view of Lazzerini.
With respect to claim 7, best understood in view of 35 USC 112(b) rejection, Fornage teaches the integrated magnetic element according to claim 1, wherein the current sensor comprises a first magnetic core 350 and or 380, a bobbin 340, and coils, the first magnetic core is connected to the bobbin, the bobbin is disposed on the base, the coils are winded onto the bobbin, and the bobbin and the first magnetic core have a central hole therebetween through which the part of sections of any of the wires passes (para. [0039]). Fornage does not expressly teach the coils are electrically connected to a first terminal of the bobbin.
Lazzerini teaches an integrated magnetic element (Fig. 1), wherein the coils (not expressly shown) are connected to the terminals 30 and or 32 (col. 4, lines 39-47). The combination would result in “the coils are winded onto the bobbin and electrically connected to a first terminal of the bobbin” as claimed. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to incorporate the coils connection to the terminal as taught by Lazzerini to the integrated magnetic element of Fornage to improve ease of connection between the coil and the terminal.
With respect to claim 8, Fornage in view of Lazzerini teaches the integrated magnetic element according to claim 7, wherein a bottom of the bobbin is provided with a third fixing terminal, and wherein the third fixing terminal is connected to the base (col. 4, lines 39-47). The combination would result in the claimed limitations.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki S. Ismail can be reached at 571-272-3985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837
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