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 .
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.
Claim(s) 1-3 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. [US 2009/0160595 A1] in view of Olschewski [US 4,103,267].
Regarding claims 1 and 11, Feng et al. discloses a magnetic component module [figures 6A-6D] comprising:
- a substrate [61];
- a core [15] on a first surface of the substrate;
- a gap between the core and the substrate [figure 6A];
- a winding including: wiring portions [62a-62f, figure 6B] that are directly on the substrate that extend under the core and wire bonds [19a-19c] extending over the core and including opposing ends electrically connecting ends of the winding portions; and
- an overmold material [101] encapsulating the core, the gap, the wire bonds and a portion of the substrate such that the overmold material extends into the gap.
Feng et al. disclose the instant claimed invention except for a spacer.
Olschewski discloses a magnetic component [figures 1-4] comprising:
- a substrate [10];
- a core [18] on a first surface of the substrate;
- a spacer [19] conforms the top surface of the core; and
- a winding including: a wiring portions [12, 30, 34] that are directly on the substrate that extend under the core and wire bonds [24, 28] extending over the core and including opposing ends electrically connecting ends [29, 32] of the winding portions.
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the spacer of Olschewski in the core of Feng, for the purpose of providing insulation between the core and the winding.
Olschewski further discloses the spacer extending over an entire surface of the core.
Regarding claims 2-3 and 12-13, Olschewski further discloses an adhesive material [20] arranged between the core and the substrate.
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include adhesive material between the core and the substrate of Feng et al., as suggested by Olschewski, for the purpose of providing adhesive for the core mounting.
Claim(s) 1 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. in view of Dirks [US 4,975,671].
Regarding claim 1, Feng et al. discloses a magnetic component module [figures 6A-6D] comprising:
- a substrate [61];
- a core [15] on a first surface of the substrate;
- a gap between the core and the substrate [figure 6A];
- a winding including: wiring portions [62a-62f, figure 6B] that are directly on the substrate that extend under the core and wire bonds [19a-19c] extending over the core and including opposing ends electrically connecting ends of the winding portions; and
- an overmold material [101] encapsulating the core, the gap, the wire bonds and a portion of the substrate such that the overmold material extends into the gap.
Feng et al. disclose the instant claimed invention except for a spacer.
Dirks discloses a magnetic component [figures 1-3] comprising:
- a substrate [11];
- a core [2] on surface of the substrate [figure 3];
- a winding structure formed of conductors [7, 9] around the core; and
- a spacer [3] conforms the core.
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the spacer of Olschewski in the core of Feng, for the purpose of providing insulation between the core and the winding.
Regarding claim 16, Dirks further discloses the spacer only extends along a top surface of the core and along at least a portion of two side surfaces of the core connected to the top surface [figure 3].
Claim(s) 1-3 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. [US 2009/0160595 A1] in view of Evans et al. [US 5, 543,773].
Regarding claim 1, Feng et al. discloses a magnetic component module [figures 6A-6D] comprising:
- a substrate [61];
- a core [15] on a first surface of the substrate;
- a gap between the core and the substrate [figure 6A];
- a winding including: wiring portions [62a-62f] that are directly on the substrate that extend under the core and wire bonds [19a-19c] extending over the core and including opposing ends electrically connecting ends of the winding portions; and
- an overmold material [101] encapsulating the core, the gap, the wire bonds and a portion of the substrate such that the overmold material extends into the gap.
Feng et al. disclose the instant claimed invention except for a spacer.
Evans et al. discloses a magnetic component [figures 1-15b] comprising:
- a substrate [121];
- a core [130] on a first surface of the substrate;
- a spacer [former of figure 13] conforms the top surface of the core; and
- a winding including: wiring portions [122, 127] that are directly on the substrate that extend under the core and wire bonds [123, 126] extending over the core and including opposing ends electrically connecting ends of the winding portions.
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the spacer of Evans et al. in the core of Feng, for the purpose of providing insulation between the core and the winding.
Regarding claim 6, Evans et al. further discloses the spacer arranged on the core such that an edge of the spacer overhangs the for [figures 12 and 15a-15b].
The specific dimension [wider] of the spacer relative to the core would have been an obvious design consideration for the purpose of facilitating providing separation between the winding and the core.
Regarding claims 2-3 and 7-8, Evans et al. further disclose the core may be adhesively attached to the substrate [e.g. with thermally conductive adhesive] to the substrate [column 9, lines 16-19].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include adhesive material between the core and the substrate of Feng et al., as suggested by Evans et al., for the purpose of providing adhesive for the core mounting.
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 1-3, 6-8, 11-13 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,978,581 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both claiming the same subject matter of a magnetic component with a spacer on a core.
Claims 1-3, 6-8, 11-13 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,165,798 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both claiming the same subject matter of a magnetic component with a spacer on a core.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 6-8, 11-13 and 16 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.
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.
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/TUYEN T NGUYEN/ Primary Examiner, Art Unit 2837
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