NON-FINAL REJECTION
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 Objections
Claims 1, 12, and 17 objected to because of the following informalities. Appropriate correction is required.
Claims 1, 12, and 17 recite in part: “vary […] a density of the magnetic flux extending outside the region of the magnetic flux shutter during operation”. Technically, magnetic flux extends through area, while magnetic flux density exists at a point or over a region (i.e., density doesn’t “extend” per se). The phrase in question is awkward because it grammatically treats “density” as something “extending” outside the region. It is noted that despite the awkwardness, the phrase isn’t indefinite because the ordinarily skilled artisan would assume this to mean varying, during operation, the magnetic flux density at a location outside the region of the magnetic flux shutter.
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.
Claims 1-20 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 claim 1: The claim recites in part “the multi-turn coil being continuously wound around the magnetic film”. It is unclear whether this means:
the coil is made from one continuous (i.e., uninterrupted) length of wire wound around a portion of the magnetic film;
the coil turns are distributed continuously around the entire loop formed by the magnetic film; or
a combination of both 1) and 2).
Ordinarily, the examiner would look to the drawings to help disambiguate the aforementioned ambiguity, however, the drawings do not appear to show either interpretation. It is noted that a drawing objection for lacking claimed subject matter is not appropriate because, as stated in MPEP 1893.03(f), “[t]he USPTO may not impose drawing requirements during the examination of a national stage application beyond those imposed by the Patent Cooperation Treaty (e.g., PCT Rule 11).”
In accordance with compact prosecution practice (see MPEP 2173.06), the claim is being construed for purposes of examination in accordance with the third interpretation.
Regarding claim 3: The claim recites in part “an increase of the current delivered to the multi-turn coil decreases the permeability of the magnetic film”.
The claim appears to describe a causal relationship (i.e., increasing the current decreases the permeability) however Specification appears to contradict this causal relationship.
MPEP 2173.03 recites:
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For example, a claim with a limitation of "the clamp means including a clamp body and first and second clamping members, the clamping members being supported by the clamp body" was determined to be indefinite because the terms "first and second clamping members" and "clamp body" were found to be vague in light of the specification which showed no "clamp member" structure being "supported by the clamp body." In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. January 6, 1997) (unpublished). In Cohn, a claim was directed to a process of treating an aluminum surface with an alkali silicate solution and included a further limitation that the surface has an "opaque" appearance. Id. The specification, meanwhile, associated the use of an alkali silicate with a glazed or porcelain-like finish, which the specification distinguished from an opaque finish. Cohn, 438 F.2d at 993, 169 USPQ at 98. Noting that no claim may be read apart from and independent of the supporting disclosure on which it is based, the court found that the claim was internally inconsistent based on the description, definitions and examples set forth in the specification relating to the appearance of the surface after treatment, and therefore indefinite. Id. In addition, inconsistencies in the meaning of terms or phrases between claims may render the scope of the claims to be uncertain. Tvngo Ltd. (BVI) v. LG Elecs. Inc., 861 Fed. Appx. 453, 459-60, 2021 USPQ2d 697 (Fed. Cir. 2021) ("The issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims. The dependent claims state that 'said overlay activation criterion includes . . . a user command information,' which conflicts with the independent claim's use of this same phrase."). "When faced with this unknown and undefined phrase, a skilled artisan would look for clarification not only in the specification but also in '[o]ther claims of the patent in question,' which 'can also be valuable sources of enlightenment as to the meaning of a claim term.'" Id. at 460 (quoting Philips v. AWH Corp., 415 F.3d 1303, 1314, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)).
In this case, although the claim recites that increasing the current decreases the permeability (negative causal relationship), the Specification recites contradictory statements. Although ¶ [0004] appears to agree with the negative causal relationship recited in the claim, ¶ [0040] appears to describe the opposite (i.e., a positive causal relationship): “When no (or relatively low) current is delivered to the coil 106 by the current source 103, the permeability of the magnetic film decreases.”
Given this inconsistency between the claim and the Specification, the ordinarily skilled artisan would not be reasonably apprised of the scope of the claim especially since it is difficult to determine what physical operating state claim 3 actually covers and how “open” and “closed” modes correspond to permeability.
Regarding claim 9: The claim recites in part “each of the two ends being positioned a same distance from the coil and the magnetic film”. It is unclear whether this means:
each magnet end is equally distant from the coil, and each magnet end is also equally distant from the magnetic film, in other words:
the distance between the first end and the coil is equal to the distance between the second end and the coil, and
the distance between the first end and the magnetic film is equal to the distance between the second end and the magnetic film;
the distance between each magnet end and the coil is equal to the distance between the respective magnet end and the magnetic film, in other words
the distance between first end and the coil is equal to the distance between the first end and the magnetic film, and
the distance between the second end and the coil is equal to the distance between the second end and the magnetic film; or
each magnet end is equally distant from the coil and magnetic film as a whole (i.e., the magnetic flux shutter which comprises the coil and the magnetic film), in other words:
the distance between the first end and the magnetic flux shutter is equal to the distance between the second end and the magnetic flux shutter.
In accordance with compact prosecution practice (see MPEP 2173.06), the claim is being construed for purposes of examination in accordance with the third interpretation.
Regarding claim 12: The discussion above regarding the limitation of “the multi-turn coil being continuously wound around the magnetic film” as recited in claim 1 similarly applies to claim 12 because claim 12 recites the same limitation.
Regarding claim 17: The discussion above regarding the limitation of “the multi-turn coil being continuously wound around the magnetic film” as recited in claim 1 similarly applies to claim 17 because claim 17 recites the same limitation.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
MPEP 1893.03(e) recites in part: “The examiner may adopt any portion or all of the report on patentability of the IPEA or ISA upon consideration in the national stage so long as it is consistent with U.S. practice. The first Office action on the merits should indicate the report on patentability of the IPEA or ISA has been considered by the examiner. The indication may be a mere acknowledgement.”
In this case, the examiner is adopting the written opinion of the ISA for International Application PCT/US2022/080145 (see IDS dated 5/9/2024) regarding favorable findings of novelty and inventive step as applicable to the anticipation and obviousness analyses of §102 and §103 respectively.
The examiner further cites the following references as additionally relevant to the invention(s) as disclosed/claimed:
CN 2014453847 U
US 2009/0096219 A1
US 6,246,561 B1
US 4,675,615
US 7,297,100 B2
US 2015/0196772 A1
US 2019/0255346 A1
US 2006/0094924 A1
US 2005/0113630 A1
JP 6933731 B2
JP 2016-144335 A
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN T. SAKAMOTO whose telephone number is (571)272-4958. The examiner can normally be reached Monday - Friday, ~9AM-5PM Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH M. RAYMOND can be reached at (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
21 July 2026
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