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 .
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, 9 and 17 of the instant application is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 10 and 16 respectively of U.S. Patent No. 11,258,420. Although the claims are not verbatim identical, however, they are not patentably distinct as shown in the following table.
Current Application, 18/757,339
US Patent 11,258,420
Claim 1: a mutually induced filter comprising:
A first circuit configured to be coupled to a heater element.
A first inductor.
A frequency filter coupled in parallel to the first inductor.
A second inductor, wherein the first and second inductors are configured to be coupled to a power supply.
The first inductor and the second inductor are twisted with each other to enable a transfer of a first resonant frequency associated with the first circuit to a second circuit.
Claim 1: a mutually induced filter comprising:
A first circuit configured to be coupled to a first load element.
A first inductor having a first end and a second end.
A first frequency filter coupled in parallel to the first inductor.
A second inductor having a first end and a second end, wherein the first ends of the first and second inductors are configured to be coupled to a first power supply.
A second circuit configured to be coupled to a second load element.
The first inductor, the second inductor, and a portion of the second circuit are twisted with each other to enable a transfer of a first resonant frequency associated with the first circuit to the second circuit.
Structural Identity of the Filter Circuit: The core filtering components recited in pending Claim 1—namely, a first circuit containing a first inductor with a parallel frequency filter and a second inductor coupled to a power supply—are identical to the foundational limitations set forth in Claim 1 of U.S. Patent No. 11,258,420. Furthermore, both claims require the inductors to be twisted to transfer a first resonant frequency to a second circuit.
Specific Application to a Heater Element: While pending Claim 1 specifies that the first circuit is configured to be coupled to a "heater element", U.S. Patent No. 11,258,420 broadly claims coupling to a "first load element", and dependent Claim 2 of the patent explicitly specifies that the first load element is a "heater... embedded within a pedestal of a plasma chamber". Restricting a generalized load element to a specific, well-known type of resistive load (such as a heater element used in semiconductor processing equipment) would have been an obvious design choice to a person of ordinary skill in the art at the time of the invention, yielding predictable results without imparting patentable distinctness.
Claim 9: a mutually induced filter comprising:
A first circuit configured to be coupled to a thermocouple.
A first inductor.
A frequency filter coupled in parallel to the first inductor.
A second inductor, wherein the first and second inductors are configured to be coupled to a temperature controller.
The first inductor and the second inductor are twisted with each other to enable a transfer of a first resonant frequency of the first circuit to a second circuit.
Claim 10: a mutually induced filter comprising:
A first circuit configured to be coupled to a first thermocouple.
A first inductor having a first end and a second end.
A first frequency filter coupled to the first end of the first inductor and to the second end of the first inductor (i.e., a parallel connection).
A second inductor having a first end and a second end, wherein the first ends of the first and second inductors are configured to be coupled to a temperature controller.
A second circuit configured to be coupled to a second thermocouple.
The first inductor, the second inductor, and a portion of the second circuit are twisted together lengthwise with each other to enable a transfer of a first resonant frequency associated with the first circuit to the second circuit.
The filtering structure, parallel frequency filter configuration, and thermocouple-to-temperature controller pairing recited in pending Claim 9 are coextensive with the subject matter claimed in Claim 10 of U.S. Patent No. 11,258,420. While pending Claim 9 omits the explicit recitation of the second thermocouple circuit portion in its broadest phrasing, claiming a single filter circuit branch that is identical to the subcomponents already protected in the patented multi-channel structure represents an obvious variation or genus-species overlap that does not patentably distinguish over the reference patent.
Claim 17: Recites a mutually induced filter comprising:
A first circuit configured to be coupled to a motor.
A first inductor.
A frequency filter coupled in parallel to the first inductor.
A second inductor, wherein the first and second inductors are configured to be coupled to a power source.
The first inductor and the second inductor are twisted with each other to enable a transfer of a first resonant frequency associated with the first inductor and the frequency filter of the first circuit to a second circuit.
Claim 16: Recites a mutually induced filter comprising:
A first circuit configured to be coupled to a motor.
A first inductor having a first end and a second end.
A first frequency filter coupled to the first end of the first inductor and to the second end of the first inductor (i.e., connected in parallel).
A second inductor having a first end and a second end, wherein the first ends of the first and second inductors are configured to be coupled to a power supply.
A second circuit configured to be coupled to the motor.
The first inductor, the second inductor, and a portion of the second circuit are wound together with each other to enable a transfer of a first resonant frequency associated with the first circuit to the second circuit.
The structural limitations of pending Claim 17—specifically a mutually induced filter connected to a motor and power source utilizing a parallel inductor-capacitor arrangement and twisted winding—are fully anticipated or rendered obvious by Claim 16 of U.S. Patent No. 11,258,420. The interchangeable use of terms like "power source" versus "power supply" and focusing the claim on the primary filter branch rather than the dual-circuit winding details constitutes an unpatentable, routine modification of the already patented architecture.
Therefore, the instant claims, 1, 9 and 17 are merely an obvious variation of the subject matter already patented in U.S. Patent No. 11,258,420 and recited in corresponding claims 1, 10 and 16 respectively.
Allowable Subject Matter
Claims 1-24 would be allowable if rewritten or amended or a terminal disclaimer is timely filed in compliance with 37 CFR 1.321 (c) or 1.321 (d) to overcome the rejection(s) under obviousness nonstatutory double patenting, set forth in this Office action.
The independent claims of the current application (Claims 1, 9, and 17) are patentably distinct over the prior art references Long et al. (US 2012/0032756) and Ooyabu et al. (US 2014/0136742), either individually or in combination, for at least the following reasons:
Distinction Over Long et al. (US 2012/0032756)
Parallel Frequency Filter Topology: Long fails to teach or suggest a frequency filter coupled in parallel to the first inductor in the specific circuit arrangement required by the independent claims. As acknowledged during the prosecution of related application 16/834,975 (16834975ClaimsA.pdf), Long merely utilizes an L-configuration capacitor connected at one end of a wire. Long does not disclose a frequency filter coupled in parallel across the first inductor to form the resonant transfer topology claimed.
Resonant Frequency Transfer to a Second Circuit: Long focuses on filtering RF power from individual heating elements to ground via grounded capacitors and lacks any structural or operational teaching wherein a first circuit's resonant frequency is transferred via twisted inductors to a second circuit (such as a second load path or channel) as recited in the independent claims.
Distinction Over Ooyabu et al. (US 2014/0136742)
Specific Application and Resonant Transfer Direction: As noted by the Examiner in the Notice of Allowability for the related application (16834975NOA.pdf), while Ooyabu discloses a communication system with master and slave devices utilizing connection circuits with parallel capacitors and twisted lines, Ooyabu does not teach that a first resonant frequency associated with a first circuit is transferred to a second circuit. Instead, Ooyabu's resonance is designed strictly to transfer signals between the transmission line and its corresponding individual slave device rather than inter-circuit resonant transfer within a mutually induced filter unit.
Inconsequential Combination: Combining Long and Ooyabu would not yield the claimed invention. Long lacks the parallel frequency filter configuration and inter-circuit resonance transfer, while Ooyabu is directed to a vehicular/communication master-slave bus architecture rather than a semiconductor plasma processing filter environment designed to handle high-power RF filtering for heater elements, thermocouples, or motors.
Therefore, the closest prior art references—either alone or in combination—fail to teach or render obvious all the structural limitations and resonant transfer configurations recited in independent claims 1, 9, and 17 of Claims.pdf.
Conclusion
The prior art Tehrani (US 2016/0028362) and Shepard (US 4,052,751) made of record and not relied upon is considered pertinent to applicant's disclosure. Tehrani teaches all limitations of claim 1, however, cannot be used as a prior art due to the exception 102(b)(2)(C) of the commonly owned disclosure.
Shepard discloses a mutually induced filter (col 6, lines 53-56 and col 7, lines 3-9) comprising a first circuit (66 & 68, Fig. 3) configured to be coupled to a first load (ZL), wherein the first circuit includes: a first inductor (68); and a first frequency filter (C3) coupled to the first and second ends of the first inductor (see Fig. 3); a second inductor (66) with the first ends of the first and second inductors coupled to a first power supply (input terminal 17 of the power line, Fig. 3); and a second circuit (64 & 65, Fig. 3) configured to be coupled to a second load element, ZL), wherein the first inductor (68), the second inductor (66), and a portion of the second circuit (inductor 64) are wound about a common core 69 to enable a transfer of a first resonant frequency associated with the first circuit to the second circuit.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAFIZUR RAHMAN whose telephone number is (571)270-0659. The examiner can normally be reached M-F: 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Han can be reached on (571) 272-2078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAFIZUR RAHMAN/Primary Examiner, Art Unit 2843.
Prosecution Insights