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 .
Response to Arguments
In light of applicant’s arguments presented 5 June 2026, the cited prior art has been considered in a new light – which is detailed in the rejection below.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 and 3-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 6-7, 9-18 of copending Application No. 18/923.326. Although the claims at issue are not identical, they are not patentably distinct from each other because they are covering essentially the same subject matter. This is a provisional nonstatutory double patenting rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant application (18/923.269) claim
US Patent Application 18/923.326 claim
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Claim 1, 3, 5, 7-14 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 and 7-9 of copending Application No. 18/923.221. Although the claims at issue are not identical, they are not patentably distinct from each other because they are covering essentially the same subject matter. This is a provisional nonstatutory double patenting rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant application (18/923.269) claim
US Patent Application 18/923.221 claim
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Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-6, 8-15, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardinis (US 2018.0076154) in view of Pigott (US 2015.0004902).
Regarding claim 1, Bernardinis disclose:
A method of operating a signal isolation device, the method comprising: receiving an input signal at an input of a transmit die and in response to receiving the input signal generating a voltage at a transmitter output of the transmit die; coupling the time varying electrical voltage from the transmitter output of the transmit die to a receiver input of a receiver die; coupling the voltage from the receiver input to a transmit coil disposed within the receiver die; wherein the receive coil is disposed in the receiver die; coupling the intermediate signal to receiver circuitry disposed within the receiver die; shielding electromagnetic noise generated by the receive coil from the receiver circuitry via a shield positioned between the receive coil and the receiver circuitry (see Fig. 2a; [0023-0027]; transmit die 112 receiving input at 142; generating an output; coupling the output at 140 of 112 to the receiver input at 110 of receiver die 104, which is transmit coil 110 within 104; 110 is inductively coupled to receive coil 108 within 104; 108 is coupled to circuit 106 within 104; shielding noise via 126 between 108 and circuit 106).
Bernardinis is not explicit as to, but Pigott disclose:
generating a corresponding time varying electrical voltage and inducing a receive coil to generate an intermediate signal in response to the coupling the time varying electrical voltage to the transmit coil, wherein the intermediate signal corresponds to the input signal (see Fig. 1-2, 6, 8; [0021-0039, 0060-0061, 0067-0070]; where time varying electric signal to induce coupling between receiver oil and transmit coil in response to input signal).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of applicant’s invention, to combine the known techniques of Pigott to that of Bernardinis, to predictably allow for conversion of an input signal into appropriate form for inductive communication between coils([0024]) .
Regarding claim 2, the rejection of claim 1 is incorporated herein. Pigott further disclose:
electrically isolating the transmit coil from the receive coil (see Fig. 1-2; 160/240 to electrically isolate 144/212 from 154/232)
Regarding claim 3, the rejection of claim 1 is incorporated herein. Pigott further disclose:
converting the intermediate signal to a DC signal via a power conversion circuit (see [0003]).
Regarding claim 4, the rejection of claim 3 is incorporated herein. Pigott further disclose:
the input signal corresponds to the DC signal and is electrically isolated from the DC signal (see [0019, 0027])
Regarding claim 5, the rejection of claim 3 is incorporated herein. Pigott further disclose:
the DC signal is a first DC signal and wherein the power conversion circuit generates a second DC signal having a voltage greater than the first DC signal (see [0019])
Regarding claim 6, the rejection of claim 1 is incorporated herein. Pigott further disclose:
the transmit die includes data modulation circuitry that couples data onto the time varying electrical voltage (see [0024-0035])
Regarding claim 8, Bernardini disclose:
A method of forming a signal isolation device, the method comprising: attaching a transmit die to a receiver die wherein the transmit die includes an input terminal coupled to a transmitter output terminal, and wherein the receiver die includes an input terminal, an output terminal and a coupler region, the coupler region including: a transmit coil; a receiver coil positioned proximate the transmit coil and connected to the pair of output terminals; receiver circuitry connected to the receiver coil; forming one or more electrical connections between the transmit die and the receiver die such that the transmit coil is connected to the transmitter output terminal; and a shield layer positioned between the receiver circuitry and the receiver coil (see Fig. 2a; [0023-0027, 0005, 00039]; method of manufacture of the disclosed signal isolation device; input terminal 142; output terminal at 110; coils in coupler region include 110 which is proximate to 108; connected to output terminals; shielding layer 126).
Bernardini discloses input/output terminals, however, it is not explicit as there being a pair of such terminals. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have a pair of input/output terminals on the device, since it has been held that mere duplication of the essential working part of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Bernardinis, is not explicit as to, but Pigott disclose:
at least partially encapsulating the receiver die and the transmit die in an electrically insulative material (see forming encapsulation at step 1212).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of applicant’s invention, to combine the known techniques of Pigott to that of Bernardinis, to include an encapsulation layer to predictably protect elements of the device.
Regarding claim 9, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the transmit die includes transmit circuitry arranged to generate a time varying electrical voltage in response to receiving an input signal at the input terminals (see [0095]).
Regarding claim 10, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the time varying electrical voltage is coupled to the transmit coil, and in response to receiving the time varying electrical voltage the transmit coil induces the receiver coil to generate an intermediate signal corresponding to the input signal (see [0095]).
Regarding claim 11, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the signal isolation device further comprises a power storage device coupled to the receiver circuitry, and wherein the receiver circuitry is configured to cause the power storage device to generate a DC signal in response to the generation of the intermediate signal (see [0092]).
Regarding claim 12, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the receiver circuitry generates a DC voltage in response to the generation of the intermediate signal (see [0003]).
Regarding claim 13, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the DC voltage is a first DC voltage and wherein the receiver circuitry generates a second DC voltage in response to the generation of the intermediate signal, wherein the second DC voltage is greater than the first DC voltage (see [0019]).
Regarding claim 14, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the DC voltage is coupled to a switch driver circuit that generates a switch drive signal (see [0023]; on-off keying to ‘switch’ drive circuit signal).
Regarding claim 15, the rejection of claim 8 is incorporated herein. Piggot further disclose:
the transmit die includes data modulation circuitry that modulates data onto the time varying electrical voltage (see [0025]).
Regarding claim 17, Bernardinis disclose:
A method of operating a signal isolation device, the method comprising: receiving an input signal at an input of the signal isolation device; coupling the input signal to transmit circuitry disposed on a transmit die and in response to receiving the input signal the transmit circuitry generates a corresponding voltage; coupling the voltage from the transmit circuitry to a transmit coil disposed within a separate receiver die and wherein the receive coil is disposed in the receiver die; coupling the signal to receiver circuitry disposed within the receiver die; and generating an output signal at an output of the signal isolation device in response to the coupling the signal to the receiver circuitry, wherein the output signal corresponds to the input signal and wherein the output signal is electrically isolated from the input signal (see Fig. 2a; [0023-0027]; transmit die 112 receiving input at 142; generating an output; coupling the output at 140 of 112 to the receiver input at 110 of receiver die 104, which is transmit coil 110 within 104; 110 is inductively coupled to receive coil 108 within 104; 108 is coupled to circuit 106 within 104 and output signal corresponds to and is electrically isolated from the input signal).
Bernardinis is not explicit as to, but Pigott disclose:
generating a corresponding time varying electrical voltage and inducing a receive coil to generate an intermediate signal in response to the coupling the time varying electrical voltage to the transmit coil, wherein the intermediate signal corresponds to the input signal (see Fig. 1-2, 6, 8; [0021-0039, 0060-0061, 0067-0070]; where time varying electric signal to induce coupling between receiver oil and transmit coil in response to input signal).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of applicant’s invention, to combine the known techniques of Pigott to that of Bernardinis, to predictably allow for conversion of an input signal into appropriate form for inductive communication between coils([0024]) .
Regarding claim 18, the rejection of claim 17 is incorporated herein. Bernardinis further disclose:
shielding electromagnetic noise generated by the receive coil from the receiver circuitry via a shield positioned between the receive coil and the receiver circuitry (see Fig. 2a; [0023, 0026]; shield 126 between coil 108 and circuit 106).
Regarding claim 19, the rejection of claim 17 is incorporated herein. Pigott further disclose:
the receiver circuitry includes an AC to DC converter circuit that receives the intermediate signal, and in response generates the output signal at a DC voltage (see [0019, 0092])
Regarding claim 20, the rejection of claim 19 is incorporated herein. Pigott further disclose:
the output signal is a first output signal and wherein the receiver circuitry generates a second output signal (see [0019, 0092]; first output is input into receiver to output a second signal)
Claim(s) 7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardinis (US 2018.0076154) in view of Pigott (US 2015.0004902) in even further view of Li (US 2025.0202089).
Regarding claim 7, the rejection of claim 1 is incorporated herein. Piggot and Bernardinis are not explicit as to, but Li disclose:
the receiver circuitry includes data demodulation circuitry that demodulates data from the intermediate signal (see Fig. 2; [0039]; demodulation circuit 21 to demodulate received signal).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of applicant’s invention, to combine the known techniques of Li to that of Pigott and Bernardinis, to predictably allow for higher data transmission rates ([0004]).
Regarding claim 16, the rejection of claim 8 is incorporated herein. of Bernardinis and Pigott are not explicit as to, but Li disclose:
the receiver circuitry includes data demodulation circuitry that demodulates the data from the intermediate signal (see Fig. 2; [0039]; demodulation circuit 21 to demodulate received signal).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of applicant’s invention, to combine the known techniques of Li to that of Bernardinis and Pigott, to predictably allow for higher data transmission rates ([0004]).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pigott (US 2015.004902).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH BUKOWSKI whose telephone number is (571)270-7913. The examiner can normally be reached Monday - Friday // 0730-1530.
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/kenneth bukowski/ Primary Examiner, Art Unit 2621
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