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 .
Election/Restrictions
Applicant’s election without traverse of species 3 (figure 24 and claims 2-15) in the reply filed on 06/18/26 is acknowledged. Also, claims 6 and 14 are withdrawn from consideration since it does not read on the species chosen. Claim 6 discloses the input/output pins are exposed on a same side of the magnetic-component module as the core is located. These structural features are taught in species 4 (figure 45) and not species 3 (figure 24). See also para 0044 of the applicant pgpub teaching wherein species 3 (figure 24) the input/output pins are exposed on the opposite side of the magnetic-component module as the core.
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 traces in the substrate 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: A reference number is not shown that points out the input/output pins. 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. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
Claims 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2- 15 of U.S. Patent No. 12,165,798. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter in U.S. Patent No. 12,165,798 has the same structural limitations.
The subject matter claimed in the instant application of claims 2-15 corresponds to the subject matter claims 1-16 of U.S. Patent No. 12,165,798 corresponds the details are as follows:
a. Claim 2 of the instant application number 18926765, recites, “a substrate; a core that is on a first surface of the substrate and that includes a top surface and a bottom surface that are connected by side walls;a spacer that conforms to the top surface of the core; a winding including: wire bonds extending over the core and electrically connecting a first portion of the substrate and a second portion of the substrate; and traces on and/or in the substrate; and an overmold material encapsulating the core, the spacer, and the wire bond”.(same elements recited in claim 1 of U.S. Patent No. 12,165798).
b. Claim 3 of the instant application number 18926765, recites (same elements recited in claim 2 of U.S. Patent No.12,165,798).
c. Claims 4-5 of the instant application number 18926765, recites (same elements recited in claim 3 of U.S. Patent No.12,165,798).
d. Claim 6 of the instant application number 18926765, recites (same elements recited in claim 6 of U.S. Patent No. 12,165,798).
e. Claim 7 of the instant application number 18926765, recites (same elements recited in claim 7 of U.S. Patent No. 12,165,798).
f. Claim 8 of the instant application number 18926765, recites (same elements recited in claim 8 of U.S. Patent No. 12,165,798).
g. Claim 9 of the instant application number 18926765, recites, “a substrate; a core on a first surface of the substrate; a spacer that extends only along a top surface of the core such that an edge of the spacer overhangs the core; a winding including: wire bonds extending over the core and electrically connecting a first portion of the substrate and a second portion of the substrate; and traces on and/or in the substrate; and an overmold material encapsulating the core, the spacer, and the wire bonds.”.(same elements recited in claim 9 of U.S. Patent No. 12,165,798).
h. Claim 10 of the instant application number 18926765, recites (same elements recited in claim 10 of U.S. Patent No. 12,165,798).
i. Claim 11 of the instant application number 18926765, recites (same elements recited in claim 11 of U.S. Patent No. 12,165,798).
j. Claim 12 of the instant application number 18926765, recites (same elements recited in claim 12 of U.S. Patent No. 12,165,798).
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 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.
1. Claims 2-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 2009/0160595) in view of Olschewski (US 4,103,267) and Pitzele et al. (US 2007/0089293).
Regarding claim 2, Feng et al. (figures 1a-1f and para 0060-0063) discloses
a substrate (13); a core (15) on a first surface of the substrate (see figure 1a); a winding including (see figures 1a-1d): wire bonds (19) extending over the core and electrically connecting a first portion of the substrate and a second portion of the substrate (see para 0062); and traces on and/or in the substrate (see figure 1b); and
an overmold material (101) encapsulating the core and the wire bonds.
Feng et al. lacks a teaching of a spacer on the core and input/output pins on a surface of the substrate.
Olschewski (figures 1-4 and Col 2, lines 61-66) discloses a teaching of a spacer (19) on the core.
Pitzele et al. (figure 5 and para 0023) discloses input/output pins on a surface of the substrate.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to design a teaching of a spacer on the core as taught by Olschewski to the inductive device of Feng e al. so as to greatly reduce the chances of a short circuiting occurring.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to design input/output pins on a surface of the substrate as taught by Pitzele et al. to the inductive device of Feng e al. so as to allow the inductive device the ability to transfer information between other external electronic components.
Regarding claim 3, Feng et al (figure 1a) discloses an electrical component (11) are attached to a second surface of the substrate that is opposite to the first surface of the substrate; Feng et al does not expressly discloses a plurality of electrical components are attached to a second surface of the substrate that is opposite to the first surface of the substrate. It would have been obvious to one having ordinary skill in the art at the time the invention was made to a plurality of electrical components are attached to a second surface of the substrate that is opposite to the first surface of the substrate, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Such as to reduce the size of the printed circuit board thereby saving in production cost/time.
Regarding claim 7, Olschewski (figure 2) discloses an adhesive (16) to mount the core to the substrate.
2. Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 2009/0160595) in view of Olschewski (US 4,103,267) and Pitzele et al. (US 2007/0089293) in further view of Lotfi et al. (US 5787569).
Regarding claim 4, the modified inductive device of Feng et al. (figures 1a-1f and para 0060-0063) discloses all the limitations as noted but does not expressly discloses a gap between the bottom surface of the core and the first surface of the substrate, wherein the overmold material fills the gap.
Lotfi et al. (figures 5a and Col 6, lines 1-25) discloses a gap between the bottom surface of the core and the first surface of the substrate, wherein the overmold material fills the gap.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to wherein a gap between the bottom surface of the core and the first surface of the substrate, wherein the overmold material fills the gap as taught by Lotfi et al to the modified inductive device of Feng e al. so as to improve structural integrity, provide vital electrical insulation, and prevent mechanical damage from vibration or shock.
Regarding claim 5, designing wherein an adhesive is in the gap between the core and the substrate, and the overmold material encapsulates the adhesive would have been an obvious design consideration based on intended application/environment use. Such as to uniform stress distribution and eliminates the need to drill holes that can weaken structural integrity while also preventing moisture, chemicals, and corrosive elements from degrading the adhesive or reaching the core.
3. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 2009/0160595) in view of Olschewski (US 4,103,267) and Pitzele et al. (US 2007/0089293) in further view of Sakaguchi et al. (US 2015/0213938).
Regarding claim 8, Feng et al. (figures 1a-1f and para 0060-0063) discloses all the limitations as noted but does not expressly discloses wherein the spacer includes a polyethylene terephthalate resin.
Sakaguchi et al. (para 0079) discloses wherein the spacer (20) includes a polyethylene terephthalate resin.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to wherein the spacer includes a polyethylene terephthalate resin as taught by Sakaguchi et al. to the inductive device of Feng e al. so as to allow the inductive device the spacer ability to have great insulation, heat resistance, flexibility and moldability.
4. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 2009/0160595) in view of Yang et al. (US 2009/0160596) and Lotfi et al. (US 5787569).
Regarding claim 2, Feng et al. (figures 1a-1f and para 0060-0063) discloses
a substrate (13); a core (15) on a first surface of the substrate (see figure 1a); a winding including (see figures 1a-1d): wire bonds (19) extending over the core and electrically connecting a first portion of the substrate and a second portion of the substrate (see para 0062); and traces on and/or in the substrate (see figure 1b); and
an overmold material (101) encapsulating the core and the wire bonds.
Feng et al. lacks a teaching of a spacer on the core and input/output pins on a surface of the substrate.
Yang et al. (figure 2b and para 0025-0026) discloses a teaching of a spacer (23) on the core.
Lotfi et al. (figures 5a and Col 6, lines 1-25) discloses input/output pins (535) on a surface of the substrate.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to design a teaching of a spacer on the core as taught by Yang et al. to the inductive device of Feng e al. so as to greatly reduce the chances of a short circuiting occurring.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to design input/output pins on a surface of the substrate as taught by Lotfi et al. to the inductive device of Feng e al. so as to allow the inductive device the ability to transfer information between other external electronic components.
5. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 2009/0160595) in view of Yang et al. (US 2009/0160596) and Lotfi et al. (US 5787569) in further view of Armfield et al. (US 6292081).
Regarding claim 7, Feng et al. (figures 1a-1f and para 0060-0063) discloses all the limitations as noted but does not expressly discloses an adhesive to mount the core to the substrate.
Armfield et al. (figure 4) discloses wherein an adhesive (240) to mount the core to the substrate.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to wherein an adhesive to mount the core to the substrate as taught by Armfield et al to the inductive device of Feng e al. so as to uniform stress distribution and eliminates the need to drill holes that can weaken structural integrity.
6. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Feng et al. (US 2009/0160595) in view of Dirks (US 4,975,671) and Yu et al. (US 7898376).
Regarding claim 2, Feng et al. (figures 1a-1f and para 0060-0063) discloses
a substrate (13); a core (15) on a first surface of the substrate (see figure 1a); a winding including (see figures 1a-1d): wire bonds (19) extending over the core and electrically connecting a first portion of the substrate and a second portion of the substrate (see para 0062); and traces on and/or in the substrate (see figure 1b); and
an overmold material (101) encapsulating the core and the wire bonds.
Feng et al. lacks a teaching of a spacer on the core and input/output pins on a surface of the substrate.
Dirks (figure 5 and Col 4, lines 48-50) discloses a teaching of a spacer (3) on the core.
Yu et al. (figures 3/5 and Col 3, lines 20-67- Col 4,lines 1-67) discloses input/output pins on a surface of the substrate.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to design a teaching of a spacer on the core as taught by Dirks to the inductive device of Feng e al. so as to greatly reduce the chances of a short circuiting occurring.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant claimed invention to design input/output pins on a surface of the substrate as taught by Yu et al. to the inductive device of Feng e al. so as to allow the inductive device the ability to transfer information between other external electronic components.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HINSON whose telephone number is (571)270-7915. The examiner can normally be reached M to F; 8 -5.
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/RONALD HINSON/Primary Examiner, Art Unit 2837
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