DETAILED ACTION
Notice to Applicant
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 1-20 are pending.
Claim Objections
Claims 3-4, 6, 8, 10, 13-14, 16, 18, and 20 are objected to because of the following informalities:
The following changes should be made to improve claim language clarity:
On line 3 of claims 3 and 13; and line 5 of claims 6 and 16, change each occurrence of “can be trimmed” --is trimmable--.
On line 3 of claims 4 and 14, change each occurrence of “can be independent trimmed” to --is independently trimmable--.
On line 1 of claims 8 and 18; and line 2 of claims 10 and 20: change each occurrence of “can be” to --is capable of being--.
Appropriate correction is required.
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, 8-12, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 8-10, and 14 of U.S. Patent No. 12,300,420. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in claims 1-2, 4-5, 8-10 , and 14 of ‘420 substantially recite the limitations in claims 1, 8-12, and 17-19 including: a second foil-wound inductor formed on said core with said foil-wound inductor, said second foil-wound inductor being insulated from said foil-wound inductor, wherein said second conductive foil strip at least partially encircles said outermost winding layer of said foil-wound inductor and also at least partially encircles an outermost winding layer of said second foil-wound inductor, wherein trimming said second conductive foil strip of said tunable capacitor also alters a capacitance between said second conductive foil strip and first and second terminals of said second foil-wound inductor. The claims have been rejected under an anticipatory type analysis rejection.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 5-8, 11-12, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Naito US Patent 5,153,812 in view of Lee et al. US Patent 6,075,713.
As per claims 1-2, 5-8, 11-12, and 15-18, Naito discloses in Figs. 15-16 a filter device and a method of forming the filter device, comprising:
as per claims 1 and 11, a first foil-wound inductor (e.g. laminated coil 16) formed by a first inductor conductive foil strip (related Figs. 4-6, electrode sheet 13) having a first terminal (e.g. terminal 13b) and a second terminal (e.g. terminal 13a), said first inductor conductive foil strip being wound around a core (e.g. magnetic cores 17a, 17b) to form a plurality of winding layers such that said first terminal is proximate said center and said second terminal is located at the outermost winding layer (related Figs. 5-6; As shown, the sheet 13 is wound around the magnetic core to form a plurality of layers, such that terminal 13b is located proximate the magnetic core and terminal 13a is located at an outermost winding layer.), and a first continuous dielectric insulating layer (related Figs. 4-6, insulating film 14) between said plurality of layers of said first inductor conductive foil strip; and, a first capacitor (e.g. capacitance between terminals 11a and 11b), integral to said first foil-wound inductor, formed by a first capacitor conductive foil strip (related Figs. 4-6, electrode sheet 11) at least partially encircling the outermost layer of said first foil-wound inductor (The sheet 11 encircles the sheet 13 when wrapped around the magnetic core.) and a first dielectric insulating layer (related Figs. 4-6, insulating film 13) disposed therebetween;
as per claims 2 and 12, a second foil-wound inductor (e.g. laminated coil 16’) wound around said core (The coils 16 and 16’ are both formed on the cores 17a and 17b.) and insulated from said first foil-wound inductor (The coil 16’ is separate (i.e. “insulated”) from the coil 16.);
as per claims 5 and 15, a second foil-wound inductor (e.g. laminated coil 16’) formed by a second inductor conductive foil strip (related Figs. 4-6, electrode sheet 13) having a first terminal (e.g. terminal 13b’) and a second terminal (e.g. terminal 13a’), said second inductor conductive foil strip being wound around said core (e.g. magnetic cores 17a, 17b) to form a plurality of winding layers such that said first terminal of said second foil-wound inductor is proximate said core and said second terminal of said second foil-wound inductor is located at the outermost winding layer (related Figs. 5-6; As shown, the sheet 13 is wound around the magnetic core to form a plurality of layers, such that terminal 13b’ is located proximate the magnetic core and terminal 13a’ is located at an outermost winding layer.), and a second continuous dielectric insulating layer (related Figs. 4-6, insulating film 14) between said plurality of layers of said second inductor conductive foil strip;
as per claims 6 and 16, a second capacitor (e.g. capacitance between terminals 11a’ and 11b’) formed by a second capacitor conductive foil strip (related Figs. 4-6, electrode sheet 13) at least partially encircling the outermost layer of said second foil-wound inductor (The sheet 11 encircles the sheet 13 when wrapped around the magnetic core.) and a second dielectric insulating layer (related Figs. 4-6, insulating film 13) disposed therebetween; and
as per claims 7 and 17, wherein said first foil-wound inductor is magnetically coupled to and electrically isolated from said second foil-wound inductor (Fig. 16; Each of the coils 16 and 16’ are magnetically coupled to and electrically isolated from one another as shown.).
However, Naito does not disclose as per claims 1 and 11, the first capacitor being a first tunable capacitor, said first capacitor conductive foil strip having a portion that is capable of being trimmed to alter a capacitance between said first capacitor conductive foil strip and said first terminal and said second terminal of said first foil-wound inductor.
Lee et al. exemplarily discloses a multilayer circuit 1 in Fig. 1 comprising a plurality of electrodes, where a capacitance thereof is capable of being altered by trimming an electrode of the circuit (Col. 4 lines 29-32 of Lee et al.). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have trimmed any of the electrodes of Naito as exemplarily taught by Lee et al. with the motivation of providing the benefit of altering a capacitance thereof to desirable values to adjust frequency characteristics therein as well-known in the art.
As an obvious consequence of the modification, the combination would have necessarily included: as per claims 1 and 11, the first capacitor being a first tunable capacitor, said first capacitor conductive foil strip having a portion that is capable of being trimmed to alter a capacitance between said first capacitor conductive foil strip and said first terminal and said second terminal of said first foil-wound inductor; as per claims 6 and 16, the second capacitor being a tunable capacitor, said second capacitor conductive foil strip having a second trimmable portion that is capable of being trimmed to alter a capacitance between said second capacitor conductive foil strip and said first terminal and said second terminal of said second foil-wound inductor; and as per claims 8 and 18, wherein said capacitance is capable of being adjusted to compensate for a parasitic capacitance associated with said first foil-wound inductor (In the resultant circuit, any one of the electrodes is capable of being adjusted to adjust a corresponding capacitance (i.e. “parasitic capacitance” between adjacent electrodes) therein.).
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over the above combination, as applied to claims 1 and 11 respectively, and further in view of Ikemoto US 2020/0014361.
As per claims 9 and 19, the above combination discloses the filter device recited in claim 1 and the method recited in claim 11 respectively, but does not disclose wherein said first dielectric insulating layer comprises an insulating adhesive tape.
Ikemoto exemplarily discloses in Fig. 2a a multilayer circuit comprising adhesive polyimide tapes 21 being used as insulating layers therein (Paragraph 29 of Ikemoto). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have replaced each of the generic insulating films of the combination circuit with the specific adhesive polyimide tapes of Ikemoto as being obvious art substitutions of equivalents. As an obvious consequence of the modification, the combination would have necessarily included wherein said first dielectric insulating layer comprises an insulating adhesive tape.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over the above combination, as applied to claims 1 and 11 respectively, and further in view of Yamano US 2008/0257488.
As per claims 10 and 20, the above combination discloses the filter device recited in claim 1 and the method recited in claim 11, but does not disclose wherein said first conductive foil strip of said first tunable capacitor is capable of being trimmed by a shearing operation.
Lee et al. further discloses that the electrodes therein is capable of being trimmed via laser trimming (Abstract of Lee et al.). Yamano discloses another method of cutting electrodes in a multilayer environment is by shearing, as shown in Figs. 10a-10b (Paragraph 90 of Lee et al.). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have alternatively trimmed the electrodes of the combination circuit via a shearing method as being an obvious design consideration of utilizing another method to yield a predictable result based on the exemplary teachings of Lee et al. As an obvious consequence of the modification, the combination would have necessarily included wherein said first conductive foil strip of said first tunable capacitor is capable of being trimmed by a shearing operation.
Allowable Subject Matter
Claims 3-4 and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/RAKESH B PATEL/Primary Examiner, Art Unit 2843
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