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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/441,437
`
`09/21/2021
`
`Junichi KOTANI
`
`091478-0459
`
`5602
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`HINSON, RONALD
`
`2837
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/18/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Lj Claim(s)__ is/are rejected.
`(J Claim(s) _ is/are objected to.
`C) Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 09/21/21 is/are: a)() accepted or b)[¥) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`—_c)Z None ofthe:
`b)1 Some**
`a)) All
`1.¥) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240712
`
`Application No.
`Applicant(s)
`171441,437
`KOTANI etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`RONALD HINSON
`2837
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 07/01/24.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`Applicant’s election without traverse of species 2 (figures 7-12 and claims 1-4)
`
`in the reply filed on 07/01/24 is acknowledged.
`
`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, a second coil
`
`comprised of a second winding, the second coil including: a first part wound
`
`aroundthe first magnetic leg but not wound around the second magnetic leg; and
`
`a second part wound around both thefirst magnetic leg and the second magnetic
`
`leg must be shownor the feature(s) canceled from the claim(s). No new matter should
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`be entered.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
`
`reply to the Office action to avoid abandonmentof the application. Any amended
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`replacement drawing sheet should includeall 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 madeto the brief description of the several views of the drawings for
`
`

`

`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 3
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`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 applicantwill be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
`
`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.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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-AlA 35 U.S.C. 112, the applicant), regards as the invention.
`
`Regarding claim 1, the limitations “...a second coil comprised of a second
`
`winding, the secondcoil including: a first part wound aroundthe first magnetic leg but
`
`not wound around the second magnetic leg; and a second part wound around both
`
`the first magnetic leg and the second magnetic leg...” is vague and indefinite.
`
`Figure 8 whichis apart of the species 2 discloses a second coil (W2 or W3)
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`comprised of a second winding, the second coil including: a first part which is wound
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`aroundthefirst magnetic leg and is wound around the second magnetic leg. Claim 1
`
`specifically states that the secondcoil includesa first part wound aroundthe first
`
`

`

`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 4
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`magnetic leg but not wound around the second magnetic leg. The examiner is
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`unclear on how the applicantis interpreting a second coil including a first part wound
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`aroundthefirst magnetic leg but not wound around the second magnetic leg. Both coils
`
`W2 and W3 contradict these limitations of claim 1 as seenin figure 8 which is a part of
`
`species 2.
`
`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-AlA) for the rejection will
`
`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`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
`claimedinvention andthe prior art are such that the claimed invention as a whole would have
`been obvious beforethe effectivefiling 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.
`
`Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US
`
`2018/0174730) in view Archer (US 5,485,362).
`
`Regarding claim 1, Scholz (figures 1-8 and 0064-0107) discloses a core (5)
`
`including a first magnetic leg (5s2) and a second magnetic leg (5s1) arranged to be
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`spaced from the first magnetic leg (see figure 3); and a printed wiring board (7)
`
`including an insulating portion and conductor wiring (see para 0071-0077),
`
`

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`Application/Control Number: 17/441 ,437
`Art Unit: 2837
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`Page 5
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`the conductor wiring including: a first coil comprised of a first winding (1), the first coil
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`being wound aroundthe first magnetic leg (5s2) but not wound around the second
`
`magnetic leg (see figures 3/5); and a second coil comprised of a second winding (3),
`
`the second coil including: a first part (3a) wound aroundthe first magnetic leg but not
`
`wound around the second magnetic leg (see figure 3/6).
`
`Scholz (figures 3/7) discloses a second part (3b) wound aroundthe first
`
`magnetic leg (5s2) but does not expressly disclose wherein the second part is wound
`
`aroundboththe first magnetic leg and the second magnetic leg.
`
`Archer(figure 2 and Col 3, lines 26-43) discloses a teaching wherein the
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`second part (11-14) is wound around both the first magnetic leg (30) and the second
`
`magnetic leg (32).
`
`Accordingly, it would have been obvious to one of ordinary skill in the art before
`
`the effectivefiling date of the applicant claimed invention to design wherein the second
`
`part is wound aroundboththe first magnetic leg and the second magnetic leg.
`
`as taught by Archerto the inductive device of Scholz so as to allow for improved
`
`coupling between the coil components thereby allowing for a higher inductance to be
`
`obtained while also allowing for a more compact design thereby saving in production
`
`cost.
`
`2.
`
`Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US
`
`2018/0174730) in view Kohn (US 2,914,721).
`
`Regarding claim 1, Scholz (figures 1-8 and 0064-0107) discloses a core (5)
`
`including a first magnetic leg (5s2) and a second magnetic leg (5s1) arranged to be
`
`

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`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 6
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`spaced from the first magnetic leg (see figure 3); and a printed wiring board (7)
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`including an insulating portion and conductor wiring (see para 0071-0077),
`
`the conductor wiring including: a first coil comprised of a first winding (1), the first coil
`
`being wound aroundthe first magnetic leg (5s2) but not wound around the second
`
`magnetic leg (see figures 3/5); and a second coil comprised of a second winding (3),
`
`the second coil including: a first part (3a) wound aroundthe first magnetic leg but not
`
`wound around the second magnetic leg (see figure 3/6).
`
`Scholz (figures 3/7) discloses a second part (3b) wound aroundthe first
`
`magnetic leg (5s2) but does not expressly disclose wherein the second part is wound
`
`aroundboththe first magnetic leg and the second magnetic leg.
`
`Kohn (figure 1 and Col 3, lines 26-43) discloses a teaching wherein the second
`
`part (11/13/13) is wound aroundboth the first magnetic leg (10a) and the second
`
`magnetic leg (10b).
`
`Accordingly, it would have been obvious to one of ordinary skill in the art before
`
`the effectivefiling date of the applicant claimed invention to design wherein the second
`
`part is wound aroundboththe first magnetic leg and the second magnetic leg.
`
`as taught by Kohn to the inductive device of Scholz so as to allow for improved coupling
`
`between the coil components thereby allowing for a higher inductance to be obtained
`
`while also allowing for a more compact design thereby saving in production cost.
`
`3.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US
`
`2018/0174730) in view Kohn (US 2,914,721) in further view of Nakahoriet al.
`
`(2007/0047266).
`
`

`

`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 7
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`Regarding claim 2, Scholz (figures 1-8 and 0064-0107) discloses all the
`
`limitations as noted above but does notexpressly disclose a winding direction of the
`
`second winding with respectto the first part and a winding direction of the second
`
`winding with respect to the second part are the same.
`
`Nakahori et al. (figures 1-2 and para 0066)discloses a teaching of winding
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`direction of the second winding with respectto the first part (43a) and a winding
`
`direction of the second winding with respect to the second part (43b) are the same.
`
`Accordingly, it would have been obvious to one of ordinary skill in the art before
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`the effectivefiling date of the applicant claimed invention to design a winding direction
`
`of the second winding with respectto the first part and a winding direction of the second
`
`winding with respect to the second part are the same as taught by Nakahoriet al. to the
`
`modified inductive device of Scholz so asto limit surge currents and suppress high-
`
`frequency signals
`
`4.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US
`
`2018/0174730) in view Kohn (US 2,914,721) in further view of Murakami etal.
`
`(2018/0350513).
`
`Regarding claim 2, Scholz (figures 1-8 and 0064-0107) discloses all the
`
`limitations as noted above but does notexpressly disclose a winding direction of the
`
`second winding with respectto the first part and a winding direction of the second
`
`winding with respect to the second part are the same.
`
`Murakami et al. (figures 1-2a, para 0016/0017 and para 0056-0060) discloses a
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`teaching of winding direction of the second winding with respectto the first part (8a) and
`
`

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`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 8
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`a winding direction of the second winding with respect to the second part (3b) are the
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`same.
`
`Accordingly, it would have been obvious to one of ordinary skill in the art before
`
`the effectivefiling date of the applicant claimed invention to design a winding direction
`
`of the second winding with respect to the first part and a winding direction of the second
`
`winding with respect to the second part are the same as taught by Murakamietal. to the
`
`modified inductive device of Scholz so asto limit surge currents and suppress high-
`
`frequencysignals.
`
`5.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US
`
`2018/0174730) in view Kohn (US 2,914,721) in further view of Folkeretal.
`
`(10,930,423).
`
`Regarding claim 3, Scholz (figures 1-8 and 0064-0107) disclosesall the
`
`limitations as noted above but does not expressly disclose the core further includes two
`
`or more other magnetic legs different from the first magnetic leg and the second
`
`magnetic leg.
`
`Folkeret al. (figures 6-8, Col 10, lines 8-68 and Col 11, lines 1-68) discloses
`
`the core further includes two or more other magnetic legs (250 and 260) (note: core
`
`legs 250 and 260 are smaller in thickness than the first and second magnetic legs
`
`270 and 280)different from the first magnetic leg (270) and the second magnetic leg
`
`(280).
`
`Accordingly, it would have been obvious to one of ordinary skill in the art before
`
`the effectivefiling date of the applicant claimed invention to design wherein the core
`
`

`

`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 9
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`further includes two or more other magnetic legs different from the first magnetic leg
`
`and the second magnetic leg as taught by Folkeral. to the modified inductive device of
`
`Scholz so asto allow for a more compactinductive device thereby by saving in valuable
`
`production cost in regards to time and material needed to makethe inductive device.
`
`
`
`6. Claim4is rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US
`
`2018/0174730) in view Kohn (US 2,914,721) and Folkeret al. (10,930,423) in further
`
`view of Ochi et al. (US 7,956,491).
`
`Regarding claim 3, Scholz (figures 1-8 and 0064-0107) disclosesall the
`
`limitations as noted above but does not expressly disclose the core has no gapsin any
`
`of the first magnetic leg, the second magnetic leg, or the two or more other magnetic
`
`legs.
`
`Ochi et al. (figure 7 and Col 9, lines 10-35) discloses the core has no gapsin
`
`any of the first magnetic leg, the second magnetic leg, or the two or more other
`
`magnetic legs.
`
`Accordingly, it would have been obvious to one of ordinary skill in the art before
`
`the effectivefiling date of the applicant claimed invention to design wherein the core has
`
`no gapsin any of the first magnetic leg, the second magnetic leg, or the two or more
`
`other magnetic legs as taught by Folkeral. to the modified inductive device of Scholz so
`
`as to save in valuable production costin regards to time and material needed to make
`
`the inductive device.
`
`

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`Application/Control Number: 17/441 ,437
`Art Unit: 2837
`
`Page 10
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`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to RONALD HINSONwhosetelephone numberis
`
`(571)270-7915. The examiner can normally be reached M to F; 8 -5.
`
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`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Shawki Ismail can be reached on 571-272-3985. The fax phone numberfor
`
`the organization wherethis 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 Centeris
`
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`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`
`/RONALD HINSON/
`Primary Examiner, Art Unit 2837
`
`