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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 December 2025 has been entered.
Response to Amendment
The amendment filed 22 December 2025 has been entered.
A new Specification objection has been provided in the present Office action.
Applicant’s amendments to the Claims have overcome the Claim objections. The Claim objections have been withdrawn.
A new 35 USC 112 rejection has been provided in the present Office action.
Applicant’s arguments, filed 22 December 2025, with respect to the rejection of claim 1 under 35 USC § 103 have been fully considered and are persuasive. However, after conducting an updated search, an additional reference was identified, which teaches the amended portion of the claims. Therefore, the grounds of rejection under 35 USC § 103 still stand.
Status of the Claims
In the amendment dated 22 December 2025, the status of the claims is as follows: Claim 1 has been amended.
Claims 1-6 are pending.
Specification
The amendment filed 7 February 2022 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference in the international patent application PCT/JP2020/024101 and of the Japanese patent application 2019-147273 is ineffective as it was added on the day of entry into the national phase, which is after the filing date of the Instant Application. The filing date of this national stage application is the filing date of associated PCT, in this case 19 June 2020, see MPEP 1893.03(b). Therefore, the specification amendment of 7 February 2022 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
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-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites: “…an external frame member…forming a decompression space by bringing the decompression space formation member into contact with the first mold…” There is insufficient antecedent basis for the “decompression space formation member” in the claim. This limitation is also unclear in view of the Specification, which discloses that the “the external frame member 81 is brought into contact with the first mold 3 to form a decompression space 85.” However, the structure of claim 2 is such that the “external frame member” and the “decompression space formation member” are two different structural items. For the purpose of the examination, the limitation will be interpreted in view of the Specification as “…forming a decompression space by bringing the external frame member into contact with the first mold…”
Claim 5 is rejected based on its dependency to claim 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-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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP-2004296746-A, referencing foreign version for drawings and provided English translation for written disclosure) in view of Kato et al. (US-6392525-B1).
Regarding claim 1, Mori teaches a method (“Pressurizing device and circuit element mounting method,” title), the method comprising:
a first step of preparing (“a new portion is wound from the supply roll 54 onto the workpiece, and a used portion is wound onto the take-up roll 56,” page 9; using the supply roll 54 and take-up roll 56 to advance the cover film 52 is construed as a preparation step) a heat press machine (fig. 2) including:
a first mold (lower mold 30, fig. 2),
a second mold (mold 32, fig. 2) separated from the first mold by an interval in a press direction (distance between the bottom of mold 32 and top of mold 30, fig. 2; the “press direction” is construed as the upwards direction from mold 30 to mold 32, fig. 2), and smaller than the first mold (mold 32 has smaller width than mold 30, fig. 2),
a frame member (side mold 34, fig. 2) surrounding a periphery of the second mold (mold 32, fig. 2), separated from the first mold by an interval in the press direction (distance between bottom of mold 34 and top of mold 30, fig. 2), and movable with respect to the second mold in the press direction (mold 32 is movable with respect to mold 32, figs 3-4), and
a fluid and flexible sheet (flexible body 46, fig. 2; the flexible body has a rectangular, planar shape, which is construed as being in the shape of a “sheet”) disposed on a press surface of the second mold (bottom surface of upper mold 32, fig. 2), the press surface facing the first mold, the fluid and flexible sheet that develops fluidity and flexibility during heat pressing (the flexible body 46 includes a fluid flexible layer 48, fig. 2; the layer 48 can be an “αGEL” or a “thermoplastic elastomer manufactured by Riken Technos Corporation,” page 8; the specification of the instant application discloses the same materials for the “fluid and flexible sheet,” para 0033; referring to fig. 4, “a heater (not shown) provided in the lower mold 30 heats the material at the same time as applying pressure,” page 11; the heating and pressing applied in fig. 4 to layer 48, which is taught as having the same materials as that disclosed in the instant application, is construed as the claimed “develops fluidity and flexibility during heat pressing”); and
a second step (figs. 2-4) of heat pressing a magnetic sheet and a plurality of wires (Mori does not explicitly disclose a magnetic sheet and a plurality of wires; the substrate 100 is construed as the claimed “magnetic sheet” and the circuit elements 16 are construed as the claimed “plurality of wires”), the magnetic sheet smaller than the fluid and flexible sheet (the substrate 10 is construed as the claimed “magnetic sheet,” which has a smaller width and height than the flexible body 46, fig. 2)
wherein the second step includes:
a third step (fig. 2) of setting (“placed,” page 10) the magnetic sheet (substrate 100, fig. 2), the plurality of wires (circuit elements 16, fig. 2), and a release sheet (cover film 52, fig. 2; the cover sheet remains after the substrate 10 and circuit elements 16 are pressure-bonded and heated; the cover sheet is then reused, pages 9-11; the cover film is construed as being a “release sheet”) so that the magnetic sheet and the plurality of wires overlap the fluid and flexible sheet when being projected in the press direction (projected in the press direction which is from the top of the drawing, i.e., from the bottom to the top of fig. 2, the substrate 10 overlaps the circuit elements 16, which overlaps the flexible body 46),
a fifth step (fig. 3) of pressing (“lowered,” page 10) the frame member (side mold 34, fig. 2) to the first mold (lower mold 30, fig. 2), and
the heat pressing the magnetic sheet and the plurality of wires is a sixth step (fig. 4; pages 10-11) of pressing through the fluid and flexible sheet and the release sheet by moving the second mold close to the first mold (“pressure mold is also provided with a heater,” page 6; the flexible body 46 and the cover film 52 are pressed by the molds 30 and 32 and simultaneously heated by the heater which is in mold 30, fig. 4).
Mori, fig. 4
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Mori does not explicitly disclose a method for producing an inductor; a magnetic sheet and a plurality of wires, the magnetic sheet containing magnetic particles and a thermosetting resin, and each of the plurality of wires adjacent to and separated from each other by an interval between the wires, wherein the heat pressing comprises using the heat press machine to produce the inductor including the plurality of adjacent wires and a magnetic layer traversing and covering the plurality of adjacent wires and the magnetic layer containing the magnetic particles and a cured product of the thermosetting resin.
However, in the same field of endeavor of manufacturing electronic devices, Kato teaches a method for producing an inductor (“inductor,” column 1, line 64); a magnetic sheet (magnetic members 21 and 22, fig. 11) and a plurality of wires (coil 11, fig. 11; coil 3, fig. 3), the magnetic sheet containing magnetic particles and a thermosetting resin (the magnetic members are a “mixture of metallic magnetic powder and thermosetting resin,” column 7, lines 29-30), and each of the plurality of wires adjacent to and separated from each other by an interval between the wires (space between the wires in the coil 11, fig. 11), wherein the heat pressing (“heated and compressed,” column 10, line 38) comprises using the heat press machine to produce the inductor (“inductance,” column 10, lines 52-53) including the plurality of adjacent wires and a magnetic layer (magnetic layers from magnetic members 21 and 22, fig. 11) traversing and covering the plurality of adjacent wires (coil 11, fig. 11) and the magnetic layer containing the magnetic particles and a cured product of the thermosetting resin (“treated with heat” is construed as producing a “cured product,” column 10, lines 45-48).
Kato, fig. 11
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Mori, in view of the teachings of Kato, by forming an inductor using magnetic members 21-22 and coil 11, as taught by Kato, instead of a substrate 100 and circuit elements 16 by using the pressure device, as taught by Mori, because this amounts to a simple substitution of one circuit element known in the art for another with predictable results (the change of pressure-bonding an inductor with magnetic sheets instead of circuit elements with a substrate will not change the operation of the pressure device and will permit the pressure-bonding steps using the pressure device to be carried out).
Regarding claim 2, Mori teaches wherein the heat press machine (fig. 2) further includes an external frame member (seal mold 36, fig. 2) surrounding a periphery of the frame member (bottom periphery of side mold 34), separated from the first mold by an interval (distance between bottom of mold 36 and top of mold 30, fig. 2), contactable with the first mold (mold 36 contacts mold 30, fig. 3), and including an exhaust port (outlet of pipe 62, fig. 2) connected to a vacuum pump (pump 66, fig. 2) through an exhaust line (pipe 62, fig. 2), and the method further comprises a fourth step of forming a decompression space (space internal to the seal mold 36 above mold 30, fig. 3) by bringing the external frame member into contact with the first mold (fig. 3) after the third step (fig. 2) and before the fifth step (fig. 4).
Regarding claim 3, Mori teaches wherein the release sheet (cover film 52, fig. 2) includes a cushion film (the cover film 52 “deforms,” page 11; the film is construed as being a “cushion film”).
Regarding claim 4, the combination of Mori in view of Kato as set forth above regarding claim 1 partially teaches claim 4. Specifically, Kato teaches the magnetic sheet (magnetic members 21 and 22, fig. 11) includes a first magnetic sheet (magnetic member 21, fig. 11) and a second magnetic sheet (magnetic member 22, fig. 11).
In the fig. 11 embodiment, Kato does not explicitly disclose the second step includes a step of producing an inductor precursor including a first magnetic layer traversing the adjacent wires and exposing one-end surfaces in a thickness direction of the wires by heat pressing the first magnetic layer using the heat press machine, and a step of forming the magnetic layer covering whole peripheral surfaces of the wires by heat pressing the inductor precursor and the second magnetic sheet using the heat press machine.
However, in a different embodiment (fig. 3), Kato teaches the second step (fig. 11) includes a step (“two plate magnetic members B2a and 2b are arranged in parallel to each other,” column 5, lines 27-28; “arranging” is construed as precursor step to the molding step shown in fig. 11) of producing an inductor precursor (fig. 3; will eventually form an “inductor,” column 4, line 55); including a first magnetic layer (plate magnetic member 2a, fig. 3) traversing the adjacent wires (coil 3, fig. 3) and exposing one-end surfaces (top surface of upper coils and bottom surface of lower coils, fig. 3) in a thickness direction (vertical direction, fig. 3) of the wires by heat pressing (fig. 11; “heated and compressed for 15 minutes,” column 10, line 38) the first magnetic layer using the heat press machine (fig. 11), and
a step (column 5, lines 27-28) of forming the magnetic layer (plate magnetic members 2a and 2b, fig. 3) covering whole peripheral surfaces of the wires (the members 2a and 2b cover the top and bottom of the coil 3, fig. 3) by heat pressing (fig. 11; “heated and compressed for 15 minutes,” column 10, line 38) the inductor precursor (fig. 3) and the second magnetic sheet (magnetic member 22, fig. 11) using the heat press machine (fig. 11).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Mori, in view of the teachings of Kato, by using magnetic members 21 and 22 such that they were arranged as shown in fig. 3, as taught by Kato, in order to obtain a thin inductor that has a magnetic path which is perpendicular to a chip face and where no gap is present between the magnetic members and the coil, for the advantage of forming an inductor with excellent DC bias that is capable of higher inductance in comparison to conventional inductors (Kato, column 4, lines 30-63).
Regarding claim 5, the combination of Mori in view of Kato as set forth above regarding claim 1 partially teaches claim 5. Specifically, Kato teaches the magnetic sheet (magnetic members 21 and 22, fig. 11) includes a first magnetic sheet (magnetic member 21, fig. 11) and a second magnetic sheet (magnetic member 22, fig. 11).
In the fig. 11 embodiment, Kato does not explicitly disclose the second step includes a step of producing an inductor precursor including a first magnetic layer traversing the adjacent wires and exposing one-end surfaces in a thickness direction of the wires by heat pressing the first magnetic layer using the heat press machine, and a step of forming the magnetic layer covering whole peripheral surfaces of the wires by heat pressing the inductor precursor and the second magnetic sheet using the heat press machine.
However, in a different embodiment (fig. 3), Kato teaches the second step (fig. 11) includes a step (“two plate magnetic members B2a and 2b are arranged in parallel to each other,” column 5, lines 27-28; “arranging” is construed as precursor step to the molding step shown in fig. 11) of producing an inductor precursor (fig. 3; will eventually form an “inductor,” column 4, line 55); including a first magnetic layer (plate magnetic member 2a, fig. 3) traversing the adjacent wires (coil 3, fig. 3) and exposing one-end surfaces (top surface of upper coils and bottom surface of lower coils, fig. 3) in a thickness direction (vertical direction, fig. 3) of the wires by heat pressing (fig. 11; “heated and compressed for 15 minutes,” column 10, line 38) the first magnetic layer using the heat press machine (fig. 11), and
a step (column 5, lines 27-28) of forming the magnetic layer (plate magnetic members 2a and 2b, fig. 3) covering whole peripheral surfaces of the wires (the members 2a and 2b cover the top and bottom of the coil 3, fig. 3) by heat pressing (fig. 11; “heated and compressed for 15 minutes,” column 10, line 38) the inductor precursor (fig. 3) and the second magnetic sheet (magnetic member 22, fig. 11) using the heat press machine (fig. 11).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Mori, in view of the teachings of Kato, by using magnetic members 21 and 22 such that they were arranged as shown in fig. 3, as taught by Kato, in order to obtain a thin inductor that has a magnetic path which is perpendicular to a chip face and where no gap is present between the magnetic members and the coil, for the advantage of forming an inductor with excellent DC bias that is capable of higher inductance in comparison to conventional inductors (Kato, column 4, lines 30-63).
Regarding claim 6, the combination of Mori in view of Kato as set forth above regarding claim 1 partially teaches claim 6. Specifically, Kato teaches the magnetic sheet (magnetic members 21 and 22, fig. 11) includes a first magnetic sheet (magnetic member 21, fig. 11) and a second magnetic sheet (magnetic member 22, fig. 11).
In the fig. 11 embodiment, Kato does not explicitly disclose the second step includes a step of producing an inductor precursor including a first magnetic layer traversing the adjacent wires and exposing one-end surfaces in a thickness direction of the wires by heat pressing the first magnetic layer using the heat press machine, and a step of forming the magnetic layer covering whole peripheral surfaces of the wires by heat pressing the inductor precursor and the second magnetic sheet using the heat press machine.
However, in a different embodiment (fig. 3), Kato teaches the second step (fig. 11) includes a step (“two plate magnetic members B2a and 2b are arranged in parallel to each other,” column 5, lines 27-28; “arranging” is construed as precursor step to the molding step shown in fig. 11) of producing an inductor precursor (fig. 3; will eventually form an “inductor,” column 4, line 55); including a first magnetic layer (plate magnetic member 2a, fig. 3) traversing the adjacent wires (coil 3, fig. 3) and exposing one-end surfaces (top surface of upper coils and bottom surface of lower coils, fig. 3) in a thickness direction (vertical direction, fig. 3) of the wires by heat pressing (fig. 11; “heated and compressed for 15 minutes,” column 10, line 38) the first magnetic layer using the heat press machine (fig. 11), and
a step (column 5, lines 27-28) of forming the magnetic layer (plate magnetic members 2a and 2b, fig. 3) covering whole peripheral surfaces of the wires (the members 2a and 2b cover the top and bottom of the coil 3, fig. 3) by heat pressing (fig. 11; “heated and compressed for 15 minutes,” column 10, line 38) the inductor precursor (fig. 3) and the second magnetic sheet (magnetic member 22, fig. 11) using the heat press machine (fig. 11).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Mori, in view of the teachings of Kato, by using magnetic members 21 and 22 such that they were arranged as shown in fig. 3, as taught by Kato, in order to obtain a thin inductor that has a magnetic path which is perpendicular to a chip face and where no gap is present between the magnetic members and the coil, for the advantage of forming an inductor with excellent DC bias that is capable of higher inductance in comparison to conventional inductors (Kato, column 4, lines 30-63).
Response to Argument
Applicant’s arguments filed 22 December 2025 have been fully considered but are moot because the arguments do not apply to the new rejections of Mori combined with Kato.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Matsumura et al. (US-20090014498-A1) teach using elastomers.
Matsumura et al. (US-8048254-B2) teach using elastomers.
Mori et al. (US-11037790-B2) teach using gels and elastomers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERWIN J WUNDERLICH whose telephone number is (571)272-6995. The examiner can normally be reached Mon-Fri 7:30-5:30.
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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 2/19/2026