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 .
Response to Arguments
Applicant's arguments filed 08/26/2026 have been fully considered but they are not persuasive. Applicant argues that the piecemeal rejection of claim 1 does not account for the structural and process context in which each reference (Nakanishi and Li) operates.
The argument is not persuasive. The rejection is not a piecemeal rejection. Nakanishi teaches every limitations of claim 1 except the minimum distance from the coil to the first to fourth side surfaces. In the same field of invention, Li teaches the minimum distance as claimed, as applicant does not dispute that. Li expressly discloses, among others, the minimum distance allows the coil component having large inductance value (para. [0046]). The examiner does not suggest to apply the process of Li to the coil component of the Nakanishi. A person with ordinary skill in the art could apply the minimum distance as taught by Li to the coil component of Nakanishi using Nakanishi’s manufacturing process. So, the combination of Li to Nakanishi is not a piecemeal rejection.
Applicant also argues that there’s no sufficient motivation to combine Nakanishi and Li in the manner proposed because Nakanishi is directed to forming a conductor pattern having a desired cross-sectional area where Li is concerned about a laminated coil device made from ferrite or ceramic thin sheets in which coil shaped trenches are formed and filled with conductive paste before stacking and sintering. The large inductance motivation as stated by the examiner is slated as too general and ignores that Nakanishi already addresses conductor cross sectional area and short prevention withing its own plating structure. The incorporation of Li’s spacing distance (the claimed “minimum distance”) would either increase the body size or reduce available conductor area, both of which conflict with the compact high area conductor approach that Nakanishi describes.
The argument is not persuasive. As seen in FIG. 13 of Nakanishi, the minimum distance between the left and right side surfaces of the body 50 and the outermost turn of the coil 20a and 30a are really large, at least about three times the thickness of the coil 20a or 30a, which can be as thick as 70 um (para. [0073]). So, Nakanishi could inherently teach the minimum distance as claimed. Nonetheless, Li expressly teaches the distance (small arrow on upper side of Fig. 5) between the coil conductor 401 and the side surface of the body 502 is 100 um (para. 0046]). It appears the minimum distance of Nakanishi is greater than the minimum distance of Li. So, the incorporation of the minimum distance to the coil component of Nakanishi would not increase the size of the coil component or reduce the conductor area. As explained previously, the minimum distance as taught by Li could be applied to the coil component of Nakanishi by using Nakanishi’s method or process of forming the coil. As stated above, Li discloses, among others, the minimum distance allows the coil component having large inductance value (para. [0046]).So, the motivation as set forth in the Office action dated 05/27/2026 is not too general. Accordingly, the examiner maintains motivation to combine Nakanishi and Li is proper with the motivation as set forth in the Office action.
Applicant further argues that a person with ordinary skill in the art would not have had no reasonable expectation to success in making the proposed combination. Applicant asserts that Li and Nakanishi teach different methods to form a coil. If the coil of Li were to incorporate to the coil component of Nakanishi, the coil position, external electrode connection, etc. would not be preserved.
The argument is not found persuasive. Again, the examiner does not propose to change the manufacturing method of Nakanishi. The examiner merely suggests that the outermost turn of the coil in Nakanishi is positioned such that the distance between the outermost turn and the side surfaces are 100 um, as taught by Li. Inter alia, since there’s no need to change the manufacturing method of Nakanishi, a person with ordinary skill in the art would have expectation that the combination would be successful.
Furthermore, applicant argues that the proposed combination would not work for its intended purpose. Applicant asserts that Li’s lateral distance teaching is specific to ferrite sheet and not any inductor. Applying Li’s lateral distance to Nakanishi would require redesigning the resin film, the conductor pads, etc. Such redesigning would change the operating construction of Nakanishi, and it would create unresolved conflicts between body size, side clearance, etc.
The argument is not persuasive. Once again, the examiner does not suggest the method of manufacturing the coil of Li be applied to Nakanishi. A person with ordinary skill in the art would use the minimum distance teaching of Li and apply it to the coil component of Nakanishi using Nakanishi’s own method of forming the coil. This would not require any redesigning that would change the operation of the construction of the coil component. Therefore, the combination would operate for its intended purpose.
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.
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.
Claims 11, 3, 4, 7, 9, 10, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi et al. (U.S. PG. Pub. No. 2018/0218830 A1, hereinafter “Nakanishi”) in view of Li et al. (U.S. PG. Pub. No. 2015/0020378 A1, hereinafter “Li”).
With respect to claim 1, Nakanishi teaches a coil component 1 (FIGs. 13) comprising:
a body 50 including first to fourth side surfaces (side surfaces) and one surface (upper or lower surface) and the other surface (the other of upper or lower surface) connected to each of the first to fourth side surfaces and opposing each other in a first direction;
a coil 20a and or 30a disposed in the body; and
a substrate 10 disposed in the body,
wherein
the substrate has a thickness of 20 µm or less, the coil is disposed on a surface of the substrate,
a portion of the coil directly contacts the surface of the substrate (paras. [0073] and [0160]-[0163]).
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Nakanishi does not expressly teach a minimum distance from the coil to the first to fourth side surfaces of the body is 40 µm or greater.
Li teaches a coil component (Figs. 1-5) comprising:
a minimum distance 502 (Fig. 5) from the coil 401 to the first to fourth side surfaces front, back, left and right side surfaces) of the body is 40 μm or greater (para. [0046]). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the minimum distance as taught by Li to the coil component of Nakanishi to provide large impedance, large inductance value and low direct current resistance (para. [0046]).
With respect to claim 3, Nakanishi in view of Li teaches the coil component of claim 1, wherein a thickness (combined thickness of top or bottom three thin sheets 403) of the coil is less than a minimum distance from the one surface of the body to the coil in the first direction (Li, paras. [0045]-[0046]).
With respect to claim 4, Nakanishi in view of Li teaches the coil component of claim 1, wherein a minimum distance (combined thickness of top or bottom three thin sheets 403) from the one surface of the body to the coil in the first direction is 70 µm or greater (Li para. [0045]).
With respect to claim 7, Nakanishi in view of Li teaches the coil component of claim 1, wherein the coil includes a coil pattern having at least one turn and an insulating layer 40, 42 and 44 covering the coil pattern (Nakanishi, paras. [0151] and [0153]).
With respect to claim 9, Nakanishi in view of Li teaches the coil component of claim 1, further comprising external electrodes 60 respectively disposed on the first and second side surfaces of the body opposing each other and having at least a portion extending to the one surface of the body (Nakanishi, para. [0160]).
With respect to claim 10, Nakanishi in view of Li teaches the coil component of claim 1, further comprising:
first and second external electrodes 60 disposed to be spaced apart from each other on the one surface of the body; and
a lead portion P2 and or P5 disposed in the body and connecting the coil to each of the first and second external electrodes (Nakanishi, para. [0160]).
With respect to claim 15, Nakanishi in view of Li teaches the coil component of claim 1, further comprising:
a lead portion P2 and or P5 disposed in the body, connected to the coil, and extending from the first side surface of the body,
wherein the coil includes a coil pattern (coil conductor) having at least one turn and an insulating layer 40, 42, and 44 covering each of the coil pattern and the lead portion (Nakanishi, paras. [0151], [0153] and [0160]).
With respect to claim 16, Nakanishi in view of Li teaches the coil component of claim 1, further comprising external electrodes 60 respectively disposed on the first and second side surfaces of the body opposing each other (Nakanishi, para. [0160]).
Claims 2, 5, 6 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi in view of Li, as applied to claim 1 above, and further in view of Matsuura et al. (U.S. PG. Pub. No. 2022/0044858 A1, hereinafter “Matsuura”).
With respect to claim 2 Nakanishi in view of Li teaches the coil component of claim 1. Nakanishi in view of Li does not expressly teach a distance from the one surface to the other surface of the body in the first direction is 440 µm or less.
Matsuura teaches a coil component 1 (FIGs. 1-7), wherein a distance H from the one surface 5 to the other surface 6 of the body 2 in the first direction (direction of height H) is 440 μm or less (“about 0.20 mm to about 0.40 mm”) (para. [0029]). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the distance as taught by Matsuura to the coil component of Nakanishi in view of Li to reduce size.
With respect to claim 5, Nakanishi in view of Li teaches the coil component of claim 1. Nakanishi in view of Li does not expressly teach
a distance from the one surface to the other surface of the body in the first direction is 440 µm or less, and
a thickness of the coil in the first direction is less than a minimum distance from the one surface of the body to the coil.
Matsuura teaches a coil component 1 (FIGs. 1-7), wherein
a distance H from the one surface 5 to the other surface 6 of the body 2 in the first direction (direction of height H) is 440 μm or less, and
a thickness (thickness as coil 17 and or 18 as seen in FIG. 5) of the coil in the first direction is less than a minimum distance (combined thickness of sheets 3d and 3e minus thickness of coil 17 and or 18) from the one surface of the body to the coil (para. [0041]). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the distance thickness of the coil in relation to the body as taught by Matsuura to the coil component of Nakanishi in view of Li to reduce size.
With respect to claim 6, Nakanishi in view of Li and Matsuura teaches the coil component of claim 5, wherein a minimum distance from the one surface of the body to the coil in the first direction is 70 μm or greater (Matsuura, paras. [0029] and [0041]). The body 2 has a height of about 0.4 mm and is made of five non-conductor layers 3a-3e. That means each non-conductor layer 3a-3e would have about 0.08 mm or (80 μm). Therefore, Matsuura teaches the claimed invention.
With respect to claim 24, Nakanishi in view of Li and Matsuura teaches the coil component of claim 6, wherein
the coil includes:
a coil pattern that includes at least two turns, and
an insulating layer 40, 42 and 44 covering the coil pattern,
the at least two turns are disposed on the surface of the substrate, and
the insulating layer is disposed in an entirety of a space between adjacent turns among the at least two turns ((Nakanishi, paras. [0151] and [0153])).
With respect to claim 25, Nakanishi in view of Li and Matsuura teaches the coil component of claim 24, wherein
the at least two turns include a first turn (innermost turn), and a second turn (turn adjacent innermost turn) that is adjacent to the first turn, and
the second turn surrounds a side surface of the first turn (Nakanishi, paras. [0151] and [0153]).
With respect to claim 26, Nakanishi in view of Li and Matsuura teaches the coil component of claim 25, wherein
a distance from the one surface to the other surface of the body in the first direction is in a range of from 190 μm to 440 μm (Matsuura, para. [0041]).
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi in view of Li, as applied to claim 1 above, and further in view of Lee et al. (U.S. PG. Pub. No. 2020/0194165 A1, hereinafter “Lee”).
With respect to claim 21, Nakanishi in view of Li teaches the coil component of claim 1. Nakanishi in view of Li does not expressly teach the substrate includes a reinforcing material.
Lee teaches a coil component 1000 (FIGs.1-2), wherein the substrate 200 includes a reinforcing material (para. [0040]). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the reinforcing material as taught by Lee to the coil component of Nakanishi in view of Li to improve mechanical strength of the substrate.
With respect to claim 22, Nakanishi in view of Li and Lee teaches the coil component of claim 21, wherein the reinforcing material includes a glass fiber or an inorganic filler (Lee, para. [0040]).
With respect to claim 23, Nakanishi in view of Li teaches the coil component of claim 22, wherein the inorganic filler includes at least one selected from the group consisting of silica, alumina, silicon carbide, barium sulfate, talc, mud, mica powder, aluminum hydroxide, magnesium hydroxide, calcium carbonate, magnesium carbonate, magnesium oxide, boron nitride, aluminum borate, barium titanate, and calcium zirconate (Lee, para. [0041]).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANGTIN LIAN whose telephone number is (571)270-5729. The examiner can normally be reached Monday-Friday 0800-1700.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki S. Ismail can be reached at 571-272-3985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837
