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 12/12/2025 have been fully considered but they are not persuasive. Applicant argues that the combination of Okumura to Kitajima would not result in “a maximum dimension of the cutout in the first direction is different from a maximum dimension of the cutout in the second direction, the connecting portion has a curved shape along an entire length as viewed in the direction perpendicular to the first main surface” as currently amended.
After careful consideration without passion or prejudice, the argument is not found persuasive, respectfully. As shown in FIG. 1 of Kitajima, any of the connection portion 16a-16d has a curved shape at the ridge between the side surfaces and the second main surface S2. Okumura reference is applied for the teaching of the cutout having different dimensions in different directions. Therefore, the combination would result in the claimed “a maximum dimension of the cutout in the first direction is different from a maximum dimension of the cutout in the second direction, the connecting portion has a curved shape along an entire length as viewed in the direction perpendicular to the first main surface” limitation.
The drawings objection made in the Office action dated 10/01/2025 is hereby withdrawn as a result of the explanation made during the interview on 11/06/2025 and the reply dated 12/12/2025.
Drawings
The drawings received on 09/08/2022 are acceptable.
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 1, 5-6 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kitajima (U.S. PG. Pub. No. 2015/0091685 A1) in view of Okumura et al. (U.S. PG. Pub. No. 2013/0314189 A1).
With respect to claim 1, Kitajima teaches an electronic component 10 (FIGs. 1-3B) comprising:
a magnetic substrate 12a having a first main surface S1 and a second main surface S2 parallel to the first main surface, the magnetic substrate having a plurality of cutouts Ca-Cd having an inner surface Cd1 (annotated FIG. 2) connecting the first main surface and the second main surface together;
a multilayer body 14 including a plurality of insulator layers 18a-18c laminated on the first main surface;
a plurality of coils L1 and L2 extending inside the multilayer body;
an extended wiring 27d connecting to an end of the coils and partially exposed inside of the cutouts;
a connecting portion 16d which is present on the inner surface of the cutout and connects to the extended wiring; and
an outer electrode 15d which is present on the second main surface and connects to the connecting portion, wherein
when the magnetic substrate is viewed toward a direction (z axis direction) perpendicular to the first main surface, an outer edge (outer side) of the magnetic substrate includes a first side S11 or S22 which is linear, and at least one of the plurality of cutouts is recessed inward from the first side,
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface and when a direction (x axis direction or y axis direction) along the first side is defined as a first direction (x axis direction or y axis direction) and a direction (the other of x axis direction or y axis direction) perpendicular to the first direction is defined as a second direction (the other of x axis direction or y axis direction), and
the connecting portion has a curved shape 16b1 (annotated FIG. 1) along an entire length as viewed in the direction perpendicular to the first main surface (paras. [0021]-[0022], [0026], [0030] and [0039]).
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Kitajima does not expressly teach a maximum dimension of the cutout in the first direction is different from a maximum dimension of the cutout in the second direction.
Okumura et al., hereinafter referred to as “Okumura,” teaches an electronic component 100 (FIG. 2), wherein
a maximum dimension (dimension in x or y axis) of the cutout 14b1 (annotated FIG. 2) in the first direction (x or y axis direction) is different from a maximum dimension (dimension in the other of x or y axis) of the cutout in the second direction (the other of x or y axis direction) (para. [0064]).
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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 different cutout dimension as taught by Okumura to the electronic component of Kitajima to provide the required mechanical stability and reduce error when assembling the electrode to the cutout.
With respect to claim 5, Kitajima in view of Okumura teaches the electronic component according to claim 1, wherein
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface, all of the cutouts have an equal area (Kitajima, para. [0022], Okumura, para. [0064]).
With respect to claim 6, Kitajima in view of Okumura teaches the electronic component according to claim 1, wherein
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface, each of the cutouts has a shape obtained by partially cutting out an oval (Kitajima, para. [0022]).
With respect to claim 19, Kitajima in view of Okumura teaches the electronic component according to claim 5, wherein
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface, each of the cutouts has a shape obtained by partially cutting out an oval (Kitajima, para. [0022]).
Claims 3, 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kitajima in view of Okumura, as applied to claim 1 above, and further in view of Watanabe et al. (U.S. PG. Pub. No. 2014/0266547 A1).
With respect to claim 3, Kitajima in view of Okumura teaches the electronic component according to claim 1, wherein
a maximum dimension (dimension in x axis) of the magnetic substrate in the first direction is larger than a maximum dimension (dimension in y direction) of the magnetic substrate in the second direction,
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface, the outer edge of the magnetic substrate includes a second side S22 adjacent to the first side S11 and along the second direction,
a plurality of the cutouts is present on the first side and a same number (two cutouts present in each side) of the cutouts are present on the second side as the number of the cutouts on the first side (Kitajima, para. [0022]).
Kitajima in view of Okumura does not expressly teach
when a shortest distance between adjacent two of the cutouts is defined as an inter-cutout distance, the inter-cutout distance in the first direction is equal to the inter-cutout distance in the second direction.
Watanabe et al., hereinafter referred to as “Watanabe,” teaches an electronic component 1 (FIG. 1), wherein
when a shortest distance between adjacent two of the cutouts (cutout in which electrodes 12a-12d are disposed) is defined as an inter-cutout distance 13a (annotated FIG. 1), the inter-cutout distance in the first direction (x axis direction) is equal to the inter-cutout distance 13b in the second direction (y axis direction) (para. [0036]).
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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 inter-cutout distance as taught by Watanabe to the electronic component of Kitajima in view of Okumura to improve ease for forming cutouts at the corners of the magnetic substrate.
With respect to claim 12, Kitajima in view of Okumura and Watanabe teaches the electronic component according to claim 3, wherein
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface, all of the cutouts have an equal area (Kitajima, para. [0022]).
With respect to claim 17, Kitajima in view of Okumura teaches the electronic component according to claim 3, wherein
when the magnetic substrate is viewed toward the direction perpendicular to the first main surface, each of the cutouts has a shape obtained by partially cutting out an oval (Kitajima, para. [0022]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/MANG TIN BIK LIAN/ Primary Examiner, Art Unit 2837