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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 5-6, 12, 17 and 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, the “a plurality of cutouts having an inner surface connecting the first main surface and the second main surface together… when viewed from the direction perpendicular to the first main surface, the connecting portion, the first side and a second side that is connected to the first side of the magnetic substrate form a triangular shape” as amended claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all 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 made to the brief description of the several views of the drawings for 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 applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 5-6, 12, 17 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the originally specification does not disclose “a plurality of cutouts having an inner surface connecting the first main surface and the second main surface together… when viewed from the direction perpendicular to the first main surface, the connecting portion, the first side and a second side that is connected to the first side of the magnetic substrate form a triangular shape” as amended claim 1 in a single invention.
Claims 3, 5-6, 12, 17 and 19 are rejected as being directly or indirectly dependent on claim 1.
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 1, 3, 5-6, 12, 17 and 19 are also 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.
Regarding claim 1, applicant should clarify what’s intended by “a plurality of cutouts having an inner surface connecting the first main surface and the second main surface together… when viewed from the direction perpendicular to the first main surface, the connecting portion, the first side and a second side that is connected to the first side of the magnetic substrate form a triangular shape” as amended claim 1.
Specifically, in the embodiment of FIGs. 1-4 of the present invention, the cutouts 21 are present at the four corners of the first main surface MF1 of the magnetic substrate 20, as seen in FIG. 3. However, no such cutouts exist on the first main surface of the first magnetic substrate 20 in the embodiment of FIG. 10. Therefore, it’s not clear how a “triangular shaped” can be formed when the “cutouts” are at the first main surface of the magnetic substrate.
It's not also clear what’s intended by “the connecting portion, the first side and a second side that is connected to the first side of the magnetic substrate form a triangular shape” as claimed. The originally filed specification discloses long side p1 (annotated FIG. 10 below) as “the first side pitch P1” and short side p2 as “the second side pitch P2” (para [0084]). In paragraph [0078], the originally filed specification teaches distance d1 as “first dimension M1” and distance d2 as “second dimension M1.” In FIG. 10, it appears the “triangular shape” is formed by the first dimension M1, the second dimension M2 and the connecting portion 91A instead of first side pitch P1, second side pitch P2 and the connecting portion 91A. Therefore, the claimed limitation is unclear.
Claims 3, 5-6, 12, 17 and 19 are rejected as being directly or indirectly dependent on claim 1.
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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) and Atsushi et al. (U.S. PG. Pub. No. 2009/0002112 A1)
With respect to claim 1, Best understood in view of 35 USC 112(b) rejection, 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) (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.
Kitajima does not also expressly teach when viewed from the direction perpendicular to the first main surface, the connecting portion, the first side and a second side that is connected to the first side of the magnetic substrate form a triangular shape.
Best understood in view of 35 USC 112(b) rejection, Atsushi et al., hereinafter referred to as “Atsushi,” teaches an electronic component 1 (FIG. 3),
when viewed from the direction perpendicular to the first main surface, the connecting portion 53A, the first side 51a (annotated FIG. 3) and a second side 51b that is connected to the first side of the magnetic substrate form a triangular shape (para. [0069]). 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 triangular shape as taught by Atsushi to the electronic component of Kitajima to facilitate manufacturing as cutting straight line would be easier than curve shaped cutout.
With respect to claim 5, Kitajima in view of Okumura and Atsushi 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 and Atsushi 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 and Atsushi 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 and Atsushi, 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 and Atsushi 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 and Atsushi 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 and Atsushi to improve ease for forming cutouts at the corners of the magnetic substrate.
With respect to claim 12, Kitajima in view of Okumura, Atsushi 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, Atsushi 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, each of the cutouts has a shape obtained by partially cutting out an oval (Kitajima, para. [0022]).
Conclusion
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
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