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 12/19/25 have been fully considered but they are not persuasive.
The applicant argues that claim 6 is not contradictory to the subject matter recited in claim 1 since paragraphs 0027 and 0032 that refer to Fig. 6 teaches wherein
"the opening 30a is provided in a part or entire of an exposed region where the end portions 20a and the 20b of the coil 20 are exposed in the lower surface 10d" (underlining added). Thus, for example, when the opening 30a is provided only in a part of the exposed region, the insulating layer 30A covers the remaining part of the of the exposed region. Similar descriptions are provided in the specification for other embodiments at, for example, Figs. 15, 18 and 20 and paragraphs 0048 and 0063. In particular, as shown in Fig. 20, the size of the connection region R may be smaller than the size of the exposed region, resulting in the insulating layer 30A covering a part of the exposed region; therefore, the withdrawal of the §112(b) rejection is respectfully requested. The examiner respectfully disagrees.
As mentioned by the applicant, when the opening 30a is provided only in a part of the exposed region, the insulating layer 30A covers the remaining part of the of the exposed region. The opening 30a being provided only in a part of the exposed region is not mention in newly amended claim 1. What is mentioned in newly amended claim 1 since claim 6 was added to claim 1 is “an insulating layer interposed between at least one of the external terminals and the element body and formed in an entire region excluding the connection region in a formation region where the external terminal is formed wherein the insulating layer covers a part of the end portion of the coil at the surface of the element body” which appears to be a contradiction since the insulating layer is claimed to be excluded from the connection region(opening) in lines 9-10 of claim 1 and in claims 11-12 the insulating layer is now in the connection region contacting an end portion of the coil. Accordingly, the rejection will remain in the office action.
Also, the applicant argues that the citated paragraphs of Yang only disclose that an insulating layer 500/520 that can be provided on different surfaces 101, 102 and 104-106 of the body 10 and describe the material for the insulating layer. These paragraphs do not describe that the insulating layer 500/520 covers a part of the end portion of a coil. Thus, contrary to the Office Action assertions, Yang does not disclose the subject matter recited in claim 6, now incorporated into claim 1. The examiner respectfully disagrees.
Yang et al. (figure 3 and para 0069-0072) discloses an insulating layer 500 comprising several portions surrounding the element body 100. Figure 3 of Yang et al clearly points out wherein an electrode/terminal 921 covers a portion of the lead-out(end portion) 720 and an provides a teaching wherein an insulating portion 520 covers a portion of the lead-out(end portion) 720 of the coil component. Accordingly, the rejection will remain in the 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.
Claim 1 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.
Regarding claim 6, the limitations “…wherein the insulating layer covers a part of the end portion of the coil at the surface of the element body…” is vague and indefinite.
Claim 1 limitations that states an insulating layer interposed between at least one of the external terminals and the element body and formed in an entire region excluding the connection region in a formation region where the external terminal is formed. The examiner is unclear on how is the insulating layer is covering a part of the end portion of the coil at the surface of the element body, when claim 1, lines 9-10 state that the insulating layer is excluded from the connection region which is part of the end portion of the coil? Note: The applicant is advised to better describe the structural features of the end portion since the end portion and the connection region are integrally one piece.
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.
1. Claims 1 and 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (US 2020/0143976) in view of Yang et al. (US 2021/0057138).
Regarding claim 1, Jeon et al. (figure 6 and para 0036-0048/0078-0080) discloses an element body (see figure 6) made of a magnetic material including metal powder and resin (see para 0036-0048); a coil (42/44) provided in the element body, a surface of the coil is covered with an insulator (700)(see figure 6), and both end portions of the coil are extracted to the surface of the element body (see figure 6); a pair of external terminals (520/620) provided on the surface of the element body and including connection regions connected to both end portions of the coil (see figure 6); and an insulating layer (400) interposed between at least one of the external terminals and the element body and formed in an entire region excluding the connection region in a formation region where the external terminal is formed. (see para 0078-0080 and figure 6)
Jeon et al. does not expressly disclose wherein the insulating layer covers a part of the end portion of the coil at the surface of the element body.
Yang et al. (figure 3 and para 0069-0072) discloses a teaching wherein the insulating layer (500/520) covers a part of the end portion of the coil at the surface of the element body.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant’s claimed invention to design wherein the insulating layer covers a part of the end portion of the coil at the surface of the element body as taught by Yang et al to the inductive device of Jeon et al. so as to reduce the chance of a short circuit occurring.
Regarding claim 3, Jeon et al. (figure 6 and para 0036-0048/0078-0080) discloses wherein the element body has a mounting surface facing toward a mounting substrate side and a pair of end surfaces facing each other in one direction parallel to the mounting surface (see figure 6), the coil component is to be mounted on the mounting substrate, and both end portions of the coil are extracted to the pair of end surfaces (see figure 6), respectively, and at least a portion of the external terminal is provided on the end surface. (see figure 6)
2. Claims 1 and 3 are rejected under 35 U.S.C. 102a1 as being anticipated by Moon et al. (US 2016/0086714) in view of Yang et al. (US 2021/0057138).
Regarding claim 1, Moon et al. (figures 1-3 and para 0020-0073) discloses an element body (see figures 1-3) made of a magnetic material including metal powder and resin (see para 0025-0046); a coil (42/44) provided in the element body, a surface of the coil is covered with an insulator (see figure 2), and both end portions of the coil are extracted to the surface of the element body (see figure 2); a pair of external terminals (80) provided on the surface of the element body and including connection regions connected to both end portions of the coil (see figure 2); and
an insulating layer interposed between at least one of the external terminals and the element body and formed in an entire region excluding the connection region in a formation region where the external terminal is formed. (see para 0050 and figure 2)
Moon et al. does not expressly disclose wherein the insulating layer covers a part of the end portion of the coil at the surface of the element body.
Yang et al. (figure 3 and para 0069-0072) discloses a teaching wherein the insulating layer (500/520) covers a part of the end portion of the coil at the surface of the element body.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the applicant’s claimed invention to design wherein the insulating layer covers a part of the end portion of the coil at the surface of the element body as taught by Yang et al to the inductive device of Moon et al. so as to reduce the chance of a short circuit occurring.
Regarding claim 3, Moon et al. (figures 1-3 and para 0020-0073) discloses wherein the element body has a mounting surface facing toward a mounting substrate side and a pair of end surfaces facing each other in one direction parallel to the mounting surface (see figure 2), the coil component is to be mounted on the mounting substrate, and both end portions of the coil are extracted to the pair of end surfaces (see figure 2), respectively, and at least a portion of the external terminal is provided on the end surface. (see figure 2)
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 RONALD HINSON whose telephone number is (571)270-7915. The examiner can normally be reached M to F; 8 -5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki 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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/RONALD HINSON/Primary Examiner, Art Unit 2837
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