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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tada et al. (US 2011/0128109).
Considering Claim 13-17: Tada et al. teaches a multilayer inductor comprising a plurality of magnetic layers (¶0011) and metal electrode tracks (¶0011). Tada et al. teaches a magnetic layer of 40 microns and a zirconia gap layer of 3 microns between the electrode tracks (¶0128), resulting in an overall thickness of less than 100 microns. Further, Tada et al. teaches that the electrode tracks are offset to the left or right in the successive layers in a stepwise manner, resulting in a coil shape (Fig. 4).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the magnetic lines of force between adjacent metal electrodes, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
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.
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 1-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tada et al. (US 2011/0128109) in view of Nishide et al. (US 2002/0058131).
Considering Claim 1-3, 5, and 7-12: Tada et al. teaches a multilayer inductor comprising a plurality of magnetic layers (¶0011) and metal electrode tracks (¶0011). Tada et al. teaches a magnetic layer of 40 microns and a zirconia gap layer of 3 microns between the electrode tracks (¶0128), resulting in an overall thickness of less than 100 microns. Further, Tada et al. teaches that the electrode tracks are offset to the left or right in the successive layers in a stepwise manner, resulting in a coil shape (Fig. 4).
Tada et al. does not teach the ceramic gap layer as being a multilayer ceramic-inorganic material composite as claimed. However, Nishide et al. teaches a multilayer ceramic-inorganic material (¶0019) that can be used in an inductor (¶0005-07) comprising a first layer comprising an inorganic particle that can be titanium dioxide or zirconium dioxide (¶0126), with titanium dioxide being used in an example (Table 2), and a second layer comprising calcium oxide (¶0072; 0145). The original specification of the instant application defines titanium dioxide and zirconium dioxide as ceramic materials having a positive slope in the curve of dielectric constant versus temperature and calcium oxide as an inorganic material having a negative slope in the curve of dielectric constant versus temperature. Tada et al. and Nishide et al. are analogous art as they are concerned with the same field of endeavor, namely ceramic layers for inductors. It would have been obvious to a person of ordinary skill in the art to have used the multilayer ceramic of Nishide et al. in the inductor of Tada et al., and the motivation to do so would have been, as Nishide et al. suggests, it has reduced warpage during the formation of the ceramic (¶0002).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the magnetic lines of force between adjacent metal electrodes, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 4: Tada et al. teaches the electrode as being silver, platinum, palladium, copper, gold, or nickel (¶0081).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Tada et al. (US 2011/0128109) as applied to claim 13 above, and further in view of Nishide et al. (US 2002/0058131).
Considering Claim 24: Tada et al. teaches the inductor of claim 13 as shown above. Tada et al. teaches that the electrode tracks are offset to the left or right in the successive layers in a stepwise manner, resulting in a coil shape (Fig. 4).
Tada et al. does not teach the ceramic gap layer as being a multilayer ceramic-inorganic material composite as claimed. However, Nishide et al. teaches a multilayer ceramic-inorganic material (¶0019) that can be used in an inductor (¶0005-07) comprising a first layer comprising an inorganic particle that can be titanium dioxide or zirconium dioxide (¶0126), with titanium dioxide being used in an example (Table 2), and a second layer comprising calcium oxide (¶0072; 0145). The original specification of the instant application defines titanium dioxide and zirconium dioxide as ceramic materials having a positive slope in the curve of dielectric constant versus temperature and calcium oxide as an inorganic material having a negative slope in the curve of dielectric constant versus temperature. Tada et al. and Nishide et al. are analogous art as they are concerned with the same field of endeavor, namely ceramic layers for inductors. It would have been obvious to a person of ordinary skill in the art to have used the multilayer ceramic of Nishide et al. in the inductor of Tada et al., and the motivation to do so would have been, as Nishide et al. suggests, it has reduced warpage during the formation of the ceramic (¶0002).
Claims 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Tada et al. (US 2011/0128109) in view of Nishide et al. (US 2002/0058131).
Considering Claim 18-23: Tada et al. teaches a multilayer inductor comprising a plurality of magnetic layers (¶0011) and metal electrode tracks (¶0011). Tada et al. teaches a magnetic layer of 40 microns and a zirconia gap layer of 3 microns between the electrode tracks (¶0128), resulting in an overall thickness of less than 100 microns. Further, Tada et al. teaches that the electrode tracks are offset to the left or right in the successive layers in a stepwise manner, resulting in a coil shape (Fig. 4).
Tada et al. does not teach the ceramic gap layer as being a multilayer ceramic-inorganic material composite as claimed. However, Nishide et al. teaches a multilayer ceramic-inorganic material (¶0019) that can be used in an inductor (¶0005-07) comprising a first layer comprising an inorganic particle that can be titanium dioxide or zirconium dioxide (¶0126), with titanium dioxide being used in an example (Table 2), and a second layer comprising calcium oxide (¶0072; 0145). The original specification of the instant application defines titanium dioxide and zirconium dioxide as ceramic materials having a positive slope in the curve of dielectric constant versus temperature and calcium oxide as an inorganic material having a negative slope in the curve of dielectric constant versus temperature. Tada et al. and Nishide et al. are analogous art as they are concerned with the same field of endeavor, namely ceramic layers for inductors. It would have been obvious to a person of ordinary skill in the art to have used the multilayer ceramic of Nishide et al. in the inductor of Tada et al., and the motivation to do so would have been, as Nishide et al. suggests, it has reduced warpage during the formation of the ceramic (¶0002).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the magnetic lines of force between adjacent metal electrodes, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant's arguments filed March 4, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Tada et al. does not teach that the metal electrode tracks are vertically offset in successive layers in a step-wise manner, thereby reducing a void region between the adjacent metal electrode tracks in which magnetic lines of force cancel is not persuasive. Tada et al. teaches that the electrode tracks are offset to the left or right in the successive layers in a stepwise manner, resulting in a coil shape (Fig. 4).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the magnetic lines of force between adjacent metal electrodes, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
While the reference does not recognize that the offset would reduce the void region, this feature would result from the claimed structure. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency). See MPEP § 2112.
B) The applicant’s argument that Tada et al. does not teach the thickness of the magnetic material as being less than 100 microns is not persuasive. Tada et al. teaches a magnetic layer of 40 microns between the electrode tracks (¶0128).
C) In response to applicant's argument that the references do not teach cancelling dielectric slope drift in the magnetic core area, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
D) The applicant’s argument of unexpected results is not persuasive. A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e). The comparative example is identified only as an inductor according the prior art, and the applicant has not explained how the example is representative of Tada et al.
E) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
F) The applicant’s argument that the foreign patents have been allowed is not persuasive. The US follows US patent laws, which are not identical to the laws of other countries, and reserves the right to determine patentability.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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