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 06/26/2026 have been fully considered but they are not persuasive. Applicant argues that it would not be obvious to combine Kuo to Sekiguchi to protect the first wiring portions. Applicant asserts that the wiring portions in Kuo are exposed on the surface, but in Sekiguchi, the wiring portions are protected already by the element body.
After careful consideration without passion or prejudice, the argument is not found persuasive, respectfully. The claimed limitation “the coil includes a plurality of first wiring portions disposed on the main surface side and apart from the main surface” appears to require that the first wiring portions are exposed to the main surface of the element body. So, it’s reasonable to provide “nickel/gold protection layer M” and or “solder protection layer S” on the first wiring portions 190 to protect the first wiring portions from foreign objects. Therefore, the examiner maintains the combination is proper with the motivation as set forth.
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 and 9 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 filed specification does not disclose “a plurality of first wiring portions disposed on the main surface side and apart from the main surface” as amended. In fact, of the originally filed specification discloses that “the coil 5 is disposed inside the element body 2” (para. [0029]). Therefore, the amended limitations appear to contradict the originally filed specification.
Claims 2, 3, 5 and 9 are rejected as being 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 and 9 are 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, while “a plurality of first wiring portions disposed on the main surface side and apart from the main surface” as amended in itself may not be unclear, claims are interpreted in light of the specification, and the originally filed specification discloses that the coil 5 is disposed inside the element body (para. [029]). So, the limitation in question appears to require the “first wiring portions” of the coil are exposed to the main surface of the element body to be “apart from the main surface” as amended. If the “first wiring portions” of the coil are exposed to the main surface of the element body, the “first winding portions” of the coil would not be disposed “inside the element body” as disclosed in the specification. Accordingly, the limitation in question is unclear in light of the specification.
Claims 2, 3, 5 and 9 are rejected as being dependent on claim 1.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. (U.S. PG. Pub. No. 2019/0006071 A1) in view of Kuo et al. (U.S. PG. Pub. No. 2013/0027172 A1).
With respect to claim 1, best understood in view of 35 USC 112(b) rejection, Sekiguchi et al., hereinafter referred to as “Sekiguchi,” teaches a laminated coil component 100 (FIGs. 1 and 2) comprising:
an element body 10 having a pair of end surfaces 103 and 104 facing each other in a first direction (Y axis direction), a mounting surface 102 and a main surface 101 facing each other in a second direction (Z axis direction), and a pair of side surfaces 104 and 105 facing each other in a third direction (X axis direction);
a pair of terminal electrodes 31 and 32 disposed on the mounting surface of the element body; and
a coil 20 disposed in the element body and electrically connected to the pair of terminal electrodes,
wherein the coil includes a plurality of first wiring portions 221 disposed on the main surface side and disposed side by side in the third direction, a plurality of second wiring portions 222 disposed on the mounting surface side and disposed side by side in the third direction, and a plurality of connection portions 21 that extend in the second direction and connect the first wiring portion with the second wiring portion which correspond to each other (paras. [0054], [0055], [0060], [0061] and [0065]). Sekiguchi does not expressly teach
the coil includes a plurality of first wiring portions disposed on the main surface side and apart from the main surface,
a width of the second wiring portion in the third direction is smaller than a width of the first wiring portion in the third direction.
Best understood in view of 35 USC 112(b) rejection, Kuo et al., hereinafter referred to as “Kuo,” teaches a coil component (FIG. 4),
wherein the coil (“inductor” para. [0010]) includes a plurality of first wiring portions 190 disposed on the main surface side (upper side above upper surface of the element body 170) and apart from the main surface (upper surface of the element body 170),
a width (width of wiring portion 132 in horizontal direction as seen in FIG. 4) of the second wiring portion 132 in the third direction (horizontal direction) is smaller than a width (width of wiring portion 190) of the first wiring portion 190 in the third direction (para. [0010]).
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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 width of the wiring portions as taught by Kuo to the laminated coil component of Sekiguchi to provide protection to the first wiring portions, thereby improving reliability and longevity of the laminated coil component (para. [0010]).
With respect to claim 5, Sekiguchi in view of Kuo teaches the laminated coil component according to claim 1, wherein a number (five first winding portions) of the plurality of first wiring portions is greater than a number (four second winding portions) of the plurality of second wiring portions (Sekiguchi, para. [0060]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi in view of Kuo, as applied to claim 1 above, and further in view of Nakamura et al. (U.S. PG. Pub. No. 2009/0273429 A1).
With respect to claim 3, Sekiguchi in view of Kuo teaches the laminated coil component according to claim 1. Sekiguchi in view of Kuo does not expressly teach a thickness of the second wiring portion in the second direction is greater than a thickness of the first wiring portion in the second direction.
Nakamura et al., hereinafter referred to as “Nakamura,” teaches a coil component (FIG. 3B), wherein a thickness of the second wiring portion 21c in the second direction (vertical direction) is greater than a thickness of the first wiring portion 21a in the second direction (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 thicknesses of the first and second wiring portions as taught by Nakamura to the laminated coil component of Sekiguchi in view of Kuo to increase quality factor (paras. [0043] and [0046]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi in view of Kuo, as applied to claim 1 above, and further in view of Kato et al. (U.S. PG. Pub. No. 2021/0272743 A1, hereinafter “Kato”).
With respect to claim 9, Sekiguchi in view of Kuo teaches the laminated coil component according to claim 1. Sekiguchi in view of Kuo does not expressly teach a distance between a pair of the second wiring portions adjacent in the third direction is greater than a distance between a pair of the first wiring portions adjacent in the third direction.
Kato teaches a laminated coil component 1 (Fig. 4), wherein a distance (distance between left and right wiring portions 11) between a pair of the second wiring portions 11 adjacent in the third direction D3 is greater than a distance (distance between left and right wiring portions 12 between a pair of the first wiring portions 12 adjacent in the third direction (para. [0050]). 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 Kato to the laminated coil component of Sekiguchi in view of Kuo to align the outer edges of the wiring portions to meet design requirements.
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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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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