DETAILED ACTION
Response to Amendment
Amendment filed on 27 April 2026 has been entered. Claims 1-4 and 9-16 are now pending in the application.
Amendments to the claims 1 and 2 to overcome the informalities are acceptable. Therefore, claim objections have been withdrawn.
Amendments to the claims 1-2 to overcome the rejections under U.S.C 112(b) have been fully considered and the rejection under 35 U.S.C. 112(b) of claims 1-16 has been withdrawn. However, Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Response to Arguments
Applicant’s arguments, see Page 9, filed 27 April 2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view prior art reference(s) Toshiro.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 2, the limitation “which comprises forming a second magnetic layer, which is a discontinuous layer having a discontinuous portion, on the first magnetic layer, and forming a conductive layer in the discontinuous portion of the second magnetic layer.” fails to further limit the subject matter of the claim 1 upon which it depends. See, claim 1 recites “forming a second magnetic layer, which is a discontinuous layer having a discontinuous portion, on the first magnetic layer, and forming a conductive layer in the discontinuous portion of the second magnetic layer”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 4 depends on claim 2. Therefore, claims 2 and 4 are rejected.
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.
Claim(s) 1-4, 9-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Toshiro (JP 2015050290) in view of Masayuki (JP 2007067427, both prior arts listed in 05/30/2023 IDS).
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Annotated Fig. 6, Toshiro.
Regarding claim 1, Toshiro teaches, a manufacturing method of an inductor (power inductor 10, Figs. 1 to 7), comprising:
forming a first magnetic layer (step 202, first magnetic layer 3, see annotated Fig. 6); and
forming a second magnetic layer, which is a discontinuous layer having a discontinuous portion, on the first magnetic layer, and forming a conductive layer in the discontinuous portion of the second magnetic layer, or
forming a conductive layer (conductive pattern 5), which is a discontinuous layer having a discontinuous portion (see conductive patterns 51, 52), on the first magnetic layer, and forming a second magnetic layer (step S205, second magnetic layer 6’) in the discontinuous portion of the conductive layer (a second magnetic layer 6 that covers at least top faces and side faces of the conductive pattern, para. [0016]),
wherein a thickness of the second magnetic layer is larger than a thickness of the conductive layer (see the second magnetic layer 6', with a thickness that matches the thickness of the conductive pattern 5, but it may be slightly thinner or slightly thicker, para. [0039-0040]),
the manufacturing method further includes forming a third magnetic layer (step S207, third magnetic layer 3’),
the step of forming of the second magnetic layer is performed by applying a composition containing magnetic particles (Zn-Fe ferrite is used as the second magnetic layer, para. [0031]), and
the step of forming of the third magnetic layer is performed by applying the same composition as that used in the forming of the second magnetic layer (third magnetic layer 3' made of a Zn-Fe ferrite layer is formed on top of the second magnetic layer 6', para. [0037, 0041]).
Though, Toshiro teaches, in para. [0039-0040], the thickness of the second magnetic layer may be slightly thinner or slightly thicker, Toshiro does not teach, a groove portion formed by a difference in thickness between the second magnetic layer and the conductive layer. However, Masayuki teaches, a manufacturing method of an inductor in Fig. 1 (see annotate Fig. 1 below), including forming a magnetic layer (magnetic layer 7, Fig. 1, para. [0015]), which is a discontinuous layer having a discontinuous portion, and forming a conductive layer (conduction portion 11, step 5, Fig. 1) in the discontinuous portion of the second magnetic layer (see Fig. 1), wherein a thickness of the magnetic layer is larger than a thickness of the conductive layer (see annotated Fig. 1, a conductive metal or the like is formed in the second space 9 until it reaches a predetermined thickness, para. [0035]). Therefore, in view of the teachings of Masayuki, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, modify the manufacturing method of an inductor of Toshiro and to make the thickness of the second magnetic layer 6’ larger than the thickness of the conductive layer 51 and 52 that forms a groove portion and forming the third magnetic layer 3’ in the groove portion. Such a combination would have been done by one of ordinary skill in the art without any need for experimentation and with reasonable expectations of success. Doing so would enable manufacturing an inductor comprising plurality of magnetic layers and insulating layers having different electrical characteristics.
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Annotated Fig. 1, Masayuki.
Regarding claim 2, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, the manufacturing method of an inductor according to claim1, which comprises forming a second magnetic layer, which is a discontinuous layer having a discontinuous portion, on the first magnetic layer, and forming a conductive layer in the discontinuous portion of the second magnetic layer (see the conductive patterns 51, 52 and the second magnetic layer 6’ in Fig. 6).
Regarding claim 3, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, the manufacturing method of an inductor according to claim 1, wherein the discontinuous layer has a spiral pattern (conductive pattern 5 is spirally wound on a substrate 1, Fig. 1, para. [0015]).
Regarding claim 4, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 2. Toshiro further teaches, the manufacturing method of an inductor according to claim 2, wherein the discontinuous layer has a spiral pattern (conductive pattern 5 is spirally wound on a substrate 1, Fig. 1, para. [0015]).
Regarding claim 9, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, the manufacturing method of an inductor according to claim 1, wherein the applying of the composition containing magnetic particles is performed by applying the composition containing magnetic particles with a dispenser (Fe-based fine particles…are dispersed in a dielectric made of acrylic or polyimide…by coating the conductive pattern 5 using a screen printing method, para. [0023]).
Regarding claim 10, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, the manufacturing method of an inductor according to claim 1, wherein the composition containing magnetic particles is a magnetic resin composition containing the magnetic particles and a resin (a composite material in which Fe-based fine particles…are dispersed in a dielectric made of acrylic or polyimide, para. [0023]).
Regarding claim 11, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, the manufacturing method of an inductor according to claim 1, wherein the magnetic particles are metal particles (Zn-Fe ferrite layer as the first magnetic layer 3, para. [0018]).
Regarding claim 12, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 11. Toshiro further teaches, the manufacturing method of an inductor according to claim 11 wherein the metal particles include Ni and Fe (Zn-Fe ferrite layer as the first magnetic layer 3, para. [0018]).
Regarding claim 14, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, the manufacturing method of an inductor according to claim 1, wherein the forming of the conductive layer is performed by applying a conductive composition (conductive pattern 5, a case where a coil wound in a spiral shape is formed…the coil can be formed of copper, para. [0021]).
Regarding claim 15, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 14. Toshiro further teaches, the manufacturing method of an inductor according to claim 14, wherein the applying of the conductive composition is performed by applying the conductive composition with a dispenser (coating the conductive pattern 5 using a screen printing method, para. [0023]).
Regarding claim 16, Toshiro in view of Masayuki teaches the recited limitations with respect to claim 1. Toshiro further teaches, a manufacturing method of an electronic component including an inductor, the manufacturing method comprising: producing an inductor by the manufacturing method according to claim 1 (inductor 10, Fig. 1).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Toshiro in view of Masayuki as applied to claim 1 above, and further in view of Homma (TW 202012075).
Regarding claim 13, modified Toshiro does not teach, metal particles include Mo. However, Homma teaches a manufacturing method of an inductor including a magnetic layer, in which, the manufacturing method of an inductor according to claim 12, wherein the metal particles further include Mo (magnetic paste contains magnetic powder as component…Fe-Ni-Mo, Page 7). Therefore, in view of the teachings of Homma, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, modify the manufacturing method of an inductor of Toshiro and to include Mo metal particles as Homma taught in Page 7 so that it enables forming a magnetic composition having a desired viscosity and magnetic permeability while manufacturing the inductor.
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.
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/JOSE K ABRAHAM/Examiner, Art Unit 3729 /THOMAS J HONG/Supervisory Patent Examiner, Art Unit 3729
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