NON-FINAL OFFICE ACTION
This non-final Office action addresses U.S. Application Serial No. 18/191,868, entitled LAMINATED COIL COMPONENT.
Claims 1-20 are pending.
Claims 1, 3-6, 9, 12, 13 and 17-19 are rejected.
Claims 2, 7, 8, 10, 11, 14-16 and 20 are objected to as containing allowable subject matter.
I. PRIORITY
Examiner recognizes the Applicant’s claim of foreign priority to Japanese Patent Application No. JP2022-056388, filed March 30, 2022.
II. CLAIM OBJECTIONS
Claim 2 is objected to because “the coil conductor” in line 3 lacks antecedent basis. Claim 1, from which claim 2 depends, recites “a plurality of coil conductors” and thus Examiner does not find antecedent basis for a single such coil conductor. Examiners suggest amending claim 2 to recite “one of the plurality of coil conductors” to overcome this objection.
III. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner, the Examiner is unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiner is unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiner further finds that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiner concludes that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiner’s findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
IV. CLAIM REJECTIONS – 35 U.S.C. §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.
IV.A. Obviousness Rejections Applying Yokouchi and Park
Claims 1, 3-6, 9, 12, 13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent No. JP2009-044030 to Satoshi Yokouchi et al. (hereinafter “Yokouchi”) in view of Korean Publication No. KR2012-0055253 to Sung Jin Park et al. (hereinafter “Park”).
Regarding claim 1, Yokouchi teaches
1. A laminated coil component comprising:
See Yokouchi FIGS. 1 and 3, reprinted below:
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Yokouchi FIG. 1 Yokouchi FIG. 3 (annotated by Examiner)
an element body including a plurality of insulating layers laminated in a lamination direction;
See Yokouchi FIGS. 1 and 3 above, element body 100 shown comprising a plurality of insulating layers 10, 11, 15 and 16 having a lamination direction vertical in FIG. 3 and horizontal in FIG. 1.
a coil inside the element body; and
See Yokouchi FIGS. 1 and 3 above, note coil inside body 100 comprising loops 1 and 2 on lamination layers 10 and 11.
an external electrode on a surface of the element body and electrically connected to the coil,
See Yokouchi FIGS. 1 and 3, note external electrodes 20a and 20b.
wherein the coil includes a plurality of coil conductors laminated in the lamination direction and electrically connected via a via conductor penetrating the insulating layer in the lamination direction, the plurality of coil conductors laminated in the lamination direction includes a laminated portion including the plurality of coil conductors adjacent to each other, the laminated portion has a parallel section in which all the coil conductors constituting the laminated portion overlap each other when viewed from the lamination direction, the parallel sections are connected in parallel by the via conductor,
See Yokouchi FIGS. 1 and 3 above, note coil inside body 100 comprising loops 1 and 2 on lamination layers 10 and 11 connected together by via conductors shown in dotted lines.
the coil is electrically connected to a same external electrode via a plurality of lead-out conductors, each of the lead-out conductors includes a lead-out via conductor penetrating the insulating layer in the lamination direction, and …
See Yokouchi FIGS. 1 and 3 above, note coil loops 1 and 2 connected to output laminate layer 15 via identified lead-out via conductors in FIG. 3 above.
However, while Yokouchi teaches the pair of lead-out via conductors, Yokouchi does not explicitly disclose the relative dimensions thereof. Nevertheless, Park teaches output via electrodes for laminate coil components wherein via conductors between laminate layers have widths of less than 100µm. See Park ¶¶0066-0069. It would have been obvious at the time the invention was made to provide the multiple via holes of Yokouchi to have a diameter of less then 100µm. One having ordinary skill in the art would do so because dimensions are known in the art for such vias as taught by Park.
Furthermore, modifying the lead-out via conductors of Yokouchi to have the relative dimensions as recited in the claims would be obvious to one having ordinary skill in the art through routine experimentation because where the where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Systems, Inc., 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 225 USPQ 232 (1984). As evidenced above, Yokouchi otherwise discloses all the recited features of claim 1, except for the relative dimensional width of the lead-out via conductors. It would have thus been obvious as ordinary skill in the art to make the width of the lead-out via conductors to have the recited dimensions less than 100µm. Furthermore, such a modification is predictable in view of Park which discloses precisely such a relative dimension for multiple via conductors.
Thus, Yokouchi and Park in combination teach a diameter of the lead-out via conductor is 100µm or less.
Regarding claim 3, Yokouchi and Park teach the component of claim 1 and further:
wherein the plurality of coil conductors laminated in the lamination direction includes an outermost coil conductor located at an outermost position in the lamination direction, the outermost coil conductor includes a land portion at an end portion thereof, and the plurality of lead-out conductors are connected to a same land portion.
See Yokouchi FIGS. 1 and 3 above, note land conductor 4b on laminate sheet 15 which is connected to both the identified lead-out via conductors.
Regarding claim 4, Yokouchi and Park teach the component of claim 1 and further:
wherein the laminated portion includes three or more of the coil conductors.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising multiple coil conductors 1 and 2.
Regarding claim 5, Yokouchi and Park teach the component of claim 1 and further:
wherein the lamination direction and a direction of a coil axis of the coil are parallel to a mounting surface of the element body along a same direction.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising multiple coil conductors 1 and 2 forming a direction of a coil axis in a vertical direction of FIG. 3 and in a horizontal direction in FIG. 1.
Regarding claim 6, Yokouchi and Park teach the component of claim 1 and further:
wherein each length of all the coil conductors constituting the laminated portion is a length of ¾ turns of the coil.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising multiple coil conductors 1 and 2, each comprising a length of ¾ turns of the coil.
Regarding claim 9, Yokouchi and Park teach the component of claim 3 and further:
wherein the laminated portion includes three or more of the coil conductors.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising at least three coil conductors 1 and 2.
Regarding claim 12, Yokouchi and Park teach the component of claim 3 and further:
wherein the lamination direction and a direction of a coil axis of the coil are parallel to a mounting surface of the element body along a same direction.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising at least three coil conductors 1 and 2 which form a coil axis that is vertical in FIG. 3, but is horizontal and parallel to the mounting surface as shown in FIG. 1.
Regarding claim 13, Yokouchi and Park teach the component of claim 4 and further:
wherein the lamination direction and a direction of a coil axis of the coil are parallel to a mounting surface of the element body along a same direction.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising at least three coil conductors 1 and 2 which form a coil axis that is vertical in FIG. 3, but is horizontal and parallel to the mounting surface as shown in FIG. 1.
Regarding claim 17, Yokouchi and Park teach the component of claim 3 and further:
wherein each length of all the coil conductors constituting the laminated portion is a length of ¾ turns of the coil.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising multiple coil conductors 1 and 2, each comprising a length of ¾ turns of the coil.
Regarding claim 18, Yokouchi and Park teach the component of claim 4 and further:
wherein each length of all the coil conductors constituting the laminated portion is a length of ¾ turns of the coil.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising multiple coil conductors 1 and 2, each comprising a length of ¾ turns of the coil.
Regarding claim 19, Yokouchi and Park teach the component of claim 5 and further:
wherein each length of all the coil conductors constituting the laminated portion is a length of ¾ turns of the coil.
See Yokouchi FIGS. 1 and 3 above, note laminated portions includes multiple sheets 10, 11, 15 and 16 comprising multiple coil conductors 1 and 2, each comprising a length of ¾ turns of the coil.
V. DOUBLE PATENTING REJECTIONS
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 C.F.R. §1.321(c) or §1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP §717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP §2159. See MPEP §2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 C.F.R. §1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP §804, subsection I.B.1. For a reply to a non-final Office action, see 37 C.F.R. §1.111(a). For a reply to final Office action, see 37 C.F.R. §1.113(c). A request for reconsideration while not provided for in 37 C.F.R. §1.113(c) may be filed after final for consideration. See MPEP §706.07(e) and §714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
V.A. Double Patenting Rejections Over 354 Application and Park
Claims 1, 4-6 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 11, 10 and 13 of co-pending U.S. Patent Application No. 18/191,354 (hereinafter the “354 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 11, 10 and 13 of the 354 Application in view of Park read on claims 1, 4, 5, 6 and 13, respectively, in this application. This is a provisional double patenting rejection because the claims of the 354 Application have not been patented.
Regarding claim 1 in this application, claim 1 of the 354 Application recites:
1. A laminated coil component comprising:
See 354 Application claim 1 which recites “A laminated coil component comprising…”
an element body including a plurality of insulating layers laminated in a lamination direction;
See 354 Application claim 1 which recites “a body in which a plurality of insulating layers are laminated in a laminating direction…”
a coil inside the element body; and
See 354 Application claim 1 which recites “a coil in the body…”
an external electrode on a surface of the element body and electrically connected to the coil,
See 354 Application claim 1 which recites “an outer electrode on a surface of the body and electrically connected to the coil…”
wherein the coil includes a plurality of coil conductors laminated in the lamination direction and electrically connected via a via conductor penetrating the insulating layer in the lamination direction, the plurality of coil conductors laminated in the lamination direction includes a laminated portion including the plurality of coil conductors adjacent to each other, the laminated portion has a parallel section in which all the coil conductors constituting the laminated portion overlap each other when viewed from the lamination direction, the parallel sections are connected in parallel by the via conductor,
See 354 Application claim 1 which recites “wherein the coil includes a plurality of coil conductors laminated in the laminating direction that are electrically connected by a via conductor that penetrates the insulating layers in the laminating direction, the plurality of coil conductors laminated in the laminating direction includes a first laminated part including a plurality of adjacent coil conductors including an outermost coil conductor at an outermost position in the laminating direction among the plurality of coil conductors, the first laminated part has a first parallel section in which all of the coil conductors of the first laminated part overlap each other when viewed in the laminating direction, the coil conductors in the first parallel section are connected in parallel by the via conductor…”
the coil is electrically connected to a same external electrode via a plurality of lead-out conductors, each of the lead-out conductors includes a lead-out via conductor penetrating the insulating layer in the lamination direction, and …
See 354 Application claim 1 which recites “the outermost coil conductor is electrically connected to the same outer electrode by a first lead-out conductor at one end of the first parallel section and by a second lead-out conductor at another end of the first parallel section…”
However, while claim 1 of the 354 Application recites the pair of lead-out via conductors, the claim does not explicitly disclose the relative dimensions thereof. Nevertheless, Park teaches output via electrodes for laminate coil components wherein via conductors between laminate layers have widths of less than 100µm. See Park ¶¶0066-0069. It would have been obvious at the time the invention was made to provide the multiple via holes of claim 1 of the 354 Application to have a diameter of less than 100µm. One having ordinary skill in the art would do so because dimensions are known in the art for such vias as taught by Park.
Furthermore, modifying the lead-out via conductors of claim 1 of the 354 Application to have the relative dimensions as recited in the claims would be obvious to one having ordinary skill in the art through routine experimentation because where the where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Systems, Inc., 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 225 USPQ 232 (1984). As evidenced above, claim 1 of the 354 Application otherwise recites and discloses all the recited features of claim 1, except for the relative dimensional width of the lead-out via conductors. It would have thus been obvious as ordinary skill in the art to make the width of the lead-out via conductors to have the recited dimensions less than 100µm. Furthermore, such a modification is predictable in view of Park which discloses precisely such a relative dimension.
Thus, claim 1 of the 354 Application and Park in combination teach a diameter of the lead-out via conductor is 100µm or less.
Regarding claim 4, claim 2 of the 354 Application read on the features of claim 1 and further wherein:
wherein the laminated portion includes three or more of the coil conductors.
See claim 2 of the 354 Application which recites “the first laminated part includes three or more coil conductors...”
Regarding claim 5, claim 11 of the 354 Application read on the features of claim 1 and further wherein:
wherein the lamination direction and a direction of a coil axis of the coil are parallel to a mounting surface of the element body along a same direction.
See claim 11 of the 354 Application which recites “wherein the laminating direction and a direction of a coil axis of the coil are parallel with a mount surface of the body along a same direction...”
Regarding claim 6, claim 10 of the 354 Application read on the features of claim 1 and further wherein:
wherein each length of all the coil conductors constituting the laminated portion is a length of ¾ turns of the coil.
See claim 10 of the 354 Application which recites “wherein a length of all of the coil conductors of the second laminated part is a length of ¾ of a turn of the coil...”
Regarding claim 13, claim 19 of the 354 Application read on the features of claim 1 and further wherein:
wherein the lamination direction and a direction of a coil axis of the coil are parallel to a mounting surface of the element body along a same direction.
See claim 19 of the 354 Application which recites “wherein the laminating direction and a direction of a coil axis of the coil are parallel with a mount surface of the body along a same direction...”
VI. ALLOWABLE SUBJECT MATTER
Claims 2, 7, 8, 10, 11, 14-16 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Examiner finds that regarding claim 2, the prior art of record in this application do not show or discuss wherein “the first sum being determined by a same first cross section, is equal to or greater than a second sum of sectional areas of the coil conductors constituting the parallel section, the second sum being determined by a same second cross section” in the manner as recited in claim and in combination with the other features of the claims. Claims 7, 8, 10, 11, 14-16 and 20 are allowed for the same reasons based on their dependency to claim 2.
VII. CONCLUSION
Claims 1-20 are pending.
Claims 1, 3-6, 9, 12, 13 and 17-19 are rejected.
Claims 2, 7, 8, 10, 11, 14-16 and 20 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The examiner can normally be reached 8:30am - 5:00pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992