Prosecution Insights
Last updated: July 17, 2026
Application No. 18/213,005

ELECTRONIC COMPONENT INCLUDING ELECTROSTATIC DISCHARGE MEMBER AND BOARD HAVING ELECTRONIC COMPONENT MOUNTED THEREON

Final Rejection §103
Filed
Jun 22, 2023
Priority
Dec 08, 2022 — RE 10-2022-0170253
Examiner
HAUSMAN, JARED RAYMOND
Art Unit
2838
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Samsung Electro-Mechanics Co., Ltd.
OA Round
2 (Final)
75%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
75%
With Interview

Examiner Intelligence

Grants 75% — above average
75%
Career Allowance Rate
3 granted / 4 resolved
+7.0% vs TC avg
Minimal +0% lift
Without
With
+0.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
10 currently pending
Career history
19
Total Applications
across all art units

Statute-Specific Performance

§103
90.2%
+50.2% vs TC avg
§102
4.9%
-35.1% vs TC avg
§112
4.9%
-35.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 4 resolved cases

Office Action

§103
DETAILED ACTION This action is in response to the communication filed October 17, 2025. 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 . Specification The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Drawings The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: item numbers 421 and 422 in Fig. 10. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Response to Arguments Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. 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. Claims 1-5, & 8-21 are rejected under 35 U.S.C. 103 as being unpatentable over Piao et al. (CN 114630485 A), in further view of Bultitude et al. (US 2013/0208395 A1). Note: all citations are made using the English machine translations of documents. Regarding claim 1, Piao et al. teaches an electronic component comprising: an ESD discharge member (200 in Fig. 5) including a substrate (210 in Fig. 5) having first and second surfaces (210-1 and 210-2 in Fig. 5) opposing each other and first and second conductors (201 and 202 in Fig. 5) disposed on the first and second surfaces of the substrate; and a multilayer electronic component (100 in Figs. 1, 4) disposed on the second surface of the substrate (101 in Fig. 4. Examiner’s note: applicant teaches that the second surface of the substrate is the surface on which the first and second conductors and spacer portion are placed. Piao et al. teaches that the first surface of the substrate is the surface on which the first and second conductors and spacer portion are placed. Therefore, Piao et al. teaches the component being disposed on the same surface as taught by applicant. Likewise, when applicant references the first surface of the substrate, Piao et al. teaches the same surface as being the second surface of the substrate), wherein the multilayer electronic component includes a body (110 in Fig. 1) and first and second external electrodes (131 and 132 in Fig. 1) disposed outside the body and respectively connected to the first and second conductors (Fig. 4), the first and second conductors include first and second discharge electrode layers (211 and 212 in Fig. 5) disposed on the second surface of the substrate to be spaced apart from each other in one direction and respectively connected to the first and second external electrodes (Fig. 4; pg. 7: “The first conductor 201 and the second conductor 202 may include: a first release electrode layer 211 and a second release electrode layer 212 disposed on the first surface 210-1 of the substrate 210 to interval and respectively to the first external electrode 131 and the second external electrode 132; and a first lower electrode layer 231 and a second lower electrode layer 232, which are disposed on the second surface 210-2 of the substrate 210 to interval”), the first discharge electrode layer has one portion extending from one edge of the substrate and also from the opposing edges of the substrate and a first protrusion (213 in Fig. 5) extending from the one portion of the first discharge electrode layer in a direction toward the second discharge electrode layer, the second discharge electrode layer has one portion extending from another edge of the substrate opposing the one edge in the one direction and also from the opposing edges of the substrate and a second protrusion (214 in Fig. 5) extending from the one portion of the second discharge electrode layer in a direction toward the first discharge electrode layer, and Piao fails to disclose an end portion of the first protrusion has edges inclined with respect to the one direction such that the end portion of the first protrusion has a width narrowing in the direction toward the second discharge electrode layer, and an end portion of the second protrusion has edges inclined with respect to the one direction such that the end portion of the second protrusion has a width narrowing in the direction toward the first discharge electrode layer. Bultitude et al. discloses an end portion of the first protrusion has edges inclined with respect to the one direction such that the end portion of the first protrusion has a width narrowing in the direction toward the second discharge electrode layer (26 in Fig. 9), and an end portion of the second protrusion has edges inclined with respect to the one direction such that the end portion of the second protrusion has a width narrowing in the direction toward the first discharge electrode layer (26 in Fig. 9). It 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 to have used the tapered shape such as the one disclosed by Bultitude et al. with the component disclosed by Piao et al. in order to lower the threshold voltage and increase discharge ability in the event of an electrostatic discharge event ([0062], [0072]). Regarding claim 2, Piao et al. teaches wherein the width of the end portion of the first protrusion is measured in a width direction (Y-axis in Fig. 6A) of the first protrusion perpendicular to the direction toward the second discharge electrode layer (X-axis in Fig. 6A), and the width of the end portion of the second protrusion is measured in a width direction (Y-axis in Fig. 6A) of the second protrusion perpendicular to the direction toward the first discharge electrode layer (X-axis in Fig. 6A; pg. 4: “…the length direction can be used as the same with the X direction or the first direction of the concept, the width direction can be used as the same as the Y direction or the third direction of the concept, and the thickness direction can be used as the Z direction, the second direction or stacking direction of the same concept.”) Regarding claim 3, Piao et al. teaches wherein the ESD discharge member has first and second through-holes (h1 and h2 in Fig. 5) passing through the substrate, and the first and second conductors further include first and second lower-surface electrode layers (231 and 232 in Fig. 5) disposed on the first surface (Examiner’s note: see note regarding first and second surfaces of the substrate in rejection of claim 1) of the substrate to be spaced apart from each other, and first and second via electrodes (221 and 222 in Fig. 5) covering internal surfaces of the first and second through-holes and respectively connecting the first and second lower-surface electrode layers to the first and second discharge electrode layers (pg. 7: “The first through hole h1 may be formed through the first release electrode layer 211, the substrate 210 and the first lower electrode layer 231. The first through hole electrode 221 coated on the inner wall of the first through hole h1 can connect the first release electrode layer 211 and the first lower electrode layer 231 to each other.” Pg. 7-8: “The second through hole h2 may be formed to pass through the second release electrode layer 212, the substrate 210, and the second lower electrode layer 232. The second through hole electrode 222 coated on the inner wall of the second through hole h2 may connect the second release electrode layer 212 and the second lower electrode layer 232 to each other.”) Regarding claim 4, Piao et al. discloses the invention from above, but does not explicitly teach wherein an end of the first protrusion and an end of the second protrusion have a tapered shape. Bultitude et al. discloses wherein an end of the first protrusion of a discharge electrode and an end of the second protrusion of a discharge electrode have a tapered shape (26 in Fig. 9). It 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 to have used the tapered shape such as the one disclosed by Bultitude et al. with the component disclosed by Piao et al. in order to lower the threshold voltage and increase discharge ability in the event of an electrostatic discharge event ([0062], [0072]). Regarding claim 5, Piao et al. discloses the invention from above, but does not explicitly teach wherein an end of the first protrusion and an end of the second protrusion have a shape having a sharp point. Bultitude et al. discloses wherein an end of the first protrusion and an end of the second protrusion have a shape having a sharp point (26 in Fig. 9). It 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 to have used the shape and sharp point disclosed by Bultitude et al. with the component disclosed by Piao et al. in order to lower the threshold voltage and increase discharge ability in the event of an electrostatic discharge event ([0062], [0072]). Regarding claim 8, Piao et al. teaches wherein a portion of the first protrusion has a shape having a constant width, and a portion of the second protrusion has a shape having a constant width (213 and 214 in Fig. 6A). Regarding claim 9, Piao et al. discloses the invention from above, but does not explicitly teach wherein the first protrusion has a width that is constant and then narrows in the direction toward the second discharge electrode layer, and the second protrusion has a width that is constant and then narrows in the direction toward the first discharge electrode layer. Bultitude et al. discloses wherein the first protrusion is formed to extend from the first discharge electrode layer and to have a shape having a width that is constant and then narrows in the direction toward the second discharge electrode layer, and the second protrusion is formed to extend from the second discharge electrode layer and to have a shape having a width that is constant and then narrows in the direction toward the first discharge electrode layer (26 in Fig. 9). It 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 to have used the shape and protrusions disclosed by Bultitude et al. with the component and electrodes disclosed by Piao et al. in order to lower the threshold voltage and increase discharge ability in the event of an electrostatic discharge event ([0062], [0072]). Regarding claim 10, Piao et al. teaches wherein when a region in which the first and second discharge electrode layers are spaced apart from each other is defined as a spacer portion (250 in Fig. 6A), the spacer portion has a size of 1 μm or more and 100 μm or less (pg. 8-9: “The interval part 250 can be used as ESD through bypass (by). the first extending part 213 and the second extending part 214 between the gap (interval part 250) for determining the ESD conduction voltage, and preferably 1 μ m to 20 μ m.” This value is within the specified range). Regarding claim 11, Piao et al. teaches wherein the ESD discharge member further includes an ESD discharge portion disposed to simultaneously cover the end portion of the first protrusion, the end portion of the second protrusion, and the spacer portion (240 in Figs. 5, 6A; pg. 9: “The ESD function 240 may be formed on the first surface 210-1 of the substrate 210 to cover a portion of the first release electrode layer 211 and a portion of the second release electrode layer 212 and the interval portion 250”). Regarding claim 12, Piao et al. teaches wherein the first and second conductors are not disposed on a surface of the substrate, perpendicular to the first and second surfaces (pg. 9: “In addition, according to an exemplary embodiment of the present disclosure, the first conductor 201 and the second conductor 202 may not be formed on the surface 210 perpendicular to the first surface 210-1 and the second surface 210-2”). Regarding claim 13, Piao et al. teaches wherein the ESD discharge member has a length and a width less than those of the multilayer electronic component (pg. 6: “Here, the length and width of the ESD release member 200 may be less than the length and width of the multi-layer capacitor 100”). Regarding claim 14, Piao et al. teaches first and second conductive bonding layers (310 and 320 in Fig. 7) respectively disposed between the first and second external electrodes and the first and second conductors (pg. 10: “In this case, the first release electrode layer 211 and the second release electrode layer 212 may be connected to the first outer electrode 131 and the second outer electrode 132 via the conductive bonding layers 310 and 320 respectively”). Regarding claim 15, Piao et al. teaches wherein the body (110 in Fig. 1) has first and second surfaces opposing each other in a first direction (1 and 2 in Fig. 1, Z-direction), third and fourth surfaces (3 and 4 in Fig. 1) connected to the first and second surfaces and opposing each other in a second direction (X-direction in Fig. 1), and fifth and sixth surfaces (5 and 6 in Fig. 1) connected to the first to fourth surfaces and opposing each other in a third direction (Y-direction in Fig. 1), the first and second external electrodes (131 and 132 in Fig. 1) include first and second connection portions (131a and 132a in Fig. 1) respectively disposed on the third and fourth surfaces, and first and second band portions (131b and 132b in Fig. 1) extending from the first and second connection portions to portions of the first, second, fifth, and sixth surfaces of the body, and the first and second conductors are connected to the first and second band portions, respectively (Figs. 4, 7; it can be seen that these banding portions 131a and 132b connect to the first and second conductors 201 and 202). Regarding claim 16, Piao et al. teaches wherein the ESD discharge member includes one or more ESD discharge members (200 and 400 in Fig. 8; pg. 11: “As an exemplary embodiment, the electronic assembly 102 shown in FIG. 8, ESD release members 200 and 400 can respectively set on the multilayer capacitor 100 opposite to each surface”), and the one or more ESD discharge members are in contact with the first and second band portions, and are disposed on one or more surfaces selected from among the first, second, fifth and sixth surfaces of the body. Regarding claim 17, Piao et al. teaches wherein the first protrusion includes one or more first protrusions (213 in Fig. 5) and the second protrusion includes one or more second protrusions (214 in Fig. 5), and the first through-hole includes one or more first through-holes (h1 in Fig. 5) and the second through-hole includes one or more second through-holes (h2 in Fig. 5; Examiner’s note: Fig. 5 shows one first and second protrusion and one first and second through-hole, thus meeting the limitation of “one or more.”) Regarding claim 18, Piao et al. teaches a board (600 in Fig. 10) having an electronic component mounted (101 in Fig. 10) thereon, the board comprising: a printed circuit board (600 in Fig. 10) including at least one pair of electrode pads (610 and 620 in Fig. 10) thereon; an electronic component (101 in Fig. 10) disposed on the printed circuit board; and a solder (710 and 720 in Fig. 10) connecting the electrode pad and the electronic component to each other, wherein the electronic component includes a multilayer electronic component (100 in Figs. 1, 4) including a body (110 in Figs. 1, 10) and first and second external electrodes (131 and 132 in Fig. 1) disposed outside the body, and an ESD discharge member (200 in Fig. 5; can be seen in Fig. 10 via 201 and 202) disposed between the multilayer electronic component and the printed circuit board, the ESD discharge member includes a substrate (210 in Figs. 5, 10) having first and second surfaces (210-1 and 210-2 in Fig. 5) opposing each other and first and second conductors 201 and 202 in Figs. 5, 10) disposed on the first and second surfaces of the substrate, the first and second conductors include first and second discharge electrode layers (211 and 212 in Figs. 5, 10) disposed on the second surface of the substrate to be spaced apart from each other in one direction and respectively connected to the first and second external electrodes, the first discharge electrode layer one portion extending from one edge of the substrate and also from opposing edges of the substrate and has a first protrusion (213 in Fig. 5; see rejection of claim 1 above) extending from the one portion of the first discharge electrode layer in a direction toward the second discharge electrode layer, The second discharge electrode layer has one portion extending from one edge of the substrate and also from opposing edges of the substrate and a second protrusion (214 in Fig. 5; see rejection of claim 1 above) extending from the one portion of the second discharge electrode layer in a direction toward the first discharge electrode layer. Piao fails to disclose an end portion of the first protrusion has edges inclined with respect to the one direction such that the end portion of the first protrusion has a width narrowing in the direction toward the second discharge electrode layer, and an end portion of the second protrusion has edges inclined with respect to the one direction such that the end portion of the second protrusion has a width narrowing in the direction toward the first discharge electrode layer. Bultitude et al. discloses an end portion of the first protrusion has edges inclined with respect to the one direction such that the end portion of the first protrusion has a width narrowing in the direction toward the second discharge electrode layer (26 in Fig. 9), and an end portion of the second protrusion has edges inclined with respect to the one direction such that the end portion of the second protrusion has a width narrowing in the direction toward the first discharge electrode layer (26 in Fig. 9). It 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 to have used the tapered shape such as the one disclosed by Bultitude et al. with the component disclosed by Piao et al. in order to lower the threshold voltage and increase discharge ability in the event of an electrostatic discharge event ([0062], [0072]). Regarding claim 19, Piao et al. teaches wherein the ESD discharge member has first and second through-holes (h1 and h2 in Figs. 5, 10) passing through the substrate, the first and second conductors include first and second lower-surface electrode layers (231 and 232 in Figs. 5, 10) disposed on the first surface (Examiner’s note: see note regarding first and second surfaces of the substrate in rejection of claim 1) of the substrate to be spaced apart from each other, and first and second via electrodes (221 and 222 in Figs. 5, 10) covering internal surfaces of the first and second through-holes and respectively connecting the first and second lower-surface electrode layers to the first and second discharge electrode layers (pg. 7: “The first through hole h1 may be formed through the first release electrode layer 211, the substrate 210 and the first lower electrode layer 231. The first through hole electrode 221 coated on the inner wall of the first through hole h1 can connect the first release electrode layer 211 and the first lower electrode layer 231 to each other.” Pg. 7-8: “The second through hole h2 may be formed to pass through the second release electrode layer 212, the substrate 210, and the second lower electrode layer 232. The second through hole electrode 222 coated on the inner wall of the second through hole h2 may connect the second release electrode layer 212 and the second lower electrode layer 232 to each other.”), and the solder is disposed to fill at least portions of internal spaces of the first and second through-holes (pg. 12: “In addition, the solder 710 and 720 may be configured to fill at least a portion of the inner space of the first through hole h1 and the second through hole h2.”) Regarding claim 20, Piao et al. teaches wherein the ESD discharge member includes at least one ESD discharge member, and the at least one ESD discharge member is in contact with the first and second external electrodes, and is disposed on one surface of the body (Figs. 4, 8, 10, 11; all show the ESD discharge member disposed on one surface of the body, in contact with the external electrodes). Regarding claim 21, Piao fails to disclose the electronic component of claim 1, wherein the end portion of the first protrusion and the end portion of the second protrusion have a curved shape. Bultitude teaches wherein the end portion of the first protrusion and the end portion of the second protrusion have a curved shape (Fig. 11). It 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 to have used the curved shape such as the one disclosed by Bultitude et al. with the component disclosed by Piao et al. in order to lower the threshold voltage and increase discharge ability in the event of an electrostatic discharge event ([0062], [0072]). Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Piao et al. (CN 114630485 A). Note: citations are made using the English machine translations of documents. Regarding claim 6, Piao et al. discloses wherein a maximum width of each of the first and second discharge electrode layers is defined as PW0, and among two ends of each of the first and second protrusions (213 and 214 in Fig. 6A) in a direction in which the first and second protrusions extend towards each other, a width of one end close to a gap between the first and second protrusions is defined as PW1, and a width of the other end is defined as PW12 (Examiner’s note: see Image 1 below for clarification of widths PW0, PW1, and PW12), and the PW0, PW1, and PW12 are measured in a direction orthogonal to the direction in which the first and second protrusions extend towards each other (Examiner’s note: Image 1 below shows that the widths are measured in the Y-direction, orthogonal to the X-direction in which the protrusions extend). Piao et al. does not disclose the dimensions of 0 ≤ PW1 < PW12 ≤ PW0. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to use the dimensions 0 ≤ PW1 < PW12 ≤ PW0 in order to maximize the discharge ability, since it has been held that discovering an optimal value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Regarding claim 7, Piao et al. teaches wherein when 0 < PW1 is satisfied, among the two ends of the first and second protrusions, the one end and the other end are parallel to each other. (Examiner’s note: as disclosed by applicant, PW1 represents the width of the end of the protrusion furthest from the opposing protrusion. As seen in Fig. 6A, when this value is greater than zero, the two ends of a protrusion will be parallel. This can also be seen below in Image 1.) PNG media_image1.png 264 466 media_image1.png Greyscale Image 1 Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20160211074 A1 – Gu Hyun Hee -MULTILAYER CERAMIC ELECTRONIC COMPONENT, METHOD OF MANUFACTURING THE SAME, AND CIRCUIT BOARD HAVING THE SAME US20210335547A1 – Yokomizo Satoshi – Multilayer Ceramic Capacitor 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 JARED RAYMOND HAUSMAN whose telephone number is (571)272-6139. The examiner can normally be reached M-F. 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, Monica Lewis can be reached at 5712721838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MONICA LEWIS/Supervisory Patent Examiner, Art Unit 2838 /JARED RAYMOND HAUSMAN/Examiner, Art Unit 2838
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Prosecution Timeline

Jun 22, 2023
Application Filed
Aug 11, 2025
Non-Final Rejection mailed — §103
Oct 17, 2025
Response Filed
Jun 02, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
75%
Grant Probability
75%
With Interview (+0.0%)
2y 7m (~0m remaining)
Median Time to Grant
Moderate
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