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 § 112
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 1-20 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.
Clam 1 contains the limitation “area rate of pores”. It is unclear what “area rate” specifically refers to as this term does not have an ordinary and customary meaning to one of ordinary skill in the art. Furthermore, the term is not specifically defined in the specification as filed. A “rate” usually refers to a change of a period of time but it is not disclosed/explained how the area at the specific region changes. The term “rate” may also be a misspelling and is intended to refer to “ratio”. In view of the multiple divergent interpretations of the claim limitation, the metes and bounds of the claim are unclear and therefore the claim is indefinite under 35 U.S.C. §112(b). Appropriate correction is required.
Furthermore, in claim 1 there seems to be a contradiction on what is intended to be the “lamination direction” as claimed and evidenced by the specification. The “second position” is in a direction away from the center of the laminate/first position (see Fig. 7, E1-E2, par. [0179]). However, the “fourth position” that is also in the “lamination direction” away from the third position and is closer to the center of the laminate. (see E3-E4, Fig. 7, par. [0179]). The meaning of the term “lamination region” is therefore indefinite is it appears to refer to two contradictory directions from first to second position and from third to fourth position (that is, towards the outer surface and away therefrom).
Claims 2-20 are rejected as being dependent on claim 1.
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.
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.
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, 4, 7-8 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (U.S. App. Pub. No. 2017/0133144) in view of Yoshida (U.S. App. Pub. No. 2014/0191838).
Regarding claim 1, Lee et al. discloses a common mode noise filter including an insulator, a cool embedded in the insulation (element 20) and two magnetic layers (elements 50 and 55) including a layer of material with different-size magnetic particles wherein the magnetic layer is adhered to the surface of the insulator. (Abstract, par. [0040], Fig. 2). The magnetic layers include regions where a mix of large and smaller particles are located near the surface laminate to the insulating material (equivalent to the first and second region as claimed) (Fig. 3, sections 53 and 52). Region 53 which is equivalent to the first inner region would have a smaller average crystal particle size and a larger area ratio of pores than region 52 which would be equivalent to the claimed “first intermediate region” due to the presence of a mixture of large and small particles. Therefore, the average particle diameter and area ratio of pores would be lower in region 52 on average and within 10 micrometers of the thickness than area 53, as claimed.
Lee et al. does not teach that the insulator layer is a glass layer.
Yoshida teaches a common mode noise filter including a series of insulating layers and magnetic layers laminated in sequence with a coil conductor embedded in the insulating layer. (Abstract, Fig. 3 and par. [0029]). Yoshida teaches that glass based dielectric layers are well known in the art for electronic devices which operate at a higher frequency. (par. [0007] and [0030]).
It would have been obvious to one of ordinary skill in the art to use a glass composition as the insulating layer material in Lee et al.
One of ordinary skill in the art would have found it obvious to use a glass composition as the insulating material in Lee et al. in view of the disclosure in Lee et al. that glass is a well-known dielectric insulating material used in electronic devices which operate at high frequency. One of ordinary skill in the art would therefore have a reasonable expectation of success in producing a noise filter material that may suitably be used in a high frequency electronic device. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claim 4, the claim is rejected for substantially the same reasons as claim 1, above. Lee et al. discloses the use of multiple magnetic layers which would include the different particle sizes segregated towards in the insulation layer side in each of the magnetic layers. (Abstract, par. [0040], Fig. 2). The second, opposite, magnetic layer would therefore have the second inner and intermediate regions as presently claimed with the smaller average particle diameter of the magnetic particles and higher area ratio of pores.
Regarding claim 7, the glass composition disclosed in Yoshida preferably contains aluminum oxide (par. [0045]) and may further contain alumina filler. (par. [0048]).
Regarding claim 8, Yoshida discloses including alternating stacks of glass and magnetic layer (see Fig. 3, 16 a,b and 15a, 15c, par. [0031]).
Regarding claims 15-16, the glass composition disclosed in Yoshida preferably contains aluminum oxide (par. [0045]) and may further contain alumina filler. (par. [0048]).
Regarding claim 17-20, the coils disclosed in Lee et al. are common filter coils, including first and second coil, that are separated from each other in the insulating material and would therefore be insulated. (Abstract)
Claims 2-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (U.S. App. Pub. No. 2017/0133144) in view of Yoshida (U.S. App. Pub. No. 2014/0191838), further in view of Park et al. (U.S. App. Pub. No. 2014/0266543).
Lee in view of Yoshida et al. is relied upon as described in the rejection of claim 1, above.
Regarding claims 2-3 and 4-5, Lee in view of Yoshida et al. does not disclose the values of the area ratio of pores and relative average particle sizes for the large and smaller particles.
Park et al. teaches using an inductor including a multilayer structure with a plurality magnetic layer. (Abstract and Fig. 1). Park et al. teaches using a mixture of smaller and larger particle sizes in the magnetic layer for improving the dispersibility of the magnetic powder in the layer and the includes particle sizes in the range of 20-100 microns and less than 10 microns. (par. [0041]). The relative ratio of the particles is therefore in the range of 2:1 or more.
It would have been obvious to one of ordinary skill in the art to use relative particle sizes in the range of 2:1 or more for the larger and smaller particles in the magnetic layer of Lee et al.
One of ordinary skill in the art would have found it obvious to use a relative particle size in the range disclosed in Park et al. in view of the disclosed improved dispersibility when lying in the disclosed range. It would be expected to obtain similar improvements in Lee et al in view of the similar magnetic layer compositions mixed with a polymer material. As such, it would be expected for the relative average crystal size in the first and second regions in Lee et al. (regions 52 and 53) to overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to the area ratio of the pores for the two regions in Lee et al., while Lee in view of Yoshida and Park et al. does not explicitly disclose this feature, given that this is related to the relative sizes of the magnetic particles, wherein smaller particles in the layer would result in a higher area ratio for the pores, given that the values of the ratio of crystal sizes overlaps with the presently claimed range, there would be a similar overlap in the ranges with respect to the area ratio of pores.
Conclusion
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/28/2026