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 .
Priority
Since the related parent application under the title has been matured into a patent therefore the Application should be updated to: --", now US patent No. _______”--.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the subject matter of claims 1-2 (entirely) must be shown or the feature(s) canceled from the claim(s). note that there appears no method drawing(s) representing claim 1-8 (e.g., only product drawing(s) as shown in the providing Figs. 1-7). No new matter should be entered.
See sample of method diagram Fig. formats below
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: --" Method for Producing a Multilayer Coil Component” --.
Abstract should be updated to reflect method invention.
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.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
Since the scope of the claims clearly directed to the making of “a multilayer coil” as represent in the preamble, however the recites of “that includes an insulator portion, a coil that is embedded in the insulator portion and includes a plurality of coil conductor layers electrically connected to one another, and outer electrodes that are disposed on surfaces of the insulator portion and are electrically connected to extended portions of the coil” (see preamble, lines 2-5) directed to a structure elements which should be rewritten into the body of claim 1 for clarity of the inventive method claim format.
In line 1 of claims 2-8, "Claim" should not be capitalized. Appropriate correction is required.
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 1-8 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.
Since the scope of the claims clearly directed to the making of “a multilayer coil component” and the recites of “a coil that is embedded in the insulator portion and includes a plurality of coil conductor layers electrically connected to one another, and outer electrodes that are disposed on surfaces of the insulator portion and are electrically connected to extended portions of the coil,” directed to structure element which should be rewritten into method claim format under the body of the claim instead of in the preamble. In formulate the rejection on the merits the Examiner presumes that the claims directed to an inventive method and claims will be rejected accordingly.
Claim 1 appears to be incomplete since no product or multilayer coil is produced at the end of the process claim 1. Therefore, it is uncertainly whether the “multilayer compact” is represented the claimed multilayer coil or not?
Please provide the generic terms for “PVC” (see claim 1, lines 6-7, respectively.
Claim 2 is unclear and not understood since it directed to another independent process which distinctive from claim 1 and should be deleted. Further, claim 2 is a redundant of claim 1, however, there is no connection between process of claim 2 and claim 1 since both claims produced a same thing (e.g., multilayer compact) which does not reflect the method as claimed.
whether or not” a conductive paste layer” (claim 2, line 4) as same as that in line 6 of claim 1?
whether or not” an insulating paste layer” (claim 2, line 6) as same as that in line 8 of claim 1?
whether or not” a multilayer compact” (claim 2, lines 9-10) as same as that in line 9 of claim 1?
Claim 3 directed to material specification no inventive method therefrom.
“the conductive paste layers “(claim 4, line 4) lacks proper antecedent basis. Since it does not reflect single format layer of base claim 1, line 6.
Similar to claim 3 above applied to claim 5
Similar to claim 4 above applied to claims 6-8.
It appears that claims 2, 5-6, 8 directed to a process other than the process of claims 1, 3-4, and 7 and should be rewritten into separate independent method invention formats.
Double Patenting
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 CFR 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 CFR 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 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 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.
Claims 1-2, 3, 5, 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12169255 hereinafter the ‘255. Although the claims at issue are not identical, they are not patentably distinct from each other because every-limitations set forth in this instant application are recited in the claims 1-10 of the ‘255.
The ‘255 claims the method for producing a multilayer coil component that includes an insulator portion, a coil that is embedded in the insulator portion and includes a plurality of coil conductor layers electrically connected to one another, and outer electrodes that are disposed on surfaces of the insulator portion and are electrically connected to extended portions of the coil, the method comprising:
forming a conductive paste layer by using a conductive paste having a PVC of from 60% to 80% (compare claim 2 of the ‘255;
forming an insulating paste layer by using an insulating paste (compare claim 1, lines 24-25);
forming a multilayer compact that includes the conductive paste layer and the insulating paste layer (compare claim 1, lines 29-30); and
firing the multilayer compact (compare claim 1, line 32, respectively). Thus the above limitation is/are claimed by the ‘255.
As applied to claim 2, refer to claim 1, lines 17-32, respectively.
As applies to claims 3, 5 refer to claim 3 and 7 of the ‘255.
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) 1-3, 5 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Itani et al US Pub No. 20180374636.
Itani et al discloses the claimed method for producing a multilayer coil component that includes an insulator portion 111, a coil that is embedded in the insulator portion and includes a plurality of coil conductor layers 20 electrically connected to one another, and outer electrodes that are disposed on surfaces of the insulator portion 111 and are electrically connected to extended portions of the coil, the method comprising:
forming a conductive paste layer 211-212 by using a conductive paste having a PVC of from 60% to 80% (see related embodiment of Figs. 6-7, and discussed in ¶ [0060]).
forming an insulating paste layer 111-112 (as magnetic layer) by using an insulating paste (see Fig.6, and discussed in ¶ [0060]);
forming a multilayer compact that includes the conductive paste layer 211-212 and the insulating paste layer 111 (see Fig. 7); and
firing the multilayer compact (see ¶¶ [0038-0039]). regarding to a conductive paste layer in form of a conductive paste having a PVC of from 60% to 80% is considered to be matter of choice, since selecting a material from a host of available materials would have been obvious at the time the effective filing date of the invention to incorporate such material from the host of available materials, since conductive materials in form of paste structures is/are selected based on design considerations and tradeoffs between cost, mechanical properties, and dielectric properties.
As applied to claim 2, regarding to “preparing an insulating sheet; forming a resin paste layer on the insulating sheet by using a resin paste; forming a conductive paste layer on the resin paste layer by using a conductive paste; forming an insulating paste layer on the insulating sheet by using an insulating paste such that at least part of an upper surface of the conductive paste layer is exposed; stacking a plurality of the insulating sheets having the resin paste layer, the conductive paste layer, and the insulating paste layer formed thereon to form a multilayer compact; and firing the multilayer “ is /are another version of claim 1 and it would have been obvious to full fill the process of claim 2 similar to that as discussed in claim 1 above. Note that the recites of “preparing an insulating sheet” does not further limit the process since preparing does not mean the process is happening at the time.
Limitations of claims 3, 5 are also met in a same rational as claims 1-2 above, No inventive effort would have been required since only material requirements recited in the above claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The US patent No. 11901105, 12159750 are in same endeavor field invention with the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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/MINH N TRINH/Primary Examiner, Art Unit 3729
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