Prosecution Insights
Last updated: April 19, 2026
Application No. 18/418,135

SURGE SUPPRESSION DEVICE

Non-Final OA §103
Filed
Jan 19, 2024
Examiner
SREEVATSA, SREEYA
Art Unit
2838
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Proterial Ltd.
OA Round
2 (Non-Final)
86%
Grant Probability
Favorable
2-3
OA Rounds
2y 9m
To Grant
88%
With Interview

Examiner Intelligence

Grants 86% — above average
86%
Career Allow Rate
219 granted / 255 resolved
+17.9% vs TC avg
Minimal +2% lift
Without
With
+2.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
39 currently pending
Career history
294
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
47.6%
+7.6% vs TC avg
§102
35.3%
-4.7% vs TC avg
§112
14.5%
-25.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 255 resolved cases

Office Action

§103
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 . Claims 1-15 are pending in this application. Response to Arguments Applicant’s arguments, see Remarks, filed 12/02/2025, with respect to the rejections of claims 1-15 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Miyazaki (JP 2014132811 A). Applicant cites co-ownership to overcome prior art rejection of 09/04/2025. 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. Claims 1-2, 5-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki (JP 2014132811 A), and further in view of Skamser (US 20080026136 A1). Regarding claim 1, Miyazaki teaches a surge suppression device (abstract, provide a surge suppression system), comprising: a resistor (i.e. resistors RU, RV, RW) (fig.8); and a capacitor (i.e. capacitors CU, CV, CW) (fig.8) electrically connected to the resistor (page 6, a series circuit of a resistor RU and a capacitor CU), Miyazaki does not teach, wherein the resistor includes a substrate and a resistive-conducting layer composed of a sintered resistive paste provided on the substrate. Skamser teaches in a similar field of endeavor of multilayer device, a resistor (i.e. layered structure 40) (fig.4) includes a substrate (i.e. dielectric layer 41) (fig.4) and a resistive-conducting layer ([0040], equivalent series resistance (ESR)) (e.g. electrode 42) (fig.4) composed of a sintered resistive paste ([0040], The electrode layers, 42, are patterned) ([0051], The electrode precursor ink for forming the internal electrode layers is obtained by mixing an electro-conductive material with either an organic or aqueous solvent vehicle) provided on the substrate (e.g. dielectric layer 41) (fig.4). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have optionally included the resistor including a substrate and the resistive-conducting layer composed of a sintered resistive paste provided on the substrate in Miyazaki, as taught by Skamser, as it provides the advantage of miniaturizing the device. Regarding claim 2, Miyazaki and Skamser teach the surge suppression device according to claim 1, wherein the resistive-conducting layer comprises a plurality of resistive-conducting layers that are arranged on the substrate (Miyazaki, e.g. resistors RU, RV, RW) (fig.8) (Skamser, [0040], between two electrode layers, 42). Regarding claim 5, Miyazaki and Skamser teach the surge suppression device according to claim 1, further comprising: a terminal electrically (Skamser, i.e. internal layer, 20) (fig.1) connected to the resistive-conducting layer (Skamser, [0031], facilitates electrical connectivity between the internal electrode and the external electrodes), wherein the terminal is located on one side in a thickness direction of the substrate (Skamser, e.g. the side of device 10 comprising 20) (fig.1), and wherein the resistive-conducting layer is located on an other side in the thickness direction of the substrate (Skamser, e.g. side of device 10 comprising 12) (fig.1) and overlapping the terminal in the thickness direction of the substrate (Skamser, [0031], facilitates electrical connectivity between the internal electrode and the external electrodes). Regarding claim 6, Miyazaki and Skamser teach the surge suppression device according to claim 5, wherein the resistive-conducting layer is formed long in a longitudinal direction of the terminal (Skamser, e.g. serpentine electrode pattern of 42) (fig.1). Regarding claim 8, Miyazaki and Skamser teach the surge suppression device according to claim 1, further comprising: a through-conductive portion electrically (Skamser, i.e. internal layer, 20) (fig.1) connected to the resistive-conducting layer (Skamser, [0031], facilitates electrical connectivity between the internal electrode and the external electrodes) and formed to penetrate the substrate (Skamser, e.g. 20 is penetrating the substrate) (fig.1), wherein the through-conductive portion is provided at a portion distant from the resistive-conducting layer (Skamser, e.g. portion of 10 comprising 20, is distant from portion of 10 comprising 12) (fig.1). Regarding claim 9, Miyazaki and Skamser teach the surge suppression device according to claim 1, wherein the resistive-conducting layer has a serpentine shape (Skamser, [0040], A particularly preferred embodiment is a serpentine electrode since this allows the equivalent series resistance (ESR) to be adjusted by parallel legs of the electrode). Regarding claim 10, Miyazaki and Skamser teach the surge suppression device according to claim 1, wherein the capacitor is located on one side in a thickness direction of the substrate (Miyazaki, e.g. CU, CV and CW is on one side of RU, RV and RW) (fig.8). Regarding claim 11, Miyazaki and Skamser teach the surge suppression device according to claim 1, further comprising: a bracket (Skamser, e.g. external electrodes, 16) (fig.8) that faces and contacts the substrate of the resistor (Skamser, [0031], internal layer, 20, facilitates electrical connectivity between the internal electrode and the external electrodes) and is secured to a fixing object (Skamser, [0031], External electrodes are also referred to as terminations) (it is necessarily true that terminations are being attached to an external object to function in a circuit). Regarding claim 12, Miyazaki and Skamser teach the surge suppression device according to claim 11, wherein at least a part of the bracket is interposed between the resistor and the capacitor (Skamser, [0031], the plates are alternately in contact with external electrodes, 16, of opposite polarity). Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki (JP 2014132811 A) and Skamser (US 20080026136 A1), and further in view of Fukuchi (US 20220294210 A1). Regarding claim 14, Sagawa and Skamser teach the surge suppression device according to claim 1, further comprising: a resistor-embedding resin in which the resistor is embedded (Skamser, [0050], HC resins such as Escorez; rosins and acrylics); and a capacitor-embedding resin in which the capacitor is embedded (Skamser, [0050], HC resins such as Escorez; rosins and acrylics). Miyazaki and Skamser do not teach, wherein the resistor-embedding resin and the capacitor-embedding resin are arranged apart from each other. Fukuchi teaches in a similar field of endeavor of surge suppression device, resistor-embedding resin ([0049], The case 4 can be made of a resin with high thermal conductivity) and capacitor-embedding resin ([0049], The case 4 can be made of a resin with high thermal conductivity) are arranged apart from each other ([0048], The resistor 21 is housed in a resistor placement recess 424 (described late), and the capacitor 22 is housed in a capacitor placement recess 425 (described late)). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have optionally included the resistor-embedding resin and the capacitor-embedding resin are arranged apart from each other in Miyazaki and Skamser, as taught by Fukuchi, as it provides the advantage of optimal performance and reliability resulting due to the different functions, stress tolerances and material compositions of resistors and capacitors. Regarding claim 15, Miyazaki, Skamser and Fukuchi teach the surge suppression device according to claim 14, wherein each of the resistor- embedding resin and the capacitor-embedding resin comprises a base resin (Fukuchi, [0049], engineering plastic such as PA 6 (polyamide 6) or PBT (polybutylene terephthalate), or a super engineering plastic such as PPS (polyphenylene sulfide)) and a filler (Fukuchi, [0049], a ceramic material) having a higher thermal conductivity than the base resin (Fukuchi, [0049], a ceramic material having high insulation properties and high thermal conductivity (thermally conductive filler)). Allowable Subject Matter Claims 3-4, 7 and 13 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. The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 3, Miyazaki (JP 2014132811 A) and Skamser (US 20080026136 A1) teach the surge suppression device according to claim 1. Miyazaki and Skamser do not teach, wherein the capacitor is arranged on the substrate. Prior art Prymak (US 7164573 B1), Fukuchi (US 20220294210 A1), Bultitude (US 20110043963 A1) and Lien (TW 201541474 A) have been found to be the closest prior art. However, none of the prior art, taken singly or in combination, teach “the capacitor is arranged on the substrate.” Regarding claim 4, Miyazaki (JP 2014132811 A) and Skamser (US 20080026136 A1) teach the surge suppression device according to claim 1, wherein the resistive-conducting layer comprises a plurality of resistive-conducting layers (Miyazaki, e.g. resistors RU, RV, RW) (fig.8) (Skamser, [0040], between two electrode layers, 42) and the capacitor comprises a plurality of capacitors electrically (Miyazaki, i.e. capacitors CU, CV, CW) (fig.8) connected to the plurality of resistive-conducting layers respectively (Miyazaki, page 6, a series circuit of a resistor RU and a capacitor CU). Miyazaki and Skamser do not teach, wherein the plurality of resistive-conducting layers and the plurality of capacitors are arranged on the substrate composed of a single substrate. Prior art Prymak (US 7164573 B1), Fukuchi (US 20220294210 A1), Bultitude (US 20110043963 A1) and Lien (TW 201541474 A) have been found to be the closest prior art. However, none of the prior art, taken singly or in combination, teach “the plurality of resistive-conducting layers and the plurality of capacitors are arranged on the substrate composed of a single substrate.” Claim 7 is indicated as allowable, as it depends on allowable claim 4. Regarding claim 13, Miyazaki (JP 2014132811 A) and Skamser (US 20080026136 A1) teach the surge suppression device according to claim 11. Miyazaki and Skamser do not teach, wherein the substrate has a pair of protrusions protruding on both sides from the bracket, and wherein electrodes of the resistor are provided on the pair of protrusions. Prior art Prymak (US 7164573 B1), Fukuchi (US 20220294210 A1), Bultitude (US 20110043963 A1) and Lien (TW 201541474 A) have been found to be the closest prior art. However, none of the prior art, taken singly or in combination, teach “the substrate has a pair of protrusions protruding on both sides from the bracket, and wherein electrodes of the resistor are provided on the pair of protrusions.” Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SREEYA SREEVATSA whose telephone number is (571)272-8304. The examiner can normally be reached M-F 8am-5pm ET. 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, Thienvu V Tran can be reached at (571) 270-1276. 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. /SREEYA SREEVATSA/Primary Examiner, Art Unit 2838 02/24/2026
Read full office action

Prosecution Timeline

Jan 19, 2024
Application Filed
Sep 02, 2025
Non-Final Rejection — §103
Dec 02, 2025
Response Filed
Feb 24, 2026
Non-Final Rejection — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

2-3
Expected OA Rounds
86%
Grant Probability
88%
With Interview (+2.5%)
2y 9m
Median Time to Grant
Moderate
PTA Risk
Based on 255 resolved cases by this examiner. Grant probability derived from career allow rate.

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