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 .
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.
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Claims 1 and 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7 of U.S. Patent No. 12,249,448 to Eto et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because the current claimed limitation in claim 1 “the resistance body has an oxide film on a surface” may be formed by the oxidation formation of an oxide film formed on the resistance body (see claims 1-2 of Eto). The oxidation film on the resistance body being formed by heat treatment (such as irradiation by laser; see claim 7 of Eto).
For claims 5-6, the claimed “heat treatment” on the resistance body is met by Eto using irradiation laser to form oxide film on the resistive body (see claim 7 of Eto).
Claims 2-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7 of U.S. Patent No. 12,249,448 to Eto et al. in view of Karasawa.
Regarding claim 2, Eto teaches the claimed invention except for the resistance body containing a metal and the electrode containing metal with a lower specific resistance.
Karasawa teaches the resistive material being comprised of copper, nickel and manganese for the purpose of controlling the TCR of the resistive layer (paragraphs 0037-0039 and 0052) and the electrode being composed of copper for the purpose of providing power to the resistive layer (paragraph 0055).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Karasawa with Eto, since the material selected and taught by Karasawa allows for controlling the TCR for the resistive body of Eto, and the lower specific resistance material, such as copper, taught by Karasawa provides power without increasing and/or affecting the TCR for the resistive body of Eto.
Regarding claims 3 and 4, Eto teaches the claimed invention except for the resistance body containing manganese, and the oxide film of manganese being formed on the surface of the resistance body.
Karasawa teaches a manganese being deposited on the surface of the resistance body by adding manganese to a copper/nickel paste and firing the paste in a nitrogen (N2) furnace with small amount of oxygen (paragraph 0045-0047). This creates a manganese oxide film (the surface oxidation; paragraphs 0045-0047) on the surface of the resistance body, wherein the oxidation layer protects the surface of the resistance body.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to combine the teachings of Karasawa with Eto, since the manganese oxide film taught by Karasawa provides surface protecting for the resistance body of Eto.
Specification
The disclosure is objected to because of the following informalities:
In paragraph 0027, replace “35 ppm” to --35 mass%--, so the paragraph reads in part, “contains 6 mass% or more and 35 mass% or less of manganese…”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Karasawa et al. (JP2004119561; Applicant filed with translation).
The applied reference has a common Assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Karasawa teaches a resistance body for a chip resistor (see at least paragraphs 0048-0060), the resistance body formed by firing (heat treatment) a resistance body paste including copper, nickel and manganese. The manganese is deposited on the surface of the resistance body by adding manganese to a copper/nickel paste and firing the paste in a nitrogen (N2) furnace with small amount of oxygen (paragraph 0045-0047). This creates a manganese oxide film on the surface of the resistance body.
Regarding claim 2, Karasawa teaches the resistive material being comprised of copper, nickel and manganese (paragraph 0052) and copper material electrode (paragraph 0055), the copper electrode having a lower specific resistance.
Regarding claims 3 and 4, Karasawa teaches manganese being deposited on the surface of the resistance body by adding manganese to a copper/nickel paste and firing the paste in a nitrogen (N2) furnace with small amount of oxygen (paragraph 0045-0047). This creates a manganese oxide film on the surface of the resistance body to provide surface protection.
Regrading claims 5 and 6, Karasawa teaches a manufacturing method for a resistance body for a chip resistor (see at least paragraphs 0048-0060), the resistance body formed by firing (heat treatment) a resistance body paste including copper, nickel and manganese. The manganese is deposited on the surface of the resistance body by adding manganese to a copper/nickel paste and firing the paste in a nitrogen (N2) furnace with small amount of oxygen (paragraph 0045-0047). This creates a manganese oxide film on the surface of the resistance body, thus providing surface protection.
Allowable Subject Matter
Claims 7-11 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.
Regarding claims 7 and 10, the prior art does not teach or suggest a method for manufacturing the resistor, wherein the resistance body containing copper and manganese is subjected to the heat treatment in an atmosphere with an oxygen concentration of 30 ppm or lower at 400 °C or more and 800 °C or less, for 10 minutes or more and 300 minutes or less.
Karasawa being the closest art teaches the heat treatment of the resistive paste material in nitrogen at 960 °C for 10 minutes.
Claims 8-9 and 11 depend on claim 7.
Conclusion
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/KYUNG S LEE/Primary Examiner, Art Unit 2833