NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/873,389, which is a broadening reissue application of U.S. Application No. 15/284,869 (hereinafter the “869 Application"), entitled LAMINATION INDUCTOR, which issued as U.S. Patent No. 10,269,482 (hereinafter the “482 Patent").
The status of the claims is as follows:
Claims 2, 3 and 5-23 are pending and examined herein.
Claims 2, 3 and 5-23 are rejected.
I. STATUS OF CLAIMS
Applicant filed a preliminary amendment on December 9, 2024 (hereinafter the “2024 Preliminary Amendment”) along with the filing of the present application. In the 2024 Preliminary Amendment, patent claims 1 and 4 were cancelled, patent claims 2 and 5 were amended, patent claim 3 was unchanged and new claims 6-23 were added. Furthermore, the specification was amended to change the cross-noting information.
Therefore, claims 2, 3 and 5-23 are pending and will be examined in this reissue application.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue application of the 869 Application, now the 482 Patent. Examiners further acknowledge the Applicant’s claim that the present reissue application is a continuation reissue application of U.S. Patent Application No. 17/233,321, filed April 16, 2021, now U.S. Patent No. RE50342 (hereinafter the “RE50342 Patent”), which is also a reissue application for the 482 Patent. Examiners further acknowledge the claim of priority to Japanese Application No. JP2015-199150, filed October 7, 2015 and Japanese Application No. JP2016-108037, filed May 31, 2016.
Finally, Examiners recognize the other reissue applications of the 869 Application, now the 482 Patent, i.e., U.S. Application No. 17/236245, now U.S. Patent No. RE50297 (hereinafter the “RE50297 Patent”), and U.S. Application No. 17/237,613, now U.S. Patent No. RE50351 (hereinafter the “RE50351 Patent”).
III. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. §1.173 Reissue specification, drawings, and amendments (in part)
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:…
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims provided in the 2024 Preliminary Amendment are objected to because they use improper bracketing in a continuation reissue. For example, the amendment to claim 5 uses double bracketing. Double underlining and double bracketing are reserved for reissue application of a reissue patent. See MPEP §1411 and §1453(IV)(A). Since the present reissue application is a continuation reissue and not a reissue of a reissue patent, such double bracketing is improper. Appropriate correction is required to simply represent the proposed amendment of claim 5 with single bracketing.
Examiners further object to the 2024 Preliminary Amendment because while Applicant has provided a citation of support, Applicant has not provided an explanation of support for the claim changes. Specifically, Applicant is required to provide an explanation of support that allows for the broadening of claims 7-23. Such an explanation goes to the merits of the original patent requirement of 35 U.S.C. §251. Appropriate correction is required in response to this Office action.
IV. OBJECTION TO THE SPECIFICATION AMENDMENTS
The amendments to the specification provided in the 2024 Preliminary Amendment are objected to because they improperly identify the related reissue application. For example, the new cross noting information states “The reissue applications are application no. 17/233,321; and application no. 17/236,245, and application no. 17/237,613, and the present application, which are each a continuation reissue of Patent No. 10,269,482.” This is incorrect. Rather proper cross-noting information should state that U.S. Application No. 17/236,245, U.S. Application No. 17/237,613, and the present application are each a continuation reissue of U.S. Application No. 17/233,321, and all four applications are reissue applications of the 482 Patent. Appropriate correction is required.
V. REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
V.A. Rejections Based on Improper Error Corrected
Claims 1-5, eve, though claims 1 and 4 are cancelled, and this application as a whole are rejected under 35 U.S.C. §251 because these claims are not correcting any error in the original patent, i.e., the 482 Patent. Claims 1-5 of the 482 Patent were superseded by the issuance of the RE50342 Patent and thus no longer exist in the 482 Patent. Therefore, Examiners find that it is improper for Applicant to use these claim numbers in any continuation reissue application or divisional reissue application or other any other reissue application. See MPEP §1451. Any claim listing in the present reissue application should state that patent claims 1-5 are cancelled and any new claims added thereafter. If Applicant intends on pursuing the subject matter of pending claims 2, 3 and 5-23 further in this reissue application, Examiners suggest and require Applicant to simply add them following the last patent claim, i.e., as “New” claims 6+. See 37 C.F.R. §1.177(b) (“The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim”).
V.B. Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP §1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.1
Claims 7-23 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent.
First for example, Examiners find that each of patent claims 1-5 of the 482 Patent and claims 7-23 are directed to lamination inductors. Upon comparison with the patent claims, Examiners find claims 7-23 in this reissue application have been broadened by removing the requirement that “the lower side portion has a length shorter than the gap and is positioned within a range of the gap.” Thus, the new invention now being claimed in claims 7-23 is directed to a lamination inductor that does not require such a relationship between the lower side portion and the gap. Such is confirmed by Applicant in the Reissue Declaration filed December 9, 2024 (hereinafter the “2024 Reissue Declaration”) wherein Applicant states “[i]n addition, the original claims were unnecessarily limited by the feature of ‘the lower side portion has a length shorter than the gap and is positioned within a range of the gap’ and new claims 7-23 do not include this phrase and are broader.” Examiners agree and find the claims cover a new class of lamination inductors wherein the lower side portion is either greater or equal to the gap.
However, Examiners do not find an unequivocal disclosure in the 482 Patent for this new invention, i.e., a lamination inductor that does not require the lower side portion to be shorter than the gap. First for example, such a requirement was patented in all the claims of the 482 Patent. Second, both the Abstract and the Summary of the Invention explicitly state “[t]he lower side portion has a length shorter than a gap between outer terminal electrodes, and is positioned within a range of the gap.” Furthermore Examiners find only one general embodiment of invention in the 482 Patent and every drawing specifically illustrates the lower side portion is shorter than the gap. See 482 Patent FIGS. 2 and 3. Finally, the 482 Patent at col. 3, lines 5-13 states an intention of providing the arrangement conductor loops with respect to the electrodes are used such that they “suppress the stray capacitance generated between the outer terminal electrodes and the loop conductor layer to be small.” Thus, Examiners are unable to find any unequivocal support for a disclosure of a lamination inductor wherein the lower side portion is greater than or equal to the gap between the electrodes.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 7-23 in this reissue application with respect to the patent claims as patented in the 482 Patent, Examiners find the new scope of claims 7-23 covers a new invention that is not unequivocally disclosed on the face the 482 Patent as a separate invention. Specifically, Examiners do not find an unequivocal disclosure or a discussion of the new invention of providing a lamination inductor wherein the lower side portion is greater than or equal to the gap between the electrodes. Rather Examiners find that the removed portions of the lamination inductor are important and required features of the invention to allow reduction of stray capacitance according to the disclosure of the 482 Patent. Thus, Examiners conclude claims 7-23 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
This situation is also somewhat analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled):
PNG
media_image2.png
267
600
media_image2.png
Greyscale
Forum US, 926 F.3d at 1348-49.
In reissue, patentee broadened the claims to remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id.
In the present reissue, Examiners similarly find original claims of the 482 Patent and the disclosure of the 482 Patent as a whole are focused on lamination inductor having the lower side portion shorter than the gap between the electrodes as recited in patent claims 1-5 of the 482 Patent. Examiners do not find an unequivocal disclosure as a separate invention a lamination inductor having the lower side portion greater or equal in length to the gap between electrodes. Accordingly, Examiners conclude that claims 7-23 in this reissue application do not have unequivocal support in the 482 Patent and thus are not proper claims in reissue under the original patent requirement following the same reasoning as held in Forum US.
VI. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The 2024 Reissue Declaration filed along with this reissue application is acknowledged. Examiners acknowledge the error statement as follows:
PNG
media_image3.png
174
678
media_image3.png
Greyscale
Examiners find the first error identified in issued claims 1-5 and corrected by “the combination of features related to the lengths of A1 and A2 and B1 and B2” as is now recited claim 2 is a proper basis for this reissue.
Examiners do, however, find that the second error asserted in the 2024 Reissue Declaration is an improper error. Applicant states new claims 7-23 are broadened to not include the feature wherein the “lower side portion has a length shorter than the gap and is positioned with the range of the gap.” However, as provided above, Examiners find the presentation of claims 7-23 is improper under the original patent requirement. Thus, this second error is not a valid basis on which to base this reissue.
Nevertheless, as noted above, Applicant has identified at least one proper error on which to base this reissue, i.e., the first error, and thus the 2024 Reissue Declaration is accepted even though it also states an improper error.
VII. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
VIII. CLAIM REJECTION - 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.
VIII.A. Obviousness Rejections Applying Suzuki and Seko
Claim 7 is rejected under 35 U.S.C. §103 as being unpatentable over Japanese Patent Publication No. JP2002305111 to Yasuo Suzuki et al. (hereinafter “Suzuki”) in view of U.S. Patent Application Publication No. 2013/0187744 to Atsushi Seko et al. (hereinafter “Seko”).
Regarding claim 7, Suzuki teaches a lamination inductor (See Suzuki title and see FIGS. 3, 7 and 8, reprinted below), comprising:
PNG
media_image4.png
280
200
media_image4.png
Greyscale
PNG
media_image5.png
183
184
media_image5.png
Greyscale
PNG
media_image6.png
205
175
media_image6.png
Greyscale
Suzuki FIG. 3 FIG. 7 FIG. 8
a component main-body that is formed in a substantially rectangular parallelepiped shape including an upper surface and a lower surface opposing each other, first and second side surfaces opposing each other and connecting the upper surface and the lower surface, and first and second end surfaces opposing each other and also connecting the upper surface and the lower surface, and that has a lamination structure in which a plurality of insulator layers are laminated in a direction perpendicular to the side surfaces;
See Suzuki FIGS. 3, 7 and 8 above, note lamination layers forming the component main body 2, wherein the lamination layers are laminated in a direction perpendicular to the side layers, i.e., the front and back layers shown in the figures.
a coil conductor disposed inside the component main-body is constituted of a plurality of loop conductor layers each extending so as to form part of a circular path along an interface between the insulator layers and a plurality of via hole conductors passing through the insulator layers in a thickness direction of the insulator layers, and has a shape that is helically extended by alternately connecting the loop conductor layers and the via hole conductors;
See Suzuki FIGS. 3, 7 and 8, note lamination layers of printed circuits forming a helically extended coil conductor 3 inside the component main body 2.
a first outer terminal electrode and a second outer terminal electrode that are electrically connected to one end and the other end of the coil conductor, respectively; and
See Suzuki FIGS. 3, 7 and 8 above, note first and second outer terminal electrodes 4 shown. Further see FIG. 7 and ¶0026 wherein the terminal electrodes 4 are extended up to a height of the lead conductors at bands 8 to provide the added property of preventing the Manhattan phenomenon. Thus, the terminal electrodes form a L-shape.
a first extended conductor layer and a second extended conductor layer that are formed along an interface between the insulator layers, and connect the one end and the other end of the coil conductor with the first outer terminal electrode and second outer terminal electrode, respectively,
See Suzuki FIGS. 7 and 8, wherein end portions of the coil conductor 3 extend from the helical portion of the coil conductor 3 to the lead conductors 5.
wherein the first outer terminal electrode is so provided as to form a first exposed surface that extends in a substantially L-shaped form along a portion of the first end surface to a portion of the lower surface [in a state where at least part of the first outer terminal electrode is embedded in the component main-body];
See Suzuki FIGS. 3, 7 and 8 above, note first and second outer terminal electrodes 4 shown. Further see FIG. 7 and ¶0026 wherein the terminal electrodes 4 are extended up to a height of the lead conductors at bands 8 to provide the added property of preventing the Manhattan phenomenon. Thus, the terminal electrodes 4/8 form a L-shape which extends along a portion of the first end surface to a portion of the lower surface. Examiners note that the bracketed portion is not taught by Suzuki as discussed below.
[wherein a width of the first outer terminal electrode is wider than a width of the coil conductor],
Examiners note that the bracketed portion is not taught by Suzuki as discussed below.
wherein the second outer terminal electrode is so provided as to form a second exposed surface that extends in a substantially L-shaped form along a portion of the second end surface to a portion of the lower surface while leaving a gap from the first outer terminal electrode on the lower surface [in a state where at least part of the second outer terminal electrode is embedded in the component main-body];
See Suzuki FIGS. 3, 7 and 8 above, note first and second outer terminal electrodes 4 shown. Further see FIG. 7 and ¶0026 wherein the terminal electrodes 4 are extended up to a height of the lead conductors at bands 8 to provide the added property of preventing the Manhattan phenomenon. Thus, the terminal electrodes 4/8 form a L-shape which extends along a portion of the first end surface to a portion of the lower surface. Examiners note that the bracketed portion is not taught by Suzuki as discussed below.
wherein the plurality of the loop conductor layers collectively includes a lower side portion extending along the lower surface; a first lateral side portion and a second lateral side portion extending along the first end surface and the second end surface, respectively; a first oblique side portion connecting a first end portion of the lower side portion to a first end portion of the first lateral side portion, the first oblique side portion oriented in a first oblique direction relative to the lower surface; and a second oblique side portion connecting a second end portion of the lower side portion to a first end portion of the second lateral side portion, the second oblique side portion oriented in a second oblique direction relative to the lower surface, and
See Suzuki FIGS. 7 and 8 above and ¶0027 wherein rather than use the rectangular coil conductor 3 as shown in FIG. 7, a hexagonal shape may be used as shown in FIG. 8 to prevent stray capacitance between the coil conductor 3 and the terminal electrodes 4/8. Thus, FIG. 8 illustrates a coil conductor having multiple layers and having an upper side portion, a lower side portion, first and second lateral portions the first and second oblique portions near the terminal electrodes 4/8.
wherein inner edges of the first and second lateral side portions do not overlap with the first and second outer terminal electrodes in a direction along the first and second end surfaces when viewed in a direction perpendicular to the first and second end surfaces and parallel to the first and second side surfaces.
See Suzuki FIGS. 7 and 8 above wherein the inner edges of the lateral side portions of the coil conductor 3 do not overlap the upper portion of the lead conductor 5 as shown in FIG. 8 and in view of FIG. 7 wherein the terminal electrodes 4/8 extend only as high as the upper portion of the lead conductor 5.
However, while Suzuki teaches the terminal electrodes located on the outside of the component main body and are L-shaped, Suzuki does not explicitly disclose them at least partially embedded in the component main body and the relative widths thereof. Nevertheless, Seko teaches a similar lamination inductor comprising a component body made of layers of printed circuits to form a helical coil (See Seko FIGS. 1 and 2, reprinted below) wherein
PNG
media_image7.png
418
324
media_image7.png
Greyscale
PNG
media_image8.png
706
420
media_image8.png
Greyscale
Seko FIG. 1 Seko FIG. 2
a first outer terminal electrode and a second outer terminal electrode that are electrically connected to one end and the other end of the coil conductor, respectively; and wherein the first and second outer terminal electrode is so provided as to form a first exposed surface that extends along a portion of the first end surface to a portion of the lower surface in a state where at least part of the first outer terminal electrode is embedded in the component main-body.
See Seko FIGS. 1 and 2 above, outer terminal electrodes for the stack are formed by stacking/embedded electrodes 25a-f and 35a-35f electrically to form outer electrodes 14a and 14b, which are connected to the helical coil 18a-18f at 25a and 35f.
Furthermore, Seko discloses:
wherein a width of the first outer terminal electrode is wider than a width of the coil conductor.
See Seko FIG. 2 above, note width of stacked electrodes 25a-25f and 35a-35f are wider that width of coil conductor 18a-18f.
It would have been obvious at the time the invention was filed to provide the terminal electrodes 4/8 of Suzuki as discussed above at least partially embedded within the component body 2 of Suzuki in the manner as taught by Seko. One having ordinary skill in the art would do so to provide terminal electrodes that are stably connected and provides a larger surface area for soldering the inductor to a circuit.
Furthermore, Examiners conclude that the proposed modification of Suzuki is merely the use of a known technique to improve similar devices. See MPEP 2143(I)(C). Examiners first find that as discussed above, Suzuki teaches a base device, i.e., a lamination inductor, reading on the more salient features of the claimed invention. Examiners further find that Seko teaches a comparable device, also a lamination inductor, with an improvement therein reading on the claimed manner to which the terminal electrodes are embedded with the component body. Examiners further find that one having ordinary skill in the art could have embedded the terminal electrodes as taught by Seko in the component body of Suzuki in the same way such is well within the ordinary skill in the art as shown and described in detail in Seko. Furthermore, Examiners find the results would be predictable because the embedding as taught by Seko improves the connection and solderability of the terminal electrodes. Furthermore, Examiners find such a combination would not change the operation of Suzuki, but merely provides a manner to form the outer electrodes and thus such a combination would be predictable. Accordingly, based on these factors, Examiners conclude the embedding of the terminal electrodes as taught by Seko would be obvious in the lamination inductor of Suzuki.
IX. DOUBLE PATENTING REJECTIONS
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 C.F.R. §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 C.F.R. §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 C.F.R. §1.111(a). For a reply to final Office action, see 37 C.F.R. §1.113(c). A request for reconsideration while not provided for in 37 C.F.R. §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.
IX.A. Double Patenting Rejection Over the RE50342 Patent
Claims 7-11 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-5 of the RE50342 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 of the RE50342 Patent read directly on one or more of claims 7-11 in this reissue application. For example, claims 1-3 of the RE50342 Patent read on claims 7-9 in this reissue application, both claims 1 and 4 of the RE50342 Patent reads on claim 10 in this reissue application, and claim 5 of the RE50342 Patent reads on claim 11 in this reissue application, except for minor re-wording of the language.
IX.B. Double Patenting Rejection Over the RE50297 Patent
Claims 7-23 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 6-22 of the RE50297 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 6-22 of the RE50342 Patent Application reads directly on claims 7-23 in this reissue application, respectively, except for minor re-wording of the language.
IX.C. Double Patenting Rejection Over the RE50351 Patent
Claims 8, 10 and 11 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 21, 22 and 27-30 of the RE50351 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21, 22 and 27-30 of the RE50351 Patent read directly on one or more of claims 8, 10 and 11 in this reissue application. For example, both claims 29 and 30 of the RE50351 Patent each read on claim 8 in this reissue application, each of claims 21, 27 and 28 of the RE50351 Patent reads on claim 10 in this reissue application, and claim 22 of the RE50351 Patent reads on claim 11 in this reissue application, except for minor re-wording of the language.
X. SUBJECT MATTER ALLOWABLE OVER THE PRIOR ART
While claims 2, 3 and 5, 6 and 8-23 are rejected in this action, Examiners find these claims are nevertheless allowable over the prior art of record in this reissue application.
Regarding claims 2, 3, 5 and 6, Examiners find that the combination of Suzuki and Seko teach the more salient features of these claims and further would inherently have the dimensions A1 and A2 and B1 and B2 as recited in these claims based on such similar structures. For example, see Suzuki in FIG. 8 above wherein the lengths A1 and A2 and B1 and B2 can be drawn in this figure in the same manner as claimed. Furthermore, see ¶0027 of Suzuki which teaches providing the oblique sections of the coil inductor 3 apart from the terminal electrodes 4 to avoid stray capacitance there between. This separation can be represented by the claimed lengths A1 and A2 and B1 and B2. Thus, Suzuki generically teaches these lengths and the reasons for providing such lengths. However, while Suzuki provides such spacing to avoid stray capacitance, Suzuki does not explicitly state or teach the optimum length dimension of “equal to or larger than 80 µm” for A1 and A2 and further Suzuki does not explicitly state or teach the optimum precise length dimension of “no less than 10 µm and not more than 50 µm” for B1 and B2.
Regarding claims 8 and 9, Examiners find that the combination of Suzuki and Seko teach the more salient features of these claims and further would inherently have the dimensions A1 and A2 as recited in these claims based on such similar structures. For example, see Suzuki in FIG. 8 above wherein the lengths A1 and A2 can be drawn in this figure in the same manner as claimed. Furthermore, see ¶0027 of Suzuki which teaches providing the oblique sections of the coil inductor 3 apart from the terminal electrodes 4 to avoid stray capacitance there between. This separation can be represented by the claimed lengths A1 and A2. Thus, Suzuki generically teaches these lengths and the reasons for providing such lengths. However, while Suzuki provides such spacing to avoid stray capacitance, Suzuki does not explicitly state or teach the optimum length dimension of “equal to or larger than 80 µm” of these otherwise taught lengths.
Regarding claims 10-23, Examiners find that the combination of Suzuki and Park teach the more salient features of these claims and further would inherently have the dimensions B1 and B2 as recited in these claims based on such similar structures. For example, see Suzuki in FIG. 8 above wherein the lengths B1 and B2 can be drawn in this figure in the same manner as claimed. Furthermore, see ¶0027 of Suzuki which teaches providing the oblique sections of the coil inductor 3 apart from the terminal electrodes 4 to avoid stray capacitance there between. This separation can be represented by the claimed lengths B1 and B2. Thus, Suzuki generically teaches these lengths and the reasons for providing such lengths. However, while Suzuki provides such spacing to avoid stray capacitance, Suzuki does not explicitly state or teach the optimum precise length dimension of “no less than 10 µm and not more than 50 µm” of these otherwise taught lengths.
XI. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 482 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XIII. CONCLUSION
Claims 2, 3 and 5-23 are pending.
Claims 2, 3 and 5-23 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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.
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346 (Fed. Cir. 2019).