www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/838,961
`
`06/13/2022
`
`Ken YANAI
`
`083710-3658
`
`4797
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`PHAN, THIEM D
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`12/29/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/838,961
`Examiner
`THIEM D PHAN
`
`Applicant(s)
`YANAI et al.
`Art Unit
`3729
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 11/14/22.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 1 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 2-4 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s)filed on 6/13/22 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.¥} Certified copies of the priority documents have been received in Application No. 16/622,572.
`3.0.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 6/13/22.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221221
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Election/Restrictions
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`2.
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`Applicants’ election without any traversal of Group II, Claims 2-4, filed on
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`11/14/22, is acknowledged.
`
`The Restriction mailed on 11/08/22 has been carefully reviewed and is held to be
`
`proper. Accordingly, Claim 1
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`is withdrawn from further consideration pursuantto 37
`
`CFR 1.142(b) as being drawn to nonelected Group.
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`The Restriction filed on 11/08/22 is hereby made Final.
`
`Applicants are required to cancel the nonelected claim (1) or take other
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`appropriate action. An Office Action on the merits of Claims 2-4 now follows.
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`Title
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`3.
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`The title of the invention is not descriptive. A newtitle is required thatis clearly
`
`indicative of the invention to which the claims are directed.
`
`The following title is suggested: “Multilayer electronic component’.
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`Claim Rejections - 35 USC § 102
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`4.
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`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 madein this Office action:
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`A person shall be entitled to a patent unless —
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 3
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwiseavailable to the public before the effectivefiling date of the claimed
`invention.
`
`5.
`
`Claims 2-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haruki
`
`et al (US 2012/0236462).
`
`Regarding claim 2, Haruki et al teach a ceramic multilayer electronic component
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`(Fig. 4, 10) configured to be mounted to a mounting body (50), the multilayer electronic
`
`component comprising:
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`an individual component (12) including:
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`o asintered body (16) including an internal electrode (28) provided therein,
`
`and
`
`o
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`an external electrode (36) provided on a side surface of the sintered body,
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`the first external electrode (36a or 36b) being connected to the internal
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`electrode (28a or 28b), the first external electrode containing silver and not
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`containing glassfrit, such as Ag (36a or 36b; Para. 0036, line 3);
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`a bonding layer (44) provided on the external electrode; and
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`a lead terminal (40a) connectedto the external terminal (86a) via the bonding
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`layer (44), the lead terminal (40a) having a plate shape (42a), wherein:
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`the individual component (12) has a mount surface (18b) facing a mounting body
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`(50) while the multilayer electronic component (10) is mounted to the mounting
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`body (50), and
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`while the multilayer electronic component is mounted to the mounting body, the
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`bonding layer (44) expands beyond the mount surface (Bottom 44) along the
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`lead terminal (88b) from the external electrode (36b).
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`

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`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 4
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`Regarding claim 3, Haruki et al teach that the bonding layer contains solder (44;
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`Para. 0038, line 4).
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`Regarding claim 4, Haruki et al teach that the lead terminal (38) is bent to have
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`an L-shape (42a or 42b).
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`Conclusion
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`6.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicants’ disclosure.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to THIEM D PHAN whosetelephone number is (571)272-
`
`4568. The examiner can normally be reached on Mo-Fr: 8AM-4PM. If attempts to reach
`
`the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vo can
`
`be reached on 571-272-4690. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300. Information regarding the status
`
`of an application may be obtained from the Patent Application Information Retrieval
`
`(PAIR) system. Status information for published applications may be obtained from
`
`either Private PAIR or Public PAIR. Status information for unpublished applications is
`
`available through Private PAIR only. For more information about the PAIR system, see
`
`http://pair-direct.uspto.gov. Should you have questions on accessto the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`/THIEM D PHAN/
`Primary Examiner, Art Unit 3729
`
`December 22, 2022
`
`