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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
`
`DELIVERY MODE
`
`04/24/2023
`
`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 3/10/23.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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*
`1-10 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) 2-10 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`“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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20230418
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`The amendment filed on 03/10/23 has been fully considered and made of record.
`
`Notice of Pre-AlA or AIA Status
`
`2.
`
`The present application, filed on or after January 11, 2023, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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:
`
`A person shall be entitled to a patent unless —
`
`(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.
`
`4.
`
`Claims 2-4 and 6-9 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
`
`(Fig. 4, 10) configured to be mounted to a mounting body (50), the multilayer electronic
`
`component comprising:
`
`e
`
`an individual component (12) including:
`
`o asintered body (16) including an internal electrode (28) provided therein,
`
`and
`
`o
`
`an external electrode (36) provided on a side surface of the sintered body,
`
`the first external electrode (36a or 36b) being connected to the internal
`
`electrode (28a or 28b);
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 3
`
`e
`
`e
`
`abonding layer (44) provided on the external electrode; and
`
`alead terminal (40a) connected to the external terminal (86a) via the bonding
`
`layer (44), the lead terminal (40a) having a plate shape (42a), wherein:
`
`e
`
`the individual component (12) has a mount surface (18b) facing a mounting body
`
`(50) while the multilayer electronic component (10) is mounted to the mounting
`
`body (50), and
`
`e
`
`the bonding layer (Fig. 4 & 7, 44) extends along the lead terminal (88a) from the
`
`external electrode (36a) toward the mounting body (50) beyond a portion (See
`
`Fig. 7 Below, Gap) of the mount surface (Bottom of 36a) of the individual
`
`component whichis closest to the mounting body while the multilayer electronic
`
`component is mounted to the mounting body.
`
`FIG. 7
`
`19 36a"? 14 180
`38a~ T x
`\, \ |/
`E.7
`40a" |
`E. ~
`
`A2a
`
`Ee
`44ers
`Gap
`
`20a 205 op
`
`o
`
`Regarding claim 3, Haruki et al teach that the bonding layer contains solder (44;
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Para. 0038, line 4).
`
`Page 4
`
`Regarding claim 4, Haruki et al teach that the lead terminal (38) is bent to have
`
`an L-shape (42a or 42b).
`
`Regarding claim 6, Haruki et al teach that the portion of the mount surface
`
`(Bottom of 36a) of the individual componentis located at the external electrode (38).
`
`Regarding claim 7, Haruki et al teach a ceramic multilayer electronic component
`
`(Fig. 4, 10) configured to be mounted to a mounting body (50), the multilayer electronic
`
`component comprising:
`
`e
`
`an individual component (12) including:
`
`o asintered body (16) including an internal electrode (28) provided therein,
`
`and
`
`o
`
`an external electrode (36) provided on a side surface of the sintered body,
`
`the external electrode (36a or 36b) being connected to the internal
`
`e
`
`e
`
`electrode (28a or 28b);
`
`abonding layer (44) provided on the external electrode; and
`
`alead terminal (40a) connected to the external terminal (86a) via the bonding
`
`layer (44), the lead terminal having a plate shape (42a), wherein:
`
`e
`
`the individual component (10) has a mount surface (18b & Bottom of 36a) facing
`
`the mounting body (50) while the multilayer electronic component (10) is
`
`mounted to the mounting body (50), the mount surface including a part of the
`
`external electrode (36), and
`
`e
`
`the bonding layer (Fig. 4 & 7, 44) extends along the lead terminal (38a) from the
`
`external electrode (36a) toward the mounting body (50) beyond anentirety (See
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 5
`
`Fig. 7 Above, Gap) of the mount surface (Bottom Of 36a).
`
`Regarding claim 8, Haruki et al teach that the bonding layer (44) contains
`
`solder.
`
`Regarding claim 9, Haruki et al teach that the lead terminal (38) is bent to have
`
`an L-shape (42a or 42b).
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth 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 of thistitle, if the differences
`between the claimed invention andthe prior art are such that the claimed invention as a whole
`would have been obvious before the effectivefiling 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 whichthe invention was made.
`
`6.
`
`Claims 5 and 10 are rejected under AIA 35 U.S.C. 103 as being unpatentable
`
`over Haruki et al in view of Yoshida et al (JP2000164406).
`
`Regarding claims 5 and 10, Haruki et al teach a ceramic multilayer electronic
`
`component (Fig. 4, 10) configured to be mounted to a mounting body (50), which reads
`
`on applicant’s claimed invention.
`
`However, Haruki et al fail to teach that the individual component (12) further
`
`includes an insulating layer provided on the sintered body.
`
`Yoshida et al teach a chip type electronic part (Fig. 1, 1; Abstract) with an
`
`insulating layer (4a) provided on the sintered body, in order to protect the ceramic
`
`element from the corrosion atmosphere (Abstract, lines 1-4).
`
`It would be obvious to one of ordinary skill in the art at the time of the effective
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 6
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`filing date of the claimed invention to modify the ceramic multilayer electronic
`
`component of Haruki et al by applying the insulating layer (4a) provided on the sintered
`
`body, as taught by Yoshidaetal, in order to protect the ceramic element from the
`
`corrosion atmosphere.
`
`Responseto Arguments
`
`7.
`
`Applicants’ arguments with respect to claim 2 have been considered but are
`
`moot because the new ground of rejection does not rely on any issue in the reference
`
`applied in the prior rejection of record for any teaching or matter specifically challenged
`
`in the argument.
`
`Conclusion
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`8.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicants’ disclosure.
`
`Applicants’ amendment necessitated the new grounds of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
`
`Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
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`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`

`

`Application/Control Number: 17/838,961
`Art Unit: 3729
`
`Page 7
`
`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date ofthis final action.
`
`9.
`
`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 wherethis 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
`
`April 19, 2023
`
`