Ex Parte SEKO et al

Patent Trial and Appeal Board

Sep 1, 2017

13743221 (P.T.A.B. Sep. 1, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/743,221 01/16/2013 Atsushi SEKO 003400-MM0012 1041
78198 7590 09/06/2017
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive LIAN, MANG TIN BIK
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
09/06/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time 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):
info@ sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUSHI SEKO and KATSUHIRO MISAKI1
Appeal 2015-006868
Application 13/743,221
Technology Center 2800
Before CHUNG K. PAK, WESLEY B. DERRICK, and JEFFREY R.
SNAY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 rejecting claims 1-6 and 19. Claims 20-31, the other
claims pending in the above-identified application, were indicated to be
allowable by the Examiner.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Murata Manufacturing Co.,
Ltd.” Appeal Brief filed December 15, 2014 (“App. Br.”) 2.
2 Final Action entered April 3, 2014 (“Final Act.”) 2-5; and the Examiner’s
Answer entered May 14, 2015 (“Ans.”) 2-9.
3 Final Act. 6.
Appeal 2015-006868
Application 13/743,221
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to “electronic
components, and more particularly, to an electronic component that includes
a multilayer body having a coil built in the multilayer body.” Spec.412.
Figure 2, which illustrates an electronic component that includes a
multilayer body having a coil, is reproduced below:
Figure 2 shows electronic component 10 comprising multilayer body 12
formed of a plurality of insulator layers 16a to 161 (collectively referred to as
4 Our reference to Appellants’ Specification is to the Specification filed
January 16, 2013, as supplemented with substitute drawings filed February
15,2013 (“Spec.”).
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Application 13/743,221
insulator layers 16) stacked on top of one another from the negative side to
the positive side of the y-axis direction and coil L comprising coil conductor
layers 18a to 18f (collectively referred to as coil conductors 18) and via hole
conductors vl to v6, with coil conductor layers 18a to 18f provided on
insulator layers 16a to 161 and superposed with one another to form a ring-
shape path R. Spec. H 17-20. “Each of the coil conductor layers 18a to
18f has a shape of the path R which is partially cut-away.” Spec. 120.
“Each of the via hole conductors vl to v6 extends through one of the
insulator layers 16e to 161 in the y-axis direction” and connects a
downstream end of a coil conductor layer with an upstream end of a
subsequent conductor layer. Spec. 21-22. L-shape external conductive
layers 25a to 25f (external conductive layers 25) and 35a to 35f (external
conductive layers 35) extend through “insulator layers 16d to 161 in the y-
axis direction and are stacked on top of one another so as to be electrically
connected to one another.” Spec. Tflf 25 and 27. “[P]ath R is formed of
straight lines LI to L8 and has a substantially rectangular shape” and
“includes comers Cl, C2, C4, C5, C7, and C8 that project outward of the
path R and comers C3 and C6 that project inward of the path R.” Spec.
30-31. “The path R having the above configuration avoids the external
conductive layers 25 and 35 at the comers C3 and C6.” Spec. 132.
Details of the appealed subject matter are recited in representative
claim l,5 6which is reproduced below from the Claims Appendix of the
5 Appellants only argue claim 1, the broadest claim on appeal. App. Br. 3-6.
Thus, we limit our discussion to claim 1 pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv) (2013). The remaining claims on appeal, namely claims 2-
6 and 19, stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/743,221
Appeal Brief (with bracketed reference characters of Figure 2 and disputed
limitations italicized):
1. An electronic component [10] comprising:
a multilayer body [12]; and
a coil that is a helical coil provided in the multilayer body
[12], the coil including a plurality of coil conductor layers [18a-
18f] that are superposed with one another so as to form a ring-
shaped path [R] when seen in plan[e] view from a stacking
direction and a plurality of via hole conductors [vl-v6] that
connect the plurality of coil conductor layers [18a-18f] together,
wherein the ring-shaped path [R] includes a plurality of
first comers [Cl, C2, C4, C5, C7, and C8] that project outward
of the ring-shaped path [R] and a second comer [C3 or C6] that
projects inward of the ring-shaped path [R], and
wherein all of the via hole conductors [vl-v6] are
provided at the respective first comers [C3 and C6].
App. Br. 7, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the
Examiner’s rejection of claims 1-6 and 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Maeda (US 2007/0296538 A1
published December 27, 2007) and Taoka (US 2009/0153282 A1 published
June 18, 2009).6 Final Act. 2-10; Ans. 2-9; App. Br. 2; Reply Brief filed
July 14, 2015 (“Reply Br.”) 2-3.
6 The Examiner inadvertently omits claim 19 from his or her statement of the
rejection. Final Act. 2 and Ans. 2. However, as is apparent from page 5 of
the Final rejection and pages 5 and 6 of the Answer, the Examiner’s § 103(a)
rejection includes claim 19. Appellants also recognize that Examiner’s
§ 103(a) rejection includes claim 19. App. Br. 2.
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Application 13/743,221
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions,7 we find no reversible
error in the Examiner’s rejection of claims 1-6 and 9 under 35 U.S.C.
§ 103(a).8 Accordingly, we sustain the Examiner’s § 103(a) rejection of the
above claims substantially for the reasons set forth in the Final Action and
the Answer. We add the following primarily for emphasis and
completeness.
Appellants do not dispute the Examiner’s finding that Maeda
discloses electronic component 1 comprising multilayer body 12 and a coil
that is a helical coil provided in multilayer body 12, with the coil comprising
a plurality of coil conductor layers 13a-13e that are superposed with one
another to form a ring-shaped path when seen in plain view from a stacking
direction and with a plurality of via hole conductors 15 connecting the
plurality of coil conductor layers 13a-13e together. Compare Final Act. 2,
7 Any new arguments raised in the Reply Brief, which could have been
raised in the Appeal Brief, will not be considered. 37 C.F.R.
§ 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(explaining that under the previous rules, which are similar to the current
rules, “the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not”).
8 To prevail in appeal to this Board, Appellants must adequately explain or
identify reversible error in the Examiner’s § 103(a) rejection. See 37 C.F.R.
§ 41.37(c)(l)(iv)(2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed.
Cir. 2011).
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Application 13/743,221
with App. Br. 3-6 and Reply Br. 1-3. Nor do Appellants dispute the
Examiner’s finding that Maeda discloses the ring shaped path that includes a
plurality of first comers (comers of turns of coil 13) that project outward of
the ring-shaped path. Compare Final Act. 2, with App. Br. 3-6 and Reply
Br. 1-3.
Rather, Appellants contend that one of ordinary skill in the art would
not have been led to provide an inwardly projecting comer, as taught by
Taoka, as part of the ring-shaped path of the electronic component of
Maeda, as required by claim 1. App. Br. 3-5. In support of this contention,
Appellants assert that Taoka does not discloses a second comer that projects
inward as a part of a ring-shaped path formed by superposing a plurality of
coil conductor layers as required by claim l.9 App. Br. 4. However, we are
not persuaded by this contention.
As indicated supra, Maeda discloses a plurality of coil conductor
layers 13a-13e that are superposed with one another to form a ring-shaped
path that includes a plurality of first comers that project outward of the ring-
shaped path. Although Maeda does not illustrate a ring-shaped path that also
includes a second comer that projects inward of the ring-shaped path, as
required by claim 1, the Examiner finds that Taoka illustrates an electronic
component comprising coil wirings having an inwardly projecting second
comer which may be located at a ring-shaped path or a non-ring-shaped
(circular) path of the coil wirings. Final Act. 3; Ans. 6-7. Figure IB of
Taoka, which illustrates an electronic component comprising coil wirings
9 In so asserting, Appellants ignore that “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398,421 (2007).
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Application 13/743,221
having first comers projecting outward and a second comer projecting
inward, is reproduced below:
201B
Taoka’s Figure IB depicts an electronic component comprising external
electrodes 102a, 102b having a plurality of wedge-shaped projections 108,
and a spiral-shaped or circular-shaped coil having inner coil wirings 100
formed inside of protection section 104 made of resin, with external
electrode 102b directly connected with inner coil wirings 100 having first
comers that project outward (comers of turns of coil wirings 100) from a
circular path of coil wirings 100 and a second comer that projects inward
(designated as “11” by the Examiner in Figure IB) from the circular-shaped
path of coil wirings 100 on minor side surface 201B. Taoka 103-108.
“Although the connection between external electrode 102b and inner coil
wirings 100 [having first comers that project outward and a second comer
that projects inward] is formed in the lowest layer of coil wirings 100 . . . , it
is not necessary that where to form the connection be particularly restricted
to the lowest layer.” Id. Figure 1 of Taoka, for example, shows coil wirings
100 having an inwardly projecting comer to provide space for surrounding
components, such as external electrode 102b having wedge-shape
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Application 13/743,221
projections 108. Our observation of Figure IB of Taoka also indicates that
coil wiring 100 occupies less space in the area where an inwardly projecting
comer is located. Nowhere does Taoka indicate that providing comers that
project inward from the circular path of coil wirings 100 adversely affects
the performance of the electronic component or coil wirings 100. See, e.g.,
Taoka, Figs 1A and IB and 100-118. Nor is any persuasive argument or
evidence proffered that including inward projecting comers would adversely
affect performance. See generally Appeal Br.; Reply Br. As the Examiner
finds, Taoka teaches “the need for reducing weight, thickness and size” in
designing electronic components. Taoka 1 6; Final Act. 3.
Under these circumstances, we concur with the Examiner that one of
ordinary skill in the art would have been led to provide comers that project
inwardly from the appropriate location(s) of the ring-shaped path of the coil
of Maeda’s electronic component, with a reasonable expectation of
successfully p patterning or reducing the size of the coil to accommodate an
electronic component having a desired size and shape, including creating
increased space for other components in a desired (smaller-dimensioned)
electronic component and/or providing sufficient separation space between
the coil and the other components in a desired (smaller-dimensioned)
electronic component. See, e.g., Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009) (explaining that the obviousness
analysis “may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion”); KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
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Application 13/743,221
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Appellants contend that Taoka teaches away from the claimed subject
matter. App. Br. 5-6. In support of this contention, Appellants refer to
Taoka’s Figures 2A and 2C which illustrate “coil conductor 100 having the
second comer [that projects inwardly]. . . connected to the next coil
conductor 100 by a via conductor 106b at a straight portion of the coil
conductor 100[.]” App. Br. 5. However, the fact that Taoka discloses an
alternative technique for connecting coil conductor layers or wirings does
not teach away from employing Maeda’s technique for connecting coil
conductor layers to form a coil having a ring-shaped path with the inwardly
projecting comer illustrated in Taoka. See, e.g., DyStar Textilfarben Gmbh
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006) (“We will not read into a reference a teaching away from a process
where no such language exists.”); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away ... if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” (quoting In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004)). On this record, Appellants do not identity any
evidence which discourages one of ordinary skill in the art from providing
an inwardly projecting comer along a ring-shaped path of the coil taught by
Maeda.
Accordingly, we find no reversible error in the Examiner’s
determination that the preponderance of the evidence weighs heavily in
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favor of the obviousness of the subject matter recited in claims 1-6 and 19
within the meaning of 35 U.S.C. § 103(a).
DECISION
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-6 and
19 under 35 U.S.C. § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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