Noboru Shiokawa

Patent Trials and Appeals Board

Oct 4, 2019

14996561 - (D) (P.T.A.B. Oct. 4, 2019)

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.
14/996,561 01/15/2016 Noboru SHIOKAWA 740630-MM0006 4826
78198 7590 10/04/2019
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
BARNES, MALCOLM
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
10/04/2019 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
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Ex parte NOBORU SHIOKAWA
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Appeal 2018-006245
Application 14/996,561
Technology Center 2800
________________
Before GEORGE C. BEST, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. §134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 4 of Application 14/996,561.
Final Act. (August 3, 2017). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Murata Manufacturing Co., as the real
party in interest. Appeal Br. 2.
Appeal 2018-006245
Application 14/996,561
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BACKGROUND
The ’561 Application describes a coil component. Spec. ¶ 2. Any
conventional coil component which is shunt connected and mounted on a
signal line of the substrate, generates a resonance in a high frequency band
due to the coil portion wound around the winding core portion. Id. ¶ 4. This
results in signal quality deterioration. Id. The apparatus described in the ’561
Application is said to suppress deterioration in the propagation
characteristics of the signal line. Id. ¶ 5.
Claim 1 is representative of the ’561 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A coil component comprising:
a winding core portion;
a first flange portion and a second flange portion disposed on
opposite ends of the winding core portion;
electrodes disposed on the first flange portion and the second
flange portion, respectively;
a first coil portion and a second coil portion connected
electrically in series between the electrode of the first flange
portion and the electrode of the second flange portion and
connected to each other in series; and
a projection portion disposed on an end surface of the first
flange portion on the side opposite to the winding core portion,
wherein
the first coil portion is disposed on the winding core
portion,
the second coil portion is disposed on the projection
portion, and
the first coil portion has an inductance value different
from an inductance value of the second coil portion.
Appeal Br. 9 (emphasis and some indentation supplied).
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Application 14/996,561
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REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Ukawa2 and Hatakenaka.3 Final Act. 3 – 5.
DISCUSSION
Appellant argues for the reversal of the rejection of claims 1, 3, and 4
on the basis of the limitations in claim 1. Accordingly, we select claim 1 as
representative of the claims on appeal. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant presents three arguments for reversal of the rejection of
claim 1: (1) Ukawa does not describe the claimed second coil portion,
Appeal Br. 3 – 5; (2) the combination of Ukawa and Hatakenaka would not
result in a second coil connected electrically in series between electrodes and
disposed on a projection portion, id. at 5 – 6; and (3) the combination of
features of the claims provides a benefit not contemplated by Ukawa and
Hatakenaka, id. at 6 – 7. We address these arguments seriatim.
First, in rejecting claim 1, the Examiner found that Ukawa describes a
coil component comprising a first coil portion and a second coil portion
electrically connected to each other in series. Final Act. 3 (citing Ukawa Fig.
1). The Examiner further found that Ukawa describes a projection portion
disposed on an end surface of the first flange portion on the side opposite to
the winding core portion wherein the second coil portion is disposed on the
projection portion. Id.

2 US 2011/0248810 A1, published October 13, 2011.
3 US 5,787,571, issued August 4, 1998.
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Application 14/996,561
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For ease of reference, we reproduce Ukawa’s Figures 1 and 2 below.

Ukawa’s Figure 1 is a schematic structural view of
a wire-wound coil. Ukawa ¶ 12.

Ukawa’s Figure 2 is a partial sectional view of the
wire-wound coil of Figure 1. Ukawa ¶ 13.
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Application 14/996,561
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The Examiner specifically found that Ukawa describes a coil
component comprising a first coil portion (20) and a second coil portion
(22a, 22b) electrically connected between the electrode adjacent of the first
flange portion (13a) and the electrode adjacent of the second flange portion
(13b) and connected to each other in series and a projection portion (15a,
15b) disposed on the end surface of the first flange portion on the side
opposite to the winding core portion. Final Act. 3. The Examiner further
found that the second core portion (22a, 22b) is disposed on the projection
portion (15a, 15b). Id.
Appellant argues that the Examiner’s finding that one of Ukawa’s
second winding portions 22a or 22b corresponds to the claimed second coil
portion is erroneous. Appeal Br. 3 – 5. In making this argument, Appellant
points to Ukawa’s description of second winding portions 22a and 22b as
soldered to form a solder electrodes 23a and 23b. Id. at 4. Appellant asserts
that
each of the second winding portions 22a and 22b combines
with solder such that they are physically and electrically
connected to form integral single electrodes 23a and 23b,
respectively. Accordingly, Ukawa’s second winding portions
22a and 22b are parts of the electrodes 23a and 23b,
respectively, and thus neither second winding portion 22a nor
second winding portion 22b forms a second coil portion that is
connected electrically in series with a first coil portion between
electrodes as claimed.
Id.
The Examiner responds:
[A]lthough Ukawa teaches solder electrodes (23a, 23b)
formed by soldering the second winding portions (22a, 22b)[,
t]his does not negate the fact that the “second winding portion”
is still taught are disclosed since Ukawa specifically labels and
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Application 14/996,561
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discusses “second winding portions” (22a, 22b) in addition to
the solder electrodes (23a, 23b).
Answer 7.
We agree with Appellant that the Examiner erred in finding that
Ukawa’s second winding portions correspond to the claimed second coil
portion. While the wire forming Ukawa’s second winding portions is in the
form of a coil, the wire is then soldered together in such way that each wrap
of the coil has the same potential and the wire does not function as a coil. A
person of ordinary skill in the art, therefore, would not regard Ukawa’s
second winding portions as describing or suggesting the claimed second coil
portion.
In view of the foregoing, we reverse the rejection of claim 1. We,
therefore, also reverse the rejection of claims 3 and 4.
Second, Appellant argues that the Examiner erred by finding that the
combination of Ukawa and Hatakenaka describes or suggests the claimed
“second coil portion connected electrically in series between electrodes and
disposed on the projection portion on the side opposite to the winding core
portion.” Appeal Br. 5 – 6. Because we have already determined that the
Examiner erred in finding that the combination of Ukawa and Hatakenaka
describes or suggests the claimed second coil portion, we need not address
this argument. We, therefore, do not express any opinion regarding the
question of whether the Examiner reversibly erred in finding that the
combination of Ukawa and Hatakenaka describes or suggests the claim
limitations argued by Appellant.
Third, Appellant argues that the claimed coil component provides
unexpected benefits relative to the prior art. Appeal Br. 6 – 7.
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Application 14/996,561
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The Examiner responds that
[t]he combination of Ukawa in view of Hatakenaka was
correctly cited as including all these features. Thus, the benefits
of these features would not have been unexpected, since a
person of ordinary skill routinely considers parameters
including these benefits such as the number of coils, size aof
projections and core winding portions.
Answer 7 – 8.
The Examiner’s response to Appellant’s argument goes too far. In
essence, the Examiner is asserting that any time there is an adequate prima
facie case of obviousness, the claimed invention cannot provide any
unexpected benefits. This is not the legally correct.
When an applicant argues that the claimed invention provides
unexpected benefits or surprising results, an examiner first must determine
whether these unexpected benefits or surprising results actually exist4 and
are commensurate in scope5 with the claims. If this is so, then the
presumption of unpatentability created by the prima facie case of
obviousness dissolves and all of the evidence must be weighed together to

4 [F]or a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the applicant to us at
least establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the
prior art, and (2) that the difference actually obtained would not
have been expected by one skilled in the art at the time of the
invention.
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted).
5 See, e.g., In re Peterson, 315 F.3d 1325, 1330 – 31 (Fed. Cir. 2003)
(“[T]he applicant’s showing of unexpected results must be commensurate in
scope with the claimed range.”).
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Application 14/996,561
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reach a final conclusion regarding the obviousness of the claim in question.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In the case of the ’561 Application, the Examiner failed to follow this
procedure. This provides a second, independent, reason for reversing the
rejection of claims 1, 3, and 4.
CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 3, 4 103 Ukawa, Hatakenaka 1, 3, 4
REVERSED