Ex Parte Yan et al

Patent Trial and Appeal Board

Jul 28, 2017

12765115 (P.T.A.B. Jul. 28, 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.
12/765,115 04/22/2010 Yipeng Yan CET-028285 CIP1 8748
81735 7590 08/01/2017
Armstrong Teasdale LLP (16463)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
LIAN, MANG TIN BIK
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
USpatents @ armstrongteasdale. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIPENG YAN and ROBERT JAMES BOGERT
Appeal 2016-004272
Application 12/765,115
Technology Center 2800
Before CHUNG K. PAK, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—4, 9—12, 17, 18, 24, and 30-36, which
constitute all the claims pending in this application. Claims 5, 8, 14, 25, and
29 have been cancelled. Claims 6, 7, 13, 15, 16, 19—23, and 26—28 have
been withdrawn.
1 In this decision, we refer to the Specification filed April 22, 2010, the Final
Office Action mailed January 28, 2015 (“Final Act.”), the Appeal Brief filed
August 5, 2015 (“Appeal Br.”), the Examiner’s Answer mailed January 15,
2016 (“Ans.”), and the Reply Brief filed March 15, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Eaton Corporation PLC,
which acquired Cooper Industries PLC, the parent entity of Cooper
Technologies Company, the assignee of record. Appeal Br. 3.
Appeal 2016-004272
Application 12/765,115
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
CLAIMED SUBJECT MATTER
The subject matter on appeal relates to magnetic components,
specifically magnetic, surface mount electronics components, such as
inductors and transformers. Spec. 3. Claim 1 is reproduced below from
the Claims Appendix of the Appeal Brief, with key disputed limitations
emphasized, is illustrative of the claims on appeal.
1. An electromagnetic component assembly comprising:
at least one prefabricated conductive coil including an
outer layer of bonding agent that is one of heat activated and
chemically activated; and
a laminated magnetic body having distributed gap
properties throughout, the laminated magnetic body fomled
around the at least one coil,
wherein the bonding agent couples the at least one coil to
the laminated magnetic body,
wherein the laminated magnetic body comprises a
plurality of stacked prefabricated layers of magnetic material
pressed in surface contact with one another,
wherein each of the prefabricated layers of magnetic
material comprises magnetic powder particles and a polymeric:
binder shaped into a thin sheet,
wherein the at least one prefabricated coil comprises a
freestanding element formed apart from all of the prefabricated
layers of magnetic material,
wherein two of the stacked prefabricated layers of
magnetic material are positioned on opposing sides of the at
least one prefabricated coil and sandwich the at least one
prefabricated coil in between, and
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Application 12/765,115
wherein the at least one coil and laminated magnetic body
define a direct current power inductor for powering an electronic
device.
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1—4, 9, 24, and 30-34 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Uchikoba (US 6,317,389,
issued October 24, 2000) (“Uchikoba”) in view of Oshima et al.
(US 6,859,994 B2, issued March 1, 2005) (“Oshima”) and Mizoguchi et al.
(US 6,404,317 Bl, issued June 11, 2002) (“Mizoguchi”);
Rejection 2: Claims 10 and 11 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Uchikoba in view of Oshima and
Mizoguchi, and further in view of Komai et al. (US 6,603,382 Bl, issued
August 5, 2003) (“Komai”);
Rejection 3: Claims 12 and 36 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Uchikoba in view of Oshima and
Mizoguchi, and further in view of Choi et al. (US 7,069,639 B2, issued
July 4, 2006) (“Choi”);
Rejection 4: Claim 17 stands rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Uchikoba in view of Oshima and Mizoguchi,
and further in view of Schmidt (US 7,707,714 B2, issued May 4, 2010)
(“Schmidt”);
Rejection 5: Claim 18 stands rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Uchikoba in view of Oshima and Mizoguchi,
and further in view of Fedeli et al. (US 6,690,164 Bl, issued February 10,
2004) (“Fedeli”); and
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Rejection 6: Claim 35 stands rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Uchikoba in view of Oshima and Mizoguchi,
and further in view of Tokuda (US 5,578,981, issued November 26, 1996)
(“Tokuda”).
DISCUSSION
We focus on independent claim 1, which includes the argued
limitations, in deciding this appeal. Specifically, claim 1 is directed to an
electromagnetic component assembly comprising, inter alia, at least one
prefabricated conductive coil and a laminated magnetic body comprising a
plurality of stacked layers of magnetic material pressed in surface contact
with one another, “wherein the at least one prefabricated coil comprises a
freestanding element formed apart from all of the prefabricated layers of
magnetic material” and “wherein two of the stacked prefabricated layers of
magnetic material are positioned on opposing sides of the at least one
prefabricated coil and sandwich the at least one prefabricated coil in
between.” Independent claim 31, the other independent claim pending on
appeal, includes similar recitations.
The Examiner finds that Uchikoba teaches an electromagnetic
component assembly for noise suppression that includes at least one coil 2
and laminated body 1 formed around the at least one coil, where the
laminated magnetic body comprises a plurality of stacked prefabricated
layers of magnetic material pressed in surface contact with one another.
Final Act. 2 (citing Uchikoba 8:49—9:7; Fig. 8). Additionally, the Examiner
finds that Uchikoba’s assembly teaches “two of the stacked prefabricated
layers of magnetic material are positioned on opposing sides of the at least
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Application 12/765,115
one coil and sandwich the at least one coil therebetween. Id. The Examiner,
however, finds that Uchikoba does not teach or suggest: (1) a prefabricated
conductive coil including an outer layer of bonding agent that is one of heat
activated and chemically activated, where the bonding agent couples the coil
to a laminated magnetic body, and where the prefabricated coil comprises a
freestanding element formed apart from all of the prefabricated layers of
magnetic material, and (2) at least one coil and laminated magnetic body
define a direct current power inductor for powering an electronic device.
Final Act. 3.
The Examiner finds that Oshima teaches an electromagnetic
component assembly for eliminating noise transmitted to and generated from
electronic apparatuses that includes prefabricated conductive coil 10
including outer layer 3 of bonding agent that is either heated activated or
chemically activated, and couples the at least one coil to magnetic body 15,
and where the at least one prefabricated coil comprises a freestanding
element formed apart from all the prefabricated layers of magnetic material.
Id. (citing Oshima 3:8—9, 40-45). The Examiner determines that one of
ordinary skill in the art would have been motivated, based on Oshima, to
modify Uchikoba’s inductor to include Oshima’s freestanding prefabricated
conductive coil including an outer layer of bonding agent that is either heat
activated or chemically activated, where the bonding agent couples the at
least one coil to the magnetic body “to improve mechanical stability of the
coil and or to retain coil shaped, and or to improve insulation.” Final Act. 3
(citing Oshima 1:25—30); Ans. 22.
The Examiner finds that Mizoguchi teaches an electromagnetic
component assembly where the at least one coil 40 and laminated magnetic
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body 30A and 3OB define a direct current power inductor for powering an
electronic device. Final Act. 3 (citing Mizoguchi 10:32—34, 5:24—27, 35—38,
38—51; Fig. 5). The Examiner determines that one of ordinary skill in the art
would have been motivated, based on Mizoguchi, to modify Uchikoba’s
assembly so that the at least one coil and laminated magnetic body define a
direct current power inductor for powering an electronic device “to reduce
size with sufficiently great inductance and only a few leakage fluxes. Final
Act. 3^4 (citing Mizoguchi 4:31—40).
Appellants argue that Uchikoba does not teach or suggest a
prefabricated conductive coil that is a freestanding element formed apart
from all the prefabricated layers of magnetic material. Appeal Br. 31. In
addition, Appellants argue that even if one of ordinary skill would have been
motivated to use Oshima’s prefabricated coil including an outer layer of
bonding agent, as the Examiner proposes, it would not have resulted in the
structure of the assembly recited in claim 1 because the shape of Oshima’s
solenoid coil would make it impossible to sandwich the coil in between two
prefabricated layers of Uchikoba’s magnetic material. Id. at 31—32.
In addition, Appellants contend that Uchikoba’s inductor is designed
for noise suppression in a signal line whereas Mizoguchi’s power inductor is
designed to store energy and return the stored energy to an electrical circuit.
Appeal Br. 23—24, 26. Because of the divergent purposes of Uchikoba and
Mizoguchi, Appellants argue that one of ordinary skill in the art would not
have been motivated to look to Mizoguchi to improve upon Uchikoba’s
device. See id. at 26.
Appellants’ arguments are persuasive of reversible error in the
Examiner’s rejection of independent claims 1 and 31. The Examiner bears
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Application 12/765,115
the initial burden of presenting a prima facie case establishing the non­
patentability of the rejected claims. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). As the Examiner finds, Uchikoba’s coil is not “a
freestanding element formed apart from all of the prefabricated layers of
magnetic material,” as required by claims 1 and 31. Final Act. 3; see also
Uchikoba 8:57—65 (teaching that the coil depicted in Figure 8, which is
relied upon by the Examiner in the rejection, was applied through screen
printing on one of the magnetic layers). As the Examiner finds, Oshima
discloses a prefabricated coil comprising a freestanding element formed
apart from the layers of magnetic material. Final Act. 3 (citing Oshima 3:8—
9, 40-45; Figs. 1—5). Oshima’s prefabricated coil is an elongated solenoid,
not a planar coil as in Uchikoba. See Oshima Fig. 2. After the coil is
formed, the magnetic material in Oshima is injected into a mold around the
coil. Oshima 3:31—52. On this record, however, the Examiner has not
explained, nor is it apparent based on Uchikoba’s disclosure, how Oshima’s
elongated coil could have been sandwiched in a plurality of layers of
magnetic material in the manner proposed by the Examiner and form a
inductor element as depicted in Uchikoba’s Figure 8.
In addition, on this record, the Examiner has not provided an adequate
explanation why one of ordinary skill in the art would have looked to a
power inductor for storing energy, as disclosed in Mizoguchi, to improve
upon Uckihoba’s inductor for noise suppression.
Because the Examiner’s rejections all rely on the basic combination of
Uchikoba, Oshima, and Mizoguchi, we cannot sustain any of the stated
rejections.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1—4, 9—12,
17, 18, 24, and 30-36 are reversed.
REVERSED
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