Ex Parte Masuda et al - Page 3




          Appeal No. 2004-0642                                                        
          Application No. 09/635,098                                                  


          to Paper No. 14).  We reverse this rejection essentially for the            
          reasons stated in the Brief, Reply Brief, and for those reasons set         
          forth below.                                                                
          OPINION                                                                     
               The examiner finds that Sasaki discloses all of the                    
          limitations of claim 16 on appeal except that the conductors are            
          not “wound in a coil [sic, coiled] manner.”  Paper No. 14, page 3.          
          Therefore, the examiner applies Kato for the teaching of embedding          
          a closely wound coil in the magnetic body of a chip inductor                
          (id.).3  From these findings, the examiner concludes that it would          
          have been obvious to one of ordinary skill in this art to use the           
          coil design of Kato for the conductors of Sasaki “for the purpose           
          of enhancing the inductance of the inductor.”  Id.  We disagree.            
               As correctly argued by appellants (Brief, pages 6-7), Sasaki           
          teaches the desire to produce a conductor with a small inductance           
          component by using a linear conductor instead of a coil-formed              
          conductor, thus yielding a noise filter with improved properties.4          


               3We also note that appellants disclose that it was                     
          conventional to wind a conducting wire around a bar of magnetic             
          material “in a coiled manner.”  Specification, page 1, ll. 10-20.           
               4See Paragraph [0034] of the machine translation, which is             
          similar to appellants’ translation submitted at page 6 of the               
          Brief.                                                                      
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