DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Response to Amendment
The Amendment filed 03 December 2025 has been entered. Claims 1-3, 8-9, 11 and 13-14 remain pending in the application. Applicant’s amendments have overcome each and every claim objection previously set forth in the Non-Final Office Action mailed 29 October 2025. Accordingly, the claim objection is/are hereby withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth 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, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing 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 which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 8-9, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Document S6447021 (JP S6447021 and hereinafter JPS6447021; see translation) in view of Sheehan (US 3185759 and hereinafter Sheehan ‘759).
In regards to claim 1, JPS6447021 discloses a thin-film capacitor core (FIG. 1), comprising a core body (3 – FIG. 5; page 2), a covering film (4 in FIG. 1; see also 6, 8 and 12 in FIGs. 4(c) and 5; page 2; Examiner further notes the embodiment of FIG. 7), and a sprayed metal coating (17, 18 – FIG. 5; page 3); the covering film is wound around an outer circumferential surface of the core body (see FIG. 5), the covering film comprises a base film (6 – FIGs. 4(c) and 5) and an electrode layer (8 - FIGs. 4(c) and 5; or alternatively, 12 – FIG. 4(c); or alternatively, with the context of claims 8 and 9 taken into consideration, layers 8 and 12), the electrode layer is attached to the base film (FIGs. 4(c) and 5), and the sprayed metal coating is applied to two end surfaces of the core body to form electrodes (seen in FIG. 1); the electrode layer is attached to a surface of the base film (FIGs. 4(c) and 5); the base film has a plurality of blank areas (7 – FIGs. 4(c) and 5) without any electrode layer attached thereto so as to define an electrical clearance at each of the plurality of blank areas (7 – FIGs. 4(c) and 5), and the plurality of blank areas are evenly spaced along a lengthwise direction of the base film (FIGs. 4(c) and 5).
JPS6447021 fails to expressly disclose the base film has a width equivalent to that of the core body, the electrode layer being a waterproof layer. However, JPS6447021 further discloses layer 6 has width almost equal to the length of core 3 (see “Detailed explanation of the device”).
Where the only difference between the prior art and the claim is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See MPEP 2144.04 citing In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Accordingly, as a device having the claimed relative dimensions of “the base film has a width equivalent to that of the core body” would not perform differently than the cited prior art device, such a change to JPS6447021 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention as a common practice which normally requires only ordinary skill in the art and hence is considered a routine expedient.
Sheehan ‘759 teaches electrode layers being metal foil electrodes (Column 2, Lines 46-47) which are waterproof layers.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the thin-film capacitor core of JPS6447021 with a metal foil, which is a known equivalent to an electrode layer, as taught by Sheehan ‘759, and thus the combination amounts to a mere substitution of one known element (electrode layers) for another known equivalent element (metal foils, i.e. waterproof layers) resulting in the predictable result of the metal foil serving as an electrode layer.
Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In regards to claim 2, modified JPS6447021 further teaches wherein the sprayed metal coating covers at least one outer side edge of the waterproof layer (see JPS6447021: FIGs. 1, 4(c) and 5, noting layer 8 extends to the outer side edges of the covering film, the sprayed metal coating covering the outer side edges of the covering film).
In regards to claim 3, modified JPS6447021 further teaches wherein the waterproof layer is a metal waterproof layer (described in Sheehan ‘759: Column 2, Lines 46-47).
In regards to claim 8, modified JPS6447021 further teaches wherein the waterproof layer (8 and 12 – FIGs. 4(c) and 5) comprises a first waterproof layer (8 – FIG. 4(c)) and a second waterproof layer (12 – FIG. 4(c)), the first waterproof layer and the second waterproof layer are attached to two opposite surfaces of the base film respectively (seen in FIG. 4(c)).
In regards to claim 9, modified JPS6447021 further teaches wherein the base film comprises a first base film (upward layer 6 – FIG. 4(c)) and a second base film (downward layer 6 – FIG. 4(c)), the waterproof layer (8 and 12 – FIGs. 4(c) and 5) comprises a first waterproof layer (12 – FIG. 4(c)) and a second waterproof layer (upward layer 8 – FIG. 4(c)), where the first waterproof layer is attached to an outer surface of the first base film (seen in FIG. 4(c)), the second waterproof layer is attached to an outer surface of the second base film (seen in FIG. 4(c)).
In regards to claim 11, modified JPS6447021 further teaches wherein a gap is provided at each of two ends of the waterproof layer (12 – FIG. 4(c)) to space apart the two ends of the waterproof layer from the sprayed metal coating (see FIG. 4(c), noting layers 12 are spaced apart from the two ends of layer 6), and a width of each gap is smaller than a tolerance distance of the sprayed metal coating (see FIG. 4(c), noting the width of each gap shown is not necessarily flush with two ends of the core body).
In regards to claim 13, modified JPS6447021 further teaches a thin-film capacitor, comprising the thin-film capacitor core (FIG. 1) as claimed in claim 1 (see rejection of claim 1).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over JPS6447021 as modified by Sheehan ‘759 as applied to claim 13 above, and further in view of Li et al. (US 20170064811 and hereinafter Li ‘811).
In regards to claim 14, modified JPS6447021 further teaches the thin-film capacitor as claimed in claim 13 (see rejection of claim 13).
JPS6447021 modified by Sheehan ‘759 fails to teach a printed circuit board, comprising the thin-film capacitor as claimed in claim 13.
Li ‘811 teaches a printed circuit board (304 – FIG. 6; [0044]), comprising a capacitor (308 – FIG. 6; [0044]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Li ‘811 with JPS6447021 modified by Sheehan ‘759 to incorporate a printed circuit board, comprising the thin-film capacitor as taught by Li ‘811 in the structure taught by JPS6447021 modified by Sheehan ‘759, as one having ordinary skill in the art would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification allows for electrically connecting the capacitor to other components ([0004]).
Response to Arguments
Applicant's arguments filed 03 December 2025, with respect to claims 1-3, 8-9, 11 and 13-14 have been fully considered but they are not persuasive.
With respect to Claim 1, and in response to Applicant’s argument that the gaps are not “blank areas” in a protective layer because they differ in location and structure, function and result, it is noted that, as set forth in the rejection above, the gaps of JPS6447021 are considered to be the claimed “blank areas” because FIGs. 4(c) and 5 of JPS6447021 expressly describes the claimed blank areas, noting the gaps of JPS6447021 separate neighboring electrode layers so as to define an electrical clearance at each of the gaps, and the gaps are evenly spaced along a lengthwise direction of the base film (see also, for example, Applicant’s FIG. 8 noting the location of blank areas; Examiner further notes Applicant’s arguments on page 5 wherein it is stated that the gaps are necessary design features to physically and electrically separate adjacent electrode films, i.e. define an electrical clearance at each of the gaps).
Furthermore, it is noted that the features upon which applicant relies (i.e., blank areas are regions on a base film where a continuous waterproof layer is absent) are disclosed by FIGs. 4(c) and 5 of JPS6447021, but are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that combining Sheehan ‘759 with JPS6447021 would not lead the skilled person to the claimed invention, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Furthermore, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981), In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, applicant specifically argues that the skilled person would have no motivation to replace JPS6447021’s circuit-forming electrode layers with Sheehan ‘759’s protective continuous metal foil as this would destroy the series capacitance function that is the core teaching of JPS6447021, introduce blank areas into Sheehan ‘759’s continuous foil when applying it to JPS6447021 as neither reference suggests doing so and it would contradict Sheehan ‘759’s teaching of a complete shield/barrier, or reconceive the resulting structure as a waterproof layer for a thin-film capacitor core as the combination would be a non-functional hybrid lacking the electrical characteristics of JPS6447021 and the dedicated protective purpose of the present invention. This argument is unpersuasive. In the rejection of claim 1, Sheehan ‘759 is relied on solely for the teaching of electrode layers being metal foil electrodes, which have the claimed feature of being waterproof layers, and JPS6447021 is relied on for all other features claimed in claim 1. As such it would have obvious to one of ordinary skill in the art in light of Sheehan ‘759 to form the electrode layers of JPS6447021 with metal foils (i.e. waterproof layer) since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In response to applicant's argument that the equivalent width of the base film is critical for a different reason, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As such in combination the cited references teach all the claimed limitations of the invention and the rejection is maintained.
As such Applicant’s argument is unpersuasive and the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL M DUBUISSON whose telephone number is (571)272-8732. The examiner can normally be reached Monday - Friday 8am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Dole can be reached at 571-272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL M DUBUISSON/Examiner, Art Unit 2848
/Timothy J. Dole/Supervisory Patent Examiner, Art Unit 2848