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 .
Election/Restrictions
Applicant’s election of group I, claims 1-9, in the reply filed on 03/12/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-13 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/12/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 discloses “A method of manufacturing a multilayer electronic component including a body comprising dielectric layers and a plurality of internal electrodes stacked with the dielectric layers interposed therebetween, and external electrodes disposed externally on the body, the method comprising: a first operation of obtaining a layer pattern constituting one layer by performing at least one of a process of forming a dielectric pattern by ejecting a ceramic ink containing a dielectric material and a first photocurable resin, a process of forming an internal electrode pattern by ejecting a first metal ink containing conductive particles for the internal electrodes and a second photocurable resin, and a process of forming external electrode patterns by ejecting a second metal ink containing conductive particles for the external electrodes and a third photocurable resin; a second operation of obtaining a cured layer pattern by irradiating the layer pattern with ultraviolet light to cure the layer pattern; an operation of obtaining a laminate in which a plurality of cured layer patterns are stacked by carrying out a plurality of the first and second operations; and a sintering operation of obtaining the multilayer electronic component by sintering the laminate” (lines 3-24 and 1-2, numbered as presented by Applicant; emphasis added).
This claim is replete with errors and inconsistencies to the extent that it is nearly impossible to interpret the claim at all. The first issue is that the preamble discloses that the final product will comprise “dielectric layers and a plurality of internal electrodes… and external electrodes”, even though the body of the claim when reasonably interpreted according to the myriad alternative and optional “process of” recitations, may not contain any more than one of these elements. Accordingly, the preamble breathes no understandable life or meaning into the claim and is not afforded patentable weight.
The next issue is the fact that the claim recites three entirely distinct and alternative methods which are in no way Markush groupings and instead are entirely separate processes. The “at least one” language is indefinite, and allows for a reasonable interpretation wherein only dielectric layers, or only internal electrodes, or only external electrodes are formed in the method of claim 1. To make matters worse, any two of the three could also be formed, which would still be indefinite based upon the preamble.
Additionally, the “a process of” and “the process of” language throughout the claims is indefinite, because the claims are already directed to a “method”, which is the same as being directed to a process. As such, the claims are directed to “A method… comprising” other, undefined “methods”. Compounding this issue is each instance of “an operation of” or “a second operation of” or the like, as these purported “operations” are also nothing more than rewording of “a method of” or “a process of”. Thus the claims are even more confusingly directed to “A method… comprising” other, undefined “methods” comprising further undefined methods... This circular logic is impossible to confidently interpret.
Further still, the disclosure of “an operation of obtaining a laminate…by carrying out a plurality of the first and second operations” is entirely open ended (how many times are the first and second operations repeated?) and renders an infinite number of possible outcomes from an infinite number of different methods. The Applicant is strongly encouraged to actually decide what the inventive method concept is and to amend the claims to recite as much, rather than to disclose every possible permutation of the potential methods of manufacture. Further still, the recitation of “an operation of obtaining a laminate” could reasonably be interpreted (based upon the reasonable interpretation above) to only comprise a stack of dielectric layers, or only of internal electrodes or only of external electrodes. The third interpretation being the most problematic, given that the disclosure does not support, in any way, a stack of external electrodes. Finally, the “sintering operation” is indefinite, because it indicates that “the multilayer electronic component” (presumably from the preamble) is obtained, even though most of the reasonable interpretations of the claim do not provide support for the component having actually been formed at all.
Claims 2-9 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 1.
Each of claims 1-8 are replete with indefiniteness issues. The Examiner has made a good faith attempt to highlight each indefiniteness issue, however, due to the extreme nature of these problems, some may have been overlooked. That being so, these errors are repeated time and again, and are effectively identical to those noted by the Examiner and are thus rejected as indefinite for the same reasons.
Claim 2 is further rejected as indefinite, because the claim discloses “method of claim 1, wherein the process of forming the external electrode patterns includes a process of forming a first external electrode pattern disposed at one end of the dielectric pattern, and a process of forming a second external electrode pattern disposed at the other end of the dielectric pattern, and at least one of the plurality of the first operations includes all of the process of forming the first external electrode pattern, the process of forming the second external electrode pattern, and the process of forming the dielectric pattern” (lines 4-14; emphasis added).
This claim recites the “process of forming… includes a process of forming… and a process of forming…” and further that “at least one of the plurality of first operations includes all of the process…the [other] process…and the [third] process”. This language is so convoluted and circular that it is literally impossible to even guess what was actually intended as the claimed method. This is especially true given that processes are normally understood to employ more than a single step, but there is nothing in the claim which gives the reader any idea what the steps actually are. There are an infinite number of possible outcomes for this claim.
Moreover, the “process of forming the external electrode patterns” is one option in claim 1 but is not expressly required in claim 1. As such, this limitation has no weight or meaning under the reasonable interpretation of claim 1 as entailing only the formation of the dielectric layers or only the formation of the internal electrodes. Further, “the other end” is indefinite, because it is very likely that none of the structures of the product are purely two dimensional and therefore they have more than two ends, i.e. sides, (likely six or more).
The claim further discloses that “at least one of the plurality of the first operations includes all of the process of forming the first external electrode pattern, the process of forming the second external electrode pattern, and the process of forming the dielectric pattern”. Throughout the claims there is a repeated insistence on using vague hedging terms, such as “at least one”, and “at least a portion”. These terms are impossible to interpret with any confidence. This is especially true with respect to “at least a portion” which is vague, especially when claimed in reference to the purported “first operation” which was already indefinite in and of itself. How can one possibly guess what step, process or operation is being done, or how much of those steps, processes or operations is intended to be done with such language recited? The simple answer is that the reader cannot guess what is intended at all.
Claim 3 is further rejected as indefinite, because the claim discloses “method of claim 1, wherein the process of forming the internal electrode pattern includes a process of forming one of first and second internal electrode patterns alternately disposed with the dielectric pattern interposed therebetween, the process of forming the external electrode patterns includes a process of forming a first external electrode pattern disposed at one end of the first internal electrode pattern, and a process of forming a second external electrode pattern spaced apart from the first internal electrode pattern, and at least one of the plurality of the first operations includes all of the process of forming the first external electrode pattern, the process of forming the second external electrode pattern, and the process of forming the first internal electrode pattern. ” (lines 16-24 and 1-7; emphasis added).
This claim is indefinite for effectively the same reasons as claim 2. Claim 3 depends from claim 1 which under reasonable interpretation(s) of the many myriad possible alternative methods, does not require most of the structures in claim 3. As such, claim 3 is not held to further modify the method of claim 1 in an understandable manner under all reasonable interpretations of claim 1 and is thus indefinite.
Claim 4 is further rejected as indefinite, because the claim discloses “method of claim 3, wherein at least one of the plurality of the first operations further includes a process of forming a first step absorbing pattern disposed between the first internal electrode pattern and the second external electrode pattern by ejecting the ceramic ink” (lines 9-13; emphasis added). This claim is indefinite for the same reasons as claims 1-3. Additionally, Claim 3 depends from claim 1 which does not necessarily require any internal electrode pattern, thus claim 4 carries no understandable weight or meaning for that reasonable interpretation. Further, claim 3 recites “forming one of first and second internal electrode patterns”, not both. Thus the limitation lacks antecedent basis in claim 4.
Claim 5 is further rejected as indefinite, because the claim discloses “method of claim 1, wherein at least a portion of the first operation is carried out simultaneously with the second operation” (lines 15-17; emphasis added). This claim is indefinite for the same reasons as claims 1-4. What is a portion of a process? Which portion? The claim does not answer these questions and thus the scope or metes and bounds of the claim are indefinite.
Claim 6 is further rejected as indefinite, because the claim discloses “at least one of the plurality of the first operations further includes a process of forming a support pattern constituting at least a portion of an external shape of the laminate by ejecting an organic ink containing an organic material” (lines 19-23; emphasis added). This claim is indefinite for the same reasons as claims 1-4. What is a “portion of an external shape”? How many support patterns are formed? The potential repetition of the “first operations” in claim 1 renders it impossible to know if more than one support pattern is required.
Claim 7 is further rejected as indefinite, because the claim discloses “the sintering operation includes a process of eliminating the support pattern” (lines 1-3; emphasis added). It is impossible to even guess what is required for “a process of eliminating the support pattern”.
NOTE: All of the examined claims (i.e. claims 1-9) have been interpreted and examined as best understood according to the 112(b) rejections, above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al. (WO 2020/150711 A1).
Regarding claim 1, Yamada discloses a method of manufacturing a multilayer electronic component (Title; Abstract; fig. 5D) including a body comprising dielectric layers and a plurality of internal electrodes stacked with the dielectric layers interposed therebetween, and external electrodes disposed externally on the body (pars. 0030, 0050, 0071-0073 and 0085), the method comprising: a first operation of obtaining a layer pattern constituting one layer by performing at least one of a process of forming a dielectric pattern by ejecting a ceramic ink containing a dielectric material and a first photocurable resin, a process of forming an internal electrode pattern by ejecting a first metal ink containing conductive particles for the internal electrodes and a second photocurable resin, and a process of forming external electrode patterns by ejecting a second metal ink containing conductive particles for the external electrodes and a third photocurable resin (figs. 5A-6B; pars. 0009, 0036, 0050, 0065 and 0071); a second operation of obtaining a cured layer pattern by irradiating the layer pattern with ultraviolet light to cure the layer pattern (pars. 0009, 0034 and 0057); an operation of obtaining a laminate in which a plurality of cured layer patterns are stacked by carrying out a plurality of the first and second operations (figs. 5A-6B; pars. 0009, 0030, 0036, 0050, 0065 and 0071-0073); and a sintering operation of obtaining the multilayer electronic component by sintering the laminate (figs. 5A-5D; pars. 0009, 0034-0036 and 0057).
Regarding claim 2, Yamada discloses the method of claim 1, wherein the process of forming the external electrode patterns includes a process of forming a first external electrode pattern (521 and/or 524) disposed at one end of the dielectric pattern, and a process of forming a second external electrode pattern (525, and/or 522) disposed at the other end of the dielectric pattern, and at least one of the plurality of the first operations includes all of the process of forming the first external electrode pattern, the process of forming the second external electrode pattern, and the process of forming the dielectric pattern (fig. 5A; pars. 0043-0047).
Regarding claim 3, Yamada discloses the method of claim 1, wherein the process of forming the internal electrode pattern includes a process of forming one of first (503) and second (502) internal electrode patterns alternately disposed with the dielectric pattern interposed therebetween (pars. 0036 and 0071-0074), the process of forming the external electrode patterns includes a process of forming a first external electrode pattern (521 and/or 524) disposed at one end of the first internal electrode pattern, and a process of forming a second external electrode pattern (525, and/or 522) spaced apart from the first internal electrode pattern (fig. 5A; pars. 0043-0047), and at least one of the plurality of the first operations includes all of the process of forming the first external electrode pattern, the process of forming the second external electrode pattern, and the process of forming the first internal electrode pattern (pars. 0036, 0043-0047 and 0071-0074).
Regarding claim 4, Yamada discloses the method of claim 3, wherein at least one of the plurality of the first operations further includes a process of forming a first step absorbing pattern (101 and/or each layer of dielectric which is alternately printed) disposed between the first internal electrode pattern and the second external electrode pattern by ejecting the ceramic ink (figs. 5A-5D; pars. 0033, 0036, 0043-0047 and 0071-0074).
Regarding claim 5, Yamada discloses the method of claim 1, wherein at least a portion of the first operation is carried out simultaneously with the second operation (pars. 0009-0010 and 0034-0036).
Regarding claim 6, Yamada discloses the method of claim 1, wherein at least one of the plurality of the first operations further includes a process of forming a support pattern (101, or “sacrificial additive manufacturing material”, or “removable substrate”) constituting at least a portion of an external shape of the laminate by ejecting an organic ink containing an organic material (figs. 5A-5D; pars. 0030, 0033, 0050 and 0060).
Regarding claim 7, Yamada discloses the method of claim 6, wherein the sintering operation includes a process of eliminating the support pattern (pars. 0030 and 0060).
Regarding claim 8, Yamada discloses the method of claim 1, wherein at least one of the first, second, and third photocurable resins includes an oligomer, a monomer, and a photopolymerization initiator (pars. 0054 and 0057).
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 of this title, 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada, in view of Ballard (US 3,407,081).
Regarding claim 9, Yamada discloses all of the elements of the current invention as detailed above with respect to claim 1. Yamada, however, does not explicitly disclose that each of the first metal ink and the second metal ink contains a ceramic material.
Ballard teaches that it is well known to form electrode of capacitors (Title; Abstract), wherein the first and second metal inks contain a ceramic material (col. 2, lines 50-61; cols. 5-6, lines 74-75 and 1-13).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Yamada to incorporate the selection of ceramic material in the conductive ink of Ballard, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. POSITA would have realized that ceramic contained within the conductive ink can be easily and readily incorporated to achieve the desired viscosity, wettability, resistance to deleterious environmental effects and the like. Moreover, there is no indication in the instant disclosure that any special ceramic composition was devised or that any surprising results were derived from simply using the old method of Yamada with the well-known incorporation of ceramic with conductors of Ballard. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. Additionally, it is not likely that the preferred ceramic additive of the product being formed in the claimed method would have any bearing or effect upon the steps of the method or its outcome. Even if the ceramic of Ballard were incorporated in the intended product, the method of Yamada would be performed in the same manner as originally disclosed by Yamada and would have the same predictable outcome, given that no additional steps for forming the composition are disclosed in the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Shaw-Klein (US 2012/0055257 A1) is held to disclose most if not all of the limitations of at least claim 1. The Shaw-Klein reference is not currently applied as an anticipation rejection due to the completeness of the above applied art, and in order to avoid an overly long Office Action or duplicative rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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