DETAILED ACTION
The following Office action concerns Patent Application Number 18/346,485. Claims 1, 2, 4, 6-21 are pending in the application. Claims 2, 4, 6-11, 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected inventions or species.
The applicant’s amendment filed November 14, 2025 has been entered.
The previous grounds of rejection are withdrawn in light of the applicant’s amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 112 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(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.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the art that the inventor had possession of the claimed invention at the time the application was filed. In particular, the limitation “wherein the surface different from the end surface portion is substantially perpendicular to the end surface portion,” which was added by amendment, is not supported by the specification. MPEP § 2163(II)(A)(3)(b).
Claim 21 is rejected under 35 U.S.C. § 112(b) because the term “the surface different from the end surface portion” lacks antecedent basis. MPEP § 2173.05(e).
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 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.
Claims 1, 12 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Albaugh et al (US 2016/0017185) in view of Kobayashi et al (US 2021/0155819), Zhang et al (US 2018/0182907) and Onodera et al (US 2021/0125783).
Albaugh et al teaches a method of making an electronic component comprising forming an electrical connection (an electrode) on a surface of an electrical component (electrode-forming body) by depositing a conductive silicone resin composition on the surface of the electrical component and curing the composition to form a cured layer (par. 108, 111, 128). The conductive silicone composition comprises Cu-Ag particles, silicone resin and hydrocarbon vehicle (organic solvent) (par. 12-13). The silicone resin contains a hydroxy group (par. 59). The composition is cured by heating (thermally) (par. 47, 113). A curing agent is not required. The hydroxy-functionalized silicone is cured by condensation reaction (par. 47). Curing by condensation of hydroxy groups is equivalent to curing by dehydration. The composition is used to form an electrical connection (electrode) in a multilayer electronic device (par. 107).
The amount of Cu-Ag particles 70-89 % by weight and the amount of silicone resin is 7-25 % by weight (par. 25). At 10 % silicone resin and 75 % metal particles the equivalent content of silicone resin is about 13 parts resin to 100 parts metal particles. The Cu-Ag particles have a size of 0.5-20 µm (par. 37).
Albaugh et al does not teach the thickness of the conductive silicone layer.
However, Kobayashi et al teaches a conductive resin composition (a conductive paste) for forming an electrode (abstract). The conductive paste is coated on a surface to form a layer having a thickness of 10-100 µm (par. 90, 92).
Albaugh et al is silent regarding film thickness. A person of ordinary skill in the art would have been motivated by design need to combine the film thickness of Kobayashi et al with the method of Albaugh et al in view of Zhang et al and Onodera et al in order to obtain a conductive film thickness suitable for forming an electrode.
Albaugh et al does not teach that the silicone resin is thermosetting.
However, Zhang et al teaches a conductive resin composition comprising thermosetting silicone resin (par. 79). The resin provides adhesion (par. 81).
Albaugh et al teaches a silicone adhesive (par. 12). Albaugh et al is silent as to whether the silicone adhesive is thermosetting. Zhang et al teaches a silicone adhesive which is thermosetting (par. 79, 81). It would have been obvious to a person of ordinary skill in the art to combine the thermosetting property of Zhang et al with the method of Albaugh et al in view Kobayashi et al and Onodera et al in order to obtain an adhesive silicone resin for a conductive composition.
Albaugh et al does not teach forming the electrode on a corner portion of an end surface of the component.
However, Onodera et al teaches an electronic component having an electrode formed of a conductive resin layer applied to a corner portion of an end surface of the electronic component (par. 25; par. 144-145; Fig. 1). The electronic component is a multilayer capacitor (par. 63).
Albaugh et al teaches a method of forming an electrode with a conductive resin composition for an electronic component. Onodera et al teaches an electronic component having an electrode covering the end of the component. It would have been obvious to a person of ordinary skill in the art to combine the electronic component of Onodera et al with the method of forming an electrode of Albaugh et al in view Kobayashi et al and Zhang et al in order to obtain an electrode formed from a conductive resin composition known to be suitable for forming electrodes.
Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al is silent regarding a phase difference between strain and stress and a moisture permeation amount of a film formed from the composition. However, the teaching of Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al has rendered obvious the instantly claimed method of making an electronic component including all of the components of the conductive resin composition. Therefore, it is reasonable that a person of ordinary skill in the art would expect the claimed phase difference between strain and stress and the claimed moisture permeation amount to naturally arise in the method of Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al.
Regarding claim 12, the electrode forming method of Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al is capable of forming a cathode for a solid electrolyte capacitor because a cathode is an electrode and the prior art electrode forming composition contains all of the components of the claimed conductive resin composition.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Albaugh et al in view of Kobayashi et al, Zhang et al, Onodera et al and Hatakeyama et al (US 2022/0110569).
Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al teaches a method of making an electronic component as described above.
Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al does not teach that the conductive silicone composition is deposited by a dip method.
However, Hatakeyama et al teaches a method of making an electronic component comprising forming an electrode on a surface of a base material (body) by applying a conductive resin composition to form coating layer on the base material (par. 203-204). The conductive resin composition comprises metal powder, silicone resin and organic solvent (par. 42, 50-51, 170). The silicone resin is thermosetting (par. 143). The silicone resin contains a hydroxy group (par. 146). The composition is cured by heating (thermally) (par. 158). A curing agent is not required. The method of applying the conductive resin composition includes a dip coating method (par. 206).
Albaugh et al teaches that the conductive silicone composition may be deposited by any suitable manner (par. 108). Hatakeyama et al teaches depositing the conductive silicone composition by a dip coating method (par. 206). It would have been obvious to a person of ordinary skill in the art to combine the dip coating method of Hatakeyama et al with the method of Albaugh et al in view of Kobayashi et al, Zhang et al and Onodera et al in order to obtain a known suitable method of depositing a conductive resin composition.
Response to Arguments
The applicant argues that the silicone resin of Albaugh et al does not provide the claimed moisture permeation amount, based upon examples presented in the applicant’s response (Table 1). However, the examiner was unable to find these examples in the specification. Accordingly, the examples in Table 1 are considered speculative and so the applicant’s argument is not persuasive.
Other arguments presented by the applicant have been addressed previously.
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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