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 .
Response to Arguments
Applicant's arguments filed December 1, 2025, have been fully considered but they are not persuasive.
On pages 7-8 of Remarks, Applicant argues that amended claim 1 overcomes the prior art rejection over Kuo et al. (US Publication 2023/0261039). In particular, the Applicant asserts that Kuo fails to disclose the insulating layer is not disposed “in at least a portion of the groove to cover a portion of the body”.
The Examiner respectfully disagrees with the above assertion. As described in the rejection herein, the insulator of Kuo is now considered as a combination of elements 524, 526, and 528 of Figure 5 of Kuo. Therefore, the insulating layer is disposed on a portion other than a portion where the external electrodes exist on an outer circumference of the upper surface of the body and within the groove to cover a portion of the body.
Applicant’s arguments with respect to claim(s) 16, 18 and their depending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ning et al. (US Publication 2004/0056324).
In re claim 16, Ning discloses a capacitor manufacturing method comprising:
forming a groove (trench within 214 – Figure 11, ¶33) that is recessed from an upper surface of a substrate (214 – Figure 11, ¶32) in a direction towards a bottom surface of the substrate (214 – Figure 11) (¶33);
forming an internal electrode layer (226 – Figure 11, ¶34) and a dielectric layer (232 – Figure 11, ¶38) on the upper surface of the substrate and on the groove (Figure 11);
forming a body on the groove to include an internal electrode formed through the internal electrode layer and the dielectric layer, by removing portions, disposed outside the groove, among the internal electrode layer and the dielectric layer (Figure 11) (¶38-42);
forming an insulating layer (260 – Figure 11, ¶11) on a portion other than a portion where an external electrode (258 – Figure 11, ¶49) is to be formed on an outer circumference of the upper surface of the body (Figure 11) (Figure 9), and in at least a portion of the groove to cover a portion of the body (Figure 11); and
forming the external electrode (258 – Figure 11, ¶49) connected with the internal electrode (226 – Figure 11) on the body (Figure 11).
In re claim 17, Ning disclose the method of claim 16, as explained above. Ning further discloses wherein the removing the portions of the internal electrode layer and the dielectric layer is performed through a polishing process (¶40).
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-7, 9-11 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuo et al. (US Publication 2023/0261039).
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Figure 5 of Kuo with Examiner’s Comments (Figure 5EC)
In re claim 1, Kuo discloses a capacitor comprising:
a substrate (502 – Figure 5, ¶26) including a groove (503A – Figure 5, ¶26) having a depth (H1 – Figure 5, ¶26) from an upper surface of the substrate (Figure 5); and
a body comprising a first internal electrode (506 – Figure 5, ¶38) and a second internal electrode (510 – Figure 5, ¶38) stacked disposing a dielectric layer (508 – Figure 5, ¶38) therebetween, and disposed on the groove (503A – Figure 5).
Kuo further discloses the width and the length of the groove can be equivalent (¶22).
a first external electrode (536 – Figure 5) connected to the first internal electrode (506 - Figure 5) on an upper surface of the body (Figure 5);
a second external electrode (534 – Figure 5) connected to the second internal electrode (510 – Figure 5) on the upper surface of the body (Figure 5); and
an insulating layer (combination of 528, 524, 526 – Figure 5, ¶45) that is disposed on a portion other than a portion where the first external electrode and the second external electrode are disposed on an outer circumference of the upper surface of the body (Figure 5), and
the insulating layer (combination of 528, 524, 526 – Figure 5) is disposed at least a portion of the groove (503A – Figure 5) to cover a portion of the body (Figure 5A).
Kuo does not disclose wherein a width of the groove is 1 time or more compared to the depth of the groove, and a length of the groove is 1 time or more compared to the depth of the groove.
However, Kuo discloses adjusting the depth of the trench is correlated to the capacitance of the device (¶16). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to adjust the length and width of the groove portion to be greater than the depth of the groove portion to achieve a device having desired capacitance, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In re claim 2, Kuo discloses the capacitor of claim 1, as explained above. Kuo further discloses wherein the first external electrode (536 – Figure 5, ¶46) disposed on an upper surface of one end portion of the body in a length direction (Figure 5); and
the second external electrode (534 – Figure 5, ¶46) disposed on an upper surface of the other end portion of the body in the length direction (Figure 5).
In re claim 3, Kuo discloses the capacitor of claim 2, as explained above. Kuo further discloses wherein:
the body further comprises a first electrode separation layer (ES1 – Figure 5EC) disposed between the first external electrode (536 – Figure 5EC) and the second internal electrode (510 – Figure 5EC).
In re claim 4, Kuo discloses the capacitor of claim 3, as explained above. Kuo further discloses one end portion of the second internal electrode (510 – Figure 5) has a structure of being recessed into an inner side of the groove (503A – Figure 5) at one end portion of the body in the length direction (Figure 5), and the first electrode separation layer (ES1 – Figure 5EC) is disposed in a space between two adjacent dielectric layers (512, 516 – Figure 5EC, ¶38).
In re claim 5, Kuo discloses the capacitor of claim 2, as explained above. Kuo further discloses a second electrode separation layer (ES2 – Figure 5EC) disposed between the second external electrode (534 – Figure 5EC) and the first internal electrode (506 – Figure 5EC).
In re claim 6, Kuo discloses the capacitor of claim 5, as explained above. Kuo further discloses one end portion of the first internal electrode (506 – Figure 5) has a structure of being recessed into an inner side of the groove (503A – Figure 5) at the other end portion of the body in the length direction (Figure 5), the second electrode separation layer (ES2 – Figure 5EC) is disposed in a space between two adjacent dielectric layers (508, 512 – Figure 5EC, ¶38).
In re claim 7, Kuo discloses the capacitor of claim 1, as explained above. Kuo further discloses a lower insulation layer (504 – Figure 5, ¶38) disposed between the groove (503A – Figure 5) and the body (507, 508, 515, 519 – Figure 5, ¶38).
In re claim 9, Kuo discloses the capacitor of claim 1, as explained above. Kuo further discloses the groove (503A – Figure 5) has a structure in which one side in a width direction is open to a side surface direction of the substrate (502 – Figure 5), and one side of the body (507, 511, 514, 516, 518 – Figure 5) in the width direction is disposed on the side surface of the substrate (Figure 5). Note that the walls of the trench are open and the body is disposed on the walls.
In re claim 10, Kuo discloses the capacitor of claim 1, as explained above. Kuo further discloses the substrate includes a longitudinal ridge portion (306 in a 301 direction – Figure 3, ¶21) that protrudes upward from a bottom surface of the groove and is disposed to be spaced apart from a width direction side of the groove (¶21).
In re claim 11, Kuo discloses the capacitor of claim 1, as explained above. Kuo further discloses the substrate includes a transverse ridge portion (306 in a 303 direction – Figure 3) that protrudes upward from a bottom surface of the groove and is disposed to be spaced apart from a length direction side of the groove (¶21).
In re claim 13, Kuo discloses the capacitor of claim 1, as explained above. Kuo further discloses the width and the length of the groove can be equivalent (¶22).
Kuo does not disclose the width of the groove is 1 time or more and 44 times or less compared to the depth of the groove, and the length of the groove is 1 time or more and 54 times or less compared to the depth of the groove.
However, Kuo discloses adjusting the depth of the trench is correlated to the capacitance of the device (¶16). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to adjust the length and width of the groove portion to be greater than the depth of the groove portion to achieve a device having desired capacitance, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In re claim 14, Kuo discloses the capacitor of claim 1, as explained above. Kuo does not disclose the depth of the groove is 100 µm or less. However, Kuo discloses adjusting the depth of the trench is correlated to the capacitance of the device (¶16). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to adjust the length and width of the groove portion to be greater than the depth of the groove portion to achieve a device having desired capacitance, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuo et al. (US Publication 2023/0261039) in view of Ryou et al. (US Publication 2018/0315550).
In re claim 12, Kuo discloses the capacitor of claim 1, as explained above.
Kuo does not disclose wherein a boundary between the body and the substrate a lower area of the first external electrode and the second external electrode is inclined with respect to the upper surface of the substrate.
Ryou discloses wherein a boundary between the body (140 – Figure 3, ¶49) and the substrate (110 – Figure 3, ¶32) in a lower area of the first external electrode (161 – Figure 3, ¶62) and the second external electrode (163 – Figure 3, ¶62) is inclined with respect to the upper surface of the substrate (Figure 3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the sloped boundary of the substrate to adjust the length of the internal electrode layers, and thus overlap area of internal electrodes, to achieve a device having desired capacitance.
Claim(s) 1 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ning et al. (US Publication 2004/0056324) in view of Kuo et al. (US Publication 2023/0261039).
In re claim 1, Ning discloses a capacitor comprising:
a substrate (214 – Figure 11, ¶32) including a groove (see groove within 226 – Figure 11) having a depth from an upper surface of the substrate (214 - Figure 11);
and a body comprising a first internal electrode (226 – Figure 11, ¶34) and a second internal electrode (234 – Figure 11, ¶39) stacked disposing a dielectric layer (232 – Figure 11, ¶38) therebetween, and disposed on the groove (Figure 11);
a first external electrode (258 – Figure 11, ¶49) connected to the first internal electrode (226 – Figure 11) on an upper surface of the body (214 – Figure 11);
a second external electrode (262 – Figure 11, ¶49) connected to the second internal electrode (234 – Figure 11) on an upper surface of the body (214 – Figure 11),
and an insulating layer (260 – Figure 11,¶49) that is disposed on a portion other than a portion where the first external electrode and the second external electrode (258, 262 – Figure 11) are disposed on an outer circumference of the upper surface of the body (Figure 11) (Figure 9),
and the insulating layer (260 – Figure 11) is disposed in at least a portion of the groove to cover a portion of the body (Figure 11).
Ning does not disclose wherein a width of the groove is 1 time or more compared to the depth of the groove, and a length of the groove is 1 time or more compared to the depth of the groove.
Kuo discloses the width and the length of the groove can be equivalent (¶22). Kuo further discloses adjusting the depth of the trench is correlated to the capacitance of the device (¶16). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to adjust the length and width of the groove portion to be greater than the depth of the groove portion to achieve a device having desired capacitance, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In re claim 15, Ning in view of Kuo discloses the capacitor of claim 1, as explained above. Ning further discloses the first internal electrode (226 – Figure 11) and the second internal electrode (234 – Figure 11) are disposed only in the groove (groove formed in 214 – Figure 11).
Claim(s) 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ning et al. (US Publication 2004/0056324) in view of Oganesian et al. (US Publication 2012/0146182).
In re claim 18, Ning discloses a capacitor comprising:
a substrate (214 – Figure 11) including a groove (trench in 214 – Figure 11) having a depth from an upper surface of the substrate (Figure 11); and
a body comprising a first internal electrode (226 – Figure 11) and a second internal electrode (234 – Figure 11) stacked disposing a dielectric layer (232 – Figure 11) therebetween, and disposed in the groove (Figure 11),
a first external electrode (256 and 258 – Figure 11, ¶49) disposed on an upper surface of one end portion of the body (Figure 11) and the upper surface of the substrate (214 – Figure 11) to connect to the first internal electrode (226 – Figure 11); and
a second external electrode (262 and 264 – Figure 11, ¶49) disposed on an upper surface of the other end portion of the body (Figure 11) and the upper surface of the substrate (214 – Figure 11) to connect to the second internal electrode (234 – Figure 11),
wherein the first internal electrode (226 – Figure 11) and the second internal (234 – Figure 11) are disposed only in the groove (Figure 11),
and the first external electrode (256 and 258 – Figure 11) is disposed above a portion of one of the side surfaces of the groove (trench in 214 – Figure 11), and the second external electrode (262 and 264 – Figure 11) is disposed above a portion of another of the side surfaces of the groove (trench in 214 – Figure 11).
Ning does not disclose the groove including a bottom surface and side surfaces inclined with respect to the upper surface of the substrate and the bottom surface of the groove.
Oganesian discloses a groove (30 – Figure 1, ¶50) including a bottom surface (32 – Figure 1, ¶50) and side surfaces (31 – Figure 1, ¶50) inclined with respect to the upper surface (21 – Figure 1, ¶50) of the substrate (20 – Figure 1, ¶50) and the bottom surface of the groove (32 - Figure 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the sloped boundary of the substrate to adjust the length of the internal electrode layers, and thus overlap area of internal electrodes, to achieve a device having desired capacitance.
In re claim 20, Ning in view of Oganesian discloses the capacitor of claim 18, as explained above. Ning further discloses a first electrode separation layer (portion of 260 below 258 – Figure 11) disposed between the first external electrode (258 – Figure 11) and the second internal electrode (234 – Figure 11); and
a second electrode separation layer (portion of 260 below 262 – Figure 11) disposed between the second external electrode (262 – Figure 11) and the first internal electrode (226 – Figure 11).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shih et al. (US Patent 6,436,787) Figure 3
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ARUN RAMASWAMY whose telephone number is (571)270-1962. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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/ARUN RAMASWAMY/Primary Examiner, Art Unit 2848