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 with respect to claim(s) 1-4, 6-15, and 17-20 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 12-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 12 has been amended to include a second electrode that is “formed by metal-organic decomposition of a particle-free metal-organic decomposition ink, wherein said second electrode extends into nooks and crannies of porous portions of said first electrode and fills remaining portions of said first porosity, including said third portion and any unfilled parts of said second portion to form a metallic cathode extending through said first porosity and directly contacting said dielectric” (examiner’s emphasis). The specification filed 1/31/2024 does not support said limitation.
[0037] and Fig. 8 of the current specification disclose a conductive polymer (104) formed on and in direct contact with dielectric layer (102).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6-11 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, the preamble is confusing. It appears that applicant is claiming the structure of Fig. 3 (without an electrolyte).
Claim 9, line 2, the limitation, “a metal-organic decomposition ink” is confusing. Is this in addition to the decomposition ink already claimed in claim 1?
Claim 10, line 2, the limitation, “a metal-organic decomposition ink” is confusing. Is this in addition to the decomposition ink already claimed in claim 1?
Claim 11, line 2, the limitation, “a metal-organic decomposition ink” is confusing. Is this in addition to the decomposition ink already claimed in claim 1?
Claim 20, line 2, the limitation, “a metal-organic decomposition ink” is confusing. Is this in addition to the decomposition ink already claimed in claim 1?
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) 1-3, 6-14, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Hattori et al. (US 2018/0151297) or, in the alternative, under 35 U.S.C. 103 as obvious over Saita et al. (US 2016/0217931).
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Regarding claim 1, as best understood, Hattori et al. disclose in fig. 3, a capacitor comprising:
a first electrode (2) comprised of a first metal having a first porosity (fig. 3);
a dielectric (4) deposed on said first electrode (2); and
a second electrode (6, 10) deposed formed on said dielectric (4), said second electrode comprising a metal (6, 10) [0080],[0086];
wherein said second electrode (6, 10) is formed from a thin-film process [0080], [0086],and extends into the nooks and crannies of porous portions of said first electrode (2) and fills remaining portions of said first porosity to form a metallic cathode (6, 10) extending through said first porosity and directly contacting said dielectric (4).
When reading the preamble in the context of the entire claim, the recitation “a stacked polymer-free electrolytic capacitor” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The limitation, "formed by decomposition of a particle-free metal-decomposition ink" refers to an intermediate processing step requiring further treatment to form "metal layer”. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually its actually made. In re Hirao, 190 USPQ15 at 17 (footnote 3). See also. In re Brown, 173 USPQ 685; In re Luck, 111 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ554 does not deal with this issue); In re Marosiet al., 218 USPQ289; and particularly In re Thorpe, 227 USPQ 964, clarifies that the patentability of a "product by process" claim depends on the final product, not the process. An old or obvious product, even made by a new method, is not patentable. Accordingly, Hattori et al. disclose a structure meeting the claimed requirements.
However, Saita et al. disclose a method of depositing thin electrode layers, wherein the electrode layers are formed of a metal-decomposition ink (MOD process, [0021]).
Lacking unexpected results, it would have been obvious to a person of ordinary skill in the electrode art to from the electrode of Hattori et al. using a metal- decomposition ink (MOD method) since such a modification would form a thin film electrode using a low temperature process.
Regarding claim 2, as best understood, Hattori et al. disclose said first electrode is further characterized as having an increased surface area (fig. 3).
Regarding claim 3, as best understood, Hattori et al. disclose said increased surface area is by way of roughing a surface of said first electrode through etching [0104].
The limitation, “chemical etching” is a method of forming the device. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 6, as best understood, Hattori et al. disclose the dielectric (4) is formed on the first electrode (2).
The limitation, “the dielectric deposition is further characterized as grown through an anodization process” is a method of forming the dielectric. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Anodization is a well-known process used in the formation of oxide films.
Regarding claim 7, as best understood, Hattori et al. disclose the dielectric (4) is formed on the first electrode (2), wherein the dielectric deposition is further characterized as deposed through physical vapor deposition [0078].
The limitation, “the dielectric deposition is further characterized as deposed through physical vapor deposition” is a method of forming the dielectric. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 8, as best understood, Hattori et al. disclose said dielectric deposition is further characterized as deposed through chemical vapor deposition [0078].
The limitation, “said dielectric deposition is further characterized as deposed through chemical vapor deposition” is a method of forming the dielectric. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 9, as best understood, Hattori et al. disclose said second electrode (6, 10) formed on said dielectric (4).
The limitation, "the metal-organic decomposition ink is further characterized as being formed by spray coating said metal-organic decomposition ink" is a method of forming the device.
The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965) is
Regarding claim 10, as best understood, Hattori et al. disclose said second electrode (6, 10) is formed on the dielectric (4) .
The limitation, "a metal-organic decomposition ink is further characterized as being formed by dip coating said metal-organic decomposition ink" is a method of forming the device.
The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 11, as best understood, Hattori et al. disclose said second electrode (6,10) formed on said dielectric (4).
The limitation, "a metal-organic decomposition ink is further characterized as being formed by inkjet print said metal-organic decomposition ink" is a method of forming the device.
The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 12, as best understood, Hattori et al. disclose a stacked electrolytic capacitor comprising:
a first electrode (2) comprised of a first metal [0065] having a first porosity consisting of a first portion (Fig. 3), a second portion, and a third portion;
a dielectric (4) formed on said first electrode (2) and adapted substantially to fill the first portion of said porosity;
a conductive polymer (6 – [0080]) formed on said dielectric (4) and adapted to partially fill the second portion of said porosity; and
a second electrode (10) deposed formed on said dielectric (4), said second electrode (10) comprising a metal [0086] formed by a thin film process [0086] wherein said second electrode (10) extends into nooks and crannies of porous portions of said first electrode (2) and fills remaining portions of said first porosity, including said third portion and any unfilled parts of said second portion to form a metallic cathode extending through said first porosity and on said dielectric.
The limitation, "formed by decomposition of a particle-free metal-decomposition ink" refers to an intermediate processing step requiring further treatment to form "metal layer”. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually its actually made. In re Hirao, 190 USPQ15 at 17 (footnote 3). See also. In re Brown, 173 USPQ 685; In re Luck, 111 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ554 does not deal with this issue); In re Marosiet al., 218 USPQ289; and particularly In re Thorpe, 227 USPQ 964, clarifies that the patentability of a "product by process" claim depends on the final product, not the process. An old or obvious product, even made by a new method, is not patentable. Accordingly, Hattori et al. disclose a structure meeting the claimed requirements.
However, Saita et al. disclose a method of depositing thin electrode layers, wherein the electrode layers are formed of a metal-decomposition ink (MOD process, [0021]).
Lacking unexpected results, it would have been obvious to a person of ordinary skill in the electrode art to from the electrode of Hattori et al. using a metal- decomposition ink (MOD method) since such a modification would form a thin film electrode using a low temperature process.
Regarding claim 13, as best understood, Hattori et al. disclose said first electrode is further characterized as having an increased surface area (fig. 3).
Regarding claim 14, as best understood, Hattori et al. disclose said increased surface area is by way of roughing a surface of said first electrode through etching [0104].
The limitation, “chemical etching” is a method of forming the device. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 17, as best understood, Hattori et al. disclose the dielectric (4) is formed on the first electrode (2).
The limitation, “the dielectric deposition is further characterized as grown through an anodization process” is a method of forming the dielectric. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Anodization is a well-known process used in the formation of oxide films.
Regarding claim 18, as best understood, Hattori et al. disclose the dielectric (4) is formed on the first electrode (2), wherein the dielectric deposition is further characterized as deposed through physical vapor deposition [0078].
The limitation, “the dielectric deposition is further characterized as deposed through physical vapor deposition” is a method of forming the dielectric. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 19, as best understood, Hattori et al. disclose said dielectric deposition is further characterized as deposed through chemical vapor deposition [0078].
The limitation, “said dielectric deposition is further characterized as deposed through chemical vapor deposition” is a method of forming the dielectric. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 20, as best understood, Hattori et al. disclose said second electrode (6, 10) formed on said dielectric (4).
The limitation, "the metal-organic decomposition ink is further characterized as being formed by spray coating said metal-organic decomposition ink" is a method of forming the device.
The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Claim(s) 1-2, and 4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Laor (US 2011/0310530) or, in the alternative, under 35 U.S.C. 103 as obvious over Saita et al. (US 2016/0217931).
Regarding claim 1, as best understood, Laor discloses in fig. 7, a capacitor comprising:
a first electrode (124, 104) comprised of a first metal having a first porosity (104);
a dielectric (112) deposed on said first electrode (104); and
a second electrode (118) deposed formed on said dielectric (112), said second electrode comprising a metal (118);
wherein said second electrode (118) extends into the nooks and crannies of porous portions of said first electrode (104 – see fig. 7) and fills remaining portions of said first porosity to form a metallic cathode (118) extending through said first porosity and directly contacting said dielectric (112).
When reading the preamble in the context of the entire claim, the recitation “a stacked polymer-free electrolytic capacitor” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The limitation, "formed by decomposition of a particle-free metal-decomposition ink" refers to an intermediate processing step requiring further treatment to form "metal layer”. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually its actually made. In re Hirao, 190 USPQ15 at 17 (footnote 3). See also. In re Brown, 173 USPQ 685; In re Luck, 111 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ554 does not deal with this issue); In re Marosiet al., 218 USPQ289; and particularly In re Thorpe, 227 USPQ 964, clarifies that the patentability of a "product by process" claim depends on the final product, not the process. An old or obvious product, even made by a new method, is not patentable. Accordingly, Laor discloses a structure meeting the claimed requirements.
However, Saita et al. disclose a method of depositing thin electrode layers, wherein the electrode layers are formed of a metal-decomposition ink (MOD process, [0021]).
Lacking unexpected results, it would have been obvious to a person of ordinary skill in the electrode art to from the electrode of Laor using a metal- decomposition ink (MOD method) since such a modification would form a thin film electrode using a low temperature process.
Regarding claim 2, Laor discloses the first electrode (104, 124) is further characterized as having an increased surface area (104).
Regarding claim 4, Laor discloses the increased surface area (104) is by way of sintering of metal particles [0114] to said first electrode.
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.
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.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hattori et al. (US 2018/0151297) (Saita et al. (US 2016/0217931)) in view of Laor (US 2011/0310530).
Regarding claim 15, Hattori et al. disclose the claimed invention except for said increased surface area is by way of sintering of metal particles of the first electrode.
Laor discloses a capacitor having a first electrode, wherein the first electrode has increased surface area (104), wherein the increased surface area is by way of sintering of metal particles [0114] to said first electrode.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to form the first electrode of Hattori et al. by increasing the surface area by way of sintering of metal particles to said first electrode, since such a modification would form a first electrode having high surface area.
Conclusion
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 ERIC THOMAS whose telephone number is (571)272-1985. The examiner can normally be reached Monday-Friday, 6:00 AM-2:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/ERIC W THOMAS/Primary Examiner, Art Unit 2847
ERIC THOMAS
Primary Examiner
Art Unit 2847
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