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 .
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.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Arakawa et al. (US 2018/0158611) in view of Nagao et al. (JP 2015-067860).
Regarding claims 1-5, Arakawa discloses conductive porous base material 2 on the support portion 10 side. In the capacitor 1 of the present embodiment, the first external electrode 18 and the upper electrode 6 are electrically connected to each other, and the second external electrode 20 and the support portion 10 are electrically connected to each other/ At an end portion of the capacitor 1, an insulating portion 16 is provided between the dielectric layer 4 and the upper electrode 6. The capacitor 1 includes a first external electrode 18 on the upper electrode 6 and a second external electrode 20 on the principal surface of the conductive porous base material 2 on the support portion 10 side (para 0039). The dielectric layer in the present invention is formed from a compound consisting of atoms each having an origin different from an origin of the conductive porous base material (para 0072). While the material forming the dielectric layer 4 is not particularly limited as long as it has insulating properties (para 0073). Arakawa discloses a material constituting the first external electrode 18 and the second external electrode 20 is not particularly limited, a metal such as Au, Pb, Pd, Ag, Sn, Ni, and Cu, and alloys thereof, and a conductive polymer, are preferable, for example. A method for forming the first external electrode is not particularly limited, and a CVD method, electrolytic plating, electroless plating, vapor deposition, sputtering, baking of a conductive paste, and the like can be used, for example, and the electrolytic plating, the electroless plating, the vapor deposition, the sputtering, and the like are preferable (para 0089).
However, Arakawa fails to disclose that the dielectric layer material comprising a composite oxide represented by CexAl1-xOk and composite being amorphous with claimed requirement of x and k.
Whereas, Nagao discloses a Ce-Al oxide sputtering target in which a crack is rarely caused in manufacturing the target by a sintering method, and a manufacturing method of the target (abstract). Nagao discloses composition comprising Ce: 6.5 to 27.0 atomic% and Al: 13.0 to 55.0 atomic% as a metal element, with the balance being O and inevitable impurities (claims). With respect to x in an amount of 0.5, where both Ce and Al will have 0.5, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). With respect to k, the value of oxide would intrinsically be 1.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include Ce-Al oxide in claimed x and k as taught by Nagao in the dielectric layer of Arakawa motivated by the desire to avoid breaking and improvement in productivity.
Regarding claims 6-8, Arakawa discloses while a material constituting the first external electrode 18 and the second external electrode 20 is not particularly limited, a metal such as Au, Pb, Pd, Ag, Sn, Ni, and Cu, and alloys thereof (para 0089).
Regarding claims 10-12, While there is no disclosure that the capacitor is used in electrical circuit, circuit board and apparatus as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. electrical circuit, circuit board and apparatus, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Arakawa and further that the prior art structure which is a capacitor identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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