CTNF 18/588,629 CTNF 100612 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of the Application Claims 1-20 are pending in this application. Specification 06-11 AIA The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. Claim 13 recites the limitation " internal electrode " on page 3 lines 15 and 17. There is insufficient antecedent basis for this limitation in the claim since claim 1 introduces an “ inner electrode ”. For compact prosecution, the examiner interprets “internal electrode” in claim 13 to read “inner electrode”. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 18-19 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Aburakawa (US 20200135406 A1) . Re Claim 18 Aburakawa teaches a thin film capacitor (FIG. 9) comprising: a capacitor part having a lower electrode (11) [0038], an inner electrode (13), and a dielectric layer (12) positioned between the lower electrode (11) and the inner electrode (13); an insulating layer (23) [0084] covering the capacitor part; a terminal electrode (34) [0084] provided on the insulating layer (23); and a plurality of via holes (14h 2 ) penetrating the insulating layer (23) so that the terminal electrode (34) and the inner electrode (13) of the capacitor part are connected to each other via the plurality of via holes, wherein a first minimum distance between the via holes (14h 2 ) is greater than a second minimum distance between any of the via holes and an outer peripheral edge of the terminal electrode (34, FIG. 9). Re Claim 19 Aburakawa teaches the thin film capacitor as claimed in claim 18, wherein the first minimum distance is greater than or equal to twice the second minimum distance (14h 2 hole walls are 2x closer horizontally to edge of 34 that fills hole than 14h 2 is to 14h 1 /14h 2 ) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 1, 6-8, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) . Re Claim 1 Aburakawa teaches a thin film capacitor (FIG. 9) comprising: a capacitor part having a lower electrode (11) [0038], an inner electrode (13), and a dielectric layer (12) positioned between the lower electrode (11) and the inner electrode (13); an insulating layer (23) [0084] covering the capacitor part; a terminal electrode (34) [0083] provided on the insulating layer (23); and a plurality of via holes (14h 2 ) [0068] penetrating the insulating layer (23) so that the terminal electrode (34) and the inner electrode (13) of the capacitor part are connected to each other via the plurality of via holes (14h 2 ). Aburakawa does not teach the terminal electrode includes: a via region on which the plurality of via holes are arranged and having a ring-shaped; and a bonding region surrounded by the via region and having flat-shaped. Shin teaches the terminal electrode (132b) [0028] includes: a via region (see drawing below) on which the plurality of via holes (42) are arranged and having a ring-shaped (FIG. 1); and a bonding region (see modified FIG. 1 below) surrounded by the via region and having flat-shaped (FIG. 2). Modified FIG. 1 shown below PNG media_image1.png 601 986 media_image1.png Greyscale It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Shin into the structure of Aburakawa since Shin teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify Shin in combination with Aburakawa in the above manner for the motivation of forming a bonding region surrounded by a via region on the terminal electrode to all one to build a capacitor optimizing the available space and still allowing for the device to reduce thickness compared to previously made capacitors. Re Claim 6 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, wherein each of the plurality of via holes (Shin, FIG. 6D and E, holes shown in FIG. 6D, FIG. 6E shows holes filled with 42) is filled with a metal material ([0069-0070] say 42 can be copper). Re Claim 7 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 6, wherein the metal material (Shin, 42) is made of Ti, Ni, Cr, Cu [0070], or a laminated film thereof. Re Claim 8 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 6, wherein the metal material (42 is copper) includes a material constituting the terminal electrode (132b is also copper, [0072-0073]). Re Claim 13 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, wherein the insulating layer (Aburakawa, 23) covers a surface of the inner electrode (13) and a portion of a surface (side) of the lower electrode (11) that is not covered with the inner electrode (13, FIG. 9). Re Claim 15 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, wherein a minimum distance between the via holes (Shin, 42) is greater than a minimum distance between any of the via holes and an outer peripheral edge of the terminal electrode (132b, FIG. 1 and 2) . 07-22-aia AIA Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of Fujii et al. (WO 2018021001 A1) . Re Claim 2 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach the plurality of via holes are apart from an outer peripheral edge of the terminal electrode by 50 μm or more. Fujii page 5 par 5 teaches, “The formation material and thickness of the first and second electrode pads 8a, 8b, 9a, 9b (terminal electrodes 4a, 4b) are not particularly limited as long as they have desired conductivity. Metal materials such as Cu, Ni, Sn, Au, Ag, Pb, and alloys thereof can be used, and the thickness is 5 to 100 μm, preferably 10 to 50 μm.” Using FIG. 1 & 50 μm as 9a thickness, 7a is wider than 9a is thick. 7a is over 50 μm wide, and the width of 9a from left to right is over 3x and roughly centered on 7a. Therefore the a side of 7a is at least 50 μm away from a side surface of 9a. It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Fujii into the structure of Aburakawa in view of Shin since Fujii teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify Fujii in combination with Aburakawa in view of Shin in the above manner for the motivation of finding optimal distance between the terminal electrode edge and the plurality of via holes. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the instant case, process optimization will allow one of ordinary skill in the art to reach ideal via hole and terminal electrode placement . 07-22-aia AIA Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of Jain et al. (CN 111696949 A) . Re Claim 3 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach the plurality of via holes are apart from the bonding region by 50 μm or more. Jain teaches second electrode 108 (page 7 par 1) is up to 35 μm thick. The distance from the bonding region to the hole boundary on each side are roughly 1.5x or more the thickness of 108. Therefore, the via holes are > 50 μm from the bonding region. PNG media_image2.png 661 836 media_image2.png Greyscale It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Jain into the structure of Aburakawa in view of Shin since Jain teaches a thin film capacitor. The ordinary artisan would have been motivated to modify Jain in combination with Aburakawa in view of Shin in the above manner for the motivation of finding optimal distance between the bonding region and via holes. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the instant case, process optimization will allow one of ordinary skill in the art to reach optimal via hole positions . 07-22-aia AIA Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of Kagawa et al. (US 20220059646 A1) . Re Claim 4 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach each of the plurality of via holes has a substantially circular planar shape and has a diameter of 10 μm or more and 100 μm or less. Kagawa teaches each of the plurality of via holes (9a, FIG. 1) has a substantially circular planar shape [0059] and has a diameter of 10 μm ([0046] states, “…lower electrode 4 is not particularly limited, but is preferably from 0.5 μm to 10 μm …” The width of 9a in FIG. 1 is roughly the same distance as the thickness of 4 in FIG. 1). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Kagawa into the structure of Aburakawa in view of Shin since Kagawa teaches a thin film capacitor. The ordinary artisan would have been motivated to modify Kagawa in combination with Aburakawa in view of Shin in the above manner for the motivation of finding optimal diameter and shape for plurality of via holes. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the instant case, process optimization will allow one of ordinary skill in the art to reach ideal via hole diameter and shape . 07-22-aia AIA Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of Kusuyama et al. (WO 2022264575 A1) . Re Claim 5 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach each of the plurality of via holes has a tapered cross-sectional shape. Kusuyama teaches each of the plurality of via holes (regions filled with 42 {page 19 last par} in direct contact with 36B {page 23 last par}) has a tapered cross-sectional shape (FIG. 13). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Kusuyama into the structure of Aburakawa in view of Shin since Kusuyama teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify Kusuyama in combination with Aburakawa in view of Shin in the above manner for the motivation of finding forming the via holes to have an optimal cross-sectional profile to allow for configuring passive elements and active elements as electronic parts as a collective module. Page 23 par 2 states, “It becomes possible to electrically connect the capacitor array of the present invention and the electronic component in the thickness direction. As a result, it becomes possible to configure passive elements and active elements as electronic parts as a collective module.” 07-22-aia AIA Claim s 9-11 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of Nakaiso (US 20170338038 A1) . Re Claim 9 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach the terminal electrode is covered with a surface treatment layer. Nakaiso teaches the terminal electrode (61A) is covered with a surface treatment layer ([0069] states, “The first terminal electrodes 61A , 61B and so on, and the second terminal electrode 62C and so on, the surfaces of which are plated with Ni …”). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Nakaiso into the structure of Aburakawa in view of Shin since Nakaiso teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify Nakaiso in combination with Aburakawa in view of Shin in the above manner for the motivation of coating the terminal electrode with a surface treatment layer to build a capacitor suitable for realizing low equivalent series resistance and low equivalent series inductance. [0002] states, “The present invention relates to a capacitor that is suitable for realizing low ESR and low ESL, and to an electronic device into which the capacitor is incorporated.” Re Claim 10 Aburakawa in view of Shin and Nakaiso teaches the thin film capacitor as claimed in claim 9, wherein the surface treatment layer is made of Ni (Nakaiso, [0069]). Re Claim 11 Aburakawa in view of Shin and Nakaiso teaches the thin film capacitor as claimed in claim 9, wherein the surface treatment layer covers top and side surfaces of the terminal electrode (Nakaiso, 61A, [0069] states, “The first terminal electrodes 61A , 61B and so on, and the second terminal electrode 62C and so on, the surfaces of which are plated with Ni …). Re Claim 16 Aburakawa in view of Shin and Nakaiso teaches the thin film capacitor as claimed in claim 1, further comprising a solder resist (Nakaiso, [0068], 33) covering the via region (via region labeled in image below) of the terminal electrode (61A) without covering the bonding region (labeled in image below) of the terminal electrode. Nakaiso modified FIG. 2 shown below PNG media_image3.png 407 884 media_image3.png Greyscale Re Claim 17 Aburakawa in view of Shin and Nakaiso teaches the thin film capacitor as claimed in claim 16, wherein the bonding region of the terminal electrode (Nakaiso, 61A, [0069] states, “The first terminal electrodes 61A, 61B and so on, and the second terminal electrode 62C and so on, the surfaces of which are plated with Ni…”) is covered with a surface treatment layer such that the surface treatment layer is not covered with the solder resist (33, FIG. 2) . 07-22-aia AIA Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of Yoshida et al. (US 20180027660 A1) . Re Claim 12 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach a Young's modulus of the insulating layer is 0.1 GPa or more and 2.0 GPa or less. Yoshida [0066] states, “Young's modulus of the insulating layer 12 is preferably 1 GPa or more.” It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Yoshida into the structure of Aburakawa in view of Shin since Yoshida teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify Yoshida in combination with Aburakawa in view of Shin in the above manner for the motivation of forming the insulating layer to have an optimal value for Young’s modulus. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the instant case, process optimization will allow one of ordinary skill in the art to use a material with an ideal Young’s modulus . 07-22-aia AIA Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Aburakawa et al. (US 20200135406 A1) in view of Shin et al. (US 20180040422 A1) as applied to claim 1 above, and further in view of 林 (JP 6672820 B2) . Re Claim 14 Aburakawa in view of Shin teaches the thin film capacitor as claimed in claim 1, but does not teach corners of the terminal electrode are rounded. 林 teaches corners of the terminal electrode are rounded (Page 3 last par states, “Terminal electrodes 6a includes a coupling portion 6a .sub.2 and the second electrode 6a.sub.1…6a .sub.1 is not limited to a rectangle, the corners as rectangular or later may be a shaped rectangular and has a circular arc (see FIG. 3).”). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by 林 into the structure of Aburakawa in view of Shin since 林 teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify 林 in combination with Aburakawa in view of Shin in the above manner for the motivation of rounding the corners of the terminal electrode as it must have a reliable connection with other electrodes in the device. Page 1 last par states, “It is also important that the connection between the terminal electrode of the mounted electronic component and the mounting electrode on the circuit board is reliably performed.” 07-21-aia AIA Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (US 20180040422 A1) in view of Ueki (WO 2017057422 A1) and Murase (DE 112018000289 T5) . Re Claim 20 Shin teaches an apparatus (FIG. 2) comprising: a thin film capacitor [0048] comprising: a capacitor part having a lower electrode (21) [0028], an inner electrode (22), and a dielectric layer (11) positioned between the lower electrode (21) and the inner electrode (22); an insulating layer (50) [0056] covering the capacitor part; a terminal electrode (132b) [0072] provided on the insulating layer (50); and a plurality of via holes (FIG. 6D shows holes, FIG. 6E shows holes filled with 42) penetrating the insulating layer (50) so that the terminal electrode (132b) and the inner electrode (22) of the capacitor part are connected to each other via the plurality of via holes (42 is hole filling) [0028], wherein the terminal electrode (132b) includes: a via region (see modified Shin FIG. 1 under claim 1) on which the plurality of via holes (42 in FIG. 1 filles holes) are arranged and having a ring-shaped (FIG. 1); and a bonding region (see modified Shin FIG. 1 under claim 1) surrounded by the via region. Shin does not teach a substrate having a first electrode and a second electrode; a thin film capacitor mounted on the first electrode of the substrate; and wherein the thin film capacitor is mounted on the first electrode of the substrate such that the lower electrode is connected to the first electrode of the substrate. Ueki teaches a substrate (page 2 par 1) having a first electrode (62, page 5 par 4) and a second electrode (61); a thin film capacitor (TFC, page 2 par 1) mounted on the first electrode (62) of the substrate (10); and wherein the thin film capacitor (TFC) is mounted on the first electrode (62) of the substrate (10) such that the lower electrode (22) is connected to the first electrode of the substrate (10, FIG. 1). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Ueki into the structure of Shin since Ueki teaches a thin film capacitor device. The ordinary artisan would have been motivated to modify Ueki in combination with Shin in the above manner for the motivation of forming substrate electrodes to allow optimal electrical connections with the thin film capacitor and help the device maintain optimal current levels. Shin in view of Ueki does not teach a bonding wire that connects the thin film capacitor and the second electrode of the substrate, wherein the bonding wire is bonded to the bonding region of the terminal electrode without bonded to the via region of the terminal electrode. Murase teaches a bonding wire (40) that connects the capacitor (100, page 6 par 2) and the second electrode (22, page 6 par 1) of the substrate (20), wherein the bonding wire (40) is bonded to the bonding region (area under 41 in FIG. 1) of the terminal electrode (41, page 6 par 1) without bonded to the via region (top of 130b not aligned with 41) of the terminal electrode (FIG. 1 and 2). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching as taught by Murase into the structure of Shin in view of Ueki since Murase teaches connecting an external electrical bonding wire to a capacitor. The ordinary artisan would have been motivated to modify Murase in combination with Shin in view of Ueki in the above manner for the motivation of connecting a bond wire to the capacitor to allow it to be electrically connected to other components. Page 2 par 2 states, “Such capacitors, which are active elements, are mounted on a circuit board together with active elements such as Si-IGBTs to form a module with various functions. In this case, for example wire bonding, soldering or the like is used to obtain an electrical connection of the elements.” Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MARK SIPLING whose telephone number is (571)272-3269. The examiner can normally be reached 10 AM - 6 PM EST. 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, Eva Montalvo can be reached at (571) 270-3829. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KENNETH MARK SIPLING/ Examiner, Art Unit 2818 /DUY T NGUYEN/ Primary Examiner, Art Unit 2818 5/11/26 Application/Control Number: 18/588,629 Page 2 Art Unit: 2818 Application/Control Number: 18/588,629 Page 3 Art Unit: 2818 Application/Control Number: 18/588,629 Page 4 Art Unit: 2818 Application/Control Number: 18/588,629 Page 5 Art Unit: 2818 Application/Control Number: 18/588,629 Page 6 Art Unit: 2818 Application/Control Number: 18/588,629 Page 7 Art Unit: 2818 Application/Control Number: 18/588,629 Page 8 Art Unit: 2818 Application/Control Number: 18/588,629 Page 9 Art Unit: 2818 Application/Control Number: 18/588,629 Page 10 Art Unit: 2818 Application/Control Number: 18/588,629 Page 11 Art Unit: 2818 Application/Control Number: 18/588,629 Page 12 Art Unit: 2818 Application/Control Number: 18/588,629 Page 13 Art Unit: 2818 Application/Control Number: 18/588,629 Page 14 Art Unit: 2818 Application/Control Number: 18/588,629 Page 15 Art Unit: 2818
Prosecution Insights