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 § 112
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 and 3-21 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.
In claims 1 and 3-21 the term “a conductive metal” is used twice in two separate locations, it is unclear if this conductive metal should be the same conductive metal or different conductive metals. It will be treated as if the second “a conductive metal” reads “the conductive metal” for the purpose of examining.
Claim 12 is dependent upon itself and therefore is 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.
It is believed that the claim should depend from 1 and will be treated as such.
Claim Rejections - 35 USC § 102
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, 4, 11, and 13-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SAWADA et al (US 2018/0182552).
Regarding claim 1, SWADA teaches a multilayer ceramic capacitor (Fig. 1-6) comprising: a capacitor body (Fig. 1, 10) that includes dielectric layers (Fig. 1, 20) and internal electrode layers (Fig. 1, 30), the capacitor body comprising (i) an active portion (Fig. 4-5, X2) in which the dielectric layers and the internal electrode layers are alternately disposed (Fig. 4-5), and (ii) a cover portion (Fig. 4-5, outside of X2) in which the dielectric layers are disposed on surfaces of the active portion opposing each other in a thickness direction (Fig. 3); and external electrodes (Fig. 3, 100) that are disposed on an outside of the capacitor body (Fig. 3), each of the external electrodes including (i) an inner layer (Fig. 3, 61) that is disposed on the active portion on a cross-section of the capacitor body so as to be electrically coupled to at least one of the internal electrode layers (Fig. 3), and (ii) an outer layer (Fig. 3, 62) that is disposed on the inner layer and the cover portion so as to cover the inner layer (Fig. 3), the inner layer including a conductive metal in an amount of 95 atom% to 100 atom% based on a total amount of elements in the inner layer ([0089]), and the outer layer including a conductive metal (multiple metals are the same in both layers [0099]), and glass including aluminum oxide (Al2O3) and silicon dioxide (SiO2) (B-Si-Zn-Ba-Ca-Al glass would contain both of these as it would contain the oxides of each of these elements [0097]), wherein a thickness of the inner layer is in a range of from 1 μm to 3 μm ([0090].
Regarding claim 4, SWADA further teaches that the conductive metal that is included in the inner layer and the outer layer comprises copper (Cu), nickel (Ni), silver (Ag), palladium (Pd), gold (Au), platinum (Pt), tin (Sn), tungsten (W), titanium (Ti), lead (Pb), an alloy thereof, or a combination thereof ([0089] and [0099]).
Regarding claim 11, SWADA further teaches that the glass of the outer layer further includes lithium oxide (Li2O), sodium oxide (Na2O), iron(III) oxide (Fe2O3), zinc oxide (ZnO) ([0097]), barium oxide (BaO), calcium oxide (CaO), boron trioxide (B2O3), tin(IV) oxide (SnO2), or a combination thereof.
Regarding claims 13-21, The language, term, or phrase used in each of the claims, is directed towards the process of making the capacitor of claim 1. 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 made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language used in each of the claims only requires the capacitor of claim 1, which does not distinguish the invention from SWADA, who teaches the structure as claimed.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAWADA et al (US 2018/0182552) in view of KOBAYASHI (US 2018/0068788).
Regarding claim 5, SWADA fails to teach the claim limitations.
KOBAYASHI teaches that the conductive metal that is included in the inner layer and the outer layer comprises nanoparticles with an average size of 20 nm to 200 nm (2-1000nm [0011]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of KOBAYASHI to the invention of SWADA, in order to construct the devices using known materials in the art to meet user needs based on known material properties and availability of those materials. The use of conventional materials/components to perform their known function is obvious. MPEP 2144.06.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAWADA et al (US 2018/0182552) in view of FUKUDA et al (US 2018/0247766).
Regarding claim 8, SWADA fails to teach the claim limitations.
FUKUDA teaches that at least one of the inner layer and the internal electrode layers includes a Cu-Ni alloy ([0054]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of FUKUDA to the invention of SWADA, in order to construct the devices using known materials in the art to meet user needs based on known material properties and availability of those materials. The use of conventional materials/components to perform their known function is obvious. MPEP 2144.06.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAWADA et al (US 2018/0182552) in view of SUZUKI et al (US 2011/0075318).
Regarding claim 9, SWADA fails to teach the claim limitations.
SUZUKI teaches that the aluminum oxide (Al2O3) is included in an amount of 10 mol% to 20 mol% based on a total amount of the glass of the outer layer (Table 4, 10 mol%).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of SUZUKI to the invention of SWADA, in order to construct the devices using known materials in the art to meet user needs based on known material properties and availability of those materials. The use of conventional materials/components to perform their known function is obvious. MPEP 2144.06.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAWADA et al (US 2018/0182552) in view of KIM et al (US 2017/0244023).
Regarding claim 10, SWADA fails to teach the claim limitations.
KIM teaches that the silicon dioxide (SiO2) is included in an amount of 8 mol% to 15 mol% based on a total amount of the glass of the outer layer (Table 1, multiple examples of mol % under 15).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of KIM to the invention of SWADA, in order to construct the devices using known materials in the art to meet user needs based on known material properties and availability of those materials. The use of conventional materials/components to perform their known function is obvious. MPEP 2144.06.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAWADA et al (US 2018/0182552) in view of Aitken et al (US 2015/0064576).
Regarding claim 12, SWADA fails to teach the claim limitations.
Aitken teaches that the glass of the outer layer further includes iron(III) oxide (Fe2O3) and zinc oxide (ZnO) ([0034]), iron(III) oxide (Fe2O3) is included in an amount of 1 mol% to 3 mol% based on a total amount of the glass of the outer layer ([0034]), and zinc oxide (ZnO) is included in an amount of 5 mol% to 10 mol% based on a total amount of the glass of the outer layer ([0034]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of Aitken to the invention of SWADA, in order to construct the devices using known materials in the art to meet user needs based on known material properties and availability of those materials. The use of conventional materials/components to perform their known function is obvious. MPEP 2144.06.
Allowable Subject Matter
Claim 2 is allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claim 2, the prior art fails to teach or suggest, alone or in combination:
A multilayer ceramic capacitor comprising: a capacitor body that includes dielectric layers and internal electrode layers, the capacitor body including (i) an active portion in which the dielectric layers and the internal electrode layers are alternately disposed, and (ii) a cover portion in which the dielectric layers is disposed on surfaces of the active portion opposing each other in a thickness direction; and external electrodes that are disposed on an outside of the capacitor body, each of the external electrodes including (i) an inner layer that is disposed on the active portion on a cross-section of the capacitor body so as to be electrically coupled to at least one of the internal electrode layers, and (ii) an outer layer that is disposed on the inner layer and the cover portion so as to cover the inner layer, the inner layer including a conductive metal in an amount of 95 atom% to 100 atom% based on a total amount of elements in the inner layer, the outer layer including the conductive metal, and glass including aluminum oxide (Al2O3) and silicon dioxide (SiO2), the outer layer comprising an interface region R1 defined as a region from a boundary between the inner layer and the outer layer to a point in a range of from 5% to 15% of a total thickness of the external electrodes in a length direction, and the glass is included in the interface region R1 in an amount of 50 mol% to 100 mol% based on a total amount of the glass of the outer layer.
Specifically, the prior art fails to teach or make obvious, alone or in combination, the limitation of “the outer layer comprising an interface region R1 defined as a region from a boundary between the inner layer and the outer layer to a point in a range of from 5% to 15% of a total thickness of the external electrodes in a length direction, and the glass is included in the interface region R1 in an amount of 50 mol% to 100 mol% based on a total amount of the glass of the outer layer” in combination with the other claim limitations.
Claims 3 and 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the 112 issues were resolved.
Regarding claim 3, the prior art fails to teach or make obvious, alone or in combination, the limitation of “wherein the outer layer includes an interface region R1 defined as a region from a boundary between the inner layer and the outer layer to a point in a range of from 5% to 15% of a total thickness of the external electrodes in a length direction (L-axis direction), and the glass of the outer layer is included in the interface region R1 in an amount of 50 mol% to 100 mol% based on a total amount of the glass of the outer layer” in combination with the other claim limitations.
Regarding claim 6, the prior art fails to teach or make obvious, alone or in combination, the limitation of “wherein the inner layer further comprises the glass including aluminum oxide (Al2O3) and silicon dioxide (SiO2), and the glass of the inner layer is included in an amount of 0.1 mol% to 5 mol% based on a total amount of components of the inner layer” in combination with the other claim limitations.
Regarding claim 7, the prior art fails to teach or make obvious, alone or in combination, the limitation of “wherein the outer layer includes an interface region R2 defined as a region from a boundary between the cover portion and the outer layer to a point in a range of from 5% to 15% of a total thickness of the external electrodes along a longest curvature radii of the external electrodes, and the glass of the outer layer is included in the interface region R2 in an amount of 70 mol% to 100 mol% based on a total amount of the glass of the outer layer” in combination with the other claim limitations.
Additional Relevant Prior Art:
KOBAYASHI et al (US 2009/0323253) teaches relevant art in Fig. 3.
HARADA (US 2019/0355518) teaches relevant art in Fig. 2.
NISHISAKA et al (US 2022/0013291) teaches relevant art in Fig. 1-13.
LEE et al (US 2022/0208464) teaches relevant art in Fig. 1-4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P MCFADDEN whose telephone number is (571)270-5649. The examiner can normally be reached M-Thur 8am-9pm PST.
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/MICHAEL P MCFADDEN/Primary Examiner, Art Unit 2848