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 .
Election/Restrictions
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/30/2025.
Specification
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 Objections
Claim 14 is objected to because of the following informalities:
Claim 14, line 3, replace “a” with –an--. Appropriate correction is required.
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 1-15 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 recites the limitation "the substrate" in line 14. There is insufficient antecedent basis for this limitation in the claim.
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.
(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, 8-9, and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Imai et al. (JP H0645178 A).
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Regarding claim 1, Imai et al. disclose (see annotated figure above)
a film capacitor (1, [0001]) comprising:
a laminate of a dielectric film (6);
a first electrode (7) on a first end surface of the laminate (6);
a second electrode (8) on a second end surface of the laminate (6);
a terminal electrode (9) including a connector (see annotated figure above) electrically connected to the first electrode (7) or the second electrode (8), and an extension extending in a substrate mounting direction along the first electrode or the second electrode from the connector; and
an exterior material (3) covering the laminate (6), the first electrode (8), the second electrode (9), the connector (see annotated figure above), and at least a part of the extension (see annotated figure above), wherein
the film capacitor (see annotated figure above) has a columnar shape having a side surface (bottom) connecting the first electrode (8) and the second electrode (9), the side surface has a curved part, and
at least the part of the extension (see annotated figure above) is arranged at a first position shifted from a second position closest to a substrate (not illustrated) in the curved part in a space between a region facing the substrate of the curved part and the substrate (not illustrated) when the film capacitor is mounted on the substrate.
Imai et al. do not specifically disclose the capacitor is mounted on a substrate.
It is well known in the art to mount a capacitor to a substrate.
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 capacitor of Imai et al. on substrate, since such a modification would from an electric device having a four terminal capacitor comprising terminals with superior connection strength.
Regarding claim 2, Imai et al. disclose a portion of the exterior material (3) covering at least the part of the extension (see annotated figure above) is arranged in the space.
Regarding claims 3, Imai et al. disclose the portion of the exterior material covering the at least the part of the extension is arranged at a third position farther from the substrate than the second position closest to the substrate in the curved part (see annotated figure below).
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Regarding claims 4 and 9, Imai et al. disclose the extension includes a first extension extending along the curved part (see annotated figure below) from the connector and a second extension (see annotated figure below) extending toward the substrate from the first extension when the film capacitor is mounted on the substrate.
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Regarding claim 8, Imani et al. disclose of the exterior material (3) covering at least the part of the extension is arranged at a third position farther from the substrate than the second position closest to the substrate in the curved part (see annotated figure below).
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Regarding claim 11, Imani et al. disclose the curved part of the side surface faces a main surface of the substrate when the film capacitor (1) is mounted on the substrate.
Regarding claim 12, Imani et al. disclose a distance from the extension of the terminal electrode (9) to the flat portion is 1/4 or less of a diameter of the curved part (see figure 1).
Regarding claim 13, Imani et al. disclose the side surface has a flat portion (see Fig. 1) connected to the curved part (see Fig. 1), and the extension of the terminal electrode (9) extends in a direction (parallel to) along the flat portion (see Fig. 1).
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (JP H0645178 A) in view of Yokoyama et al. (JP H02155215 A).
Regarding claim 6, Imai et al. disclose the claimed invention except for a part of the side surface of the film capacitor is in contact with the substrate when the film capacitor is mounted on the substrate.
Yokoyama et al. disclose a film capacitor (1, [0001]) formed on a substrate (“Effect of the Invention” section), wherein a part of a surface of the film capacitor is in contact with the substrate (at least indirectly) when the film capacitor (1) is mounted on the substrate.
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 device of Imai et al. so that a part of the side surface of the film capacitor is in contact with the substrate when the film capacitor is mounted on the substrate, since such a modification would from an electric device having a four terminal capacitor comprising terminals with superior connection strength.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (JP H0645178 A).
Regarding claim 7, Imai et al. disclose the claimed invention except for a diameter of the curved part is 8 mm or more.
It is well known in the film capacitor art that designing a capacitor with a specific diameter yields a corresponding specific capacitance value.
Lacking unexpected results, it would have been obvious to a person of ordinary skill in the film capacitor art to form the capacitor of Imai et al. so that a diameter of the curved part is 8 mm or more, since such a modification would from a capacitor having desired capacitance.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (JP H0645178 A) in view of Arai et al. (JP 2006-269872 A).
Regarding claim 14, Imai et al. disclose the side surface has a flat portion connected to the curved part (Fig.1).
Imai et al. disclose the claimed invention except for the extension of the terminal electrode extends in an intersecting the flat portion.
Arai et al. disclose an electrical component having a terminal (42), wherein the terminal (42) has an extension portion that is bent 90 degrees (@42b) so that a portion of the extension portion is parallel to a substrate (20).
It would have been obvious to a person of ordinary skill in the terminal electrode art to bend the extension portion at 90 degrees such that a portion of the extension portion extends parallel to the substrate, since such a modification would form a film capacitor where a soldering defect is eliminated.
*The modified Imai et al. disclose the extension of the terminal electrode extends in an intersecting the flat portion
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (JP H0645178 A) in view of Komatsu (JP 3025930 U).
Regarding claim 15, Imai et al. disclose the side surface has a flat portion connected to the curved part (*see Fig. 1).
Imai et al. disclose the claimed invention except for the flat portion faces a main surface of the substrate when the film capacitor is mounted on the substrate.
Komatsu discloses a film capacitor, wherein the film capacitor is attached to a substrate [0003], the film capacitor is mounted so that a flat portion faces a main surface of the substrate (see Fig 1) when the film capacitor is mounted on the substrate [0003].
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 capacitor of Imai et al. so that the flat portion faces a main surface of the substrate when the film capacitor is mounted on the substrate, since such a modification would reduce the overall height of the assembled component while providing excellent solder joint reliability.
Allowable Subject Matter
Claims 5 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: In combination with the other claim limitations, the prior art does not teach or suggest a film capacitor wherein the terminal electrode further includes a substrate connector extending in a direction along the substrate from the extension when the film capacitor is mounted on the substrate, and the substrate connector is arranged in the space (claim 5, 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 3,806,766 A
US 2006/0104006 A1
JP 04343407 A
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/ERIC W THOMAS/Primary Examiner, Art Unit 2848
ERIC THOMAS
Primary Examiner
Art Unit 2848