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.
Claim 19 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. The claim has a second “a second electrode” and it is unclear if this second electrode is the same or a new electrode, it is believed that this is referring to the same second electrode 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) 11, 16-17, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Six et al (US 2020/0406526).
Regarding claim 11, Six discloses a capacitor (Fig. 7), having a first electrode (Fig. 7, 3) and a second electrode (Fig. 7, 4), both the first electrode and the second electrode are directly attached to a dielectric layer (Fig. 7, 2), the dielectric layer having a polymer material ([0014-15]) in which polymer main chains or different sections of a polymer main chain are covalently linked to one another via bridging linker molecules (chemical formula 1 [0047-0048]).
Regarding claim 16, Six discloses a multilayer capacitor (Fig. 3, 1) comprising: electrodes (Fig. 3, 3/ 4); and dielectric layers (Fig. 3, 2) alternatingly stacked with the electrodes, the dielectric layers having a polymer material in which polymer main chains or different sections of a polymer main chain are covalently linked to one another via bridging linker molecules (chemical formula 1 [0047-0048]), and wherein the electrodes are contacted via external contacts (Fig. 3, 5/6).
Regarding claim 17, Six discloses a wound capacitor (Fig. 7, 1) comprising: a dielectric layer (Fig. 7, 2); a first electrode (Fig. 7, 3) is arranged on one side of the dielectric layer (Fig. 7); and a second electrode (Fig. 7, 4) arranged on an opposite side of the dielectric layer (Fig. 7), wherein the dielectric layer and the first and second electrodes are wound into a capacitor roll (Fig. 7), and in the dielectric layer, polymer main chains or different sections of a polymer main chain are covalently linked to one another via bridging linker molecules (chemical formula 1 [0047-0048]).
Regarding claim 19, Six further discloses that also the second electrode is arranged on another side of the dielectric layer (Fig. 7).
Regarding claim 20, the examiner notes that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Pearson, 181 USPQ 641 (CCPA); In re Minks, 169 USPQ 120 (Bd Appeals); In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See MPEP §2114. The recitation of “wherein the covalently linking in the dielectric layer allows for use of the capacitor at operating temperatures of 150°C or above” does not distinguish the present invention over the prior art of “Six* 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) 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Six et al (US 2020/0406526).
Regarding claim 12, Six fails to teach the claim limitations.
However, the examiner notes that the limitation of wherein the a proportion of repeating units to which a linker molecule is covalently bonded is between 5% and 99% is considered to be a result effective variable, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the invention to include the limitation of wherein the a proportion of repeating units to which a linker molecule is covalently bonded is between 5% and 99% as this limitation would be easily reached by one having ordinary skill in the art in order to construct the devices using understood variable specifications and designs in the art to best meet user needs based on known design possibilities.
Regarding claim 14, Six fails to teach the claim limitations.
However, the examiner notes that the limitation of wherein the a proportion of repeating units which are covalently linked to a linker molecule via a functional group is between 25% and 99% relative to the sum of these repeating units and the repeating units with a functional group which is suitable for covalent linkage to a linker molecule is considered to be a result effective variable, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the invention to include the limitation of wherein the a proportion of repeating units which are covalently linked to a linker molecule via a functional group is between 25% and 99% relative to the sum of these repeating units and the repeating units with a functional group which is suitable for covalent linkage to a linker molecule as this limitation would be easily reached by one having ordinary skill in the art in order to construct the devices using understood variable specifications and designs in the art to best meet user needs based on known design possibilities.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Six et al (US 2020/0406526) in view of Muramoto et al (US 2007/0040145).
Regarding claim 13, Six fails to teach the claim limitations.
Muramoto teaches the polymer main chains contain acrylate repeating units and wherein functional groups which are covalently bonded to a linker molecule or are suitable for such a bond are attached via the a carboxylate group of the respective acrylate repeating unit in the form of an ester bond ([0002]).
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 Muramoto to the invention of Six, 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) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Six et al (US 2020/0406526) in view of Cui et al (US 2003/0171532).
Regarding claim 15, Six fails to teach the claim limitations.
Cui teaches that wherein the covalent compound link is selected from an ether bridge, an ester bridge, an amine bridge, an amide bridge and a thioether bridge ([0029]).
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 Cui to the invention of Six, 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) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Six et al (US 2020/0406526) in view of Miura et al (US 2002/0012849).
Regarding claim 21, Six fails to teach the claim limitations.
Miura teaches that wherein the polymer main chains comprise glycidyl methacrylate as repeating units as homo- or copolymers ([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 Miura to the invention of Six, 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.
Additional Relevant Prior Art:
RHODES et al (US 2019/0157558) teaches relevant art in Fig. 1.
Shukia et al (US 2015/0364688) teaches relevant art in Fig. 1-2.
Yan et al (US 2011/0266534) teaches relevant art in [0009 and 0074-0099].
Edder et al (US 2019/0189347) teaches relevant art in Fig. 2 and Table 1-2.
Response to Arguments
Applicant’s arguments with respect to claim(s) 11-21 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.
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 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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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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/MICHAEL P MCFADDEN/ Primary Examiner, Art Unit 2848