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 .
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 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.
Response to Arguments
Applicant's arguments filed 20 February 2026 have been fully considered but they are not persuasive.
Applicant argues allowability based on the amendment to claim 1. Specifically, applicant argues none of the references disclose measuring the density of oxygen vacancies using a thermally stimulated depolarization current method.
While the examiner agrees that the references do not disclose such a method, the claims are drawn to a product and thus said limitation is considered to be a product by process limitation since the claim language is directed to the step required to measure the density of oxygen vacancies (which are a property of the material). Therefore, this step has been given no patentable weight since it has been held that the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. Kawamoto discloses an overlapping range of the density of oxygen vacancies (which is a property of the material) and thus a prima facie case of obviousness exists, in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); in re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed, Cir. 1990).
Claim Rejections - 35 USC § 102/103
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.
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) 1 & 4 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 JP03119608A hereafter referred to as Kawamoto.
In regards to claim 1,
Kawamoto discloses a multilayer ceramic electronic component, comprising:
a stack including dielectric layers and internal electrode layers alternately stacked on one another (field of invention & problem to be solved by the invention),
wherein the dielectric layers includes oxygen vacancies (problem to be solved by the invention), and a density of the oxygen vacancies is 1.1 x 1014 to 6.1 x 1014 oxygen vacancies/mm3 inclusive (problem to be solved by the invention – teaches vacancies at 1014 to 1015). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); in re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed, Cir. 1990). The reference(s) as applied above discloses/disclose all the limitations of claim 1 except as measured by a thermally stimulated depolarization current method. However, this claim is considered to be a product by process claim since the claim language is directed to the step required to measure the density of oxygen vacancies. Therefore, this step has been given no patentable weight since it has been held that the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art.
In regards to claim 4,
Kawamoto discloses wherein each of the dielectric layers includes Ba and Ti, and each of the internal electrode layers includes Ni (problem to be solved by the invention).
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.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 2011/0075318) in view of Kawamoto.
In regards to claim 1,
Suzuki ‘318 discloses a multilayer ceramic electronic component, comprising:
a stack including dielectric layers (3 – fig. 1; [0005]) and internal electrode layers (4-5 – fig. 1; [0005]) alternately stacked on one another. Suzuki ‘318 fails to disclose wherein the dielectric layers include 1.1 x 1014 to 6.1 x 1014 oxygen vacancies/mm3 inclusive.
Kawamoto discloses that the oxygen vacancies/mm3 is a result effective variable, particularly for improving DC bias characteristics (problem to be solved by the invention).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the capacitor of Suzuki ‘318 such that the dielectric layers include 1.1 x 1014 to 6.1 x 1014 oxygen vacancies/mm3 inclusive to obtain a capacitor with improved DC bias characteristics, as taught by Kawamoto. Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The reference(s) as applied above discloses/disclose all the limitations of claim 1 except as measured by a thermally stimulated depolarization current method. However, this claim is considered to be a product by process claim since the claim language is directed to the step required to measure the density of oxygen vacancies. Therefore, this step has been given no patentable weight since it has been held that the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art.
In regards to claim 2,
Suzuki ‘318 as modified by Kawamoto further discloses further comprising: an oxide phase in an interface between each of the dielectric layers and an adjacent internal electrode layer of the internal electrode layers, the oxide phase being an oxidized surface portion of the adjacent internal electrode layer (fig. 2; [0023] of Suzuki ‘318).
In regards to claim 3,
Suzuki ‘318 as modified by Kawamoto further discloses wherein each of the dielectric layers has a thickness of 0.5 to 5.0 µm inclusive ([0062] of Suzuki ‘318).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M SINCLAIR whose telephone number is (571)270-5068. The examiner can normally be reached M-TH from 8AM-4PM.
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/David M Sinclair/Primary Examiner, Art Unit 2848