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 .
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.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
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) 1-2, 4, and 6-10 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 Arnold et al. (US 4,831,494).
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Regarding claim 1, Arnold et al. disclose a multi-layer ceramic capacitor, comprising: a multi-layer brick (Fig. 1-3) comprising:
a ceramic body (C: 1, L: 5-6) having an upper surface (top) and a lower surface (bottom), and a first side surface (left) and a second side surface (right) that are opposite to each other, wherein the first side surface (left) and the second side surface (right) are located between the upper surface (top) and the lower surface (bottom); and
a plurality of first internal electrodes (see annotated figure above) and a plurality of second internal electrodes (see annotated figure above) embedded in the ceramic body alternately and spaced apart from each other, wherein each of the first internal electrodes (see annotated figure above) and the second internal electrodes (see annotated figure above) comprises:
a first portion (see annotated figure above) extending between the first side surface (left) and the second side surface (right), and spaced apart from the first side surface (left), the second side surface (right), the upper surface (top), and the lower surface (bottom); and
a second portion (see annotated figure above) extending from a portion of a top surface (top) of the first portion (see annotated figure above) to the upper surface (top) of the ceramic body, and a top surface of the second portion (see annotated figure above) being exposed in the upper surface (top), wherein the second portions of the first internal electrodes and the second portions of the second internal electrodes are opposite to each other;
a first terminal electrode (see annotated fig above) extending to cover the top surfaces (top) of the second portions of the first internal electrodes (see annotated figure above); and
a second terminal electrode (see annotated figure above) extending to cover the top surfaces (top) of the second portions of the second internal electrodes (see annotated figure above).
Arnold et al. implies that the dielectric material is a ceramic (C: 1, L: 5-6).
Arnold et al. do not specifically state that the dielectric material is a ceramic.
Ceramic dielectrics are well known in the multilayer capacitor art.
Lacking unexpected results, 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 multilayer ceramic capacitor of Arnold et al. so that the dielectric layers are made from ceramic, since such a modification would form a capacitor with a dielectric having high dielectric constant.
Regarding the preamble, “an embedded multi-layer ceramic capacitor”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
When reading the preamble in the context of the entire claim, the recitation “embedded multi-layer ceramic capacitor” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claim 2, Arnold et al. disclose the first internal electrodes (see annotated figure above) and the second internal electrodes (see annotated figure above) are substantially perpendicular to the upper surface (top) and the lower surface.
Regarding claim 4, Arnold et al. disclose each of the first terminal electrode (see annotated figure above) and the second terminal electrode (see annotate figure above) comprises copper (C: 7, L: 35-50).
The phrase “electroplated copper” defines the material of the terminal electrode by the process used to deposit it and therefore constitutes a product-by-process limitation. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Regarding claim 6, Arnold et al. disclose the first internal electrodes (see annotated figure above and fig. 1A), the second internal electrodes (see annotated figure above and fig. 1A) portions of the ceramic body sandwiched between the first internal electrodes and the second internal electrodes, the first terminal electrode (see annotated figure above), and the second terminal electrode (see annotated figure above) form a first capacitor unit, and the multi-layer ceramic capacitor further comprises at least one second capacitor unit (see fig. 1, 1A) located in the multi-layer brick (separated @ 10).
Regarding claim 7, Arnold et al. disclose a configuration of the at least one second capacitor unit (Fig. 1) is the same as a configuration of the first capacitor unit (see Fig. 1), and each of the at least one second capacitor unit comprises a plurality of first internal electrodes (see tabs 20– Fig.1 ) and a plurality of second internal electrodes that are the same in number as the first internal electrodes and the second internal electrodes of the first capacitor unit (Fig.1 – see annotated figure below).
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Regarding claim 8, Arnold et al. disclose a configuration of the at least one second capacitor unit is the same as a configuration of the first capacitor unit, and each of the at least one second capacitor unit comprises a plurality of first internal electrodes (see tabs - 20) and a plurality of second internal electrodes (see tabs – 20) that are different in number from the first internal electrodes and the second internal electrodes of the first capacitor unit (see annotated fig. below).
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Regarding claim 9, Arnold et al. disclose a configuration of the at least one second capacitor unit is the same as a configuration of the first capacitor unit, a number of the at least one second capacitor unit is plural, each of the second capacitor units comprises a plurality of first internal electrodes (see tabs – 20) and a plurality of second internal electrodes (see tabs – 20), and numbers of the first internal electrodes and the second internal electrodes of the second capacitor units are different from each other (see annotated figure 1 below).
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Regarding claim 10, Arnold et al. disclose a configuration of the at least one second capacitor unit is the same as a configuration of the first capacitor unit, a number of the at least one second capacitor unit is plural, each of the second capacitor units comprises a plurality of first internal electrodes and a plurality of second internal electrodes, and the second capacitor units are divided into a plurality of groups, wherein numbers of the first internal electrodes (see tabs – 20) and the second internal electrodes (see tabs – 20) of the second capacitor units in each of the groups are the same (see annotated figure below).
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Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sutardja (US 2005/0258511).
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Regarding claim 1, Sutardja discloses in fig. 4, a multi-layer ceramic capacitor (400), comprising: a multi-layer brick (Fig. 4) comprising:
a ceramic body [0038] having an upper surface (top) and a lower surface (bottom), and a first side surface (left) and a second side surface (right) that are opposite to each other, wherein the first side surface (left) and the second side surface (right) are located between the upper surface (top) and the lower surface (bottom); and
a plurality of first internal electrodes (414, 418) and a plurality of second internal electrodes (412, 416) embedded in the ceramic body alternately and spaced apart from each other, wherein each of the first internal electrodes (414, 418) and the second internal electrodes (412, 416) comprises:
a first portion (440, 442) extending between the first side surface (left) and the second side surface (right), and spaced apart from the first side surface (left), the second side surface (right), the upper surface (top), and the lower surface (bottom - Fig. 3B); and
a second portion (430, 432) extending from a portion of a top surface (top) of the first portion (440, 442) to the upper surface (top) of the ceramic body, and a top surface of the second portion (430, 432) being exposed in the upper surface (top), wherein the second portions (432) of the first internal electrodes (414, 418) and the second portions (430) of the second internal electrodes (412, 416) are opposite to each other;
a first terminal electrode (422) extending to cover the top surfaces (top) of the second portions (430) of the first internal electrodes; and
a second terminal electrode (420) extending to cover the top surfaces (top) of the second portions (432) of the second internal electrodes.
Regarding the preamble, “an embedded multi-layer ceramic capacitor”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
When reading the preamble in the context of the entire claim, the recitation “embedded multi-layer ceramic capacitor” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claim 2, Sutardja discloses the first internal electrodes (414, 418) and the second internal electrodes (412, 416) are substantially perpendicular to the upper surface (top) and the lower surface (bottom).
Regarding claim 3, Sutardja discloses each of the first internal electrodes (414, 418) is in an inverted L shape, and each of the second internal electrodes (412, 416) is in an L shape.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sutardja (US 2005/0258511) in view of Nakano et al. (US 2021/0183570).
Regarding claim 5, Sutardja discloses the claimed invention except for each of the first terminal electrode and the second terminal electrode comprises an electroplated copper layer, an electroplated nickel layer, and an electroplated tin layer stacked in sequence.
Nakano et al. disclose a multilayer ceramic capacitor comprising terminal electrodes (14, 15) wherein the terminal electrode comprises a thin copper layer (31 – [0075]), a thin nickel layer (32 –[0075]), and a thin tin layer (33 – [0075]) stacked in sequence.
Lacking unexpected results, it would have been obvious to a person of ordinary skill in the external electrode art before the effective filing date of the invention to form the terminal electrodes of Sutardja using a thin copper layer, a thin nickel layer, and a thin tin layer stacked in sequence, since external terminal materials are selected based on design considerations and tradeoffs between cost, mechanical properties, and electrical properties.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
The phrases “electroplated copper”, “electroplated nickel”, and “electroplated tin” define the material of the terminal electrode by the processes used to deposit them and therefore constitutes product-by-process limitations.
The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, these limitations have not been given patentable weight. In re STEPHENS, WENZL, AND BROWNE, 145 USPQ 656 (CCPA 1965)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20130120900 A1
US 20140146436 A1
US 20080204969 A1
US 20150348711 A1
US 20140124251 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC THOMAS whose telephone number is (571)272-1985. The examiner can normally be reached Monday-Friday, 6:00 AM-2:30 PM.
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, 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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/ERIC W THOMAS/Primary Examiner, Art Unit 2848
ERIC THOMAS
Primary Examiner
Art Unit 2848