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 with respect to the claim(s) 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.
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(s) 19 is/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 regards to claim 19,
Claim 19 recites “A multilayer ceramic capacitor, comprising:
a multilayer body including at least one dielectric layer and at least one internal electrode stacked; and a pair of external electrodes on surfaces of the multilayer body and electrically conducting with the at least one internal electrode extending to the surfaces of the multilayer body, respectively; wherein the multilayer body includes: a first main surface and a second main surface on opposite sides in a thickness direction that is a lamination direction of the dielectric layers and the internal electrodes; …. at least one of the external electrodes includes: a metal layer on the first end surface and the second end surface, and covering the internal electrodes extending to the first end surface and the second end surface, respectively” which causes the claim to be indefinite. It is unclear if the pair of external electrodes are both connected to the at least one internal electrode which is not disclosed in the specification as filed. Furthermore, “the dielectric layers” and “the internal electrodes” lacks antecedent basis. It is unclear if the metal layer of one external electrode is formed on both the first end surface and the second end surface which is not disclosed in the specification as filed.
For the purpose of examination the examiner is taking “A multilayer ceramic capacitor, comprising:
a multilayer body including at least one dielectric layer and at least one internal electrode stacked; and
a pair of external electrodes on surfaces of the multilayer body and electrically conducting with the at least one internal electrode extending to the surfaces of the multilayer body, respectively; wherein
the multilayer body includes:
a first main surface and a second main surface on opposite sides in a thickness direction that is a lamination direction of the dielectric layers and the internal electrodes;
a first end surface and a second end surface on opposite sides in a length direction in which the pair external electrodes face each other, the pair of external electrodes being provided on the first end surface and second end surface; and
a first lateral surface and a second lateral surface on opposite sides in a width direction orthogonal or substantially orthogonal to both of the thickness direction and the length direction; and
at least one of the external electrodes includes:
a metal layer on the first end surface and the second end surface, and covering the internal electrodes extending to the first end surface and the second end surface, respectively;
a glass film on the first end surface and the second end surface, the glass film being adjacent to the metal layer, extending around the metal layer, and extending to at least one of the first main surface, the second main surface, the first lateral surface, and the second lateral surface;
a fired layer including glass and metal, and covering the metal layer; and
a plating film covering the fired layer” to read ““A multilayer ceramic capacitor, comprising:
a multilayer body including at least one dielectric layer and at least one internal electrode stacked; and
a pair of external electrodes on surfaces of the multilayer body; wherein at least one of the pair of external electrodes is electrically conducting with the at least one internal electrode extending to the surface of the multilayer body; wherein
the multilayer body includes:
a first main surface and a second main surface on opposite sides in a thickness direction that is a lamination direction of the at least one dielectric layer and the at least one internal electrode;
a first end surface and a second end surface on opposite sides in a length direction in which the pair external electrodes face each other, the pair of external electrodes being provided on the first end surface and second end surface; and
a first lateral surface and a second lateral surface on opposite sides in a width direction orthogonal or substantially orthogonal to both of the thickness direction and the length direction; and
at least one of the external electrodes includes:
a metal layer on at least one of the first end surface and the second end surface, and covering the at least one internal electrode extending to at least one of the first end surface and the second end surface;
a glass film on the at least one of the first end surface and the second end surface, the glass film being adjacent to the metal layer, extending around the metal layer, and extending to at least one of the first main surface, the second main surface, the first lateral surface, and the second lateral surface;
a fired layer including glass and metal, and covering the metal layer; and
a plating film covering the fired layer.”
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) 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee et al. (US 2022/0172895).
In regards to claim 19, Lee ‘895 discloses
A multilayer ceramic capacitor, comprising:
a multilayer body (110 – fig. 2; [0034]) including at least one dielectric layer (111 – fig. 2; [0034]) and at least one internal electrode (121-122 – fig. 2; [0034]) stacked; and
a pair of external electrodes (131-132 – fig. 2; [0034]) on surfaces of the multilayer body and electrically conducting with the at least one internal electrode extending to the surfaces of the multilayer body, respectively; wherein
the multilayer body includes:
a first main surface and a second main surface on opposite sides in a thickness direction that is a lamination direction of the dielectric layers and the internal electrodes (seen in fig. 1-2);
a first end surface and a second end surface on opposite sides in a length direction in which the pair external electrodes face each other, the pair of external electrodes being provided on the first end surface and second end surface (seen in fig. 1-2); and
a first lateral surface and a second lateral surface on opposite sides in a width direction orthogonal or substantially orthogonal to both of the thickness direction and the length direction (seen in fig. 1-2); and
at least one of the external electrodes includes:
a metal layer (141 – fig. 2; [0038]) on the first end surface and the second end surface, and covering the internal electrodes extending to the first end surface and the second end surface, respectively;
a glass film (142 – fig. 2; [0038]) on the first end surface and the second end surface, the glass film being adjacent to the metal layer, extending around the metal layer, and extending to at least one of the first main surface, the second main surface, the first lateral surface, and the second lateral surface (fig. 2-3);
a fired layer (143 – fig. 2; [0034] & [0012-0013]) including glass and metal, and covering the metal layer; and
a plating film (145 – fig. 2; [0045]) covering the fired layer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/757900 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
In regards to claim 19, Application No. 18/757900 claims
A multilayer ceramic capacitor, comprising:
a multilayer body including at least one dielectric layer and at least one internal electrode stacked; and
a pair of external electrodes on surfaces of the multilayer body and electrically conducting with the at least one internal electrode extending to the surfaces of the multilayer body, respectively; wherein
the multilayer body includes:
a first main surface and a second main surface on opposite sides in a thickness direction that is a lamination direction of the dielectric layers and the internal electrodes;
a first end surface and a second end surface on opposite sides in a length direction in which the pair external electrodes face each other, the pair of external electrodes being provided on the first end surface and second end surface; and
a first lateral surface and a second lateral surface on opposite sides in a width direction orthogonal or substantially orthogonal to both of the thickness direction and the length direction; and
at least one of the external electrodes includes:
a metal layer on the first end surface and the second end surface, and covering the internal electrodes extending to the first end surface and the second end surface, respectively;
a glass film on the first end surface and the second end surface, the glass film being adjacent to the metal layer, extending around the metal layer, and extending to at least one of the first main surface, the second main surface, the first lateral surface, and the second lateral surface;
a fired layer including glass and metal, and covering the metal layer; and
a plating film covering the fired layer (claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim(s) 1-18 is/are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach or suggest (in combination with the other claim limitations) a multilayer ceramic capacitor, comprising: the external electrodes include: a metal layer on the first end surface and the second end surface, and covering the internal electrodes extending to the first end surface and second end surface, respectively; a glass film on the first end surface and second end surface, adjacent to the metal layer and extending around the metal layer; a fired layer including glass and metal, disposed on the metal laver, and covering exposing a portion of the metal layer; and a plating film covering the fired layer (claims 1-18).
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.
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 J 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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/David M Sinclair/Primary Examiner, Art Unit 2847
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