DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claims 1-9 and 12-14 have been considered but are moot in light of the new grounds of rejection set forth below, necessitated by Applicant’s amendments.
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.
Claims 1-9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable by Lee et al. (US Pat. App. Pub. No. 2015/0041193) in view of KR 2016-069816.
With respect to claim 1, Lee teaches a multilayer electronic component (see abstract), comprising: a body including a capacitance formation portion including a dielectric layer and an internal electrode alternately disposed with the dielectric layer in a first direction (see FIG. 6A, elements 110, 121/122, and 111 and paragraph [0049]), an upper cover portion disposed adjacent to the capacitance formation portion in the first direction (see paragraph [0049], element C1), a lower cover portion disposed adjacent to the capacitance formation portion in the first direction (see paragraph [0049], element C2), and an identification portion disposed adjacent to the upper cover portion in the first direction (see FIG. 6A, element I1 and paragraph [0086]); and an external electrode disposed on the body (see paragraph [0049], elements 131/132), wherein an average thickness of the lower cover portion is greater than an average thickness of the upper cover portion in the first direction (see FIG. 6A and paragraph [0049]), and the identification portion includes a non-conductive heat-resistant paint (see paragraph [0086], noting that the I1 dielectric layer has a brightness or color that differs from the active layers, and paragraph [0151], noting that the ceramic layers are formed using a coating slurry, i.e., a paint).
Lee fails to teach that the identification portion includes a water-repellent material and the water-repellent material includes a fluorine-based hydrocarbon compound.
KR ‘816, on the other hand, teaches a coating that includes a water-repellent material that includes a fluorine-based hydrocarbon compound. See abstract. Such an arrangement results in a coating that is protective and prevents the decrease in insulation resistance in a high humidity environment. See abstract.
Accordingly, it would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the invention, to modify Lee, as taught by KR ‘816, in order to provide a layer that protects and the decrease in insulation resistance in a high humidity environment as well as acting as a identification layer.
With respect to claim 2, the combined teachings of Lee and KR ‘816 teach that the average thickness of the upper cover portion is tc1 and an average thickness of the identification portion is tc3, tc3/tc1 is 0.21 or more and 0.83 or less. See Lee, paragraphs [0068] and [0086], noting that both C1 and I1 are formed of a plurality of dielectric layers. While Lee fails to explicitly teach the relationship recited in claim 2, Lee teaches that the relative sizing of the cover layers results in appropriate capacitance while reducing acoustic noise. See paragraph [0078]. Thus, Lee recognizes that the relationships between the thickness of the cover layers, the thickness of the active region, and the thickness of the identifying part are result-effective variables, the optimization of which through routine experimentation would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II)(A), citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and (II)(B), citing In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
With respect to claim 3, the combined teachings of Lee and KR ‘816 teach that, when the average thickness of the upper cover portion is tc1, the average thickness of the lower cover portion is tc2, and an average thickness of the identification portion is tc3, (tc1+tc3)/tc2 is 0.43 or more and 0.85 or less. See Lee, paragraphs [0068] and [0086], noting that C1, C2, and I1 are formed of a plurality of dielectric layers. While Lee fails to explicitly teach the relationship recited in claim 3, Lee teaches that the relative sizing of the cover layers and active region result in appropriate capacitance while reducing acoustic noise. See paragraph [0078]. Thus, Lee recognizes that the relationships between the thickness of the cover layers, the thickness of the active region, and the thickness of the identifying part are result-effective variables, the optimization of which through routine experimentation would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II)(A), citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and (II)(B), citing In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
With respect to claim 4, the combined teachings of Lee and KR ‘816 teach that, when an average thickness of the capacitance formation portion is tac, and the average thickness of the lower cover portion is tc2, tac/tc2 is 4 or more and 7 or less. See Lee, paragraphs [0068] and [0086], noting that C1, C2, and I1 are formed of a plurality of dielectric layers. While Lee fails to explicitly teach the relationship recited in claim 3, Lee teaches that the relative sizing of the cover layers and active region result in appropriate capacitance while reducing acoustic noise. See paragraph [0078]. Thus, Lee recognizes that the relationships between the thickness of the cover layers, the thickness of the active region, and the thickness of the identifying part are result-effective variables, the optimization of which through routine experimentation would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II)(A), citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and (II)(B), citing In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
With respect to claim 5, the combined teachings of Lee and KR ‘816 teach that an average thickness of the identification portion is 10 μm or more and 40 μm or less. See Lee, paragraph [0086], noting that the identifying part is a plurality of ceramic green sheets, each sheet being up to 2 μm thick.
With respect to claim 6, the combined teachings of Lee and KR ‘816 teach that the average thickness of the upper cover portion is 58 μm or more and 88 μm or less. See Lee, Table 1, Sample 9, noting a thickness B of 70 μm, and further, paragraph [0049], noting that cover layer C1 is smaller than cover layer C2.
With respect to claim 7, the combined teachings of Lee and KR ‘816 teach that the average thickness of the lower cover portion is 104 μm or more and 134 μm or less. See Lee, paragraphs [0068] and [0086], noting that C1, C2, and I1 are formed of a plurality of dielectric layers. While Lee fails to explicitly teach the dimension recited in claim 7, Lee teaches that the relative sizing of the cover layers and active region result in appropriate capacitance while reducing acoustic noise. See paragraph [0078]. Thus, Lee recognizes that the dimensions of the thickness of the cover layers, the thickness of the active region, and the thickness of the identifying part are result-effective variables, the optimization of which through routine experimentation would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II)(A), citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and (II)(B), citing In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
With respect to claim 8, the combined teachings of Lee and KR ‘816 teach that the non-conductive heat-resistant paint is different in brightness or color from the lower cover portion. See Lee, paragraph [0086].
With respect to claim 9, the combined teachings of Lee and KR ‘816 teach that the non-conductive heat-resistant paint includes one or more selected from the group consisting of Ba, Si, Al, and inorganic ceramic elements. See Lee, paragraphs [0062] and [0086], noting at least inorganic ceramic elements.
With respect to claim 12, the combined teachings of Lee and KR ‘816 teach that the identification portion is disposed to cover an entire upper portion of the upper cover portion in the first direction. See Lee, FIG. 6A.
With respect to claim 13, the combined teachings of Lee and KR ‘816 teach that the identification portion is disposed to cover only a portion of an upper portion of the upper cover portion in the first direction, and a region not covered by the identification portion, among the upper portion of the upper cover portion in the first direction, is covered by the external electrode. See Lee, FIG. 8A/8B, noting that the identifying part would not be disposed between the external electrode and the ceramic body.
With respect to claim 14, the combined teachings of Lee and KR ‘816 teach that the body includes first and second surfaces opposing each other in the first direction, third and fourth surfaces connected to the first and second surfaces and opposing each other in a second direction, and fifth and sixth surfaces connected to the first to fourth surfaces and including fifth and sixth surfaces opposing each other in a third direction, and the external electrodes are disposed on the third and fourth surfaces and extend to cover portions of the first, second, fifth and sixth surfaces, and the identification portion is disposed in a region of the second surface that is not covered by the external electrodes. See Lee, FIG. 6A,paragraphs [0086] and FIG. 8A/8B, noting that the identifying part would not be disposed between the external electrode and the ceramic body.
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 DION R FERGUSON whose telephone number is (571)270-7566. The examiner can normally be reached Monday-Friday, 5:30 a.m. - 4:00 p.m..
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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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/DION R. FERGUSON/Primary Examiner, Art Unit 2847
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