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 01 June 2026 have been fully considered but they are not persuasive.
Applicant argues claims 21 & 23 are not indefinite based on the specification which is incorporated into the claim. The examiner disagrees. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims merely recited a voltage range, but fail to clarify how the voltage relates to the structure.
Secondly, applicant argues claims 19-20 & 22 are further limiting. The examiner disagrees. Claims 19-20 & 22 for fail to further limit the subject matter of the claim upon which they depend as said limitations amount to a mere reiteration the claim from which they depend as no further limitations are present in the body. The recitations EMI reduction circuit, DC-Link circuit, and EMI filter circuit have not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa V. Robie. 88 USPQ 478 (CCPA 1951). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that Michelazzi ‘776, Saito ‘006, and Lee ‘410 all fail to disclose claim 1 based on the amendment. The examiner agrees that said references taken alone fail to disclose claim 1; however, the limitations added into claim 1 are obvious in view of Sano ‘191 as discussed in the below rejections.
Applicant argues that while Sano ‘191 discloses a double-walled housing, Sano ‘191 teaches said feature is for reducing noise and thus Sano ‘191 fails to disclose the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing. The examiner disagrees. While Sano ‘191 focuses on noise reduction, the double-walled housing of Sano ‘191 will inherently provide thermal insulation of the capacitance element arranged in the housing (based on the structure and material) and said thermal insulation is considered to be high. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Lastly, applicant argues one of ordinary skill would not provide the annealing of Ward to the capacitor of Michelazzi ‘776 as doing so would jeopardize the PCM of Michelazzi ‘776. The examiner disagrees with applicant. Ward specifically disclose annealing the capacitor to reduce the air therein (fig. 4; [0036]), this step is done prior to the housing step and thus would not jeopardize the PCM.
All claims stand rejected.
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) 21 & 23 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.
Claim 21 recites “wherein voltages ≥ 630V” which causes the claim to be indefinite. It is unclear to what is being referenced by the voltage, is the voltage a voltage being applied to the device, is the voltage the useable range for the device, is the voltage just a random voltage. For the purpose of examination, the examiner is taking “wherein voltage ≥ 630V” to read “useable at voltages ≥ 630V”.
Claim 23 recites “wherein AC voltages ≥ 100Vac” which causes the claim to be indefinite. It is unclear to what is being referenced by the voltage, is the voltage a voltage being applied to the device, is the voltage the useable range for the device, is the voltage just a random voltage. For the purpose of examination, the examiner is taking “wherein AC voltages ≥ 100Vac” to read “useable at AC voltages ≥ 100Vac”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 19-20 & 22 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 19-20 & 22 for fail to further limit the subject matter of the claim upon which they depend as said limitations amount to a mere reiteration the claim from which they depend as no further limitations are present in the body. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1, 3, & 11-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sano (US 2019/0267191).
In regards to claim 1, Sano ‘191 discloses
A capacitor comprising:
a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode ([0036-0037]),
a first terminal (22 – fig. 1; [0038]) electrically connected to the first electrode, and
a second terminal (23 – fig. 1; [0038]) electrically connected to the second electrode, wherein
the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element ([0036-0037]) and
the first terminal and the second terminal are surface mountable terminals (fig. 5; [0038]),
a housing (3 – fig. 1; [0041]) in which the wound capacitance element is arranged, wherein
the housing comprises an inner wall and an outer wall, wherein the inner wall and the outer wall are separated by a gap (fig. 1 & 9; [0071]), and
the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing ([0071] – a double-walled housing will inherently provide thermal insulation and the thermal insulation provided by the housing of Sano is considered to be high).
In regards to claim 3, Sano ‘191 discloses
The capacitor of claim 1, wherein the first terminal and the second terminal comprise a material selected from steel, copper, brass, aluminum, a coating with Tin or a tin alloy ([0039]).
In regards to claim 11, Sano ‘191 discloses
The capacitor of claim 1, wherein the gap is filled with air or with another thermally insulating material (fig. 1 & 9; [0071]).
In regards to claim 12, Sano ‘191 discloses
The capacitor of claim 9, further comprising a filler in the housing such that the capacitance element is arranged in the filler (7 – fig. 6; [0056-0057]).
In regards to claim 13, Sano ‘191 discloses
The capacitor of claim 12, wherein the filler comprises an epoxy resin (7 – fig. 6; [0056-0057]).
In regards to claim 14, Sano ‘191 discloses
The capacitor of claim 1, wherein the capacitor is essentially free from air and/or humidity (7 – fig. 6; [0056-0057]).
In regards to claim 15, Sano ‘191 discloses
The capacitor of claim 1, being usable with a pick-and-place machine (fig. 1 – the capacitor is capable of being used with a pick and place machine).
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, 4-5, 12-16, & 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Michelazzi et al. (US 2022/0319776) in view of Sano ‘191.
In regards to claim 1,
Michelazzi ‘776 discloses a capacitor comprising:
a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode (fig. 1; [0021]),
a first terminal (20 – fig. 1; [0022]) electrically connected to the first electrode, and
a second terminal (20 – fig. 1; [0022]) electrically connected to the second electrode, wherein
the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element (fig. 1; [0021]) and
the first terminal and the second terminal are surface mountable terminals (fig. 2; [0017]),
a housing (PPS box – [0043]) in which the wound capacitance element is arranged, wherein
the housing comprises an inner wall and an outer wall ([0043] – inner surface of box constitutes the inner wall and outer surface of box constitutes the outer wall). Michelazzi ‘776 fails to disclose wherein the inner wall and the outer wall are separated by a gap, and the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing.
Sano ‘191 discloses a capacitor comprising: a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode ([0036-0037]), a first terminal (22 – fig. 1; [0038]) electrically connected to the first electrode, and a second terminal (23 – fig. 1; [0038]) electrically connected to the second electrode, wherein the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element ([0036-0037]) and the first terminal and the second terminal are surface mountable terminals (fig. 5; [0038]), a housing (3 – fig. 1; [0041]) in which the wound capacitance element is arranged, wherein the housing comprises an inner wall and an outer wall, wherein the inner wall and the outer wall are separated by a gap (fig. 1 & 9; [0071]), and the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing ([0071] – a double-walled housing will inherently provide thermal insulation and the thermal insulation provided by the housing of Sano is considered to be high).
It would have bene obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the housing of Michelazzi ‘776 to be a double-walled house as taught by Sano ‘191 to obtain a capacitor with improved noise protection.
In regards to claim 4,
Michelazzi ‘776 as modified by Sano ‘191 further discloses wherein the dielectric material is selected from PET (Polyethylene terephthalate), PEN (polyethylene naphthalate), PPS (polypropylene sulphide), PTFE (polytetrafluoroethylene), PS (Polystyrene), PC (polycarbonate) and PET HT ([0038] of Michelazzi ‘776).
In regards to claim 5,
Michelazzi ‘776 as modified by Sano ‘191 further discloses further comprising a heat shield (26 – fig. 2-3; [0022-0023] & [0016] of Michelazzi ‘776) arranged below the capacitance element.
In regards to claim 12,
Michelazzi ‘776 as modified by Sano ‘191 further discloses further comprising a filler in the housing such that the capacitance element is arranged in the filler ([0043] of Michelazzi ‘776 & [0056-0057] of Sano ‘191).
In regards to claim 13,
Michelazzi ‘776 as modified by Sano ‘191 further discloses wherein the filler comprises an epoxy resin ([0043] of Michelazzi ‘776 & [0056-0057] of Sano ‘191).
In regards to claim 14,
Michelazzi ‘776 as modified by Sano ‘191 further discloses wherein the capacitor is essentially free from air and/or humidity (fig. 2; [0043] of Michelazzi ‘776).
In regards to claim 15,
Michelazzi ‘776 as modified by Sano ‘191 further discloses being usable with a pick-and-place machine (fig. 2 of Michelazzi ‘776 – the capacitor is capable of being used with a pick and place machine).
In regards to claim 16,
Michelazzi ‘776 as modified by Sano ‘191 further discloses a method of manufacturing the capacitor of claim 1, comprising the steps of:
providing a material for the first electrode, for the second electrode and for the dielectric (fig. 1-3; [0043] of Michelazzi ‘776);
providing a first surface mountable terminal and a second surface mountable terminal (fig. 1-3; [0043] of Michelazzi ‘776);
providing a housing ( [0043] of Michelazzi ‘776);
winding the material for the first electrode, the material for the second electrode and the dielectric to obtain a wound-type capacitance element ([0021] & [0043] of Michelazzi ‘776);
connecting the electrodes of the capacitance element to the surface mountable terminals (fig. 1-2; [0043] of Michelazzi ‘776); and
arranging the capacitance element in a housing ([0043] of Michelazzi ‘776).
In regards to claim 18,
Michelazzi ‘776 as modified by Sano ‘191 further discloses further comprising filling a remaining volume in the housing with a filler to remove air and/or humidity ([0043] of Michelazzi ‘776 & [0056-0057] of Sano ‘191).
In regards to claim 19,
Michelazzi ‘776 as modified by Sano ‘191 further discloses an EMI reduction circuit comprising the capacitor of claim 1 ([0024] & claim 1 of Michelazzi ‘776).
In regards to claim 20,
Michelazzi ‘776 as modified by Sano ‘191 further discloses a DC-Link circuit comprising the capacitor of claim 19 ([0024] & claim 19 of Michelazzi ‘776).
In regards to claim 21,
Michelazzi ‘776 as modified by Sano ‘191 further discloses wherein voltages > 630V ([0024] of Michelazzi ‘776– it is noted that circuit is useable at voltage greater than 630 V).
In regards to claim 22,
Michelazzi ‘776 as modified by Sano ‘191 further discloses an EMI filter circuit, comprising the EMI reduction circuit of claim 19 ([0024] & claim 19 of Michelazzi ‘776).
In regards to claim 23,
Michelazzi ‘776 as modified by Sano ‘191 further discloses wherein AC voltages >100Vac ([0024] of Michelazzi ‘776 – it is noted that circuit is useable at voltage greater than 100 Vac).
Claim(s) 1-3 & 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2006/0104006) in view of Sano ‘191.
In regards to claim 1,
Saito ‘006 discloses a capacitor comprising:
a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode ([0027]),
a first terminal (3 & 4 – fig. 2; [0030]) electrically connected to the first electrode, and
a second terminal (3 & 4 – fig. 2; [0030]) electrically connected to the second electrode, wherein
the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element ([0027]) and
the first terminal and the second terminal are surface mountable terminals (3 & 4 – fig. 2; [0030]),
a housing (8 – fig. 1; [0032]) in which the wound capacitance element is arranged, wherein
the housing comprises an inner wall and an outer wall (fig. 1 – inner surface constitutes the inner wall and outer surface constitutes the outer wall). Saito ‘006 fails to disclose wherein the inner wall and the outer wall are separated by a gap, and the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing.
Sano ‘191 discloses a capacitor comprising: a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode ([0036-0037]), a first terminal (22 – fig. 1; [0038]) electrically connected to the first electrode, and a second terminal (23 – fig. 1; [0038]) electrically connected to the second electrode, wherein the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element ([0036-0037]) and the first terminal and the second terminal are surface mountable terminals (fig. 5; [0038]), a housing (3 – fig. 1; [0041]) in which the wound capacitance element is arranged, wherein the housing comprises an inner wall and an outer wall, wherein the inner wall and the outer wall are separated by a gap (fig. 1 & 9; [0071]), and the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing ([0071] – a double-walled housing will inherently provide thermal insulation and the thermal insulation provided by the housing of Sano is considered to be high).
It would have bene obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the housing of Saito ‘006 to be a double-walled house as taught by Sano ‘191 to obtain a capacitor with improved noise protection.
In regards to claim 2,
Saito ‘006 as modified by Sano ‘191 further discloses having a capacity lager than 1.0 µF ([0030] of Saito ‘006).
In regards to claim 3,
Saito ‘006 as modified by Sano ‘191 further discloses wherein the first terminal and the second terminal comprise a material selected from steel, copper, brass, aluminum, a coating with Tin or a tin alloy ([0030] of Saito ‘006).
In regards to claim 8,
Saito ‘006 as modified by Sano ‘191 further discloses wherein the first and second terminal have a length > 1 mm in the vertical direction (fig. 1; [0032] of Saito ‘006).
Claim(s) 1 & 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0128410) in view of Sano ‘191.
In regards to claim 1,
Lee ‘410 discloses a capacitor comprising:
a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode (1 – fig. 2-3; [0026] – it is noted that a film capacitor cell has two electrodes with a dielectric therebetween),
a first terminal (17 – fig. 3; [0027]) electrically connected to the first electrode, and
a second terminal (17 – fig. 3; [0027]) electrically connected to the second electrode, wherein
the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element (fig. 2-3) and
the first terminal and the second terminal are surface mountable terminals (fig. 4),
a housing (3 – fig. 2-3; [0026]) in which the wound capacitance element is arranged, wherein
the housing comprises an inner wall and an outer wall (fig. 2 – inner surface constitutes the inner wall and outer surface constitutes the outer wall). Lee ‘410 fails to disclose wherein the inner wall and the outer wall are separated by a gap, and the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing.
Sano ‘191 discloses a capacitor comprising: a first electrode, a second electrode and a dielectric material arranged between the first electrode and the second electrode ([0036-0037]), a first terminal (22 – fig. 1; [0038]) electrically connected to the first electrode, and a second terminal (23 – fig. 1; [0038]) electrically connected to the second electrode, wherein the first electrode material, the second electrode material and the dielectric material establish a wound-type capacitance element ([0036-0037]) and the first terminal and the second terminal are surface mountable terminals (fig. 5; [0038]), a housing (3 – fig. 1; [0041]) in which the wound capacitance element is arranged, wherein the housing comprises an inner wall and an outer wall, wherein the inner wall and the outer wall are separated by a gap (fig. 1 & 9; [0071]), and the housing is configured to provide high thermal insulation of the capacitance element arranged in the housing ([0071] – a double-walled housing will inherently provide thermal insulation and the thermal insulation provided by the housing of Sano is considered to be high).
It would have bene obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the housing of Lee ‘410 to be a double-walled house as taught by Sano ‘191 to obtain a capacitor with improved noise protection.
In regards to claim 6,
Lee ‘410 as modified by Sano ‘191 further discloses further comprising a heat sink (9 – fig. 3-4; [0027] of Lee ‘410) arranged below the capacitance element.
In regards to claim 7,
Lee ‘410 as modified by Sano ‘191 further discloses comprising a heat sink (9 – fig. 3-4; [0027] of Lee ‘410) arranged between the capacitance element and the connection side of the terminals.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Michelazzi ‘776 as modified by Sano ‘191 as applied to claim 16 above, and further in view of Ward (US 2008/0232026.
In regards to claim 17,
Michelazzi ‘776 as modified by Sano ‘191 fails to disclose further comprising annealing the capacitor.
Ward ‘026 discloses annealing the capacitor ([0036]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to anneal the capacitor of Michelazzi ‘776 as modified by Sano ‘191 as taught by Ward ‘026 to fuse the plastic layers together thus reducing air in the capacitor.
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.
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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