CTNF 18/841,838 CTNF 96568 DETAILED ACTION This Office Action is responsive to the Applicant’s communication filed 27 August 2024. In view of this communication, claims 1-7 are pending in the application. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1-2 and 6 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kurihara (JP 2009224555 A), hereinafter referred to as Kurihara . Regarding claim 1, Kurihara teaches a thin film capacitor, comprising: a metal foil (10) having a non-roughened center portion and a roughened surface (Fig. 1b and page 4, third paragraph: conductive sheet base material 10) ; a dielectric film (12) covering the roughened surface of the metal foil (10) (Fig. 1b and page 4, third paragraph: dielectric film 12 formed on conductive base 10) ; PNG media_image1.png 282 593 media_image1.png Greyscale a first electrode layer (14b, 16b) contacting the metal foil (10) (Fig. 1b and page 4, fourth paragraph: conductive layers 14b, 16b are formed where the dielectric layer 12 is erased such that they are in contact with the conductive base material 10) ; a second electrode layer (14a, 16a) contacting the dielectric film (12) without contacting the metal foil (10) (Fig. 1b and page 4, conductive layers 14a, 16a formed such that they are separated from the conductive sheet 10 by the dielectric layer 12) ; and an insulating member (18) positioned between the first (16b) and second (16a) electrode layers (Fig. 1b and page 4, paragraphs 3-4: a recess 30 is formed between first electrode 14a, 16a and second electrode 14b, 16b, which is filled by insulating layer 18 such that the electrodes 14a, 16a and 14b, 16b are electrically isolated) , wherein the metal foil (10) has a groove (30) formed so as to penetrate a roughened surface layer of the metal foil (10) and exposing therethrough the non-roughened center portion (see Fig. 1b and page 4, fourth paragraph: recess 30 reaches the base material 10) , and wherein the insulating member (18) contacts the center portion of the metal foil (10) that is exposed to a bottom of the groove (30) (Fig. 1b and page 4, paragraphs 3-4: the insulating material 18 is filled in the recess 30 such that it reaches the exposed portion of metal foil 10) . Regarding claim 2, Kurihara teaches the thin film capacitor as claimed in claim 1, wherein the first electrode layer (14b, 16b) contacts the center portion of the metal foil (10) that is exposed to the bottom of the groove (30) (Fig. 1b and page 4, fourth paragraph: the conductive layers 14b, 16b contact the exposed portion of base material 10 and the recess 30 is formed where conductive 14b and 16b are located) , and wherein the insulating member (18) is provided along an inner wall of the groove (30) so as to surround the first electrode layer (14b, 16b) (see Fig. 1b and page 4, fourth paragraph) . Regarding claim 6, Kurihara teaches the thin film capacitor as claimed in claim 1, wherein the second electrode layer (14a, 16a) includes a first conductive member contacting the dielectric film (12) and made of a conductive polymer material (Fig. 1b and page 4, third paragraph: conductive layer 14a is a conductive polymer material) and a second conductive member (16a) contacting the first conductive member (14a) and made of a metal material (Fig. 1b and page 4, third paragraph: conductive layer 16a is a silver paste) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara in view of Ito et al. (US 20070095471 A1), hereinafter referred to as Ito et al . Regarding claim 3, Kurihara teaches the thin film capacitor as claimed in claim 2, but does not teach that an angle formed by the center portion of the metal foil that is exposed to the bottom of the groove and a lower-part surface, which is positioned at a lower portion of the groove, of the surface layer of the metal foil that is exposed to the inner wall of the groove is 90⁰ or more. Ito et al. does teach that an angle formed by the center portion of the metal foil that is exposed to the bottom of the groove and a lower-part surface, which is positioned at a lower portion of the groove, of the surface layer of the metal foil that is exposed to the inner wall of the groove is 90⁰ or more (Ito et al. paragraphs 65-66: the small angle between the wall and the bottom of the recess is 60 to 90 degrees, resulting in an angle between the wall and the bottom of the recess of greater than 90 degrees) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the recess of Kurihara with the angles between the wall and bottom of the recess as taught by Ito et al. because Ito et al. teaches that the tapered shape of the recess reduces stress on the components and conductors inside of the recess (Ito et al. paragraph 66) . Regarding claim 4, Kurihara in view of Ito et al. teaches the thin film capacitor as claimed in claim 3, wherein an angle formed by the surface of the metal foil that is positioned outside the groove and an upper-part surface, which is positioned at an upper portion of the groove, of the surface layer of the metal foil that is exposed to the inner wall of the groove is 90⁰ or more (see the modifications made in the rejection of claim 3 – if the angle between the lower surface of the groove and the wall of the groove is made greater than 90, then the alternate interior angle between the upper surface of the foil and the wall of the groove would similarly be greater than 90) . Regarding claim 5, Kurihara in view of Ito et al. as modified above teaches the thin film capacitor as claimed in claim 2, but does not teach that an angle formed by the center portion of the metal foil that is exposed to the bottom of the groove and an inner wall of the insulating member that contacts the first electrode layer is 90⁰ or more. Ito et al. teaches that an angle formed by the center portion of the metal foil that is exposed to the bottom of the groove and an inner wall of the insulating member that contacts the first electrode layer is 90⁰ or more (Ito et al. paragraphs 65-66) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the insulating layer of Kurihara with an angle between the wall of the insulating layer that contacts the electrode and bottom of the recess as taught by Ito et al. because Ito et al. teaches that the tapered shape of the recess reduces stress on the components and conductors inside of the recess (Ito et al. paragraph 66) . 07-21-aia AIA Claim (s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Then et al. (US 20220102344 A1), hereinafter referred to as Then et al. in view of Kurihara Regarding claim 7, Then et al. teaches an electronic circuit board comprising: a substrate (3714) having a wiring pattern (3718) (Fig. 37 and paragraph 283: body 3714 with metallization 3718) ; and a semiconductor IC (3712) and a thin film capacitor each provided in the substrate (3714) (Fig. 37; paragraphs 283 and 365: the substrate 3714 may be provided with a thin film capacitor in addition to the chip structure 3712) , PNG media_image2.png 302 507 media_image2.png Greyscale wherein the first and second electrode layers of the thin film capacitor are connected to the semiconductor IC (3712) through the wiring pattern (3718) (Fig. 37 and paragraphs 283 and 365) . Then et al. does not teach that the thin film capacitor is the thin film capacitor of claim 1. Kurihara does teach that the thin film capacitor is the thin film capacitor of claim 1 (see above) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the thin film capacitor of Then et al. with the thin film capacitor of Kurihara because the capacitor of Kurihara can absorb noise resulting from high frequency electronic components such as the chip of Then et al. (see the abstract of Kurihara et al.) . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to John B Freal whose telephone number is (571)272-4056. The examiner can normally be reached Mon-Fri 7:00-3:00. 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 Thompson can be reached at (571)272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN B FREAL/Examiner, Art Unit 2847 /TIMOTHY J THOMPSON/Supervisory Patent Examiner, Art Unit 2847 Application/Control Number: 18/841,838 Page 2 Art Unit: 2847 Application/Control Number: 18/841,838 Page 3 Art Unit: 2847 Application/Control Number: 18/841,838 Page 4 Art Unit: 2847 Application/Control Number: 18/841,838 Page 5 Art Unit: 2847 Application/Control Number: 18/841,838 Page 6 Art Unit: 2847 Application/Control Number: 18/841,838 Page 7 Art Unit: 2847 Application/Control Number: 18/841,838 Page 8 Art Unit: 2847
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