DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claims 1-14 have been considered but are moot in light of the new grounds of rejection set forth below.
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.
Claims 1-7 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. US 12,136,520 in view of Yun et al. (US Pat. App. Pub. No. 2021/0193387).
With respect to claim 1, claims 1-16 of the ‘520 patent recite a laminated ceramic electronic component (see claim 1, col. 14, lines 20-21) comprising: a laminated body (see claim 1, col. 14, line 22) comprising: ceramic layers and electrode layers which are alternately laminated in a laminating direction, each of the electrode layers having a first current value for electrical breakdown (see claim 1, col. 14, lines 22-23), and a pair of end portions in a longitudinal direction of the laminated body (see claim 1, col. 14, line 24); a pair of external electrodes, each of the pair of external electrodes located at each of the pair of end portions, respectively (see claim 1, col. 14, lines 25-27); and a plurality of intermediate electrodes (see claim 1, col. 14, line 28) each comprising: a first end being in direct contact with at least one of the electrode layers (see claim 1, col. 14, line 29-30), and a second end being in contact with one external electrode of the pair of external electrodes, such that the plurality of intermediate electrodes physically separate each of the electrode layers and the pair of external electrodes (see claim 1, col. 14, lines 31-34), and wherein the plurality of intermediate electrodes each have a second current value for electrical breakdown, the second current value is lower than the first current value (see claim 1, col. 14, lines 36-40). Electrical breakdown is a physical property, and since claims 1-16 of the ‘520 patent recite an intermediate electrode formed of the same substance as that noted in the specification of the instant application, it can be presumed that the intermediate electrode recited in claims 1-16 of the ‘520 patent implicitly recites the electrical breakdown limitation in claim 1. See MPEP 2112.01(a).
Claims 1-16 of the ‘520 patent fails to recite that the plurality of intermediate electrodes are separated into two or more distinct parts along the laminating direction.
Yun, on the other hand, teaches that the plurality of intermediate electrodes are separated into two or more distinct parts along the laminating direction. See FIG. 6, elements 141 and paragraph [0037]. Such an arrangement results in the prevention of oxidation of the internal electrodes. See paragraph [0039].
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 claims 1-16 of the ‘520 patent, as taught by Yun, in order to prevent oxidation of the internal electrodes.
With respect to claim 2, claims 1-16 of the ‘520 patent, as modified by Yun, recite a capacitance region in which the electrode layers that are adjacent face each other, in the laminated body, and a bonding portion of the plurality of intermediate electrodes and the electrode layers is located between the external electrode and the capacitance region. See claim 3 of the ‘520 patent.
With respect to claim 3, claims 1-16 of the ‘520 patent, as modified by Yun, recite that each of the plurality of intermediate electrodes is on a surface of the laminated body. See claim 4 of the ‘520 patent.
With respect to claim 4, claims 1-16 of the ‘520 patent, as modified by Yun, recite that the laminated body contains the plurality of intermediate electrodes therein. See claim 5 of the ‘520 patent.
With respect to claim 5, claims 1-16 of the ‘520 patent, as modified by Yun, recite that the plurality of intermediate electrodes is sandwiched by two of the ceramic layers. See claim 6 of the ‘520 patent.
With respect to claim 6, claims 1-16 of the ‘520 patent, as modified by Yun, recite that the ceramic layers comprise: a capacitance region sandwiched by neighboring two of the electrode layers; and an end margin region other than the capacitance region, the end margin region comprising a bonding portion of the plurality of intermediate electrodes and at least one of the electrode layers. See claim 7 of the ‘520 patent.
With respect to claim 7, claims 1-16 of the ‘520 patent, as modified by Yun, recite that the at least one of the electrode layers comprises two of the electrode layers. See claim 8 of the ‘520 patent.
With respect to claim 11, claims 1-16 of the ‘520 patent, as modified by Yun, recite that the pair of end portions is a pair of side surfaces of the laminated body. See claim 12 of the ‘520 patent.
With respect to claim 12, claims 1-16 of the ‘520 patent, as modified by Yun, recite that the pair of side surfaces are facing to each other. See claim 13 of the ‘520 patent.
With respect to claim 13, claims 1-16 of the ‘520 patent, as modified by Yun, recite that each of the electrode layers are in electrical contact with one of the pair of external electrodes. See claim 14 of the ‘520 patent.
With respect to claim 14, claims 1-16 of the ‘520 patent, as modified by Yun, recite that each of the plurality of intermediate electrodes contain a conductive carbon material that is at least one selected from the group consisting of a conductive polymer, carbon black, carbon nanotube, carbon nanofiber, and graphite, and each of the plurality of intermediate electrodes contain 20 vol% or more of the conductive carbon material. See claim 1 of the ‘520 patent, col. 14, lines 36-39.
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.
Claims 1-3, 6-7, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yun et al. (US Pat. App. Pub. No. 2021/0193387).
With respect to claim 1, Yun discloses a laminated ceramic electronic component (see abstract) comprising: a laminated body comprising: ceramic layers and electrode layers which are alternately laminated in a laminating direction (see FIG. 3, body 110, internal electrodes 121/122, and dielectric layers 111, and paragraph [0028]), each of the electrode layers having a first current value for electrical breakdown (see paragraph [0038]), and a pair of end portions in a longitudinal direction of the laminated body (see FIG. 3); a pair of external electrodes, each of the pair of external electrodes located at each of the pair of end portions, respectively (see FIG. 3, external electrodes 131/132 and paragraph [0028]); and a plurality of intermediate electrodes (see FIGS. 3 and 6, electrodes 141/142 and paragraph [0029]) each comprising: a first end being in direct contact with at least one of the electrode layers, and a second end being in contact with one external electrode of the pair of external electrodes, such that the plurality of intermediate electrodes physically separate each of the electrode layers and the pair of external electrodes (see FIGS. 3 and 6 and paragraph [0037]), and wherein the plurality of intermediate electrodes each have has a second current value for electrical breakdown, the second current value is lower than the first current value (see paragraph [0029], noting that the intermediate electrodes are formed of a carbon compound), and wherein the plurality of intermediate electrodes are separated into two or more distinct parts along the laminating direction (see FIG. 6, noting that the intermediate electrodes are separately disposed at the ends of each internal electrode). While Yun fails to explicitly disclose the relationship of the first and second current value for electrical breakdown between the internal electrodes and the intermediate electrode, the Office notes that Yun is considered to at least implicitly disclose this limitation. Yun explicitly uses the same materials as the instant application for the internal electrodes and the intermediate electrode, and as such, is considered to implicitly disclose any physical properties associated with the same materials, including current values for electrical breakdown. See MPEP 2112.01(a), citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
With respect to claim 2, Yun discloses a capacitance region in which the electrode layers that are adjacent face each other, in the laminated body, and a bonding portion of the plurality of intermediate electrodes and the electrode layers is located between the external electrode and the capacitance region. See FIGS. 3 and 6 and paragraph [0037].
With respect to claim 3, Yun discloses that each of the plurality of intermediate electrodes is on a surface of the laminated body. See FIG. 6.
With respect to claim 6, Yun discloses that the ceramic layers comprise: a capacitance region sandwiched by neighboring two of the electrode layers (see FIG. 3, the area defined by the overlapping internal electrodes); and an end margin region other than the capacitance region (see FIG. 3, the internal areas where the adjacent internal electrodes do not overlap on each end of the body), the end margin region comprising a bonding portion of the intermediate electrode and at least one of the electrode layers (see FIG. 3, noting that the internal electrodes are electrically and physically bonded to the external electrodes at each end surface of the body).
With respect to claim 7, Yun discloses that the at least one of the electrode layers comprises two of the electrode layers. See FIG. 3 and paragraph [0036].
With respect to claim 11, Yun discloses that the pair of end portions is a pair of side surfaces of the laminated body. See FIG. 1.
With respect to claim 12, Yun discloses that the pair of side surfaces are facing to each other. See FIG. 1.
With respect to claim 13, Yun discloses that each of the electrode layers are in electrical contact with one of the pair of external electrodes. See paragraph [0048].
With respect to claim 14, Yun discloses that each of the plurality of intermediate electrodes contain a conductive carbon material that is at least one selected from the group consisting of a conductive polymer, carbon black, carbon nanotube, carbon nanofiber, and graphite, and each of the plurality of intermediate electrodes contain 20 vol% or more of the conductive carbon material. See paragraph [0039], noting that electrodes 141 are formed of crystalline carbon.
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. (US Pat. App. Pub. No. 2021/0193387) in view of Koo et al. (US Pat. App. Pub. No. 2019/0013150).
With respect to claim 4, Yun fails to teach that the laminated body contains the intermediate electrode therein.
However, Koo teaches that an intermediate layer is formed to extend into the laminated body. See FIG. 3, element 131. Such an arrangement results in improved mechanical bonding between the body and the external electrodes, as well as the internal and external electrodes. See paragraph [0044].
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 Yun, as taught by Koo, in order to improve the mechanical bonding between the body and the external electrodes, as well as the internal and external electrodes.
With respect to claim 5, the combined teachings of Yun and Koo teach that the intermediate electrode is sandwiched by two of the ceramic layers. See Koo, FIG. 3.
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..
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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/DION R. FERGUSON/Primary Examiner, Art Unit 2847
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