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 .
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,191,085 in view of Fujii (US Publication 2016/0240314) and in further view of Togashi et al. (US Publication 2008/0174935).
In re claim 1, U.S. Patent No. 12,191,085 discloses a multilayer capacitor comprising:
a body including a dielectric layer and first and second internal electrodes stacked on each other in a first direction with the dielectric layer interposed therebetween;
a pair of first external electrodes respectively disposed on first and second corners of the body opposing to each other in a first diagonal direction, and connected to the first internal electrode; and
a pair of second external electrodes respectively disposed on third and fourth corners of the body opposing to each other in a second diagonal direction, and connected to the second internal electrode (Claim 1),
wherein the first internal electrode includes a first main portion, and a first lead-out portion connected to the first external electrode and extending in the first diagonal direction in which the first or second corner and the first main portion are connected to each other (Claim 1),
the first lead-out portion includes a first inclined portion and a first connection portion (Claim 1),
the first inclined portion is connected to the first main portion and has a side surface, at least a portion of which is inclined with respect to one of a plurality of side surfaces of the first main portion connected thereto (Claim 1),
the first connection portion is connected to the first inclined portion and one of the pair of first external electrodes, and has a side surface, at least a portion of which is inclined with respect to the side surface of the first inclined portion connected thereto (Claim 1),
U.S. Patent No. 12,191,085 does not disclose the body including 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 opposing each other in a third direction, and
Fujii the body including first and second surfaces (M1, M2 – Figure 27, ¶86-87) opposing each other in the first direction (‘H’ direction – Figure 27), third and fourth surfaces (S1, S2 – Figure 26, Figure 27, ¶86) connected to the first and second surfaces and opposing each other in a second direction (‘L’ direction – Figure 26, Figure 27), and fifth and sixth surfaces (S3, S4 – Figure 26, Figure 27, ¶89-90) connected to the first to fourth surfaces and opposing each other in a third direction (‘W’ direction – Figure 26)
the first main portion (12a excluding 12a1 – Figure 29) overlaps the one of the pair of the first external electrodes (21, 22 – Figure 29) in the second direction and in the third direction (Figure 26, Figure 29).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the internal electrode configuration as described by Fuji to realize a desired capacitance.
U.S. Patent 12,191,085 does not dsiclose side surfaces among the plurality of side surfaces of the first main portion, connected to the first inclined portion, are spaced away from each other, and the first main portion overlaps the one of the pair of first external electrodes in the second direction and in the third direction.
Togashi discloses side surfaces among the plurality of side surfaces of the first main portion (side surfaces of 32 – Figure 4EC), connected to the first inclined portion (IP1 – Figure 4EC), are spaced away from each other (Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
Application 18/972,182
U.S. Patent 12,191,085
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
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Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Claim 13
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Claim 15
Claim 15
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.
Claim(s) 1-4 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US Publication 2016/0240314) in view of Togashi et al. (US Publication 2008/0174935).
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Figure 4 of Togashi with Examiner’s Comments (Figure 4EC)
In re claim 1, Fujii discloses a multilayer capacitor comprising:
a body (10A4 – Figure 26, ¶182) including a dielectric layer (11 – Figure 27, ¶80) and first and second internal electrodes (12a, 12b – Figure 27, ¶95) stacked on each other with the dielectric layer interposed therebetween (Figure 27), the body including first and second surfaces (M1, M2 – Figure 27, ¶86-87) opposing each other in the first direction (‘H’ direction – Figure 27), third and fourth surfaces (S1, S2 – Figure 26, Figure 27, ¶86) connected to the first and second surfaces and opposing each other in a second direction (‘L’ direction – Figure 26, Figure 27), and fifth and sixth surfaces (S3, S4 – Figure 26, Figure 27, ¶89-90) connected to the first to fourth surfaces and opposing each other in a third direction (‘W’ direction – Figure 26);
a pair of first external electrodes (21, 22 – Figure 26, ¶79) respectively disposed on first and second corners of the body opposing to each other in a first diagonal direction (Figure 26), and connected to the first internal electrode (12a – Figure 29); and
a pair of second external electrodes (23, 24 – Figure 26, ¶79) respectively disposed on third and fourth corners of the body opposing to each other in a second diagonal direction, and connected to the second internal electrode (12b – Figure 30),
wherein the first internal electrode includes a first main portion (12a excluding 12a1 – Figure 29, ¶92), and a first lead-out portion (12a1 – Figure 29) connected to the first external electrode (21 – Figure 29) and extending in the first diagonal direction in which the first or second corner and the first main portion are connected to each other (Figure 29),
the first lead-out portion includes a first connection portion (any portion of 12a1 contacting 21, 22 – Figure 29), and
the first main portion (12a excluding 12a1 – Figure 29) overlaps the one of the pair of the first external electrodes (21, 22 – Figure 29) in the second direction and in the third direction (Figure 26, Figure 29).
Fujii does not disclose the first lead-out portion includes a first inclined portion,
the first inclined portion is connected to the first main portion and has a side surface, at least a portion of which is inclined with respect to one of a plurality of side surfaces of the first main portion connected thereto,
the first connection portion is connected to the first inclined portion and one of the pair of first external electrodes, and has a side surface, at least a portion of which is inclined with respect to the side surface of the first inclined portion connected thereto,
and side surfaces among the plurality of side surfaces of the first main portion, connected to the first inclined portion, are spaced away from each other.
Togashi discloses the first lead-out portion (34 – Figure 4, ¶44) includes a first inclined portion (IP1 – Figure 4EC) and a first connection portion (CP1 – Figure 4EC),
the first inclined portion (IP1 – Figure 4EC) is connected to the first main portion (32 – Figure 4EC, ¶44) and has a side surface, at least a portion of which is inclined with respect to one of a plurality of side surfaces of the first main portion connected thereto (Figure 4EC),
the first connection portion (CP1 – Figure 4EC) is connected to the first inclined portion (IP1 – Figure 4EC) and one of the pair of first external electrodes (24 – Figure 3, Figure 4, ¶47), and has a side surface, at least a portion of which is inclined with respect to the side surface of the first inclined portion connected thereto (Figure 4EC),
and side surfaces among the plurality of side surfaces of the first main portion (side surfaces of 32 – Figure 4EC), connected to the first inclined portion (IP1 – Figure 4EC), are spaced away from each other (Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
In re claim 2, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii further discloses wherein the second internal electrode (12b – Figure 30) includes a second main portion (12b excluding 12b1 – Figure 30, ¶93), and a second lead-out portion (12b1 – Figure 30) connected to the second external electrode (23 – Figure 30) and extending in the second diagonal direction in which the third or fourth corner and the second main portion are connected to each other (Figure 30),
Fujii does not disclose the second lead-out portion includes a second inclined portion and a second connection portion,
the second inclined portion is connected to the second main portion and has a side surface, at least a portion of which is inclined with respect to a side surface of the second main portion connected thereto, and
the second connection portion is connected to the second inclined portion and one of the pair of second external electrodes, and has a side surface, at least a portion of which is inclined with respect to the side surface of the second inclined portion connected thereto.
Togashi discloses the second lead-out portion (38 – Figure 4, ¶45) includes a second inclined portion (IP2 – Figure 4EC) and a second connection portion (CP2 – Figure 4EC),
the second inclined portion (IP2 – Figure 4EC) is connected to the second main portion (37 – Figure 4EC, ¶46) and has a side surface, at least a portion of which is inclined with respect to a side surface of the first main portion connected thereto (Figure 4EC),
the second connection portion (CP2 – Figure 4EC) is connected to the second inclined portion (IP2 – Figure 4EC) and one of the pair of second external electrodes (28 – Figure 3, Figure 4, ¶47), and has a side surface, at least a portion of which is inclined with respect to the side surface of the first inclined portion connected thereto (Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
In re claim 3, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii does not explicitly disclose wherein the first connection portion has a width wider from a region in which the first connection portion is connected to the first inclined portion, in the first diagonal direction.
Togashi discloses wherein the first connection portion (CP1 – Figure 4EC) has a width wider from a region in which the first connection portion is connected to the first inclined portion (IP1 – Figure 4EC), in the first diagonal direction (Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
In re claim 4, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii further discloses wherein the first connection portion (portion where 12a1 contacts 21 – Figure 29) is spaced apart from an end of the one of the pair of first external electrodes (21 – Figure 29).
In re claim 8, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii does not disclose wherein the side surface of the first connection portion is perpendicular to the side surface of the first main portion.
Togashi discloses wherein the side surface of the first connection portion (CP1 – Figure 4EC) is perpendicular to the side surface of the first main portion (32 – Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
In re claim 9, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii further discloses wherein the body (10A4 – Figure 26) has a square structure based on a direction in which the first and second internal electrodes (12a, 12b – Figure 27) are stacked on each other (Figure 27).
In re claim 10, Fujii in view of Togashi discloses the multilayer capacitor of claim 9, as explained above. Fujii further discloses wherein a length of one side of the square structure has a value between -10% and +10% of (250+n*350) µm based on the direction in which the first and second internal electrodes are stacked on each other, and here "n" is a natural number (¶128, Figure 12).
In re claim 11, Fujii in view of Togashi discloses the multilayer capacitor of claim 10, as explained above. Fujii does not disclose wherein the multilayer capacitor has a thickness of 70 µm or less when the thickness is measured in the direction in which the first and second internal electrodes are stacked on each other. However, it would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the well-known knowledge of adjusting the number of stacked internal electrode layers, and thus adjusting the thickness of the component, to achieve a device of desired capacitance, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In re claim 12, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii does not disclose wherein the first inclined portion includes two side surfaces connected to the first main portion, and the two side surfaces are parallel to each other.
Togashi discloses wherein the first inclined portion (IP1 – Figure 4EC) includes two side surfaces connected to the first main portion (32 – Figure 4EC), and the two side surfaces are parallel to each other (Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
Claim(s) 5-7, 13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US Publication 2016/0240314) in view of Togashi et al. (US Publication 2008/0174935) and in further view of Lee et al (US Publication 2009/0213525).
In re claim 5, Fujii in view of Togashi discloses the multilayer capacitor of claim 4, as explained above. Fujii does not disclose wherein 50 µm or more is a margin length by which the first connection portion is spaced apart from the end of the first external electrode, based on a length of the multilayer capacitor, measured in a direction along which an edge of the body extends and which is different from a stacking direction of the first and second internal electrodes.
However, Lee discloses the width of the lead-out portion in contact with the external electrode is proportionate to the electrical connectivity and ESR of the device (¶48-49, Figure 6).
It would have been obvious to a person having ordinary skill in the art at the effective filing date to adjust the margin length, and thus the contact area between the lead-out portion and external electrode, to achieve a device having desired electrical connectivity and ESR characteristics, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In re claim 6, Fujii in view of Togashi and in further view of Lee discloses the multilayer capacitor of claim 5, as explained above. Fujii does not disclose wherein the margin length is 150 µm or less.
However, Lee discloses the width of the lead-out portion in contact with the external electrode is proportionate to the electrical connectivity and ESR of the device (¶48-49, Figure 6).
It would have been obvious to a person having ordinary skill in the art at the effective filing date to adjust the margin length, and thus the contact area between the lead-out portion and external electrode, to achieve a device having desired electrical connectivity and ESR characteristics, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In re claim 7, Fujii in view of Togashi and in further view of Lee discloses the multilayer capacitor of claim 5, as explained above. Fujii does not disclose wherein the margin length is less than or equal to a length of the first connection portion.
However, Lee discloses the width of the lead-out portion in contact with the external electrode is proportionate to the electrical connectivity and ESR of the device (¶48-49, Figure 6).
It would have been obvious to a person having ordinary skill in the art at the effective filing date to adjust the margin length, and thus the connection portion length, to achieve a device having desired electrical connectivity and ESR characteristics, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In re claim 13, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii does not disclose wherein the first inclined portion includes two side surfaces connected to the first main portion, and the two side surfaces are not parallel to each other.
Togashi discloses the first inclined portion (IP1 – Figure 4EC) includes two side surfaces connected to the main portion (32 – Figure 4EC).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Togashi to create a device having sufficient electrical connection with the external electrode while achieving a device of desired ESR characteristics.
Lee discloses a tapered lead-out portion (101b – Figure 6, ¶49).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to incorporate the lead-out structure as described by Lee to achieve a device having desired electrical connectivity and ESR characteristics (¶49 – Lee).
In re claim 15, Fujii in view of Togashi discloses the multilayer capacitor of claim 1, as explained above. Fujii in view of Togashi does not disclose wherein a sum of lengths of the first inclined portion and the first connection portion is less than half a length of the body, based on a length of the multilayer capacitor, measured in a direction along which an edge of the body extends and which is different from a stacking direction of the first and second internal electrodes.
Lee discloses adjusting the width of the lead-out portion is proportional to the ESR of the device (¶48-49).
It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to adjust the total width of the lead-out portion to achieve a device having desired ESR characteristics, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Allowable Subject Matter
Claims 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach nor suggest (in combination with other claim limitations) the inclined portion has a width narrower from the main portion to the connection portion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cho et al. (US Publication 2019/0066921) Figure 3, Figure 4
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/ARUN RAMASWAMY/Primary Examiner, Art Unit 2847
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