DETAILED ACTION
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) 1-4, 6-7, 10-12, 15-19 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kochi et al (US 2007/0241077).
Regarding claims 1, Kochi discloses a metal foil (Fig. 1-10) used for producing an electrode foil for electrolytic capacitor use ([0002]), comprising a valve metal (Al [0002]), wherein the metal foil has a plurality of recesses (Fig. 6, 3) that open on a main surface of the metal foil and that are arranged to be distributed in a dot-like manner (Fig. 6) in a direction of the main surface, and an opening diameter of the recesses is 2 µm or more (5 µm [0050]).
Regarding claims 2, Kochi further discloses that the opening diameter of the recesses is 5 µm or more and 50 µm or less (5 µm [0050]).
Regarding claims 3, Kochi further discloses that mutually adjacent recesses of the recesses are spaced apart by an interval L of 4 µm or more (5 µm [0050]).
Regarding claims 4, Kochi further discloses that the metal foil contains 98 mass% or more of aluminum as the valve metal ([0043]).
Regarding claims 6, Kochi further discloses that the metal foil has a tensile strength of 40 N/mm2 or more (This is considered an inherent trait of the electrode foil as all of the structural requirements are met by the prior art, additional structural requirements that cause this effect would be needed to overcome the prior art).
Regarding claims 7, Kochi further discloses that the metal foil has an elongation rate of 1% or more and 16% or less (This is considered an inherent trait of the electrode foil as all of the structural requirements are met by the prior art, additional structural requirements that cause this effect would be needed to overcome the prior art).
Regarding claims 10, Kochi further discloses that a thickness F of the metal foil is 80 µm or more and 200 µm or less µm (104 [0043]).
Regarding claims 11, Kochi further discloses that the metal foil has 7 or more and 570 or less recesses of the recesses per area of 1 mm2 of the main surface.
Regarding claims 12, Kochi further discloses that respective mutually adjacent recesses of the recesses have opening diameters of D1(µm) and D2 (µm), and are spaced apart from each other by an interval L (µm),the opening diameter Dr and the interval L satisfy relationships of 2 ≤ D1 and 2 ≤ L/ D1 ≤ 50 (when interval is moved up to 10 µm and diameter is still 5 µm [0050 and 0074]), and the opening diameter D2 and the interval L satisfy relationships of 2 ≤ D2 and 2 ≤ L/D2 ≤ 50 (when interval is moved up to 10 µm and diameter is still 5 µm [0050 and 0074]).
Regarding claim 15, the language, term, or phrase "A method for producing an electrode foil for electrolytic capacitor use, comprising: preparing the metal foil used for producing the electrode foil according to claim 1; and etching the metal foil", is directed towards the process of making the electrode foil according to claim 1. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually it is made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "A method for producing an electrode oil for electrolytic capacitor use, comprising preparing the metal foil used for producing the electrode foil according to claim 1; and etching the metal foil" only requires the electrode foil according to claim 1, which does not distinguish the invention from Kochi, who teaches the structure as claimed.
Regarding claim 16, the language, term, or phrase "The method for producing an electrode foil for electrolytic capacitor use according to claim 15, wherein in the etching, a porous portion is formed on the main surface of the metal foil and inner wall surfaces of the recesses, the porous portion has pores that open on the main surface of the metal foil and the inner wall surfaces of the recesses, and an opening diameter of the pores of the porous portion is less than 2 µm", is directed towards the process of making the electrode foil according to claim 1. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually it is made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "The method for producing an electrode foil for electrolytic capacitor use according to claim 15, wherein in the etching, a porous portion is formed on the main surface of the metal foil and inner wall surfaces of the recesses, the porous portion has pores that open on the main surface of the metal foil and the inner wall surfaces of the recesses, and an opening diameter of the pores of the porous portion is less than 2 µm" only requires the electrode foil according to claim 1, which does not distinguish the invention from Kochi, who teaches the structure as claimed.
Regarding claim 17, the language, term, or phrase " The method for producing an electrode foil for electrolytic capacitor use according to claim 16, wherein a thickness T (µm) of the porous portion and a depth H (µm) of the recesses have a relationship of 0.2 ≤ H/T ≤ 1.1", is directed towards the process of making the electrode foil according to claim 1. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " The method for producing an electrode foil for electrolytic capacitor use according to claim 16, wherein a thickness T (µm) of the porous portion and a depth H (µm) of the recesses have a relationship of 0.2 ≤ H/T ≤ 1.1" only requires the electrode foil according to claim 1, which does not distinguish the invention from Kochi, who teaches the structure as claimed.
Regarding claim 18, the language, term, or phrase " The method for producing an electrode foil for electrolytic capacitor use according to claim 16, further comprising forming a dielectric layer covering a metal skeleton constituting the porous portion ", is directed towards the process of making the electrode foil according to claim 1. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually it is made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " The method for producing an electrode foil for electrolytic capacitor use according to claim 16, further comprising forming a dielectric layer covering a metal skeleton constituting the porous portion " only requires the electrode foil according to claim 1, which does not distinguish the invention from Kochi, who teaches the structure as claimed.
Regarding claim 19, the language, term, or phrase " An electrode foil for electrolytic capacitor use obtained by the method for producing an electrode foil for electrolytic capacitor use according to claim 15", is directed towards the process of making the electrode foil according to claim 1. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually it is made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " An electrode foil for electrolytic capacitor use obtained by the method for producing an electrode foil for electrolytic capacitor use according to claim 15" only requires the electrode foil according to claim 1, which does not distinguish the invention from Kochi, who teaches the structure as claimed.
Regarding claim 22, the language, term, or phrase " An electrolytic capacitor comprising the electrode foil for electrolytic capacitor use according to claim 19", is directed towards the process of making the electrode foil according to claim 1. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually it is made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " An electrolytic capacitor comprising the electrode foil for electrolytic capacitor use according to claim 19" only requires the electrode foil according to claim 1, which does not distinguish the invention from Kochi, who teaches the structure as claimed.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochi et al (US 2007/0241077) in view of Ro et al (US 2008/0218945).
Regarding claim 5, Kochi fails to teach the claim limitations.
Ro teaches that an aluminum foil contains: 1 mass ppm or more and 100 mass ppm or less of silicon ([0109]); 5 mass ppm or more and 100 mass ppm or less of copper ([0109]); and 5 mass ppm or more and 200 mass ppm or less of iron ([0109]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of Ro to the invention of Kochi, in order to construct the devices using known specifications and designs in the art to meet user needs based on known design possibilities.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochi et al (US 2007/0241077).
Regarding claim 8, Kochi fails to teach the claim limitations.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to make it so that a thickness F (µm) of the metal foil and a depth H (µm) of the recesses have a relationship of 0.26 ≤ H/F ≤ 0.47, in order to construct the devices using various possible dimensions and designs in the art to meet user needs based on possible design specifications. In cases like the present, where patentability is said to be based upon particular chosen dimensions or upon another variable recited within the claims, applicant must show that the chosen dimensions are critical. As such, the claimed dimensions appear to be an obvious matter of engineering design choice and thus, while being a difference, does not serve in any way to patentably distinguish the claimed invention from the applied prior art. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Kuhle, 526 F2d. 553, 555, 188 USPQ 7, 9 (CCPA 1975).
Regarding claim 9, Kochi fails to teach the claim limitations.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to make it so that a depth H of the recesses is 4 µm or more and 74 µm or less, in order to construct the devices using various possible dimensions and designs in the art to meet user needs based on possible design specifications. In cases like the present, where patentability is said to be based upon particular chosen dimensions or upon another variable recited within the claims, applicant must show that the chosen dimensions are critical. As such, the claimed dimensions appear to be an obvious matter of engineering design choice and thus, while being a difference, does not serve in any way to patentably distinguish the claimed invention from the applied prior art. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Kuhle, 526 F2d. 553, 555, 188 USPQ 7, 9 (CCPA 1975).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kochi et al (US 2007/0241077) in view of Tatebayashi et al (US 2007/0229034).
Regarding claim 14, Kochi fails to teach the claim limitations.
Tatebayashi teaches that an average crystal grain diameter of the metal foil is 18 µm or more and 60 µm or less ([0100]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to combine the teachings of Tatebayashi to the invention of Kochi, in order to construct the devices using known specifications and designs in the art to meet user needs based on known design possibilities.
Allowable Subject Matter
Claims 20-21 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claim 20, the prior art fails to teach or suggest, alone or in combination:
An electrode foil for electrolytic capacitor use comprising a metal foil containing a valve metal, wherein the metal foil has a plurality of recesses that open on a main surface of the metal foil and that are arranged to be distributed in a dot-like manner in a direction of the main surface, the metal foil has a porous portion having pores that open on the main surface of the metal foil and inner wall surfaces of the recesses, an opening diameter of the recesses is 2 µm or more, and an opening diameter of the pores of the porous portion is less than 2 µm.
Specifically, the prior art fails to teach or make obvious, alone or in combination, the limitation of “wherein the metal foil has a plurality of recesses that open on a main surface of the metal foil and that are arranged to be distributed in a dot-like manner in a direction of the main surface, the metal foil has a porous portion having pores that open on the main surface of the metal foil and inner wall surfaces of the recesses, an opening diameter of the recesses is 2 µm or more, and an opening diameter of the pores of the porous portion is less than 2 µm” in combination with the other claim limitations.
Claim 13 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.
Regarding claim 13, the prior art fails to teach or make obvious, alone or in combination, the limitation of “wherein 2 or more crystal grains of the metal foil are exposed on inner wall surfaces of the recesses in a depth direction of the recesses” in combination with the other claim limitations.
Cited Prior Art
Shimomura et al (US 2004/0076795) teaches relevant art in Fig. 1-3.
FUJITA et al (US 2011/0205691) teaches relevant art in Fig. 1-20.
SHOJI et al (JP 2015/115475) teaches relevant art in Fig. 1-4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P MCFADDEN whose telephone number is (571)270-5649. The examiner can normally be reached M-Thur 8am-9pm PST.
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/MICHAEL P MCFADDEN/ Primary Examiner, Art Unit 2847
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