FINAL OFFICE ACTION
This final office action addresses U.S. Application No. 19/020,277, which is a broadening reissue application of U.S. Application No. 17/473,402 (hereinafter the “402 Application"), entitled MULTILAYER ELECTRONIC COMPONENT WITH DUMMY INTERNAL ELECTRODES, which issued as U.S. Patent No. 11,810,722 (hereinafter the “722 Patent").
The status of the claims is as follows:
Claims 1-10, 12 and 23-26 are pending and examined herein.
Claims 1-10, 12 and 23-26 are rejected.
I. STATUS OF CLAIMS
Applicant filed an amendment and response on June 15, 2026 (hereinafter the “June 2026 Amendment”) in response to the non-final Office action mailed March 17, 2026 (hereinafter the “March 2026 NF Action”). In the June 2026 Amendment, patent claims 1, 4 and 5 were amended, claims 11 and 13-22 were cancelled, claims 2, 3, 6-10 and 12 were unchanged and new claims 23-26 were added.
Therefore, claims 1-10, 12 and 23-26 are pending and will be examined. Of the claims, only claim 1 is independent.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue application of the 402 Application, now the 722 Patent. Examiners further acknowledge the claim of foreign priority to Korean Application No. KR10-2020-0171347, filed December 9, 2020.
III. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. 1.173 Reissue specification, drawings, and amendments.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims in the June 2026 Amendment are objected to because they are improper because they are not made with respect to the original patent, i.e., the 722 Patent. Claims 1, 4 and 5 have been amended with respect to the original patent, i.e., the 772 Patent. However, these claims do not show the proper markings to show the amendments with respect to the 772 Patent. See MPEP §1453(IV) and §1453(V)(A) for guidance. Appropriate correction is required in response to this Office action is required. All future responses by Applicant will be held in strict compliance.
IV. REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
IV.A. Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP §1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.1
Claims 1-10, 12 and 23-26 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent.
First for example, Examiners find that each of patent claims 1-12 of the 482 Patent and the pending and examined claims are directed to multilayer electronic components. Upon comparison with the claims as patented, Examiners find the claims pending in this reissue application, claims 1-10, 12 and 23-26 in this have been broadened by removing the requirement that an area K1 is an isosceles triangle and “a ratio of an area occupied by the dummy electrodes and the internal electrodes in K1 to K1 is K2, and K2 is 20% or more.” Thus, the new invention now being claimed in claims 1-10, 12 and 23-26 in this reissue application is directed to a multilayer electronic component that does not require such an area ratio. Such a deletion of this ratio is confirmed by Applicant in the Reissue Declaration filed January 14, 2025 (hereinafter the “2025 Reissue Declaration”) wherein Applicant states that such a ratio “unduly narrows the claims” an thus the claims have been recharacterized. Examiners agree and find the claims without this required ratio cover a new class of multilayer electronic components wherein the ratio can be less than 20%.
However, Examiners do not find an unequivocal disclosure in the 722 Patent for this new invention, i.e., multilayer electronic component that has a ratio less than 20%, as a separate invention from the invention having the ratio of 20% or more. First for example, a requirement of the noted ratio being “20% or more” was patented in all the claims of the 722 Patent. Second, both the Abstract and the Summary of the Invention explicitly repeat and recite this requirement, i.e., the noted ratio being 20% or more. Furthermore Examiners find only one general embodiment of invention in the 722 Patent and every drawing specifically illustrates a multilayer electronic component having the noted ratio being 20% or more. See 722 Patent at least FIGS. 2 and 4. The only changes in embodiments being modification of related to the extent of the dummy electrodes in the third direction as shown in FIGS. 5 and 6. Finally, Examiners find the 722 Patent recites such a ratio as a critical or important feature of the invention, i.e., “by setting K2 to 20% or more according to an exemplary embodiment in the present disclosure, flexural strength characteristics may be bettered, while the dummy electrode is minimized” and “[i]f K2 is less than 20%, the effect of suppressing propagation of flex cracks may be insufficient.” In view of the forging, Examiners find the 722 Patent only provides a disclosure for generally a single embodiment of the multilayer electronic component that has the noted ratio being 20% or more and further Examiners are unable to find any unequivocal support as a separate invention a disclosure of the multilayer electronic component that has the noted ratio being less than 20%.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of the claims in this reissue application with respect to the patent claims as patented in the 722 Patent, Examiners find the new scope of claims 1-10, 12 and 23-26 in this reissue application covers a new invention that is not unequivocally disclosed on the face the 722 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention as a separate invention of providing a multilayer electronic component that has the noted ratio being less than 20%. Furthermore, Examiners find that the deleted requirements of the ratio remove a critical or important feature that suppresses propagation of flex cracks as explicitly stated in the 722 Patent. Thus, Examiners conclude claims 1-10, 12 and 23-26 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
This situation is also somewhat analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled):
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Forum US, 926 F.3d at 1348-49.
In reissue, patentee broadened the claims to remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id.
In the present reissue, Examiners similarly find original claims of the 722 Patent and the disclosure of the 722 Patent as a whole are focused on the multilayer electronic component that has the noted ratio being less than 20% as specifically recited in patent claims of the 722 Patent. Examiners do not find an unequivocal disclosure of a multilayer electronic component that has the noted ratio being less than 20% as separate invention. Accordingly, Examiners conclude that claims 1-10, 12 and 23-36 in this reissue application do not have unequivocal support in the 722 Patent and thus are not proper claims in reissue under the original patent requirement following the same reasoning as held in Forum US.
V. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The 2025 Reissue Declaration filed along with this reissue application is acknowledged. Examiners acknowledge the error statement as follows:
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Examiners find and maintain this error asserted in the 2025 Reissue Declaration is an improper error. Applicant states the claims are broadened to recharacterize the patent claims to not include the ratio feature noted above, i.e., the ratio being 20% or more. However, as provided above, Examiners find the presentation of claims 1-10, 12 and 23-26 to not include this feature is improper under the original patent requirement. Thus, this error is not a valid basis on which to base this reissue and thus Examiners object to the 2025 Reissue Declaration.
VI. ADDITIONAL REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
VI.A. Rejection Based on Defective Oath/Declaration
Claims 1-10, 12 and 23-26 and this application as a whole are rejected under 35 U.S.C. §251 for being based on a defective reissue oath or declaration. The nature of the defects of the 2025 Reissue Declaration is discussed above in the prior section.
VII. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
VIII. CLAIM REJECTION - 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.
VIII.A. Obviousness Rejections Applying Lee I and Ahn
Claims 1-7, 9, 10, 12 and 23-26 are rejected under 35 U.S.C. §103 as being unpatentable over U.S. Patent Application Publication No. 2016/0111216 to Sun Cheol Lee et al. (hereinafter “Lee I”). in view of U.S. Patent Application Publication No. 2018/0182551 to Jin Mo Ahn et al. (hereinafter “Ahn”).
Regarding claim 1, Lee I teaches:
1. A multilayer electronic component comprising:
See Lee I FIGS. 1 and 2, reprinted below:
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Lee I FIG. 1 Lee I FIG. 2
a body including an active portion in which dielectric layers and internal electrodes are alternately disposed in a first direction, an upper cover portion disposed on an upper surface of the active portion in the first direction, and a lower cover portion disposed on a lower surface of the active portion in the first direction, and 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
See Lee I FIGS. 1 and 2 above, body shown and first direction T, second direction L and third direction W. Further the body includes layers of internal electrodes 110/120.
external electrodes including connection portions disposed on the third and fourth surfaces and band portions extending from the connection portions onto portions of the first and second surfaces,
See Lee I FIGS. 1 and 2 above, external electrodes including connecting portions on the sides of the body and banding portions on the first and second surfaces.
wherein the upper cover portion and the lower cover portion include dummy electrodes, and,
See Lee I FIGS. 1 and 2, dummy electrodes 52 above and below the internal electrodes 110/112.
in a cross-section of the body taken in the first and second directions at a center of the body in the third direction, a line along which the band portion of the conductive resin layer is in contact with the first surface is d, an isosceles right triangle, in which d is a base and an extension line extending from an end of the band portion of the electrode layer by a length of d in a direction perpendicular to the first surface is a height, a ratio of an area occupied overlaps four layers of the dummy electrodes included in the lower portion and disposed below the internal electrodes in the first direction.
See annotated FIG. 2 of Lee, reprinted below, illustrating that an imaginary
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Lee I FIG. 2 (annotated by Examiners to show isosceles triangle)
isosceles triangle drawn as required in the claim limitation, overlap at least four of the dummy electrodes disposed below the internal electrodes in the first direction.
However, Lee I does not disclose the external electrodes having multiple layers. Nevertheless, Ahn teaches a similar multilayer electronic component comprising a body with external electrodes. See Ahn FIG. 1, reprinted below. As shown, Ahn teaches
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the external electrodes including electrode layers 121/122 and 131/132. Furthermore, at §0030, Ahn further discloses that “the first and second external electrodes 120 and 130 may include a conductive resin electrode between the first layers 121 and 131 and the second layers 122 and 132.” Thus, Ahn teaches external electrodes including electrode layers disposed on the body and conductive resin layers disposed on the electrode layers.
It would have been obvious at the time the invention was filed to provide multilayer external electrodes as taught by Ahn for the external electrodes of Lee I. One having ordinary skill in the art would do so to “alleviate mechanical shock” on the external electrodes as taught in ¶0030 of Ahn.
Regarding claims 2, 3 and 23-25, the component of Lee I and Ahn teaches the structures as discussed above. Examiners further find, as shown in FIGS. 1 and 2 of Lee I above, Lee I discloses precisely a distance between the first surface to the closest dummy electrode 52, a distance d (which is equivalent to a in FIG. 2), a thickness of dielectric layers 50/51, thicknesses of internal electrodes 110/120, and thicknesses of the cover portions above and below the active portions. However, Examiners do not find a particular discussion in Lee I regarding the relative dimensions of these structures shown. Nevertheless, modifying the base body of the multilayer electronic component of Lee I in view of Ahn to have the relative dimensions as recited in claims 2, 3 and 23-25 would be obvious to one having ordinary skill in the art through routine experimentation because where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Systems, Inc., 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 225 USPQ 232 (1984). Examiners first find that the dimensions and thickness recited in claims 2, 3 and 23-25 are dependent on the overall dimensions of the multilayer electronic component. Thus, Examiners find they are relative dimensions. Second, as discussed above, Lee I teaches the general structures, relationships, distances and thickness in general as required in the claims and further Examiners find that multilayer electronic component of Lee I would not operate different than the claimed component having the specific dimensions. It would have thus been obvious for a person having ordinary skill in the art to modify the relative dimensions in Lee I, if needed, to have the relative dimensions as recited in claims 2, 3 and 23-25 as such are merely dependent on the overall size of the body of the multilayer electronic component and thus such a modification, if needed, would be routine skill in the art. Furthermore, Examiners find as such a modification of overall relative dimensions would be within the ordinary skill in the art and would be predictable as such a modification, if needed, would not operate differently from the claimed invention. Accordingly, Examiners conclude claims 2, 3 and 23-25 are not patentably distinct from the teachings of Lee I in view of Ahn.
Regarding claim 4, Lee I and Ahn teach the component of claim 1 as provided above and further:
4. The multilayer electronic component of claim 1, wherein the number of stacked internal electrodes is 100 or less.
Note combination proposed above for claim 1. Further see Lee I FIG. 2, note less than 100 internal electrodes shown.
Regarding claim 5, Lee I and Ahn teach the component of claim 1 as provided above and further:
5. The multilayer electronic component of claim 1, wherein the dummy electrodes include a first dummy electrode connected to the third surface and a second dummy electrode disposed to be coplanar with the first dummy electrode, disposed to be spaced apart from the first dummy electrode, and connected to the fourth surface.
Note combination proposed above for claim 1. Further see Lee I FIG. 2, note first dummy electrodes 52 are connected to the third surface (left side) of the body and second dummy electrodes 52 connected to the fourth surface (right side) of the body.
Regarding claim 6, Lee I and Ahn teach the component of claim 1 as provided above and further:
6. The multilayer electronic component of claim 1, wherein the upper cover portion and the lower cover portion each include a plurality of dummy electrodes.
Note combination proposed above for claim 1. Further see Lee I FIG. 2, note plurality of dummy electrodes 52 in upper and lower portions of the body of the multilayer electronic component.
Regarding claim 7, Lee I and Ahn teach the component of claim 1 as provided above and further:
7. The multilayer electronic component of claim 1, wherein the internal electrodes include a first internal electrode and a second internal electrode, and the external electrodes include a first external electrode disposed on the third surface and connected to the first internal electrode and a second external electrode disposed on the fourth surface and connected to the second internal electrode.
Note combination proposed above for claim 1. Further see Lee I FIG. 2, note internal electrodes 110 connected to third surface external electrode 210 and internal electrodes 120 connected to fourth surface and external electrode 220.
Regarding claim 9, Lee I and Ahn teach the component of claim 7 as provided above and further:
9. The multilayer electronic component of claim 7, wherein the dummy electrodes include a first dummy electrode connected to the first external electrode and a second dummy electrode disposed to be coplanar with the first dummy electrode and disposed to be spaced apart from the first dummy electrode.
Note combination proposed above for claim 7. Further see Lee I FIG. 2 comprising first set of dummy electrodes connected to the first external electrode 210 and a second set of dummy electrodes connected to the second external electrode 220.
Regarding claim 10, Lee I and Ahn teach the component of claim 9 as provided above and further:
10. The multilayer electronic component of claim 9, wherein the dummy electrodes include a third dummy electrode disposed between the first dummy electrode and the second dummy electrode.
Note combination proposed above for claim 9. Further see Lee I FIG. 2 comprising first set of dummy electrodes connected to the first external electrode 210 and a second set of dummy electrodes connected to the second external electrode 220 and central dummy electrodes in the middle of the body.
Regarding claim 12, Lee I and Ahn teach the component of claim 1 as provided above and further:
12. The multilayer electronic component of claim 1, wherein a thickness of one of the dielectric layers included in the upper and lower cover portions is smaller than a thickness of one of the dielectric layers included in the active portion.
Note combination proposed above for claim 1. Further see Lee I FIG. 2 above, note thickness of dielectric layers 170 between the dummy electrodes in the upper and lower cover portions are smaller than thickness of dielectric layers 5 and 50 in the active portion of the component.
Regarding claim 26, Lee I and Ahn teach the component of claim 1 as provided above and further:
26. (New) The multilayer electronic component of claim 1, wherein in the cross-section of the body taken in the first and second directions at a center of the body in the third direction, a line along which the band portion of the conductive resin layer is in contact with the second surface is d2, an isosceles right triangle, in which d2 is a base and an extension line extending from an end of the band portion of the electrode layer by a length of d2 in a direction perpendicular to the second surface is a height, overlaps four layers of the dummy electrodes included in the upper cover portion and disposed upper the internal electrodes in the first direction.
Note combination proposed above for claim 1. See annotated FIG. 2 of Lee I, reprinted below, illustrating that a further imaginary isosceles triangle drawn as
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required in the claim limitation, overlap at least four of the dummy electrodes disposed above the internal electrodes in the first direction.
VIII.B. Obviousness Rejections Applying Lee II and Ahn
Claims 1, 7 and 8 are rejected under 35 U.S.C. §103 as being unpatentable over U.S. Patent Application Publication No. 2016/0099105 to Sun Cheol Lee et al. (hereinafter “Lee II”). in view of U.S. Patent Application Publication No. 2018/0182551 to Jin Mo Ahn et al. (hereinafter “Ahn”).
Regarding claim 1, Lee II teaches:
1. A multilayer electronic component comprising:
See Lee II FIGS. 1 and 2, reprinted below:
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a body including an active portion in which dielectric layers and internal electrodes are alternately disposed in a first direction, an upper cover portion disposed on an upper surface of the active portion in the first direction, and a lower cover portion disposed on a lower surface of the active portion in the first direction, and 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
See Lee II FIGS. 1 and 2 above, body shown and first direction T, second direction L and third direction W. Further the body includes layers of internal electrodes 121/122.
external electrodes including connection portions disposed on the third and fourth surfaces and band portions extending from the connection portions onto portions of the first and second surfaces,
See Lee II FIGS. 1 and 2 above, external electrodes 131/132 including connecting portions on the sides of the body and banding portions on the first and second surfaces.
wherein the upper cover portion and the lower cover portion include dummy electrodes, and,
See Lee II FIGS. 1 and 2, dummy electrodes 150 above and below the internal electrodes 121/122.
in a cross-section of the body taken in the first and second directions at a center of the body in the third direction, a line along which the band portion of the conductive resin layer is in contact with the first surface is d, an isosceles right triangle, in which d is a base and an extension line extending from an end of the band portion of the electrode layer by a length of d in a direction perpendicular to the first surface is a height, a ratio of an area occupied overlaps four layers of the dummy electrodes included in the lower portion and disposed below the internal electrodes in the first direction.
See annotated FIG. 2 of Lee II, reprinted below, illustrating that an imaginary
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Lee II FIG. 2 (annotated by Examiners to show isosceles triangle)
isosceles triangle drawn as required in the claim limitation, overlap at least four of the dummy electrodes disposed below the internal electrodes in the first direction.
However, Lee II does not disclose the external electrodes having multiple layers. Nevertheless, Ahn teaches a similar multilayer electronic component comprising a body with external electrodes. See Ahn FIG. 1, reprinted below. As shown, Ahn teaches
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Ahn FIG. 1
the external electrodes including electrode layers 121/122 and 131/132. Furthermore, at §0030, Ahn further discloses that “the first and second external electrodes 120 and 130 may include a conductive resin electrode between the first layers 121 and 131 and the second layers 122 and 132.” Thus, Ahn teaches external electrodes including electrode layers disposed on the body and conductive resin layers disposed on the electrode layers.
It would have been obvious at the time the invention was filed to provide multilayer external electrodes as taught by Ahn for the external electrodes of Lee II. One having ordinary skill in the art would do so to “alleviate mechanical shock” on the external electrodes as taught in ¶0030 of Ahn.
Regarding claim 7, Lee II and Ahn teach the component of claim 1 as provided above and further:
7. The multilayer electronic component of claim 1, wherein the internal electrodes include a first internal electrode and a second internal electrode, and the external electrodes include a first external electrode disposed on the third surface and connected to the first internal electrode and a second external electrode disposed on the fourth surface and connected to the second internal electrode.
Note combination proposed above for claim 1. Further see Lee II FIG. 2, note internal electrodes 121 connected to third surface external electrode 131 and internal electrodes 122 connected to fourth surface and external electrode 132.
Regarding claim 8, Lee II and Ahn teach the component of claim 7 as provided above and further:
8. The multilayer electronic component of claim 7, wherein the dummy electrode is disposed to be spaced apart from the first and second external electrodes.
Note combination proposed above for claim 1. Further see Lee II FIG. 2, note dummy electrodes 150 are spaced from the external electrodes 131/132.
IX. EXAMINERS’ RESPONSES TO APPLICANT’S ARGUMENTS
Examiners have fully considered the Applicant’s arguments in the June 2026 Amendment traversing the rejections provided in the March 2026 NF Action. However, as provided below, Examiners do not find the arguments persuasive and maintain the rejections.
On pages 11-13 of the June 2026 Amendment, Applicant first argues that the claims do not violate the original patent requirement because they are merely “an alternative characterization of the same arrangement that is expressly disclosed in U.S. Publication No. 2022/0181087.” Examiners disagree. Examiners find that such an argument ignores the explicit disclosure of the specification.
Examiners first find that the invention as patented requires a certain coverage percentage of the area of dummy electrodes as part of the cross section of a drawn triangle to be 20% or more. However, the new invention now being claim only requires an overlap of four dummy electrodes and the drawn triangle. Thus, this change is not a new characterization but a deletion of the requirement of 20% or more area coverage. Furthermore, as noted above in the rejection, such a requirement of 20% or more is critical to the invention because “[i]f K2 is less than 20%, the effect of suppressing propagation of flex cracks may be insufficient.”
Furthermore, Examiners do recognize that there can be some changes to the nature of dummy electrodes, i.e., compare dummy electrodes 140 shown in FIGS. 2, 5 and 6. However, Examiners find the specification also states “the present disclosure is not limited thereto, and there is no need to specifically limit the arrangement of the dummy electrode 140 if K2 may be secured to 20% or more.” See 722 Patent at col. 11, lines 3-5, emphasis added. Thus, the Applicant’s own specification does not merely dismiss the claim changes as a recharacterization. Rather the specification allows changes in the nature of the electrodes as long as the 20% or more coverage is maintained.
On page 12 of the June 2026 Amendment, Applicant states that the Forum US, Inc. decision does not control because “[e]very structural feature of the original claims is retained in the reissue claims…” Examiners disagree. The structural requirement of a coverage area of 20% or more is entirely missing from the reissue claims when compared to the patented claims. Furthermore, this coverage is not an optional feature but a critical feature to the invention as discussed above to avoid flex cracks. The deletion of the requirement of this coverage in favor of an overlap of four electrodes does not provide the avoidance of the cracks as even stated in the specification above (which allows modification of the arrangement of the dummy electrodes “if K2 may be secured to 20% or more”). Thus, the new invention now being claimed having four electrodes is a distinct structural requirement that does not address whether the K2 coverage of 20% or more is present or whether cracks can be avoided.
On pages 13-15 of the June 2026 Amendment, Applicant traverses the objection to the reissue declaration provided in the March 2026 NF Action. The basis for this traversal is generally along the lines that Applicant has not violated the original patent requirement. Examiners do not agree for the same reasons as provided above.2
On page 14 of the June 2026 Amendment, Applicant argues that error identified in the 2025 Reissue Declaration is precisely the type of error 35 U.S.C. Section 251 was designed to remedy. Examiners disagree as stated in this statue, “the Director shall …reissue the patent for the invention disclosed in the original patent”. This is the original patent requirement. Thus, Section 251 specifically limits broadening in reissue under the original patent requirement.
On page 16 of the June 2026 Amendment, Applicant traverses the art rejections applying Lee I and Lee on the basis that “[n]either Lee I nor Lee Il makes any reference to the isosceles right triangle geometry, describes any relationship between the band portion contact length and the dummy electrode layers, or discloses any design objective, structural parameter, or manufacturing criterion corresponding to the triangle overlap feature of claim 1.” Examiners do not find this argument persuasive. The claims require one having ordinary skill in the art to draw an imaginary triangle to define structures within the imaginary triangle. Examiners have done nothing more than follow the exact guidance of the claim on how to draw the imaginary triangle on a prior art reference. The fact that Lee I and Lee II do not expressly discuss a triangle is not persuasive to overcome the finding that when the imaginary triangle is drawn on their figures as claimed (and described in the specification of the 772 Patent), Lee I reads on this structures within the imaginary triangle.
On page 16 of the June 2026 Amendment, Applicant further argues that “[a] reference cannot be said to teach a feature simply because a reader with knowledge of the claims can identify a geometric coincidence in an undescribed aspect of an illustrated figure.” Examiners disagree. Examiners are not identifying an undescribed aspect or coincidence, rather Examiners are interpreting the described prior art structures in the context of the imaginary triangle recited in the claims. Examiners submit Applicant cannot have it both ways, using imaginary objects to define the claims while requiring the explicit description of imaginary objects in the prior art references.
Furthermore, drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. Both the 772 Patent, Lee I and Lee II use standard side drawings to illustrate the electric components. Thus, Examiners find no reason why Applicant should be able to use imaginary features to define other structures throughout its specification and claims, while disputing the same when considering the prior art. As noted above, Examiners have merely used the claims as a guide to review the prior art, as Examiners are required in patent examination.
On page 16 of the June 2026 Amendment, Applicant argues that Ahn purports to solve “a fundamentally different problem from the problem addressed by the claimed invention.” Examiners do not find this argument persuasive. Rather all of the 772 Patent, Lee I, Lee II and Ahn are all capacitor electronic components and thus are all in the same field of endeavor. Whether Ahn specifically addresses whatever Applicant is claiming as its solved problems is not relevant or sufficient to dismiss Ahn.
On page 17 of the June 2026 Amendment, Applicant states
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Examiners disagree and direct Applicant to review the rejections above wherein Examiners have identified the teachings of the references and provided explicit evidence from Ahn why one having ordinary skill in the art would make the combination. Furthermore, since the reasons to use such multi-layer electrodes is explicitly taught by Ahn, Examiners submit a reasonable expectation of success to a person having ordinary skill in the art to make the combination.
On pages 17-18 of the June 2026 Amendment, Applicant traverses the rejections of claims 2, 3 and 23-25 on the basis that Examiners’ reliance or Gardner v. TEC Systems Inc. is misplaced. Examiners disagree. Each of these claims merely recites various relative dimensions, which would depend on the size of the electrical component. Examiners find as provided in the Lee I and Lee II rejections above, that the structural relationships required in the claims are otherwise shown, except for certain individual dimensions (i.e., distance between first surface of a dummy electrode, length of d dimension, and various thicknesses). Examiners do no dispute Lee I and Lee II are silent as to actual dimensions. Nevertheless, simply resizing the electric components of Lee I or Lee II would provide the particular relative dimensions in the claims. Examiners submit the holding in Gardner is designed to address relative dimensions for this reason. Furthermore, while Applicant has identified some results of the relative dimensions (i.e., visibility of the dummy electrodes), Applicant has not provided any evidence how the prior art of Lee I or Lee II would operate differently with those relative dimensions. The claims recite and all the prior art relied upon are surface mounted capacitors.
X. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 722 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XI. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XI. CONCLUSION
Claims 1-10, 12 and 23-26 are pending.
Claims 1-10, 12 and 23-26 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. §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 C.F.R. §1.17(a)) pursuant to 37 C.F.R. §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.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571)272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346 (Fed. Cir. 2019).
2 Examiners do submit that if the original patent requirement rejection under 35 U.S.C. §251 is overcome, both the objection to the 2025 Reissue Declaration and the rejection based thereon would also be overcome.
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