Prosecution Insights
Last updated: September 17, 2026
Application No. 19/032,667

FILM CAPACITOR

Non-Final OA §103
Filed
Jan 21, 2025
Priority
Jul 22, 2022 — JP 2022-117415 +1 more
Examiner
TORRES, TIMOTHY JOSEPH
Art Unit
Tech Center
Assignee
Shizuki Electric Co. Inc.
OA Round
1 (Non-Final)
100%
Grant Probability
Favorable
1-2
OA Rounds
4m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 100% — above average
100%
Career Allowance Rate
1 granted / 1 resolved
+40.0% vs TC avg
Minimal +0% lift
Without
With
+0.0%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 0m
Avg Prosecution
14 currently pending
Career history
8
Total Applications
across all art units

Statute-Specific Performance

§103
62.7%
+22.7% vs TC avg
§102
25.4%
-14.6% vs TC avg
§112
10.2%
-29.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1 resolved cases

Office Action

§103
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 . 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. Specification The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. 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. 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. Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo US 4777558 A (hereafter referred to as Endo) in view of Hirama US 4959652 A (hereafter referred to as Hirama). PNG media_image1.png 367 938 media_image1.png Greyscale Figure 1: Examiner annotated Fig. 4D of Endo pointing out what constitutes a welded part of a lead out terminal. Regarding claim 1, Endo discloses A film capacitor comprising: a capacitor element (10 – Fig. 2; col. 3 lines 55-68 and col. 4 lines 1-5) including an element body (11 – Fig. 2) comprising a laminate (Fig. 3; col. 3 lines 55-68 and col. 4 lines 1-5) including a metallized film (13, 12 – Fig. 3; col. 3 lines 55-68 and col. 4 lines 1-5) having a metal layer (12 – Fig. 3) on at least one main surface of a dielectric film (13 – Fig. 3), and an external electrode (14 – Fig. 2) on an end surface of the element body and connected to the metal layer (Fig. 3; col. 4 lines 1-2); and a lead-out terminal (16, 18 – Fig. 3; col. 4 lines 19-23) welded and electrically connected to the external electrode (col. 5 lines 44-58), and a bite depth of the lead-out terminal from a surface of the external electrode is 0.5 mm or more (Col. 4 lines 44-54 disclose a diameter of wire 18 is 0.2-1.0 mm (with a specific example of 0.6 mm) and col. 4 lines 19-23 disclose that the metal wire 18 is completely embedded. Therefore, the bite depth disclosed by Endo is 0.2-1.0mm with a specific example of 0.6 mm). Endo fails to explicitly disclose wherein the external electrode has a surface roughness Ra of 20 um to 45 um. Hirama discloses wherein the external electrode has a surface roughness Ra is less than 0.1 mm (100 um) (col. 2 lines 35-49), overlapping with the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to give the external electrodes of Endo a surface roughness of 100 um or less as taught by Himara in order to improve bonding strength of a coating resin for protecting a film capacitor from moisture (col. 2 lines 35-49 and col. 3 lines 3-16). Regarding claim 2, modified Endo discloses The film capacitor according to claim 1, wherein the bite depth of the lead-out terminal from the surface of the external electrode is 0.7 mm or more (Col. 4 lines 44-54 of Endo disclose a diameter of wire 18 is 0.2-1.0 mm and col. 4 lines 19-23 of Endo disclose that the metal wire 18 is completely embedded. Therefore, the bite depth disclosed by Endo is 0.2-1.0mm, overlapping with the claimed range). Regarding claim 3, modified Endo discloses The film capacitor according to claim 2, wherein the bite depth of the lead-out terminal from the surface of the external electrode is equal to or less than a thickness of a welded part of the lead-out terminal (present office action figure 1 (hereafter called POA1) shows wire 18 is fully embedded while a welded part of 16 is not contained in the external electrode). Regarding claim 4, modified Endo discloses The film capacitor according to claim 1, wherein the bite depth of the lead-out terminal from the surface of the external electrode is equal to or less than a thickness of a welded part of the lead-out terminal (POA1 shows wire 18 is fully embedded while a welded part of 16 is not contained in the external electrode). Regarding claim 5, modified Endo discloses The film capacitor according to claim 1, wherein a welded part of the lead-out terminal has a thickness of 0.5 mm or more (Col. 4 lines 44-54 of Endo disclose a diameter of wire 18 is 0.2-1.0 mm (with a specific example of 0.6 mm). Col. 4 lines 31-45 of Endo disclose a terminal 16 with a thickness of 0.075-0.3 mm (with a specific example of 0.15 mm). Therefore, a welded part of the lead-out terminal has a thickness of 0.275-1.3 mm (with a specific example of 0.75 mm), overlapping the claimed range. POA1 point out a welded portion). Regarding claim 6, modified Endo discloses The film capacitor according to claim 1, wherein a welded part of the lead-out terminal has a thickness of 0.7 mm or more (Col. 4 lines 44-54 of Endo disclose a diameter of wire 18 is 0.2-1.0 mm (with a specific example of 0.6 mm). Col. 4 lines 31-45 of Endo disclose a terminal 16 with a thickness of 0.075-0.3 mm (with a specific example of 0.15 mm). Therefore, a welded part of the lead-out terminal has a thickness of 0.275-1.3 mm (with a specific example of 0.75 mm), overlapping the claimed range. POA1 point out a welded portion). Regarding claim 7, modified Endo discloses The film capacitor according to claim 1, wherein a welded part of the lead-out terminal has a flat plate shape (POA1 and Fig. 2 of Endo shows a welded part of 16 is a flat plate). Regarding claim 8, modified Endo discloses The film capacitor according to claim 1, wherein the lead-out terminal is a lead wire (16, 18 - Fig. 2 of Endo shows a lead-out wire. A wire is not defined by the applicant to have any specific dimensions and therefore a plate or strip of conductor wire is considered a wire based on its plain meaning). Regarding claim 9, modified Endo discloses The film capacitor according to claim 1, wherein the laminate is a wound body (Col. 5 lines 15-26 of Endo). Regarding claim 10, modified Endo discloses The film capacitor according to claim 9, wherein the wound body has an oval shape or an oblong shape (col. 3 lines 55-68 and col. 4 lines 1-5 of Endo disclose that the shape may be columnar and therefore have an oblong shape. Furthermore, Figs. 17 & 18 of Endo show an oval shape). Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo in view of Hirama and further in view of Meal US 4255779 A (hereafter referred to as Meal). Regarding claim 11, modified Endo discloses The film capacitor according to claim 1. Endo fails to disclose the film capacitor according to claim 1 further comprising an outer case, and wherein the capacitor element is housed in an inside of the outer case. Hirama fails to disclose the film capacitor according to claim 1 further comprising an outer case, and wherein the capacitor element is housed in an inside of the outer case. Meal discloses a film capacitor further comprising an outer case, and wherein the capacitor element is housed in an inside of the outer case (26 – Fig. 3; col. 55-68 and col. 4 lines 1-2). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to place the film capacitor of Endo as modified by Hirama into the outer case of Meal in order to create a mold for which resin can be poured to protect the film capacitor from moisture (col. 55-68 and col. 4 lines 1-2 of Meal). Furthermore, the outer case of Meal ensures that only conductive lead-out portions used for mounting are exposed, preventing possible shorts (Col. Lines 12-26 of Meal). Regarding claim 12, modified Endo discloses The film capacitor according to claim 11. Endo fails to disclose the film capacitor according to claim 11 further comprising a filling resin within the outer case and filling a space between the outer case and the capacitor element. Hirama fails to disclose the film capacitor according to claim 11 further comprising a filling resin within the outer case and filling a space between the outer case and the capacitor element. Meal discloses a film capacitor further comprising a filling resin within the outer case and filling a space between the outer case and the capacitor element (Figs. 2 & 3; col. 3 lines 55-68 and col. 4 lines 1-2). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to fill the outer casing the film capacitor of Endo as modified by Hirama and Meal with a filling resin to protect the film capacitor from moisture (26 – Fig. 3; col. 55-68 and col. 4 lines 1-2 of Meal). Regarding claim 13, modified Endo discloses The film capacitor according to claim 11. Endo fails to disclose wherein the lead-out terminal projects outward from the inside of the outer case. Hirama fails to disclose wherein the lead-out terminal projects outward from the inside of the outer case. Meal discloses wherein the lead-out terminal projects outward from the inside of the outer case (Fig. 3). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the lead-out terminal of Endo projects outward from the inside of the outer case in order for the film capacitor to be capable of being electrically connected (and specifically though hole mounted, provide strong bonding to a circuit board) to a circuit and perform its function as a capacitor. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 3710211 A: Fig. 1 – Lead-out wire partially embedded in external electrode US 3906297 A: Fig. 2 – flat plate shaped weld portion (col. 5 lines 21-26); Fig. 6b – weld portion partially embedded in external electrode US 5144523 A: Fig. 1 – Lead-out wire partially embedded in external electrode JP 2004273784 A: casing for film capacitor Communication Any inquiry concerning this communication or earlier communications from the examiner should be directed to Timothy Torres whose telephone number is (571)272-9896. The examiner can normally be reached Mon-Fri 7:30-5:00. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /T.J.T./Examiner, Art Unit 2847 /Timothy J. Dole/Supervisory Patent Examiner, Art Unit 2847
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Prosecution Timeline

Jan 21, 2025
Application Filed
Sep 04, 2026
Non-Final Rejection mailed — §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
100%
Grant Probability
99%
With Interview (+0.0%)
2y 0m (~4m remaining)
Median Time to Grant
Low
PTA Risk
Based on 1 resolved cases by this examiner. Grant probability derived from career allowance rate.

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