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 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.
Email Communication
Applicant is encouraged to authorize the Examiner to communicate with applicant via email by filing form PTO/SB/439 either via USPS, Central Fax, or EFS-Web. See MPEP 502.01, 502.03, 502.05.
Specification
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 8-12 & 14 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim(s) 8-12 recite "An electrolytic capacitor including the electrode body according to claim 1/2/3/6/7 as a cathode" which cause the claim to be indefinite. Claim 1 from which all of claims 8-12 depend either directly or indirectly recites "a cathode of an electrolytic capacitor" and thus it is unclear if the "An electrolytic capacitor" and "a cathode" of claims 8-12 are meant to be the same or different than the "an electrolytic capacitor" and "a cathode" of claim 1. For the purpose of examination, the examiner is taking the "An electrolytic capacitor" and "a cathode" of claims 8-12 to be the same as the an electrolytic capacitor" and "a cathode" of claim 1.
In regards to claim 14,
Claim 14 recites “wherein a plurality of etching pits other than the uneven shape is dug in the enlarged surface layer;
a process of forming a carbon layer on the enlarged surface layer, and
a process of forming an uneven shape, which is compressed and deformed, on an interface between the enlarged surface layer and the carbon layer while making the carbon layer to further enter into the etching pits from the interface of the uneven shape by pressing the cathode foil on which the carbon layer was formed, wherein the carbon layer only partially fills the etching pits” which causes the claim to be indefinite as “the uneven shape” lacks antecedent basis in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 8-12 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 8-12 amount to a mere reiteration of claims 1-3 & 6-7, respectively, as said claim fail to recite any further limitations beyond the claims from which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 & 3-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi et al. (US 2002/0001169) in view of CN109830374A hereafter referred to as Lv.
In regards to claim 1 & 9,
Shiraishi ‘169 discloses an electrode body used for a cathode of an electrolytic capacitor, comprising:
a cathode foil made of a valve acting metal ([0136]), having a surface; and
a carbon layer including fibrous carbon and/or carbon powder, and formed on the surface ([0136]),
wherein:
an interface between the enlarged surface layer and the carbon layer has an uneven shape which is compressed and deformed ([0136] – it is noted that the foil will inherently have a surface roughness and thus the interface will have an uneven shape and based on the linear pressure used the uneven shape will be compressed and deformed during pressing). Shiraishi ‘169 fails to disclose an enlarged surface layer formed on the surface; and the enlarged surface layer is formed by digging a plurality of etching pits, and the carbon layer further enters into the etching pits from the interface of the uneven shape, wherein the carbon layer only partially fills the etching pits
Lv discloses a cathode foil made of aluminum material (1 – fig. 3; [0046]), and having an enlarged surface layer formed on a surface ([0053]); and
a coating layer (2 – fig. 1-3; [0019]) formed on the enlarged surface layer,
wherein:
an interface between the enlarged surface layer and the coating layer has an uneven shape (fig. 1-3),
the enlarged surface layer is formed by digging a plurality of etching pits (fig. 1-3; [0019-0020]), and
the coating layer further enters into the etching pits from the interface of the uneven shape (fig. 1-3; [0019-0020]), wherein the coating layer only partially fills the etching pits (fig. 4 – the entirety of the etching pit is not filled by the coating layer – noting the coating layer does not fill the bottommost area of the pit)
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the foil of Shiraishi ‘169 to have an enlarged surface layer as taught by Lv which the carbon layer can partially penetrate therein to allow for increased surface area of the electrode and improved adhesion between the foil and carbon layer.
In regards to claim 3 & 10,
Shiraishi ‘169 as modified by Lv and Shigeki fails to explicitly disclose wherein an unevenness depth of the uneven shape is 0.5 µm or more.
Lv discloses wherein an unevenness depth of the uneven shape is a result effective variable, particularly for ensuring good adhesion between the carbon layer and foil ([0019]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct the capacitor of Shiraishi ‘169 as modified by Lv and Shigeki such that an unevenness depth of the uneven shape is 0.5 µm or more to obtain good adhesion between the carbon layer and foil layer, as taught by Lv. Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In regards to claim 4-5 & 11,
Shiraishi ‘169 as modified by Lv and Shigeki discloses wherein the carbon layer penetrates the etching pit by an average of 0.5 µm or more in a depth direction (fig. 1-3; [0019-0020] of Lv).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the foil of Shiraishi ‘169 to have an enlarged surface layer as taught by Lv to allow for increased surface area of the electrode and improved adhesion between the foil and carbon layer.
In regards to claim 6-8 & 12-13,
Shiraishi ‘169 as modified by Lv and Shigeki discloses wherein the carbon layer penetrates the etching pit by an average of 0.7 µm or more in a depth direction (fig. 1-3; [0019-0020] of Lv).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the foil of Shiraishi ‘169 to have an enlarged surface layer as taught by Lv to allow for increased surface area of the electrode and improved adhesion between the foil and carbon layer.
In regards to claim 14,
Shiraishi ‘169 discloses a method for manufacturing an electrode body used for a cathode of an electrolytic capacitor, comprising:
a process of forming a surface of cathode foil made of a valve acting metal ([0136]);
a process of forming a carbon layer on the surface ([0136]), and
a process of forming an uneven shape ([0136] – it is noted that the foil will inherently have a surface roughness and thus the interface will have an uneven shape), which is compressed and deformed ([0136] – based on the linear pressure used the uneven shape will be compressed and deformed during pressing), on an interface between the surface and the carbon layer by pressing the cathode foil on which the carbon layer was formed ([0136] – it is noted that the foil will inherently have a surface roughness and thus the interface will have an uneven shape and based on the linear pressure used the uneven shape will be compressed and deformed during pressing). Shiraishi ‘169 fails to explicitly disclose a process of forming an enlarged surface layer on the surface of cathode foil, wherein a plurality of etching pits other than the uneven shape is dug in the enlarged surface layer; forming the carbon layer on the enlarged surface layer; while making the carbon layer to further enter into the etching pits from the interface of the uneven shape.
Lv discloses a method for manufacturing an electrode body used for a cathode of an electrolytic capacitor, comprising:
a process of forming an enlarged surface layer ([0053]) on a surface of cathode foil (1 – fig. 3; [0046]) made of aluminum material, wherein a plurality of etching pits other than the uneven shape is dug in the enlarged surface layer (fig. 1-3; [0019-0020]);
a process of forming a carbon layer (2 – fig. 1-3; [0019]) on the enlarged surface layer, and
a process of forming an uneven shape on an interface between the enlarged surface layer and the carbon layer while making the carbon layer to further enter into the etching pits from the interface of the uneven shape by pressing the cathode foil on which the carbon layer was formed (fig. 1-3; [0019-0020]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the foil of Shiraishi ‘169 to have an enlarged surface layer adjacent to the carbon layer as taught by Lv to allow for increased surface area of the electrode and improved adhesion between the foil and carbon layer.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi ‘169 as modified by Lv as applied to claim 1 above, and further in view of JP2014203850A hereafter referred to as Shigeki.
In regards to claim 2,
Shiraishi ‘169 as modified by Lv further disclose wherein the valve acting metal is aluminum material ([0136] of Shiraishi ‘169). Shiraishi ‘169 as modified by Lv fails to explicitly disclose the aluminum foil has a temper sign of H.
Shigeki discloses an aluminum foil electrode with a temper sign of H used in an electrolytic capacitor ([0021]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the foil of Shiraishi ‘169 to have temper sign of H as taught by Shigeki to obtain cathode foil with a desired hardness which will suppress deformation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 1-14 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,30,954. Although the claims at issue are not identical, they are not patentably distinct from each other because
In regards to claim 1, U.S. Patent No. 12,30,954 claims
An electrode body used for a cathode of an electrolytic capacitor, comprising:
a cathode foil made of a valve acting metal, having an enlarged surface layer formed on a surface (claim 1); and
a carbon layer including fibrous carbon and/or carbon powder, and formed on the enlarged surface layer (claim 1),
wherein:
an interface between the enlarged surface layer and the carbon layer has an uneven shape which is compressed and deformed (claim 1),
the enlarged surface layer is formed by digging a plurality of etching pits (claim 1), and
the carbon layer further enters into the etching pits from the interface of the uneven shape (claim 1), wherein the carbon layer only partially fills the etching pits (it is noted that the carbon layer entering into the etching pits includes an instance of only partially filling the etching pits).
In regards to claim 2, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 1, wherein the valve acting metal is aluminum material with a temper sign of H (claim 1).
In regards to claim 3, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 1, wherein unevenness depth of the uneven shape is 0.5 µm or more (claim 1).
In regards to claim 4, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 1, wherein the carbon layer penetrates the etching pit by an average of 0.5 µm or more in a depth direction (claim 2).
In regards to claim 5, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 3, wherein the carbon layer penetrates the etching pit by an average of 0.5 µm or more in a depth direction (claim 2).
In regards to claim 6, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 1, wherein the carbon layer penetrates the etching pit by an average of 0.7 µm or more in a depth direction (claim 6).
In regards to claim 7, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 4, wherein the carbon layer penetrates the etching pit by an average of 0.7 µm or more in a depth direction (claim 3).
In regards to claim 8, U.S. Patent No. 12,30,954 claims
The electrode body according to claim 5, wherein the carbon layer penetrates the etching pit by an average of 0.7 µm or more in a depth direction (claim 3).
In regards to claim 9, U.S. Patent No. 12,30,954 claims
An electrolytic capacitor including the electrode body according to claim 1 as a cathode (claim 7).
In regards to claim 10, U.S. Patent No. 12,30,954 claims
An electrolytic capacitor including the electrode body according to claim 3 as a cathode (claim 7).
In regards to claim 11, U.S. Patent No. 12,30,954 claims
An electrolytic capacitor including the electrode body according to claim 4 as a cathode (claim 5).
In regards to claim 12, U.S. Patent No. 12,30,954 claims
An electrolytic capacitor including the electrode body according to claim 7 as a cathode (claim 6).
In regards to claim 13, U.S. Patent No. 12,30,954 claims
An electrolytic capacitor including the electrode body according to claim 8 as a cathode (claim 6).
In regards to claim 14, U.S. Patent No. 12,30,954 claims
A method for manufacturing an electrode body used for a cathode of an electrolytic capacitor, comprising:
a process of forming an enlarged surface layer on a surface of cathode foil made of a valve acting metal, wherein a plurality of etching pits other than the uneven shape is dug in the enlarged surface layer (claim 8);
a process of forming a carbon layer on the enlarged surface layer (claim 8), and
a process of forming an uneven shape, which is compressed and deformed, on an interface between the enlarged surface layer and the carbon layer while making the carbon layer to further enter into the etching pits from the interface of the uneven shape by pressing the cathode foil on which the carbon layer was formed (claim 8), wherein the carbon layer only partially fills the etching pits (it is noted that the carbon layer entering into the etching pits includes an instance of only partially filling the etching pits).
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M SINCLAIR whose telephone number is (571)270-5068. The examiner can normally be reached M-TH from 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIMOTHY J DOLE can be reached at (571)272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David M Sinclair/Primary Examiner, Art Unit 2847
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