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 .
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 § 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 9 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “50 mass % or more”, and the claim also recites “60 % or more”, “70% or more”, “80 mass % or more”, or “90 mass% or more” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 7, 11, and 16-17 of U.S. Patent No. 12,518,920 B2 (‘920). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1 and 2, ’920 discloses a multilayer ceramic capacitor comprising:
a first main surface and a second main surface opposed to each other in a thickness direction, a first side surface and a second side surface opposed to each other in a width direction, and a first end surface and a second end surface opposed to each other in a length direction (C: 1, L: 1-6);
an element body including dielectric ceramic layers and inner electrode layers laminated in the thickness direction (C: 1, L: 7-11); and
a pair of outer electrodes on the first end surface and the second end surface and electrically connected to the inner electrode layers (C: 1, L: 12-15); wherein
the dielectric ceramic layers include as a main component a crystal grain including perovskite composite oxide including barium (Ba) and titanium (Ti) and further including a rare-earth element (Re) (C: 1, L: 16-19);
the dielectric ceramic layers include, in a section including the thickness direction, a rare-earth high-concentration region with an area ratio of about 50% or more having a molar ratio of the rare-earth element (Re) to titanium (Ti) (Re/Ti ratio) is from about 0.04 to about 0.30 or less (C: 1, L: 20-27);
and in the section, a CV value of a thickness direction line segment ratio of the rare-earth high-concentration region is about 25% or less (15 % or less).
Claim 1 recites a feature that has to be certified with specialized testing equipment, not at the disposal of the Office. However, as noted in the rejection of claim 1 above, the ‘920 reference teaches claimed ceramic dielectric material. When the structure recited in the references is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01 I states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.). See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated "such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate." The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
Regarding claim 3, ‘920 discloses in the section, the dielectric ceramic layers include the rare-earth high-concentration region of the area ratio of about 60% or more (C: 2, L: 1-4).
Regarding claims 4-5, ‘920 discloses in the section, a CV value of the Re/Ti ratio in the rare-earth high-concentration region is about 15% or less (C: 4, L: 1-3).
Regarding claim 6, ‘920 discloses in the section, the dielectric ceramic layers include a rare-earth low-concentration region with a ratio of the rare-earth element (Re) to titanium (Ti) (Re/Ti ratio) being less than about 0.04;
the rare-earth low-concentration region includes sub-regions surrounded by the rare-earth high-concentration region; and
a mean value of equivalent circle diameters of the respective sub-regions in the section is about 130 nm or more (C: 1, L: 28-38).
Regarding claim 7, ‘920 discloses wherein a mean value of circularities of the respective sub-regions in the section is about 0.70 or more (C:1, L: 1-3).
Regarding claim 8, ‘920 discloses a dimension of the multilayer ceramic capacitor in the length direction is about 0.4 mm to about 5.7 mm (C: 7, L:1-4);
a dimension of the multilayer ceramic capacitor in the width direction is about 0.2 mm to about 5.0 mm (C: 7, L: 4-5); and
a dimension of the multilayer ceramic capacitor in the thickness direction is about 0.125 mm or more and about 5.0 mm or less (C: 7, L: 5-7).
Regarding claims 9-13, ‘920 disclose a content of the main component of the dielectric ceramic layers is about 90 mass% or more.
It is known in the dielectric ceramic art to form ceramic layers so that the layers comprise 90 mass% of a main component (Ba, Ti, Re).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to form the ceramic capacitor of ‘920 so that a content of the main component of the dielectric ceramic layers is about 90 mass% or more, since such a modification would from a multilayer ceramic component having ceramic layers with high dielectric constant.
Regarding claim 14, ‘920 discloses the rare-earth element includes at least one of yttrium, lanthanum, cerium, praseodymium, neodymium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, or lutetium (C: 11, L: 1-5).
Regarding claim 15,‘920 discloses the rare-earth element includes dysprosium (C: 11, L: 1-5).
Regarding claims 16-18, ‘920 discloses the dielectric ceramic layers include, in proportion to titanium of 100 mol, the rare-earth element is about 3.5 mol to about 25.0 mol (C: 1, L: 20-27).
Regarding claim 19, ‘920 discloses each of the dielectric ceramic layers has a thickness of about 0.5 µm or more and about 7.0 µm or less (C: 16, L: 1-4).
Regarding claim 20, ‘920 discloses a number of the dielectric ceramic layers is 50 or more and 1000 or less (C: 17, L: 1-3).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wada et al. (US 12,518,920 B2).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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Regarding claims 1-2, Wada et al. disclose a multilayer ceramic capacitor comprising:
a first main surface (10a) and a second main surface (10b) opposed to each other in a thickness direction (T), a first side surface (12a) and a second side surface (12b) opposed to each other in a width direction (W),and a first end surface (14a) and a second end surface (14b) opposed to each other in a length direction (L);
an element body including dielectric ceramic layers (2) and inner electrode layers (4a, 4b) laminated in the thickness direction (T); and
a pair of outer electrodes (14a, 14b) on the first end surface (14a) and the second end surface (14b) and electrically connected to the inner electrode layers (4a, 4b); wherein
the dielectric ceramic layers (2) include as a main component a crystal grain including perovskite composite oxide including barium (Ba) and titanium (Ti) and further including a rare-earth element (Re) (C: 5, L: 1-31);
the dielectric ceramic layers include, in a section including the thickness direction, a rare-earth high-concentration region with an area ratio of about 50% or more having a molar ratio of the rare-earth element (Re) to titanium (Ti) (Re/Ti ratio) of about 0.04 or more and about 0.30 or less (C: 6, L: 34-59); and
in the section, a CV value of a thickness direction line segment ratio of the rare-earth high-concentration region is about 25% or less (15 % or less).
Claims 1-2 recite a feature that has to be certified with specialized testing equipment, not at the disposal of the Office. However, as noted in the rejection of claim 1 above, the ‘920 reference teaches claimed ceramic dielectric material. When the structure recited in the references is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01 I states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.). See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated "such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate." The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
Regarding claim 3, Wada et al. disclose in the section, the dielectric ceramic layers include the rare-earth high-concentration region of the area ratio of about 60% or more (C: 6, L: 34-59), (Claim 2).
Regarding claim 4, Wada et al. disclose in the section, a CV value of the Re/Ti ratio in the rare-earth high-concentration region is about 35% or less (claim 4).
Regarding claim 5, Wada et al. disclose in the section, a CV value of the Re/Ti ratio in the rare-earth high-concentration region is about 15% or less (claim 4).
Regarding claim 6, Wada et al. disclose in the section, the dielectric ceramic layers include a rare-earth low-concentration region with a ratio of the rare-earth element (Re) to titanium (Ti) (Re/Ti ratio) being less than about 0.04;
the rare-earth low-concentration region includes sub-regions surrounded by the rare-earth high-concentration region; and a mean value of equivalent circle diameters of the respective sub-regions in the section is about 130 nm or more (claim 1).
Regarding claim 7, Wada et al. disclose wherein a mean value of circularities of the respective sub-regions in the section is about 0.70 or more (claim 5).
Regarding claim 8, Wada et al. disclose a dimension of the multilayer ceramic capacitor in the length direction is about 0.4 mm or more and about 5.7 mm or less;
a dimension of the multilayer ceramic capacitor in the width direction is about 0.2 mm or more and about 5.0 mm or less; and a dimension of the multilayer ceramic capacitor in the thickness direction is about 0.125 mm or more and about 5.0 mm or less (claim 7).
Regarding claim 9, Wada et al. disclose a content of the main component of the dielectric ceramic layers is about 50 mass% or more, about 60 mass% or more, about 70 mass% or more, about 80 mass% or more, or about 90 mass% or more (C: 4, L: 60-67).
Regarding claim 10, Wada et al. disclose a content of the main component of the dielectric ceramic layers is about 60 mass% or more (C: 4, L: 60-67).
Regarding claim 11, Wada et al. disclose a content of the main component of the dielectric ceramic layers is about 70 mass% or more (C: 4, L: 60-67).
Regarding claim 12, Wada et al. disclose a content of the main component of the dielectric ceramic layers is about 80 mass% or more (C: 4, L: 60-67).
Regarding claim 13, Wada et al. disclose a content of the main component of the dielectric ceramic layers is about 90 mass% or more (C: 4, L: 60-67).
Regarding claim 14, Wada et al. disclose the rare-earth element includes at least one of yttrium, lanthanum, cerium, praseodymium, neodymium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, or lutetium (table 1).
Regarding claim 15, Wada et al. disclose wherein the rare-earth element includes dysprosium (table 1).
Regarding claim 16, Wada et al. disclose the dielectric ceramic layers include, in proportion to titanium of 100 mol, the rare-earth element of about 0.1 mol or more and about 35.0 mol or less (claim 12).
Regarding claim 17, Wada et al. disclose wherein the dielectric ceramic layers include, in proportion to titanium of 100 mol, the rare-earth element of about 0.5 mol or more and about 30.0 mol or less (table 1 – example 1).
Regarding claim 18, Wada et al. disclose the dielectric ceramic layers include, in proportion to titanium of 100 mol, the rare-earth element of about 3.5 mol or more and about 25.0 mol or less (table 1 – example 1).
Regarding claim 19, Wada et al. disclose each of the dielectric ceramic layers has a thickness of about 0.5 µm or more and about 7.0 µm or less (claim 16).
Regarding claim 20, Wada et al. disclose a number of the dielectric ceramic layers is 50 or more and 1000 or less (claim 17).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 200428328 – multilayer ceramic capacitor having low equivalent series resistance (ESR) without causing a capacitance defect even in a high humidity environment
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC THOMAS whose telephone number is (571)272-1985. The examiner can normally be reached Monday-Friday, 6:00 AM-2:30 PM.
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/ERIC W THOMAS/Primary Examiner, Art Unit 2847
ERIC THOMAS
Primary Examiner
Art Unit 2847
