NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 19/174,753, which is a broadening reissue application of U.S. Application No. 17/498,558 (hereinafter the “558 Application"), entitled MULTI-LAYER CERAMIC ELECTRONIC COMPONENT AND METHOD OF PRODUCING THE SAME, which issued as U.S. Patent No. 11,631,543 (hereinafter the “543 Patent").
The status of the claims is as follows:
Claims 1-9 are pending and examined herein.
Claims 1-9 are rejected.
I. STATUS OF CLAIMS
The 543 Patent issued with claims 1-5.
Applicant filed a preliminary amendment on April 9, 2025 (hereinafter the “2025 Preliminary Amendment”) along with the filing of the present application. In the 2025 Preliminary Amendment, claims 1-3 were amended, claims 4 and 5 were unchanged and new claims 6-9 were added. Furthermore, the specification was amended to change the cross-noting information.
Therefore, claims 1-9 are pending and will be examined in this reissue application.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue application of the 558 Application, now the 543 Patent. Examiners further acknowledge the Applicant’s claim that the 558 Application is a continuation application of U.S. Patent Application No. 16/711,210, filed December 11, 2019, now U.S. Patent No. 11,177,071 (hereinafter the “071 Patent”). Examiners further acknowledge the claim of priority to Japanese Application No. JP2018-238087, filed December 20, 2018. Examiners finally acknowledge a child application of the 558 Application, U.S. Patent Application No. 18/184,583, filed March 15, 2023, now U.S. Patent No. 11,798,748 (hereinafter the “748 Patent”).
III. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. §1.173 Reissue specification, drawings, and amendments (in part)
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:…
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(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 provided in the 2025 Preliminary Amendment are objected to because they use improper under the rule above. For example, claims 6-9 have improper identifiers, i.e., they should be identified as “New.” Furthermore, since claims 6-9 are new with respect to the original patent, i.e., the 543 Patent, they should be fully underlined, all of claim numbers, identifiers and text. See MPEP §1453(V)(C). Appropriate correction is required in response to this Office action.
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 1-5, 8 and 9 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, i.e., the 543 Patent.
First for example, Examiners find that each of patent claims 1-5 of the 543 Patent and ending claims 1-5, 8 and 9 are directed to multi-layer electronic components. Upon comparison with the patent claims, Examiners find claims 1-5, 8 and 9 in this reissue application have been broadened by removing the requirement that the base film includes “a first covering portion formed on the end surface.” Thus, the new invention now being claimed in claims 1-5, 8 and 9 in this reissue application is directed to a multi-layer electronic component that does not require such this first covering portion formed on the end surface. Such a deletion is confirmed by Applicant in the 2025 Preliminary Amendment on page 5 thereof (“the element ‘a first covering portion’ has been deleted…”). Thus, the new invention would cover an electronic component with no first covering portion and would cover electronic components that have other layers intervening.
However, Examiners do not find an unequivocal disclosure in the 543 Patent for this new invention, i.e., a multi-layer electronic component that does not require the first covering portion formed on the end surface. First for example, such a requirement was patented in all the claims of the 543 Patent, as well as the parent 071 Patent and the child 748 Patent. Second, the Abstract explicitly states “a base film covering the end surface and including a first, second, and third covering portions formed on the end surface, on the circumferential surfaces, and on the recess, respectively.” The Summary of the Invention similarly states such a requirement of the first covering portion. Furthermore, Examiners find only one general embodiment of invention in the 543 Patent and every drawing specifically illustrates the base film includes a first covering portion formed on the end surface. See 543 Patent FIGS. 2, 4 and 5 illustrating a base film 11 always including a first covering portion/end surface covering portion 25 on the end surface, second covering portions 26b/26c of the circumferential surfaces and third covering portions 27 in the recesses. Finally, the 543 Patent states “[t]he base film 21 is formed so as to cover the end surface 11a” of the component and would provide the electrical connection to the internal electrodes 12/13. See 543 Patent Furthermore, the material and arrangement of the base film 21 in association with the ceramic body including the electrodes are “to prevent large compressive stress from being generated in the ceramic body 11 and to prevent defects such as cracks from being caused in the ceramic body 11.” See 543 Patent col. 7, lines 5-12. Examiners further find that one having ordinary skill in the art would know that the base film including the first covering portion provides the electrical connection to the internal electrodes that allows the component to operate. Thus, Examiners are unable to find any unequivocal support for a disclosure of a multi-layer electronic component in the 543 Patent that does not have a first covering portion formed the end surface.
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 claims 1-5, 8 and 9 in this reissue application with respect to the patent claims as patented in the 543 Patent, Examiners find the new scope of claims 1-5, 8 and 9 covers a new invention that is not unequivocally disclosed on the face the 543 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention of providing a multi-layer electronic component that does not have a first covering portion formed the end surface. Rather Examiners find that the removed portions of the electronic component, i.e., the first covering portion, is an important and required features of the invention to allow the multi-layer electronic component to operate and prevent cracks in the component body. Thus, Examiners conclude claims 1-5, 8 and 9 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 543 Patent and the disclosure of the 543 Patent as a whole are focused on a multi-layer electronic component with first, second and third covering portions as recited in patent claims 1-5 of the 482 Patent. Examiners do not find a multi-layer electronic component without a first covering portion formed the end surface separately described as a separate invention. Accordingly, Examiners conclude that claims 1-5, 8 and 9 in this reissue application do not have unequivocal support in the 543 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 two errors asserted as forming a bases for this reissue application. Examiners find the first error asserted in the 2025 Reissue Declaration related to the removal of the “first covering portion” is an improper error. As provided above, Examiners find the presentation of claims 1-5, 8 and 9 relating to the removal of the “first covering portion” is improper under the original patent requirement. Thus, this first identified error is not a valid basis on which to base this reissue and thus Examiners object to the 2025 Reissue Declaration.
Examiners find the second error related to the changes to claim 2 is a proper error on which to base this reissue.
However, as noted in the rule above, Applicant in the reissue declaration “must identify a claim that the application seeks to broaden.” The error statement does not specifically identify a claim Applicant seeks to broaden and thus Examiners object to the 2025 Reissue Declaration on this basis.
In view of the forgoing, Applicant is required to provide new reissue oath/declaration on the record in this reissue application with a proper statement of error (e.g., the second error noted above) and specifically identify a claim Applicant seeks to broaden.
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 1-9 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. DOUBLE PATENTING REJECTIONS
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 C.F.R. §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 C.F.R. §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 C.F.R. §1.111(a). For a reply to final Office action, see 37 C.F.R. §1.113(c). A request for reconsideration while not provided for in 37 C.F.R. §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.
VIII.A. Double Patenting Rejection Over the 748 Patent
Claims 1-9 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-5 of the 748 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 of the 748 Patent read directly on one or more of claims 1-9 in this reissue application. For example, claim 1 of the 748 Patent reads on claims 1, 2 and 6 in this reissue application, claim 3 of the 748 Patent reads on claim 3 and 7 in this reissue application, claim 4 of the 748 Patent reads on claim 4 in this reissue application, and claim 5 of the 748 Patent reads on claim 5 in this reissue application, except for minor re-wording of the language. Furthermore, Examiners find claims 1 and 2 of the 748 Patent reads on claim 8 in this reissue application, except for the relative dimensions. Nevertheless, since claims 1 and 2 of the 748 Patent otherwise read on the structural requirements and relationships of claims 8 in this reissue application, claims 1 and 2 of the 748 Patent read on the relative dimensions as well. Finally, claims 1 and 2 of the 748 Patent reads on claim 9 in this reissue application since claim 9 merely recites necessary or inherent surfaces of the multi-layer electronic component and thus if not disclosed in claims 1 and 2 of the 748 Patent, such surfaces would be obvious over claims 1 and 2 of the 748 Patent.
IX. SUBJECT MATTER ALLOWABLE OVER THE PRIOR ART
While claims 1-9 are rejected in this action as provided above, Examiners find these claims are nevertheless allowable over the prior art of record in this reissue application.
Regarding these claims, Examiners find that the closest prior art is U.S. Patent Application Publication No. 2017/0301470 (hereinafter the “470 Publication”) which discloses the more general features of claims 1-9 of the present reissue application. See 470 Publication FIG. 4 which discloses a capacitor body 11 having a ridge having a recess 20 along the first direction of the body and a base film 14 including a first covering portion formed on the end surface, second covering portions on the circumferential surfaced, and a third covering portion formed within the recess 20. However, the 470 Publication does not show or teach the third covering portion spaced apart from the at least one of the second covering portions, rather they are connected.
X. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 543 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 1-9 are pending.
Claims 1-9 are rejected.
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.
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.
/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).