DETAILED ACTION
This action is in response to the Applicant’s preliminary amendment filed on September 5, 2025. As set forth therein, claims 1-20 are pending, of which claims 1,5, 10 and 12 are amended and claims 15-20 are newly added.
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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,908,622 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 5, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 5 is objected to because of the following informalities: in line 13 "bub bar" should be changed to "bus bar" to correct a typographical issue. Appropriate correction is required.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
The Examiner notes that the error started states “[t]he original claims claim less than the inventors had the right to claim in the patent and thus independent claims 1, 5 and 10 are amended to broaden the scope of the original claims by removing some of the limitations of the original claims, respectively.
The Examiner notes that in accordance with MPEP 1414(II), A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. It is noted that any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
Claims 1-20 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 103
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 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) 5, 17 and 18 is is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang US Patent Pub. 2010/00000089 in view of Nishizawa US Patent 5,132,896.
Regarding claim 5:
A capacitor comprising: [a capacitor element unit; and a case that is made of a metal and houses the capacitor element unit, the capacitor element unit including:]
Yang discloses a capacitor as illustrated in Figure 1b and described in paragraph [0008].
a capacitor element including a first electrode and a second electrode;
Yang discloses the capacitor including a first electrode and a second electrode (see paragraph [0005] which describes the formation of a polar plate. See also paragraph [0016]). See Figure 4b and paragraph [0034] which disclose lead frames 7a1, 7a2, 7b1 and 7b2 each of which connected to the electrodes of the capacitors (3). See also paragraph [0038].
[a first electrode disposed on one of both end faces of the capacitor element; a second electrode disposed on another one of the both end faces of the capacitor element;] a first bus bar connected to the first electrode[, the first bus bar including a first region];
See Figure 4b which shows a first bus bar 1 (with its lead frame) connected to the first electrode of capacitor 3.
a second bus bar connected to the second electrode; [, the second bus bar including a second region facing the first region; and]
See Figure 4b which shows a first bus bar 2 (with its lead frame) connected to the second electrode of capacitor 3.
a first insulating member that has an insulation property and is [disposed between the first region and the second region] attached to the first bus bar and the second bus bar; and
As set forth in the abstract, Yang discloses “the pair of bus bars are assembled to be insulated from each other and overlapped at one side of the capacitor device.” In addition, as set forth in paragraph [0013], “As shown in FIG. 1A, in the conventional capacitor device 3, when the pair of bus bars 1 and 2 are attached to the sprayed surfaces 5 of the capacitor device 3, to be insulated from each other”. See also paragraphs [0035] and [0039] which discloses the first bus bar 1 and the second bus bar 2 are insulated from each other by inserting an insulating film between the pair of bus bars 1 and 2, keeping an interval between the bus bars 1 and 2, or mounting an insulating member.
a case that is made of a metal and houses the capacitor element, wherein:
See Figure 4b which shows an outer case 6 which houses the capacitor elements. As explained in paragraph [0008], the case can be a metal case.
the first insulating member includes a first mounting portion, the case includes a second mounting portion to which the first mounting portion is attached so that the capacitor element [unit] is located at a predetermined position with respect to the case while the first bus bar and the second bus bar are not in contact with the case, and the first mounting portion is attached to the second mounting portion with a screw.
Yang discloses in paragraph [0039] of “mounting an insulating member” and “mounting an insulating member in the outer case 6”. Thus, the first insulating member includes a first mounted portion, and the case includes a second mounted portion to which the first mounting portion is attached. That is, since Yang discloses that the insulating member is mounted to the case, then both the insulating member and the case have a mounting portion. In addition, as shown in figure 4b, the capacitor element is located at a predetermined position with respect to the case while the first and second bus bars are not in contact with the case.
The Examiner acknowledges that the Yang does not specifically disclose of a ‘screw’, however, it would have been understood by a person of ordinary skill in the art that a screw is one type of element that can be used for mounting two pieces together. That is, it would have been obvious to person of ordinary skill in the art use a fastener such as a screw to mount the two elements (insulation member and case) together.
For example, Nishizawa discloses that it was known to secure an insulation plate using screws. See figure 2 and col. 6, lines 16-58. As set forth above in Yang, the specifically discloses of mounting the insulating member in the outer case. Thus, Yang discloses that it would have been obvious to a person of ordinary skill in the art to include at least a fastener for mounting the insulting member to the case. Nishizawa discloses that it was known to use a screw to secure an insulation plate. Therefore, the combination of Yang and the teachings of using a screw for mounting shows that it would have been obvious to a person of ordinary skill in the art to use a fastener such as a screw for the insulation member of Yang to the case.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use a screw for mounting the insulating member to the case in order to securely hold the insulating member within the capacitor case. As set forth above, Yang already discloses it was known to mount an insulation member to the case. Therefore, the combination of Yang with the sue of a screw for attaching two pieces together would have yielded a predictable result since Yang specifically discloses of mounting the insulation member to the case and Nishizawa discloses it was known to use a screw to secure an insulation member.
Regarding claim 17:
The capacitor according to claim 5, wherein: the first electrode is disposed on one of both end faces of the capacitor element, and the second electrode is disposed on another one of the both end faces of the capacitor element.
As set forth in paragraph [0016], Yang discloses “fabricating a capacitor device by winding or depositing a vapor-deposited metal film on either or both sides of a plastic film and forming polar plates, that is, sprayed surfaces on both sides of the wound vapor-deposited film by spraying Zn, Zn alloy, tin, or Zn firstly and tin secondarily, and when connecting a pair bus bars to the both sprayed surfaces”. Thus, the first and second electrode can be on the same side or on opposite sides.
Regarding claim 18:
The capacitor according to claim 5, wherein: the first bus bar includes a first region, the second bus bar includes a second region facing the first region, and the first insulating member is disposed between the first region and the second region.
See Figure 4b and which discloses that the that the bus bars are next to each other.
Yang discloses in paragraph [0039] of “mounting an insulating member” and “mounting an insulating member in the outer case 6”. Yan explains that the first and second bus bars are insulated from each other by inserting an insulating film between the pair of bus bars or mounting an insulating member.
Allowable Subject Matter
Upon correction of the reissue declaration, the following claims will be indicated as being allowable: Claims 1-4, 10-16, 19 and 20. In addition, claims 6-9, 17 and 18 will be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The Examiner finds that as to claim 1, the prior art of record does not specifically disclose, “the first insulating member includes a first mounting portion, the case includes a second mounting portion to which the first mounting portion is attached so that the capacitor element is located at a predetermined position with respect to the case while the first bus bar and the second bus bar are not in contact with the case, the first mounting portion is attached to the second mounting portion so that the electrode connection portion is not in contact with the inner bottom surface of the case, the second mounting portion has a mounting surface that is parallel to the inner bottom surface of the case, the first mounting portion has a mounting surface that is in contact with the mounting surface of the second mounting portion, and a distance between the mounting surface of the second mounting portion and the inner bottom surface of the case is greater than a distance between the mounting surface of the first mounting portion and a surface of the electrode connection portion, the surface of the electrode connection portion facing the inner bottom surface of the case.”
As to claim 10, the prior art of record does not disclose “the first insulating member includes a first mounting portion, the case includes a second mounting portion to which the first mounting portion is attached so that the capacitor element is located at a predetermined position with respect to the case while the first bus bar and the second bus bar are not in contact with the case, the case includes an opening and an inner bottom surface facing the opening, a part of the first bus bar and a part of the second bus bar are led out from the opening to an outside of the case, the second mounting portion has a mounting surface that is parallel to the inner bottom surface of the case, and the first mounting portion has a mounting surface that is in contact with the mounting surface of the second mounting portion.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ovidio Escalante whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday - 6:00 AM to 2:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling, can be reached at telephone number (571)272-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ovidio Escalante/
Primary Examiner
Art Unit 3992
Conferee:
/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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