Ex Parte 6477032 et alDownload PDFPatent Trial and Appeal BoardOct 28, 201490012091 (P.T.A.B. Oct. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/012,091 01/12/2012 6477032 GREATB-53716 1047 7590 10/29/2014 Richard M. Moose, Esq. DORITY & MANNING, P.A. P.O. BOX 1449 Greenville, SC 29602 EXAMINER GE, YUZHEN ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/29/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AVX CORPORATION Appellant ____________ Appeal 2013-010730 Reexamination Control 90/012,091 Patent 6,477,032 Technology Center 3900 ____________ Before RAE LYNN P. GUEST, ERIC B. CHEN, and JENNIFER L. MCKEOWN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2013-010730 Reexamination Control 90/012,091 Patent 6,477,032 2 Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision on Appeal entered March 31, 2014 (“Decision”), which affirmed the Examiner’s final rejection of claims 1–6. The Request for Rehearing is denied. DISCUSSION Appellant argues that “[a]s discussed in Appellant’s Brief on Appeal, patented claim 1 inherently requires the presence of underlying ceramic layers; such conclusion is apparent in light of the claim language and the specification.” (Req. for Reh’g 4–5.) In particular, Appellant argues that “[f]or each ‘electrode plate’ to include both a via having a first diameter and a circular opening having a second diameter surrounding the via, as affirmatively recited in the claim, each electrode plate must have an underlying ceramic sheet” because “[t]he via is defined in the ‘ceramic sheet’ portion of the electrode plate” and “[t]he circular opening is defined in the ‘conductive’ portion of the electrode plate.” (Req. for Reh’g 5.) Accordingly, Appellant argues, “Stevenson-095 does not disclose a plurality of ceramic layers respectively underlying each electrode plate” because “Stevenson-095 discloses a ‘first and second set of electrode plates 40 and 42 embedded within an insulative or dielectric base structure 44 of the ceramic monolith construction or the like.’” (Req. for Reh’g 8.) However, Appellant’s Appeal Brief argues the following: The above quoted portions of the Subject Patent [column 2, lines 53–55; column 3, lines 60–67; column 4, lines 8–24; and column 4, lines 40–42] represent the totality of Appeal 2013-010730 Reexamination Control 90/012,091 Patent 6,477,032 3 the use of the term “interleaved” within the specification. Therefore, the Subject Patent is clearly consistent throughout in its use of the term “interleaved” to describe at least two ceramic-electrode layers alternatively repeated to produce the capacitor body. Each ceramic-electrode layer has an electrode plate overlying a ceramic sheet. There is only one reasonable interpretation of independent claim 1 in light of such unchanging description within the specification: independent claim 1 inherently recites the presence of additional elements. The consistent disclosure contained within the specification of the Subject Patent with regards to the term “interleaved,” in light of the preamble of independent claim 1, dictates that such inherently recited elements comprise a plurality of ceramic layers respectively underlying each electrode plate. (App. Br. 48.) Thus, Appellant’s previous arguments were directed towards construing the claim limitation “electrode plate” as encompassing both an electrode plate and an underlying ceramic sheet because of the recitation of “interleaved” (App. Br. 48), rather than the recitation of a “via having a first diameter” and “a circular opening having a second diameter” (Req. for Reh’g 4–5). Accordingly, Appellant improperly presents new arguments not raised in the Briefs before the Board. “Arguments not raised, and Evidence not previously relied upon, pursuant to §§41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1). Appellant has not identified a reason for meeting one of these exceptions. Nonetheless, we address Appellant’s argument below in order to have a complete record for appeal to the Federal Circuit, which reviews issues of Appeal 2013-010730 Reexamination Control 90/012,091 Patent 6,477,032 4 claim interpretation de novo. See In re Baker Hughes Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000). Appellant’s newly presented argument that “[f]or each ‘electrode plate’ to include both a via having a first diameter and a circular opening having a second diameter surrounding the via . . . each electrode plate must have an underlying ceramic sheet” (Req. for Reh’g 5) is inconsistent with the Specification of the ’032 patent. Column 4, lines 8–12 and 19–24 of the ’032 patent discloses the following (emphasis added): FIGS. 3A and 3B illustrate the two ceramic-electrode layers which are alternatively repeated and interleaved to produce the capacitor body 12. The first ceramic electrode- layer, as shown in FIG. 3A, has a first electrode plate 18 covering substantially the entire underlying electrode sheet. As seen in FIG. 3B, the second ceramic-electrode layer includes a second electrode plate 24 that extends to via 22 for making electrical connection with terminal 16. A perimeter region 26 of the ceramic sheet is left uncovered by second electrode plate 24 to prevent electrical connection between second electrode plate 24 and terminal 14. Similarly, column 4, lines 40–46 and 52–54 of the ’032 patent discloses the following (emphasis added): FIGS. 7A and 7B illustrate the two types of ceramic- electrode layers which are alternatively repeated and interleaved to produce the capacitor body 12 of the third alternative preferred embodiment shown in FIG. 6. The first ceramic electrode-layer, as shown in FIG. 7A, has a first electrode plate 30 covering substantially the entire underlying electrode sheet. Appeal 2013-010730 Reexamination Control 90/012,091 Patent 6,477,032 5 As seen in FIG. 7B, the second ceramic-electrode layer includes a second electrode plate 32 covering substantially the entire underlying electrode sheet. The ’032 patent consistently refers to a “ceramic-electrode layer” as having two sub-layers: (i) an electrode plate; and (ii) an underlying electrode layer, also referred to a ceramic sheet. Unlike claim 11, claim 1 does not recite the term “ceramic-electrode layer,” but rather characterizes the “multi- layer ceramic capacitive device” only in terms of a first and a second electrode plates. Claim 1 is silent as to the structure of ceramic material. Thus, Appellant’s newly presented argument that the claim term “electrode plate” should be construed as including underlying ceramic having a particular layer structure is inconsistent with the ’032 patent because the ’032 patent expressly discloses the “ceramic-electrode layer” as having an electrode plate with an underlying ceramic layer. Accordingly, we decline to revise our interpretation of claim 1 in light of Appellant’s newly presented arguments. CONCLUSION The Request for Rehearing has been considered and denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED peb Appeal 2013-010730 Reexamination Control 90/012,091 Patent 6,477,032 6 For Patent Owner: Richard M. Moose, Esq. DORITY & MANNING, P.A. P.O. Box 1449 Greenville, SC 29602 For Third Party Requester: Scott W. Kelley, Esq. KELLY LOWRY & KELLEY, LLP (GREATBATCH) 6320 Canoga Avenue Suite 1650 Woodland Hills, CA 91367 Copy with citationCopy as parenthetical citation