Ex Parte Das et al

Patent Trial and Appeal Board

Feb 27, 2014

11730761 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RABINDRA N. DAS,
JOHN M. LAUFFER, VOYA R. MARKOVICH,
and KOSTAS I. PAPATHOMAS
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Appeal 2012-009591
Application 11/730,761
Technology Center 1700
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Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-39. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A substrate including capacitor material comprising a
thermosetting resin, a high molecular mass flexibilizer, and a quantity of
nano-particles of a ferroelectric ceramic material, said capacitor material not
including continuous or semi-continuous fibers as part thereof and being in
layer form for positioning on a first flexible conductor member and heated to
a first predetermined temperature whereupon said material will not possess
any substantial flaking characteristics, and thereafter laminating by heating
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to help bond said material to said substrate, so that a second conductor
member positioned thereon and bonded thereto forms a capacitor member.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Fukuzawa U.S. 6,451,878 B1 Sep. 17, 2002
Lee U.S. 2005/0108874 A1 May 26, 2005
Lui U.S. 2005/0137293 A1 Jun. 23, 2005
Borland U.S. 2006/0120015 A1 Jun. 8, 2006
Lin U.S. 2007/0231581 A1 Oct. 4, 2007
Kuwako (WO '589) WO 03/011589 A1 Feb. 13, 2003
Koh (as translated) KR 10-2004-0036779 A May 3, 2004
Kuwako (EP '779) EP 1 422 055 A1 May 26, 2004

Appellants' claimed invention is directed to a substrate including a
capacitor material which comprises a thermosetting resin, a high molecular
mass flexibilizer, and nano-particles of a ferroelectric ceramic material. The
capacitor material does not include continuous or semi-continuous fibers.
The Examiner has rejected the appealed claims under 35 U.S.C.
§§102/103, 35 U.S.C. §103(a), 35 U.S.C. §112, second paragraph, and
35 U.S.C. §112, first paragraph, written description requirement. The
separate rejections are listed at pages 21-23 of Appellants' Brief.
We first consider the Examiner's rejection of claims 1-8, 27, 30, 33,
and 37 under 35 U.S.C. § 112, second paragraph. We will not sustain this
rejection. While the Examiner expresses confusion about how the capacitor
material can be part of the substrate and then laminated to the substrate, the
Examiner properly points out at pages 20-21 of the Answer that one of
ordinary skill in the art would reasonably interpret claim 1 as defining a
substrate which includes the recited capacitor material that may be processed
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in accordance with the intended use language set forth in claim 1, i.e., "for
positioning on a first flexible conductive member . . . ." We agree with
Appellants that when the claim language is not read in a vacuum but in light
of the present Specification, it would be understood as defining a substrate
which comprises the recited capacitor material that may be processed in
accordance with the stated intended use.
We will sustain the Examiner's § 112, second paragraph, rejection of
claims 9-26, 28, 29, 31, 32, 34-36, 38, and 39. Appellants have not
presented a substantive argument against the Examiner's rejections and have
tacitly acknowledged their propriety by requesting correction of a clerical
error (see Br. 26, first para.). Accordingly, we will, pro forma, sustain the
rejection of these claims.
Turning to the Examiner's § 112, first paragraph, written description
requirement rejection of claims 1-39, we will sustain only the rejection of
claims 37-39. We agree with Appellants that one of ordinary skill in the art
would find that the claimed subject matter of claims 1-36 is reasonably
conveyed by the original Specification and descriptive drawings. It is well
settled that claims should not be read in a way that renders them inoperative
as they could be when read in a vacuum. On the other hand, we agree with
the Examiner that there is no original descriptive support for the limitation
recited in claims 37-39 "wherein said capacitor material is no greater than
80% of the overall substrate." As explained by the Examiner, the
Specification teaches an 80% threshold for the amount of barium titanate in
the capacitor material, which is quite different than the amount of capacitor
material relative to the substrate as a whole, particularly since the substrate
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comprises many layers. The inherency argument advanced by Appellants
has no factual support. Appellants' argument that nowhere in the
Specification is there a mention of any threshold amount of capacitor
material is hardly support for a limitation on the amount of capacitor
material relative to the substrate.
We will sustain all the Examiner's prior art rejections for essentially
those reasons expressed in the Answer. Appellants' arguments regarding
how they perform a two-stage heating operation misses the thrust of the
Examiner's rejection under §§ 102/103 over Liu. As set forth by the
Examiner, the claim language relied upon by Appellants is a recitation of
intended use which does not further define the structure of claim 1
comprising a substrate which includes a capacitor material. Appellants have
not rebutted the Examiner's position that the capacitor material of Liu is
capable of undergoing the heating steps recited as intended use in claim 1,
and Appellants have not refuted the Examiner's factual finding that Liu
actually discloses the recited heating steps at paragraph [0083].
Appellants do not present separate, substantive arguments against the
Examiner's § 103 rejections which use Liu as a primary reference but, rather,
rely upon the asserted deficiencies of Liu. Also, with respect to the § 103
rejections, Appellants proffer no evidence of unexpected results.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is affirmed.
The decision of the Examiner is affirmed.

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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).
AFFIRMED

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