Ex Parte Kunishi et al

Patent Trial and Appeal Board

Sep 15, 2016

12041889 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/041,889 03/04/2008
54066 7590 09/19/2016
MURATA MANUFACTURING COMPANY, LTD.
C/O KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
Tatsuo KUNISHI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
36856.1628 2318
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
JKEATING@KBIPLA W.COM
uspto@kbiplaw.com
cbennett@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TATSUO KUNISHI, MAKOTO OGAWA, and
AKIHIRO MOTOKI 1
Appeal2015-002967
Application 12/041,889
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER L. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1, 2, 4-9, 11, 13-15, and 17-24 in the above-
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Murata Manufacturing
Co., Ltd. Appeal Br. 2.
Appeal2015-002967
Application 12/041,889
BACKGROUND
Appellants' invention relates to "a method of manufacturing a
multilayer electronic component, and particularly to a method of
manufacturing a multilayer electronic component in which external
electrodes are formed directly on the outer surfaces of a laminate by
electro less plating." Spec. iJ 1. An embodiment of this invention is
illustrated in part by Figure 5, reproduced below:
FIG. 5 5
(
6
12b
2
Figure 5 depicts a laminate 3 comprising insulator layers 2 and internal
electrodes 3a and 3b. Id. iii! 45, 51-58. Figure 5 represents a state in which
electroless plating (deposits 12a and 12b) that begins directly on the internal
electrodes 3a and 3b has proceeded to form an external electrode 10, which
electrically connects each of the internal electrodes. Id. iJ 57.
Claim 1 is representative:
1. A method of manufacturing a multilayer electronic
component, the method comprising:
a step of preparing a laminate including a plurality of
stacked insulator layers and a plurality of internal electrodes
formed along interfaces between the respective insulator layers,
the ends of the internal electrodes being exposed at a
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Application 12/041,889
predetermined surface and being withdrawn from the
predetermined surface by a withdrawn length in a range of
about 0.1 µm to about 2 µm and the internal electrodes located
adjacent to each other are electrically insulated from each other
at the predetermined surface; and
a step of forming at least one external electrode on the
predetermined surface of the laminate so that the ends of the
plurality of internal electrodes exposed at the predetermined
surface of the laminate are electrically connected to each other;
wherein
the step of forming the at least one external electrode
includes an electroless plating step of electroless plating a
deposit directly on the ends of the plurality of internal
electrodes, which are exposed at the predetermined surface of
the laminate prepared in the step of preparing the laminate,
using a reducing agent and a plating solution including metal
ions having a deposition potential that is more
electrochemically positive than an oxidation reduction potential
of the reducing agent;
the electro less plating step includes a step of preparing a
conductive medium having catalytic activity for an oxidation
reaction of the reducing agent, a step of stirring the conductive
medium and the laminate in the plating solution, and a step of
growing the plating deposits on the ends of the plurality of
internal electrodes so that the plating deposits are connected to
each other; and
an average diameter of the conductive medium is in a range
of about 0.2 mm to 0.4 mm.
Appeal Br. 15 (emphases added). Claim 14, which is also independent,
contains similar limitations to the language emphasized in claim 1 above.
See Appeal Br. 5-6.
The Examiner maintains the following grounds of rejection:
I. Claims 1, 2, 4-8, 11, 13-15, 17-21, 23, and 24 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
US 6,621,682 Bl (issued Sept. 16, 2003) [hereinafter Tukakuwa] in view of
U.S. Patent Application Pub. No. US 2004/0066605 Al (published Apr. 8,
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Appeal2015-002967
Application 12/041,889
2004) [hereinafter Trinh] and U.S. Patent Application Publ. No.
US 2003/0138571 Al (published July 24, 2003) [hereinafter Kunishi]. Final
Action 2-8.
II. Claims 9 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takakuwa in view of Trinh and Kunishi, in further view
of U.S. Patent Application Pub. No. US 2004/0190221 Al (published Sept.
30, 2004) [Yamaguchi]. Final Action 3--4.
In the Appeal Brief, Appellants argue the claims as a group, and make
the same arguments for independent claims 1and14. See Appeal Br. 5-13.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 1, and all other claims stand or fall
together with claim 1.
DISCUSSION
The Examiner finds that Tukakuwa teaches the steps in claim 1 of
preparing a laminate, and forming at least one external electrode, including
"forming the external electrode directly on the internal electrodes." Final
Action 2-3. In addition, the Examiner finds that Takakuwa "does not teach
the formation can be done by electroless plating," "does not expressly teach
the relative electrochemical potential of materials in the plating bath," and
"does not expressly teach the average diameter of the conductive medium
between 0.2 and 0.4mm." Id. at 3--4. However, the Examiner finds that
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Appeal2015-002967
Application 12/041,889
"TRINH teaches it is known to form external electrodes by electroless
plating directly on the internal electrodes as shown in Fig. 10." Id. at 3.
Figure 10 of Trinh is reproduced below:
Figure 10 depicts "an exploded cross-sectional view showing lateral growth
of the nickel deposit which would electrically connect the electrodes
together." Trinh iJ 88. The Examiner determines that "[a]t the time of the
invention it would have been prima facie obvious to one of ordinary skill in
the art to form the external electrodes of T AKAKUW A by the method of
TRINH because the method of TRINH does not require expensive tools or
automated equipment." Final Action 3.
As to the limitation in claim 1 relating to the plating bath, the
Examiner cites Kunishi as "teach[ing] an electroless plating process to
deposit Ni" which "uses NaH2P02 (reducing agent) that is electrochemically
less noble than the deposition potential of the metal." Id. (citing Kunishi
iii! 66, 70, 75). The Examiner concludes that "[a]t the time of the invention
it would have been prima facie obvious to one of ordinary skill in the art to
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Appeal2015-002967
Application 12/041,889
use the plating bath of KUNIS HI as a simple substitution of known plating
baths used to electrolessly deposit nickel for a monolithic capacitor." Id.
As to the limitation in claim 1 relating to the average diameter of the
conductive medium, the Examiner finds that "KUNISHI teaches it is known
in the prior art to use conductive media with a diameter of 0.8mm or less
[0014] (though it would be more expensive). The range 0.8mm or less
overlaps the claimed range of 0.2-0.4mm." Id. at 4. Thus, the Examiner
concludes that "[a ]t the time of the invention it would have been prima facie
obvious to one of ordinary skill in the art to use conductive medium in the
overlapping range according to MPEP 2144.05.I." Id.
Appellants argue that a person of ordinary skill in the art would not
have turned to the teachings of Kunishi, because Kunishi teaches electro less
deposition "to form an outermost additional layer on an already-formed
external electrode made by a conductive material that has been screen-
printed or dipped and then baked," whereas the combination of Takakuwa
and Trinh relate to directly plating the exposed ends of internal electrodes
and the surrounding surface of a laminate containing insulating layers.
Appeal Br. 9. According to Appellants, these two processes are very
different from each other because plating is formed on different layers and
different materials, and thus the plated layers "must have entirely different
physical characteristics such as bonding ability to different materials,
solderability and corrosive resistance." Id.; see also Reply Br. 3--4. Thus,
Appellants argue that there would have been no motivation to combine
Kunishi with the combination of Takakuwa and Trinh, and there is no
suggestion that the modification would have had a reasonable likelihood of
success. Id. at 1 O; see also Reply Br. 2--4.
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Application 12/041,889
We do not find Appellants' arguments persuasive of reversible error.
The Examiner relied on Trinh, rather than Kunishi, "to teach how plating
external electrodes can be placed directly on the internal electrodes."
Answer 2. Trinh teaches the deposition of a layer directly on an internal
electrode. See Trinh Fig. 10, iJ 67. Trinh also teaches that an electrolessly-
plated terminal may be in direct contact with internal electrodes, and may
extend laterally so as to electrically connect with other internal electrodes.
See id. at 12, claims 2, 6; see also id. Fig. 10, iii! 73-76. Moreover, the
Examiner finds that the electroless plating described in Trinh does not
necessarily require adhesion to the insulating layers between the electrodes.
See Answer 3. Appellants have not directed our attention to any factual
evidence that would dispute this, or any teaching in the prior art that would
teach that adherence to the insulator is necessary. In addition, Appellants
have not directed our attention to any factual evidence on this record
disputing the Examiner's determination, see Final Action 3, that a person of
ordinary skill in the art would have had reason to use the plating bath of
Kunishi as a simple substitution for a bath used in the process taught by the
combination of Takakuwa and Trinh.
Appellants also argue that despite Kunishi's teaching of using
conductive media of 0.8 mm or less, a person of ordinary skill in the art
would not have reason to select media with average diameter of about 0.2-
0.4 mm. Appeal Br. 10-13. Citing law relating to anticipation, Appellants
argue that Kunishi does not specify this range with enough specificity, or
provide any particular examples within that range. See id. at 11-12.
Appellants also argue that using media within this range results in increased
manufacturing costs. Id. at 12 (citing Kunishi iJ 14). Appellants further
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Application 12/041,889
argue that the Specification provides evidence of criticality within this range.
See id. at 13 (citing Spec. iii! 107-109, 116-118).
We do not find Appellants' arguments persuasive of reversible error.
The Examiner finds that Kunishi teaches a numerical diameter range that
overlaps that of claim 1. See Final Action 4. Kunishi establishes a reason,
despite the higher cost, for a person of ordinary skill in the art to have used
conductive media within that diameter range. See Kunishi iJ 14. This is
sufficient to establish a prima facie case of obviousness. See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellants have not pointed to
factual evidence to rebut the Examiner's findings. Regarding the argument
that the Specification establishes that the range of about 0.2-0.4 mm is
critical, the cited portions of the Specification refer to results for media at
diameters of 0.2 and 0.4 mm; however, Appellants have not directed our
attention to evidence that these results are not exhibited by media outside
that diameter range, or that such results would have been unexpected by a
person of ordinary skill in the art at the time of filing. See In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973) (to show unexpected results, applicant
must establish: "(1) that there actually is a difference between the results
obtained through the claimed invention and those of the prior art, ... and (2)
that the difference actually obtained would not have been expected by one
skilled in the art at the time of invention" (citation omitted)).
For the above reasons, and by a preponderance of the evidence on this
record, we are not persuaded of reversible error in the Examiner's decision
to reject claim 1. For the same reasons, we find no reversible error in the
Examiner's decision to reject claims 2, 4-9, 11, 13-15, and 17-24.
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Application 12/041,889
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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