Ex Parte Ritter et al

Patent Trial and Appeal Board

Sep 26, 2016

10951972 (P.T.A.B. Sep. 26, 2016)

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.
10/951,972 09/28/2004 Andrew P. Ritter AVX-202-DIV2 8410
22827 7590 09/27/2016
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
09/27/2016 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 ANDREW P. RITTER, ROBERT HEISTAND II,
JOHN L. GALVAGNI, and SRIRAM DATTAGURU
____________

Appeal 2015-004073
Application 10/951,972
Technology Center 1700
____________

Before JAMES C. HOUSEL, GEORGE C. BEST, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 32, 36, 37, and 51–57. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

1 Our decision refers to the Specification filed September 28, 2004,
Appellants’ Brief (Appeal Br.) filed October 31, 2014, and the Examiner’s
Answer (Ans.) mailed December 18, 2014, and Appellants’ Reply Brief filed
February 16, 2015.
2 Appellants identify the real party in interest in this appeal as AVX
Corporation.
Appeal 2015-004073
Application 10/951,972
2
We AFFIRM-IN-PART, with a new ground of rejection.
STATEMENT OF THE CASE
The invention relates to a method of making a multi-layer electronic
component having electrodes and anchor tabs interleaved between a plurality
of insulating substrates, wherein selected portions of the electrodes and tabs
are exposed along at least one edge of the substrates, the component is
submersed in a plating solution to deposit at least one layer of copper
termination material directly on the exposed portions of the electrodes and
tabs until these exposed portions are connected by at least one layer of
termination material, and then “covering the copper termination layer with a
resistive layer.” See claims 37 and 51. Appellants teach that the formation
of such plated termination material “is guided by the location of the exposed
electrode tab portions and the exposed anchor tabs.” Spec. 7:22–24. In
addition, Appellants teach that “[t]he formation of the plated terminations is
guided by the location of exposed electrode tabs and anchor tabs.” Id.
at 8:15–17.
Appeal 2015-004073
Application 10/951,972
3
Rejections
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) Claims 36, 37, 51, 52, and 54 as being unpatentable over Takagi3
in combination with Sasaki4 or McLoughlin,5 and further in view
of Farnworth6 and Igarashi;7
2) Claims 32 and 53 as being unpatentable over Takagi with Sasaki or
McLoughlin, and Farnworth, and Igarashi, further in combination
with Kanai;8 and
3) Claims 55–57 as being unpatentable over Takagi with Sasaki or
McLoughlin, and Farnworth, and Igarashi, further in combination
with Kuroda9 and Ahiko.10
Independent claims 37 and 55, reproduced below from the Claims
Appendix to the Appeal Brief, are illustrative of the subject matter on
appeal. The limitations at issue are italicized.
37. A method of making a multi-layer electronic component,
comprising the steps of:

3 Takagi, Masaki, et al., JP 09-190946 A, published July 22, 1997
(“Takagi”).
4 Sasaki et al., US 5,493,266, issued February 20, 1996 (“Sasaki”).
5 McLoughlin, US 6,232,144 B1, issued May 15, 2001.
6 Farnworth et al., US 6,413,862 B1, issued July 2, 2002 (“Farnworth”).
7 Igarashi, Katsuhiko, et al., JP 2000-243662 A, published September 8,
2000 (“Igarashi”).
8 Kanai, Hideyuki, et al., JP 08-264372 A, published October 11, 1996
(“Kanai”).
9 Kuroda et al., US 6,191,932 B1, issued February 20, 2001 (“Kuroda”).
10 Ahiko et al., US 6,292,351 B1, issued September 18, 2001 (“Ahiko”).
Appeal 2015-004073
Application 10/951,972
4
providing a plurality of insulating substrates each having
an upper and a lower surface, said substrates each being
delimited laterally by edges;
interleaving a plurality of electrodes between selected of
said plurality of insulating substrates;
exposing selected portions of said electrodes along at
least one edge of said substrates;
providing anchor tabs interleaved at selected locations
between the insulating substrates and positioned such that they
are not in direct contact with any of said plurality of electrodes;
exposing portions of said anchor tabs at selected edges of
the insulating substrates; and
submersing the electronic component in a plating
solution to deposit at least one layer of termination material
directly on said exposed portions of said electrodes and on said
exposed portions of said anchor tabs until the exposed portions
of selected of said electrodes and anchor tabs are connected by
the at least one layer of termination material;
wherein the step of plating is performed using an
electroless process;
the electroless process comprises submersing the multi-
layer electronic component in an electroless copper plating
solution to form a copper termination layer; and
the method further comprises the step of covering the
copper termination layer with a resistive layer.

55. A method of making a multi-layer electronic component,
comprising the steps of:
providing a plurality of dielectric layers, each dielectric
layer being delimited laterally by edges;
interleaving a plurality of internal electrode elements
among selected of said plurality of dielectric layers, such that
selected portions of said plurality of internal electrode elements
extend to and are exposed along at least one edge of said
Appeal 2015-004073
Application 10/951,972
5
plurality of dielectric layers, said interleaved combination of
electrode elements and dielectric layers forming a monolithic
assembly characterized by respective opposing major surfaces
thereof;
providing a plurality of internal anchor tabs interleaved
among selected of said plurality of dielectric layers and exposed
along selected edges of said plurality of dielectric layers;
configuring said plurality of internal electrode elements
in a generally interdigitated configuration with multiple
electrode tab portions extending from one or more selected
sides of selected internal electrode elements such that the
electrode tab portions are exposed at a predetermined number
of multiple aligned columns at peripheral locations within a
predetermined distance from each other on the multi-layer
electronic component;
applying at least a pair of plated terminations over
selected of said multiple aligned columns, respectively, of
exposed electrode tab portions so that a predetermined distance
is formed between such plated terminations; and
wherein said monolithic assembly satisfies the structural
relationship of T≤ about (2/3) W, where a dimension of the
assembly measured in a direction interconnecting lateral
surfaces is W and a dimension thereof measured in a direction
interconnecting opposing major surfaces thereof is T.

Remaining independent claim 51 recites a process similar to
claim 37 including the step of “covering the copper termination layer
with a resistive layer.”
ANALYSIS
Claims 37 and 51
The dispositive issue before us with regard to these claims is whether
Appellants have shown reversible error in the Examiner’s finding that
Appeal 2015-004073
Application 10/951,972
6
Igarashi teaches a step of covering a metal layer with a resistive layer. We
answer this question in the affirmative and, therefore, will not sustain the
Examiner’s rejection of these claims.
The Examiner acknowledges that the combination of Takagi, Sasaki
or McLoughlin, and Farnworth, fails to teach forming a resistive layer on the
first terminal electrode layer. Final Act. 4. Nonetheless, the Examiner finds
Igarashi teaches a terminal electrode which has a resistive film thereon. Id.
In particular, the Examiner finds that the resistive film may be either “a
metal layer that is oxidized (layer 3) or a conductive resin layer having
resistivity less than 10 [Ω.cm] (layer 5).” Id. The Examiner concludes that
it would have been obvious to modify the Takagi combination to include a
resistive layer thereon as taught by Igarashi to obtain a more stable chip
capacitor. Id.
Appellants contend that the Examiner has erroneously interpreted
“resistive material.” Appeal Br. 9. Appellants argue that the broadest
reasonable interpretation of the “resistive layer” is a layer having electrically
resistive properties. Id. at 10–11. Appellants assert that the Specification
teaches two methods of producing a resistive material layer including a
metallic layer with a resistor-polymeric layer or electroplating a resistive
alloy over a metallic plating. Id. at 11. Appellants assert that Igarashi
teaches providing a first metallic layer 3 that at least partially turns to an
oxide when calcinated in an oxidizing atmosphere. Id. Appellants argue
that Igarashi’s process transforms, at least partially, layer 3, as opposed to
the recited step of covering the termination layer with a resistive layer. Id.
Appellants further argue that Igarashi teaches away from covering the
copper termination layer with a resistive layer. Id. at 15. Appellants assert
Appeal 2015-004073
Application 10/951,972
7
that Igarashi teaches calcinating two conductive layers to transform only the
first of these layers to an oxide layer. Id. With regard to the alternative
finding of the Examiner that Igarashi’s conductive resin layer is a resistive
layer, Appellants argue that this layer is not an alternative to the oxidation of
the first metal layer, but addresses issues resulting from defects arising from
the calcination process. Id. at 11, 13.
In response, the Examiner determines that “forming the resistive layer
by calcination does not exclude it from the claimed subject matter with
regards to the limitation of ‘covering the copper termination layer’ as this
metal oxide layer, resistive layer is formed covering metal layer 3 as it is
formed between metal layers 3 and 4.” Ans. 3. In addition, the Examiner
notes “conductive resin layer 5 is applied to metal layer 4 and therefore
meets the claimed limitation of ‘covering’.” Id. The Examiner also finds
that the conductive resin layer would meet the claimed resistive layer, since
as disclosed, this layer could be a resistor-polymeric material. Id.
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellant’s claims and Specification
disclosures, we determine that a preponderance of the evidence favors
Appellants. Initially, we note that neither Appellants nor the Examiner
direct our attention to a definition for the claim term “covering” that is at the
core of the present dispute.
We begin, appropriately, with the claim’s words. See Amazon.com,
Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
(“Only when a claim is properly understood can a determination be made . . .
whether the prior art anticipates and/or renders obvious the claimed
invention.”). During examination, claim terms are given their broadest
Appeal 2015-004073
Application 10/951,972
8
reasonable construction consistent with the specification. In general, words
used in a claim are accorded their ordinary and customary meaning.
Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992
(Fed. Cir. 2007). Under a broadest reasonable interpretation, words of the
claim must be given their plain meaning, unless such meaning is inconsistent
with the specification. The plain meaning of a term means the ordinary and
customary meaning given to the term by those of ordinary skill in the art at
the time of the invention. The ordinary and customary meaning of a term
may be evidenced by a variety of sources, including the words of the claims
themselves, the specification, drawings, and prior art.
Claims 37 and 51 both use the term “covering” as expressing the
action of the transitive verb, “cover.” We find the transitive verb, “cover”
means “to lay or spread something over” or “to place or set a cover or
covering over” (corresponding to definitions 3 and 5 as found in
http://www.merriam-webster.com/dictionary/cover, last accessed on
September 12, 2016). This interpretation is consistent with Appellants’
Specification which teaches that the metallic plating can be covered with a
resistor-polymeric material or a resistive alloy may be electroplated over the
metallic plating. Spec. 23:18–24. In each instance, the resistive material is
laid or placed over the metallic plating.
In contrast, Igarashi teaches calcinating, i.e., transforming, at least
part of layer 3 to create an intermediate oxide layer between layers 3, 4. We
cannot say that transforming a portion of layer to create an intermediate
oxide layer reads on or suggests “covering,” i.e., laying or placing, the oxide
layer over the remainder of the layer. While the resulting intermediate oxide
layer may be said to cover the remaining non-transformed layer, the
Appeal 2015-004073
Application 10/951,972
9
formation of this intermediate oxide layer was not done by the expressed
action of the transitive verb, “cover.”
Moreover, while the Examiner alternatively finds Igarashi’s
conductive resin layer to read on the resistive material, we disagree.
Igarashi teaches that the conductive resin layer, while have a defined low
resistance, i.e., less than about 10 Ω.cm, is nonetheless defined to be
“conductive.” In other words, Igarashi’s conductive resin is a conductive
material. In contrast, Appellants’ recite in each of claims 37 and 51,
covering the copper termination layer with a resistive layer, i.e., made from
a resistive material. As we previously held, the resistive layer refers to an
electrically resistive layer, in contrast to electrically conductive or semi-
conductive. See prior Decision on Appeal, Appeal 2012-002815, mailed
August 19, 2013, p. 11. In addition, although Igarashi refers to “resin,” this
alone does not equate Igarashi’s conductive resin to Appellants’ resistor-
polymeric material. Again, Igarashi refers to the resin as conductive,
whereas Appellants refer to the polymeric material as resistor.
Accordingly, Appellants have identified reversible error in the
Examiner’s finding that Igarashi teaches or suggests covering the copper
termination layer with a resistive layer. Under these circumstances, we
cannot conclude that the Examiner has met the minimum threshold of
establishing obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We will not sustain the Examiner’s rejection of claims 36, 37, 51, 52,
and 54. Although the Examiner adds Kanai to reject dependent claims 32
and 53, the Examiner does not rely on Kanai to cure the deficiency in the
Appeal 2015-004073
Application 10/951,972
10
obviousness rejection discussed able. Accordingly, we likewise will not
sustain the rejection of claims 32 and 53.
Claim 55
New Ground of Rejection, 37 C.F.R. § 41.50(b).
We begin our review of this claim by first directing attention to the
final “wherein” clause which recites:
wherein said monolithic assembly satisfies the structural
relationship of T≤ about (2/3) W, where a dimension of the assembly
measured in a direction interconnecting lateral surfaces is W and a
dimension thereof measured in a direction interconnecting opposing
major surfaces thereof is T.
We note that Appellants introduced claim 55, along with this “wherein”
clause, in the Response to Non-Final Action (Response) on March 5, 2014.
Appellants stated that support for this clause could be found in paragraph 64
(Response 7), in particular in reference to a recitation of the “typical existing
size” for a device of the invention “is about one hundred and twenty mils
(thousandths of an inch) by sixty mils along the two opposing sets of sides
with a thickness from top to bottom layers of about thirty mils.” Spec. 17:1–
5. Appellants asserted that because the thickness is about 30 mils, and one
of the two opposing sets of sides is 60 mils, the relationship between the
thickness and one of the two opposing sets of sides is 30/60, which meets the
requirement that T ≤ (2/3)W. Response 7. Appellants do not direct attention
to any other support for the relationship set forth in this “wherein” clause,
nor do we find any.
Appeal 2015-004073
Application 10/951,972
11
The problem here is that the Specification, while teaching a
relationship between thickness, T, and two opposing sides, W,
T = 1/2W,11
for a typical device size, does not provide written description support for the
relationship,
T ≤ (2/3)W.
Appellants have not established that they were in possession of the
relationship covered in the “wherein” clause at the time of filing. “[The
written description] inquiry is a factual one and must be assessed on a case-
by-case basis.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323
(Fed. Cir. 2000). “In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue.” Id. Nonetheless, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. Id., (“Put another way, one
skilled in the art, reading the original disclosure, must immediately discern
the limitation at issue in the claims.”). While the written description
requirement does not demand either examples or an actual reduction to
practice, actual “possession” or reduction to practice outside of the
specification is not enough. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010). Rather, it is the specification itself that must
demonstrate possession. Id.

11 We note neither the Specification nor the language of claim 55 defines
which set of opposing sides or lateral surfaces define the dimension, W. As
such, W may represent either the long or the short dimension of the
opposing sides. Thus, the relationship could also be T=1/4W (30mils=120
mils/4).
Appeal 2015-004073
Application 10/951,972
12
As such, the “wherein” clause of claim 55 lacks adequate written
descriptive support in the original disclosure under 35 U.S.C. § 112, first
paragraph. Each of claims 56 and 57 also includes this “wherein” clause by
virtue of their dependency on claim 55. We, therefore, institute a new
ground of rejection of claims 55–57 under 35 U.S.C. § 112, first paragraph,
for lack of adequate written descriptive support.
§ 103 Rejection
Appellants do not argue claims 55–57 separately, but instead focus on
the limitations of claim 55 only. Therefore, claims 56 and 57 stand or fall
with claim 55.
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellants’ claims and Specification
disclosures, we determine that the Appellants’ arguments are insufficient to
identify reversible error in the Examiner’s obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we will sustain
the stated obviousness rejection for substantially the fact findings and the
reasons set forth by the Examiner in the Final Office Action and the
Examiner’s Answer. We offer the following for emphasis only.
The Examiner relies on previous findings with regard to Takagi,
Sasaki, McLoughlin, Farnworth, and Igarashi as applied in the § 103
rejection of claims 37 and 51, notwithstanding that claim 55 does not recite
covering the plated terminations with a resistive layer. Final Act. 5. The
Examiner acknowledges that these references fail to teach the recited
relationship, T≤ (2/3)W. Id. However, the Examiner finds that each of
Kuroda and Ahiko teach dimensions which meet this recited relationship.
Id. at 6.
Appeal 2015-004073
Application 10/951,972
13
Appellants contend that the Examiner’s six reference combination is
based on improper hindsight, guided by Appellants’ claims. Appeal Br. 18.
Appellants assert that improper hindsight is highlighted by the fact that the
combination includes Igarashi, which was applied solely for its teaching of a
“resistive layer,” which feature is recited in claims 37 and 51, but not in
claim 55. Id. Appellants also argue that the fact that the Examiner agrees
with Appellants in various arguments raised against certain of the applied
references.
However, Appellants’ improper hindsight argument is not persuasive.
“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). That
Igarashi is not necessary to the combination’s application against claim 55
alone is insufficient to support Appellants’ improper hindsight argument.
Appellants do not contest the Examiner’s specific findings with regard to
each of the other references in the combination, nor the Examiner’s
obviousness conclusions based on these teachings. Further, the points of
agreement between Appellants and the Examiner are merely aspects of the
obviousness rejection that necessitate modification of the teaching of one
reference with the teaching of another. These points of agreement are not
evidence of improper hindsight, but instead are typical of obviousness
rejections.
Appeal 2015-004073
Application 10/951,972
14
Appellants further argue that Takagi fails to disclose any aspect of the
plated termination application step “and related limitations set forth in claim
55.” Appeal Br. 18. Appellants’ argue that because Takagi fails to disclose
affirmative features of claim 55, as acknowledged by the Examiner, Takagi
cannot serve to render this claim unpatentable. Id. at 19.
We disagree. Indeed, the very basis of the Examiner’s obviousness
rejection is that Takagi fails to teach certain affirmative features of claim 55
for which the additional references are provided for guiding one of ordinary
skill in the art to the invention of this claim as a whole.
Appellants next argue that Sasaki and McLoughlin fail to disclose
applying at least a pair of plated terminations over selected multiple aligned
columns of exposed tab portions so that a predetermined distance is formed
between such plated terminations. Id. at 19–21. However, in response, the
Examiner finds that both Kuroda and Ahiko teach this limitation. Ans. 5.
Appellants do not contest or otherwise address the Examiner’s findings
regarding Kuroda and Ahiko in the Reply Brief. Therefore, Appellants have
not identified reversible error in the Examiner’s findings regarding Kuroda
and Ahiko. Furthermore, as we previously held, we do not find Appellants’
arguments regarding the Takagi, Sasaki, McLoughlin, and Farnsworth
combination persuasive of reversible error. Decision 8–9.
We find the Examiner has provided sufficient reasoning with rational
factual underpinning to support his obviousness conclusion. Kahn, 441 F.3d
at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) (quoted with approval in KSR, 550 U.S. at 418).
Appeal 2015-004073
Application 10/951,972
15
CONCLUSION
In sum, for the reasons expressed in the Final Office Action, the
Answer and above, we find a preponderance of the evidence favors the
Examiner’s conclusion of obviousness as to appealed claims 55–57. The
§ 103 rejection of claims 55–57 is affirmed. In addition, we institute a new
ground of rejection of claims 55–57 under 35 U.S.C. § 112, first paragraph,
for lack of adequate written descriptive support.
However, Appellants’ arguments have persuaded us that the Examiner
has not established a prima facie case of obviousness with regard to claim
32, 36, 37, and 51–54. The § 103 rejections of claim 32, 36, 37, and 51–54
are reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, Appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
Appeal 2015-004073
Application 10/951,972
16
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)