Murata Manufaduring Co., Ltd.

Patent Trials and Appeals Board

Oct 27, 2021

2021001518 (P.T.A.B. Oct. 27, 2021)

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.
15/960,917 04/24/2018 Mitsunori Inoue 036433.03950 2792
38485 7590 10/27/2021
ARENT FOX LLP - New York
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
BARNES, MALCOLM
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUNORI INOUE and TOMOHIKO MORI
Appeal 2021-001518
Application 15/960,917
Technology Center 2800

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–11.2 Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 This Decision includes citations to the following documents:
Specification filed April 24, 2018 (“Spec.”); Final Office Action entered
March 5, 2020 (“Final Act.”); Appeal Brief filed July 31, 2020 (“Appeal
Br.”); Examiner’s Answer entered November 16, 2020 (“Ans.”), and Reply
Brief filed December 23, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Murata Manufacturing Co., Ltd. as
the real party in interest. Appeal Br. 2.
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Application 15/960,917

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CLAIMED SUBJECT MATTER
Appellant states the invention relates to a ceramic electronic
component and a method for manufacturing the component. Spec. ¶ 2.
Claim 1 is reproduced below, and is illustrative of the claimed subject matter
(Appeal Br. 11, Claims App.):
1. A method for manufacturing a ceramic electronic
component, the method comprising:
providing, to a surface of a ceramic element, a resin-
containing solution that etches the surface of the ceramic
element so as to ionize constituent elements of the ceramic
element to form a resin composition comprising a resin and a
cationic element that is a constituent element of the ceramic
element, the resin composition at least partially filling voids of
the ceramic element and at an interface between the ceramic
element and an electrode.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Heistand, II et al.
(“Heistand”)
US 2001/0035810 A1 Nov. 1, 2001
Sekharan et al.
(“Sekharan”)
US 2008/0160199 A1 July 3, 2008
Riho et al.
(“Riho”)
JP 10-208907, English Translation
of Record
Aug. 7, 1998

REJECTIONS
1. Claims 1–5, 7–9, and 11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Riho and Sekharan. Final Act. 4–7.
2. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Riho and Sekharan. Final Act. 8–9.
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3. Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Riho, Sekharan, and Heistand. Final Act. 10.
OPINION
Rejection 1
We confine our discussion to claim 1, which is sufficient for
disposition of this rejection.
The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Riho and Sekharan, the
Examiner found that Riho discloses a method for manufacturing a ceramic
electronic component including providing a resin-containing solution
(silicone resin or silicone resin mixed with metal alkoxide) to the surface of
a ceramic element to at least partially fill the voids of the ceramic element.
Final Act. 4–5. The Examiner found Riho does not explicitly teach the
resin-containing solution etches the surface of the ceramic element to ionize
the constituent elements of the ceramic element and a cationic element that
is a constituent element of the ceramic element. Id. at 5.
The Examiner found Sekharan discloses a resin-containing solution
that etches the surface of a ceramic element forming a cationic element, such
as iron and zinc, from the surface of a metal substrate. Final Act. 5.
The Examiner concluded it would have been obvious to have
modified Riho to include the teachings of Sekharan in order to etch the
surface of the ceramic element to cause the dissolution of active metals and
form a coating to eliminate pinholes. Final Act. 5, citing Sekharan ¶¶ 42,
58.

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Appellant’s Arguments
Appellant argues that Riho’s silicone resin or varnish does not contain
a cationic element that was etched from the ceramic element. Appeal Br. 5.
Appellant contends one of ordinary skill would not look to Sekharan to
modify Riho because Sekharan is directed to an autodeposition bath for
metals in order to solve the problem of pinholes in the coatings of deposited
metals. Id. at 7–9. As a result, Appellant argues Sekharan is not concerned
with pinholes in the surface of the metal (corresponding to the “voids of the
ceramic element” recited in claim 1). See id. at 9. Appellant argues
Sekharan does not disclose that the autodeposition bath disclosed therein
may be used or can be used to etch the surface of a ceramic element to
ionize constituent elements of the ceramic element to form a resin
composition comprising a resin and a cationic element. Id. Therefore,
Appellant contends one of ordinary skill in the art would have no reason to
combine Riho and Sekharan absent impermissible hindsight. Id.

Discussion
After careful review of the respective positions of the Examiner and
Appellant, we are persuaded that the Examiner erred in rejecting claim 1 as
obvious over the combination of Riho and Sekharan. In particular, we are of
the view that the Examiner did not articulate a sufficient reason to modify
Riho’s method with Sekharan to render claim 1 obvious.
Sekharan discloses a method for aqueous autodeposition for coating
non-ferrous metal substrates to reduce pinhole formation in the
autodeposited coatings. Sekharan ¶ 2. Sekharan discloses pinholes are a
problem in autodeposited coatings due to non-ferrous metal surfaces that are
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more reactive toward the coating bath than ferrous metals, which results in
higher hydrogen gas evolution and pinhole defects in the coating. Id. ¶¶ 7,
8. Sekharan discloses an autodeposition method aimed at reducing such
pinhole defects by controlling the hydrogen peroxide concentration of the
autodeposition bath. Id. ¶¶ 9–19, 41, 42. Sekharan discloses its method
“can be utilized in any metal treatment process where hydrogen evolution is
a concern for the quality of the coating process.” Id. ¶ 53.
As discussed above, the Examiner’s rationale for combining Riho and
Sekharan is based on Sekharan’s disclosure that causing the dissolution of
active metals from the surface of a metal substrate in contact with the bath
composition eliminates pinholes from the resulting coating. Final Act. 5.
The Examiner’s reasoning is not based on sufficient rational underpinnings3
because, as the Examiner acknowledges, Riho does not disclose a method
where a resin-containing solution is used so as to ionize constituent elements
of the ceramic element and a cationic element. Id.; Ans. 4, 6; see Riho ¶ 13
(disclosing coating the outer surface of an element body with an
impregnating solution and curing the organic substance in the impregnating
solution). In other words, Riho does not disclose an autodeposition process
involving metals, nor does Riho disclose that its coating method is subject to
hydrogen gas evolution that may cause pinholes in the resulting coating,
which is the problem identified in Sekharan.

3 “‘[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.’” 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).
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Thus, the Examiner does not sufficiently explain why one of ordinary
skill in the art would have utilized the method in Sekharan to modify Riho in
order to obtain a method that would result in a resin-containing solution
partially filling voids in a ceramic element as recited in claim 1. Therefore,
the Examiner’s position is insufficient to establish that one of ordinary skill
in the art would have turned to Sekharan to modify Riho in a manner that
would have rendered claim 1 obvious. See Appeal Br. 8–9; Reply Br. 4–6.
As a result, we reverse the Examiner’s decision to reject claim 1 as
obvious over Riho and Sekharan.

Rejections 2 and 3
Claims 5, 6, and 10, the subject of Rejections 2 and 3, depend either
directly or indirectly from claim 1. The additional citation to Heistand in
order to reject claim 10 does not remedy the deficiencies discussed above
with respect to the combination of Riho and Sekharan.
Accordingly, we reverse Rejections 2 and 3 for similar reasons as
discussed above for Rejection 1.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9, 11 103 Riho, Sekharan 1–5, 7–9, 11
5, 6 103 Riho, Sekharan 5, 6
10 103 Riho, Sekharan,
Heistand
10
Overall
Outcome
1–11

REVERSED