EPCOS AG

Patent Trials and Appeals BoardMar 18, 2021

2020002871 (P.T.A.B. Mar. 18, 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. 14/398,422 10/31/2014 Marlene Fritz EPC-259 8419 25962 7590 03/18/2021 SLATER MATSIL, LLP 17950 PRESTON RD, SUITE 1000 DALLAS, TX 75252-5793 EXAMINER EFTA, ALEX B ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): docketing@slatermatsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARLENE FRITZ and MARION OTTLINGER ____________ Appeal 2020-002871 Application 14/398,422 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision twice rejecting claims 15, 18, 19, 21–24, and 26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “EPCOS AG.” Appeal Br. 2. Appeal 2020-002871 Application 14/398,422 2 Appellant’s invention relates to a method for producing a multi- layered structural element. Spec. 1. Claim 15 is illustrative of the subject matter claimed and is reproduced below: 15. A method for producing a multi-layered structural element, the method comprising: providing an electrode material comprising a copper metal and green sheets containing a dielectric material; providing an auxiliary material containing at least one copper oxide; forming a stack comprising the dielectric green sheets, at least one ply containing the auxiliary material and layers containing the electrode material arranged alternately one above another; and debindering and sintering the stack comprising diffusing and reducing the at least one copper oxide of the at least one ply so that copper ions diffuse from the auxiliary material to adjacent electrode layers thereby forming the multi-layered structural element comprising at least one weakening layer and dielectric ceramic layers with internal electrode layers arranged between them, the electrode layers consisting essentially of a metal comprising copper, wherein the weakening layer has a reduced fracture strength compared to the dielectric ceramic layers, and wherein the copper metal is present in a smaller proportion in the electrode material than in the auxiliary material. Appellant requests review of the following rejections from the Examiner’s Non-Final Office Action dated August 10, 2018: I. Claims 15, 18, 19, 21–24, and 26 are rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, or 35 U.S.C. § 112(b) as indefinite for Appeal 2020-002871 Application 14/398,422 3 failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. II. Claim 23 is rejected under 35 U.S.C. § 112, fourth paragraph, or 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. III. Claims 15, 18, 19, 21, 24, and 26 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Shindo (US 2002/0121329 A1, published September 5, 2002) and Dernovsek (US 2010/0320876 A1, published December 23, 2010). IV. Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Shindo, Dernovsek, and Sumiya (US 2004/0139599 A1, published July 22, 2004). V. Claims 15, 18, 19, 21, 24, and 26 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Yamamoto (US 2002/0149297 A1, published October 17, 2002) and Dernovsek. VI. Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Yamamoto, Dernovsek, and Sumiya. Appeal 2020-002871 Application 14/398,422 4 OPINION Rejections I and II (under 35 U.S.C. § 112) Appellants generally fails to substantively address the rejections under 35 U.S.C. § 112 in the Appeal or Reply Briefs. See generally Appeal and Reply Briefs. We note that Appellant, in discussing issues regarding claim interpretation, contends that the Examiner’s determination that the transitional phrase “consisting essentially of” is to be interpreted as the transitional term “comprising” is erroneous because the “consisting essentially of” is definite. Appeal Br. 5. However, this argument is unpersuasive of reversible error because it misapprehends the Examiner’s rejection. As the Examiner explains in the Answer, dependent claim 24 uses a transitional language “essentially consisting of” that the Examiner determines to be indefinite because the disputed language appears to be an amalgamation of “consist of” and “consisting essentially of.” Ans. 15–16; see also Non-Final Act. 6–7. Appellant’s argument does not address the Examiner’s well-reasoned analysis in the Non-Final Action and the Answer. Non-Final Act. 6–7; Ans. 16–17. Accordingly, we summarily sustain the Examiner’s rejections of claims 15, 18, 19, 21–23, and 26 under 35 U.S.C. § 112. See MPEP § 1205.02 (2017) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.”); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or more broadly, Appeal 2020-002871 Application 14/398,422 5 on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). We also sustain the rejection of claim 24 under 35 U.S.C. § 112 (pre-AIA), second paragraph, or 35 U.S.C. § 112(b) for the reasons the Examiner gives in the Non-Final Action and the Answer. Rejections III and IV (under 35 U.S.C. § 103(a) based on Shindo)2, 3 After review of the respective positions Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Non-Final Office Action and the Answer, we reverse the Examiner’s prior art rejections of claims 15, 18, 19, 21, 22, 24, and 26 under 35 U.S.C. § 103(a) for the reasons Appellant provides in the record. We add the following for emphasis. Claim 15 recites a method for producing a multi-layered structural element, the method comprising providing an auxiliary material containing at least one copper oxide that when placed in a stack and subject to debindering and sintering, will form at least one weakening layer having a reduced fracture strength compared to the dielectric ceramic layers. The Examiner finds Shindo discloses a method of making a multilayer 2 We limit our discussion to independent claim 15. 3 Despite the Examiner’s and Appellant’s apparent belief that claim 23 has been rejected under 35 U.S.C. § 103(a), we find no such rejection. Non- Final Act. 12 (referencing claim 23 as among the claims rejected in the previous prior art rejection); Appeal Br. 9 (referencing claim 23 as rejected under 35 U.S.C. § 103(a)). Nor is there any indication from the Examiner that claim 23 was either objected to or allowed over art in the Non-Final Action. Therefore we limit claim 23’s consideration for review on appeal to its rejections under 35 U.S.C. § 112, second and fourth paragraphs. Appeal 2020-002871 Application 14/398,422 6 element that differs from the claimed invention in that Shindo does not specifically disclose providing an auxiliary material containing at least one copper oxide and applying at least one ply containing the auxiliary material in a stack so that the auxiliary material forms a weakening layer after the stack is subject to debindering and sintering. Non-Final Act. 9; Ans. 16. The Examiner finds Dernovsek discloses providing a structured sacrificial layer within a piezoactuator laminate to increase the reliability of the piezoactuator by allowing it to cope with any cracks that would mechanically weaken the laminate. Non-Final Act. 9. The Examiner further finds that Dernovsek teaches the noted missing features. Id. at 9–10. In the Answer, the Examiner explains that one skilled in the art would arbitrarily pick[] one of the electrode layers of Shindo for the purpose of creating a weakening layer, and increas[e] the concentration of copper oxide in said layer, as taught by Dernovsek, [so that] Shindo now includes an auxiliary material layer. When firing, the copper oxide would diffuse, because of the concentration gradient, from the auxiliary material layer having higher concentration towards the electrode layers having a lower concentration of copper oxide. The diffusion leads to voids in the auxiliary layer and thus provides a weakened layer to arrest cracks passing through the laminate. Ans. 17. Thus, the Examiner determines that it would have been obvious to one having ordinary skill in the art to combine the teachings of Shindo and Dernovsek to arrive at the claimed invention. Id. Appellant argues Shindo does not teach or suggest an auxiliary material (copper oxide) in the ply to eventually become a weakening layer. Appeal Br. 6. According to Appellant, Shindo only teaches using an electrode material comprising copper oxide to eventually become electrode Appeal 2020-002871 Application 14/398,422 7 layers. Appeal Br. 6; Reply Br. 1; Shindo ¶ 26. Appellant specifically argues that Shindo discloses the use of copper oxide in a mixture of copper and copper oxide to suppress laminate cracks resulting from the oxidation expansion of copper. Appeal Br. 7; Shindo ¶¶ 10, 17, 22. Appellant additionally asserts that the premise of the Examiner’s rejection is based on the diffusion of the copper oxide while the claim requires diffusion of copper ions. Reply Br. 2. Appellant contends that diffusion of copper ions which is a different process than the diffusion of copper oxide. Id. That is, Appellant argues that the Examiner has not explained adequately how or why one skilled in the art would have arbitrarily selected some of Shindo’s electrodes to form weakening layers in a laminate. Appellant further argues Dernovsek does not teach using an auxiliary material comprising copper oxide in a ply to eventually become a weakening layer. Appeal Br. 6. Appellant contends Dernovsek uses a metal or an alloy, and not an oxide, in the ply for this purpose. Appeal Br. 6; Dernovsek ¶ 51. Thus, Appellant asserts that one skilled in the art would not arrive at the claimed invention from the combined teachings of the cited art because there is no teaching of reducing oxides to form a weakening layer. Appeal Br. 6. We agree with Appellant that there is reversible error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere Appeal 2020-002871 Application 14/398,422 8 conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art the teachings of the invention in issue’”)). In combining the teachings of the cited art, the Examiner proposes to modify Shindo’s laminate by using some of the material used to form electrodes to form weakening layers within a laminate. The Examiner’s premise lacks adequate foundation. The Examiner points to no portion of the cited art that would have led one skilled in the art to modify a layer Shindo explicitly discloses for the purpose of forming an electrode to be modified for any other purpose. Further, the Examiner fails to provide an adequate technical explanation of how or why one skilled in the art would have modified Shino’s laminate by effectively eliminating electrodes from the laminate and still reasonably expect that the modified laminate is suitable for Shindo’s purposes. That is, the Examiner has not explained why the elimination of electrodes in Shindo’s laminate would not impair the laminate’s capability to perform as Shindo expects. With respect to the use of copper oxide, Shindo discloses using this compound for the purpose of making copper electrodes. Shindo ¶ 14, 18. Of note, and as Appellant explains, Shindo discloses that it is known to use copper oxide in a copper metal and copper oxide mixture to suppress the Appeal 2020-002871 Application 14/398,422 9 occurrence of cracking resulting from oxidation expansion of copper during formation of an electrode. Appeal Br. 7; Shindo ¶ 10. Shindo’s disclosure pertaining to the expansion issues of copper is consistent with Dernovsek’s disclosure of using copper metal as the base material to form weakening layers in a laminate. Dernovsek ¶¶ 10, 52. However, as Appellant argues, Shindo’s disclosure of copper oxide controlling the expansion of copper to suppress formation of cracks would suggest to one skilled in the art that it may not be suitable for the formation of weakening layers. See generally Appeal Br. Given this disclosure, the Examiner fails to direct our attention to any portion of the cited art or other objective evidence to support the stated conclusion of obviousness that it would have been obvious to one of ordinary skill in the art to use copper oxide as the auxiliary material to form a weakening layer in Shindo’s laminate. Non-Final Act. 10–12; Ans. 16–17. Thus, the Examiner fails to explain adequately how one skilled in the art, absent impermissible hindsight, would have arrived at the claimed invention from the teachings of the cited art. Accordingly, we reverse the Examiner’s prior art rejections of claims 15, 18, 19, 21, 22, 24, and 26 under 35 U.S.C. § 103(a) based on Shindo for the reasons Appellant provides and we give above. Rejections V and VI (under 35 U.S.C. § 103(a) based on Yamamoto)4 We refer principally to the Examiner’s Non-Final Action for a complete statement of the rejection. Non-Final Act. 13–15. The Examiner’s premise for this rejection is substantially the same as 4 We again limit our discussion to independent claim 15. Appeal 2020-002871 Application 14/398,422 10 the one for the rejection based on Shindo. See id. Therefore, we again agree that Appellant identified error in the Examiner’s determination of obviousness essentially for the reasons we provided with respect to the rejection based on Shindo. Accordingly, we reverse the Examiner’s prior art rejections of claims 15, 18, 19, 21, 22, 24, and 26 under 35 U.S.C. § 103(a) based on Yamamoto for the reasons Appellant provides and we give above. DECISION SUMMARY Because at least one affirmed rejection addresses all the claims presented for review on appeal, our decision is an affirmance. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15, 18, 19, 21–24, 26 112, 2nd paragraph Indefiniteness 15, 18, 19, 21–24, 26 23 112, 4th paragraph Improper Dependency 23 15, 18, 19, 21, 24, 26 103(a) Shindo, Dernovsek 15, 18, 19, 21, 24, 26 22 103(a) Shindo, Dernovsek, Sumiya 22 15, 18, 19, 21, 24, 26 103(a) Yamamoto, Dernovsek 15, 18, 19, 21, 24, 26 22 103(a) Yamamoto, Dernovsek, Sumiya 22 Overall Outcome 15, 18, 19, 21–24, 26 Appeal 2020-002871 Application 14/398,422 11 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