Murata Manufacturing Co., Ltd.

Patent Trials and Appeals BoardApr 28, 2021

2020002742 (P.T.A.B. Apr. 28, 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. 15/810,275 11/13/2017 Tomohiro KAGEYAMA 36856.4063 7627 54066 7590 04/28/2021 MURATA MANUFACTURING COMPANY, LTD. C/O KEATING & BENNETT, LLP 1800 ALEXANDER BELL DRIVE SUITE 200 RESTON, VA 20191 EXAMINER MCFADDEN, MICHAEL P ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 04/28/2021 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): JKEATING@KBIPLAW.COM cbennett@kbiplaw.com uspto@kbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOHIRO KAGEYAMA, TETSUO KAWAKAMI, MANABU SAKAI, RYUKI KAKUTA, TAKAHIRO HIRAO, and TAKASHI OHARA Appeal 2020-002742 Application 15/810,275 Technology Center 2800 Before TERRY J. OWENS, LINDA M. GAUDETTE, and BRIAN D. RANGE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision finally rejecting claims 1–12 and 16–18.3 1 The following documents are of record in this appeal: Specification filed Nov. 13, 2017 (“Spec.”); Final Office Action dated Feb. 21, 2019 (“Final Act.”); Appeal Brief filed July 29, 2019 (“Appeal Br.”); Examiner’s Answer dated Dec. 26, 2019 (“Ans.”); and Reply Brief filed Feb. 26, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Murata Manufacturing Co. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-002742 Application 15/810,275 2 We REVERSE. CLAIMED SUBJECT MATTER Claim 1, the sole independent claim on appeal, is illustrative of the claimed subject matter: 1. An electronic component comprising: an electronic component main body including ceramic particles and including a first principal surface and a second principal surface extending along a length direction and a width direction, a first side surface and a second side surface extending along the length direction and a laminating direction, and a first end surface and a second end surface extending along the width direction and the laminating direction; a first internal electrode disposed within the electronic component main body; a second internal electrode disposed within the electronic component main body and opposed to the first internal electrode in the laminating direction with a ceramic layer interposed therebetween; a first auxiliary electrode opposed to the first internal electrode in the length direction and disposed at a distance from the first internal electrode; a second auxiliary electrode opposed to the second internal electrode in the length direction and disposed at a distance from the second internal electrode; a first external electrode disposed on the first end surface; and a second external electrode disposed on the second end surface; the first external electrode including a first conductive layer including ceramic particles; the second external electrode including a second conductive layer including ceramic particles; Appeal 2020-002742 Application 15/810,275 3 an end portion of the first internal electrode is located inside the first conductive layer; the first conductive layer is disposed on only the first end surface; and the second conductive layer is disposed on only the second end surface. Appeal Br. 22 (Claims App.) (emphasis added). REFERENCES The Examiner relies on the following prior art: Name Reference Date Amano US 5,712,758 Jan. 27, 1998 Kang US 2013/0294006 A1 Nov. 7, 2013 Cho US 2015/0068792 A1 Mar. 12, 2015 REJECTION Claims 1–12 and 16–18 are rejected under 35 U.S.C. § 103 as unpatentable over Amano, Cho, and Kang. OPINION Claim 1, reproduced above, recites an electronic component comprising a main body having internal and auxiliary electrodes disposed therein. Claim 1 further recites first and second external electrodes disposed on the main body’s respective first and second end surfaces. Claim 1 requires that each of the two external electrodes includes a conductive layer “disposed on only” the respective first or second end surface. See italicized language. Appeal 2020-002742 Application 15/810,275 4 The Examiner found that Amano discloses an electronic component having external electrodes, but does not describe the external electrodes’ conductive layers as “disposed on only,” claim 1 (emphasis added), the component body’s end surfaces. See Final Act. 2–4. The Examiner found that Kang teaches an electronic component in which first and second electrode conductive layers are disposed only on the component body’s first and second end surfaces. Id. at 4. The Examiner found that the ordinary artisan would have modified Amano’s external electrodes to use Kang’s configuration “in order to allow for miniaturization of the external electrode and still reliably connect to the internal electrodes.” Id. at 4. “A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). To preclude hindsight in an obviousness analysis, the Examiner must identify evidence “in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination,” Rolls-Royce, PLC v. United Techs Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010). The Appellant acknowledges that Kang discloses that multilayer ceramic capacitors “can be miniaturized and easily mounted while securing a high level of capacitance,” Appeal Br. 8, and does not dispute that Kang’s Figure 2 depicts external electrodes 137, 138 as located only on the ends of ceramic element 110, see, e.g., Reply Br. 5. But the Appellant contends that no evidence of record, including Kang, teaches or suggests that modifying Amano’s external electrodes to use Kang’s external electrode configuration, Appeal 2020-002742 Application 15/810,275 5 as proposed by the Examiner, would “allow for miniaturization of the external electrode and still reliably connect to the internal electrodes.” Appeal Br. 7 (quoting Final Act. 4). We agree that the Examiner has not identified evidence of a nexus between Kang’s general description of the known advantages of miniaturized multilayer ceramic capacitors, see Kang ¶¶ 6–11 (background of the invention), and description of the inventive capacitor’s external electrodes’ 137, 138 size or location, see id. Fig. 2, ¶¶ 39, 53. See Final Act. 4; see generally Ans. 3–5. In other words, the Examiner has not identified evidence to support a finding that modifying Amano’s external electrodes to use Kang’s external electrode configuration would enable miniaturization of Amano’s electronic component or provide any other advantages. See Reply Br. 5. Absent such evidence, we conclude that the Examiner relied on improper hindsight reasoning. Because the Examiner’s fact finding and reasoning is insufficient to support a prima facie case of obviousness, we do not sustain the rejection. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–12, 16–18 103 Amano, Cho, Kang 1–12, 16–18 REVERSED