Ex Parte Ritter et alDownload PDFPatent Trial and Appeal BoardAug 19, 201310951972 (P.T.A.B. Aug. 19, 2013) Copy Citation 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 08/19/2013 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 08/19/2013 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 2012-002815 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 32-37. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our decision refers to Appellants’ Brief (Br.) filed July 5, 2011, and the Examiner’s Answer (Ans.) mailed August 19, 2011. 2 Appellants identify the real party in interest in this appeal as AVX Corporation. Appeal 2012-002815 Application 10/951,972 2 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, and the component is submersed in a plating solution to deposit at least one layer of 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. See claim 37. 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. The component “is preferably submersed in an appropriate plating solution for a particular amount of time . . . to deposit at exposed conductive locations . . . such that buildup is enough to spread the plating material in a perpendicular direction to the exposed conductive locations and create a connection among selected adjacent exposed conductive portions.” Id. at 21:11-19. Appeal 2012-002815 Application 10/951,972 3 REJECTIONS The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a): 1) Claims 33, 34, and 37 as being unpatentable over Takagi3 in combination with Sasaki4 or McLoughlin5, and further in view of Farnworth6; 2) Claim 32 as being unpatentable over Takagi with Farnworth and Sasaki or McLoughlin, further in combination with Kanai7; and 3) Claims 35 and 36 as being unpatentable over Takagi with Farnworth and Sasaki or McLoughlin, further in combination with Shigemoto8 or Nakagawa9. Appellants separately argue claims 32, 35, and 37 only.10 Br. 4-19. Dependent claims 33-34 stand or fall with independent claim 37, and claim 3 JP 09-190946 A, published July 22, 1997. 4 US 5,493,266, issued February 20, 1996. 5 US 6,232,144 B1, issued May 15, 2001. 6 US 6,413,862 B1, issued July 2, 2002. Although the Examiner did not include this reference in the rejection statements, the Examiner states “[t]he reference is relied upon for teaching electroless plating involves ‘submersion’ in a bath.” Ans. 10. Appellants included Farnworth in each of the rejections on appeal and argued the basis on which this reference was used. Br. 4, 12-14. Accordingly, we hold the Examiner’s omission of this reference from the rejection statements to be harmless error. 7 JP 08-264372 A, published October 11, 1996. 8 US 6,151,204, issued November 21, 2000. 9 JP 10-251837 A, published September 22, 1998. 10 We note Appellants argue Kanai with regard to claim 37 only, and not with regard to the specific limitations of claim 32. Appeal 2012-002815 Application 10/951,972 4 36 stands or falls with claim 35 from which it depends. 37 C.F.R. § 41.37(c)(1)(vii). Independent claim 37 and dependent claims 32 and 35 are reproduced below: 37. A method of making a multi-layer electronic component, comprising the steps of: 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. 32. The method of claim 37, wherein the step of plating is performed using an electroless process followed by an electrochemical process. 35. The method of claim 34, further comprising the step of covering the copper termination layer with a resistive layer. Br., Claims App’x (emphasis added). Appeal 2012-002815 Application 10/951,972 5 ANALYSIS Claim 37 Appellants’ arguments on appeal are based primarily on claim 37’s limitations. See generally Br. 4-14. Claim 37 requires 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. A central issue before us is the meaning of “submersing.” The Examiner appears to take two positions regarding this claim limitation: 1) that dipping or partially immersing the component in a plating solution is not excluded from claim 37 since this claim does not expressly require total or complete immersion; and 2) submersing components completely in plating solutions was commonly done in the art prior to Appellants’ invention. Ans. 5, 7, 10. On the other hand, Appellants argue the broadest reasonable interpretation of “submersing” is to put under or cover with the plating solution, referring to the dictionary definition. Br. 8. Appellants assert claim 37 does not allow for partial immersion, as “submersing the electronic component” requires the entire component to be put under or covered by the plating solution. Id. We begin, as we must, 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 2012-002815 Application 10/951,972 6 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. Having considered the respective interpretations of “submersing the electronic component” offered by the Examiner and Appellants, we find the broadest reasonable interpretation is that the electronic component is completely immersed and under the surface of the plating solution. Although the Examiner finds claim 37 is not limited to complete immersion, we disagree. Appellants offered an ordinary and customary definition of the term “submersing” which means to put under or cover, without qualifiers such as partially. The Examiner has not directed our attention to any alternative definition whatsoever, nor do we find any. Accordingly, our consideration of the obviousness rejections will be based on our interpretation that “submersing” the electronic component means that the component is completely immersed in and under the surface of the plating solution. The dispositive issue remaining before us therefore is whether the Examiner reversibly erred in finding submersion of an electronic component in an electroless plating bath was commonly done in the art as evidenced by Appeal 2012-002815 Application 10/951,972 7 Farnworth and concluding it would have been obvious to one of ordinary skill in the art to have immersed Takagi’s component during the electroless plating suggested by Sasaki and McLoughlin. We answer this question in the negative and therefore affirm the rejection of claim 37. The Examiner finds Takagi teaches a multi-layer component made by interleaving a plurality of electrodes and a plurality of anchor tabs (dummy electrodes) between selected insulating substrates, exposing portions of the electrodes and tabs along at least one edge of the substrates, and plating these exposed portions to form external electrodes. Ans. 5. However, the Examiner acknowledges Takagi fails to teach directly plating the component by submersing the component in an electroless plating bath. Id. The Examiner looks to Sasaki and McLoughlin, each of which teaches directly forming external electrodes by electroless plating. Id. The Examiner concludes it would have been obvious to one of ordinary skill in the art to plate Takagi’s exposed portions directly using electroless plating as taught by Sasaki and McLoughlin. Id. The Examiner also finds submersing the component in the plating solution was common in the art for electroless plating and doing so for plating Takagi’s component would therefore have been obvious. Id. Appellants contend the applied prior art fails to disclose a specific step of submersing the component in a plating solution to deposit material directly on the exposed portions. Generally, Br. 7-14. Appellants note Sasaki teaches that external electrodes may be formed by electroless plating, but does not provide any detailed discussion of how this would be accomplished. Id. at 8-9. Appellants argue that if a submersion step was implemented in Sasaki, “then additional masking or preparation steps would Appeal 2012-002815 Application 10/951,972 8 be required.” Id. at 9. Appellants base this argument on the presence of the external electrodes that “wrap from the sides to the top and bottom surfaces of [Sasaki’s] thermistor device.” Id. Further, Appellants argue McLoughlin requires that the component be selectively dipped in the plating solution in order to assure that the end terminations uniformly cover the terminal regions without extending undesirably along the exposed surface 38. Id. at 11. As such, Appellants contend McLoughlin teaches away from submersion of the component to form the end terminations. Id. As to Farnworth, Appellants argue that this reference applies an initial layer of copper to the component prior to electroless plating to form an additional layer. Id. at 13. In addition, similarly to Sasaki, Appellants argue Farnworth requires masking or etching to isolate locations to be plated. Id. We do not find Appellants’ arguments persuasive of reversible error. Initially, these arguments fail because Appellants are attempting to establish nonobviousness by attacking the references individually where the rejection is based upon the combined teachings of Takagi, Sasaki, or McLoughlin, and Farnworth. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, Sasaki, McLoughlin, and Farnworth must be read not in isolation, but for what they fairly teach to one of ordinary skill in the art in combination with the prior art as a whole. Id. Furthermore, “[t]he test for obviousness is not whether the features of one reference may be bodily incorporated into the other to produce the claimed subject matter but simply what the combination of references makes obvious to one of ordinary skill in the pertinent art.” In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). In this case, the Examiner did not cite the Sasaki and McLoughlin references for the purpose of specifically suggesting the Appeal 2012-002815 Application 10/951,972 9 step of submersing the component into a plating solution for electroless plating of the end terminations, but because they teach that electroless plating for forming end terminations was known, thereby suggesting to the ordinary skilled artisan that Takagi’s external electrodes be similarly formed by electroless plating. Moreover, Farnworth was not cited for specifically suggesting plating the end terminations of a multi-layer component, but in support of the Examiner’s finding that submersing an electronic component in a plating solution was known in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). With regard to the Appellants’ argument that these prior art references require additional steps of masking or etching, the Examiner responds that claim 37 does not exclude such additional steps. Ans. 9. We agree. Claim 37 uses the transitional language “comprising the steps of” which requires the named steps, but other steps may be added and still fall within the scope thereof. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”). We find the Examiner has provided sufficient reasoning with rational factual underpinning to support his obviousness conclusion. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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 Appeal 2012-002815 Application 10/951,972 10 legal conclusion of obviousness.”), quoted with approval in KSR, 550 U.S. at 418. Claim 32 Turning to claim 32, depending from claim 37 and requiring the step of plating is performed using an electroless process followed by an electrochemical process, the Examiner finds Kanai teaches electrolessly plating exposed electrodes followed by electrolytic plating. Ans. 6. The Examiner concludes it would have been obvious to have modified Takagi’s process in combination with Sasaki or McLoughlin by plating Takagi’s external electrodes by electroless plating followed by electrolytic plating with a reasonable expectation of success. Appellants argue Kanai fails to remedy the deficiencies of Takagi in view of Sasaki or McLoughlin, further in view of Farnworth relative to claim 37. However, the Examiner did not cite to Kanai to remedy alleged deficiencies in the prior art relative to claim 37, but specifically to suggest the sequential use of electroless and electrolytic plating. As such, we do not find Appellants’ argument persuasive as to reversible error in the Examiner’s conclusion as to the obviousness of claim 32. Claim 35 Turning to claim 35, depending from claim 34 (which itself depends from claim 37) and requiring an additional step of covering the plated end terminations with a resistive layer, the Examiner finds Shigemoto and Nakagawa teach applying a solder resistant layer or a solder heat resistant layer to an underlying electrode layer. Ans. 7. Appellants argue that neither Shigemoto’s nor Nakagawa’s layer is a “resistive layer” within the meaning Appeal 2012-002815 Application 10/951,972 11 of claim 35. App. Br. 16-19. Appellants argue the broadest reasonable interpretation, consistent with the specification, is that a resistive layer refers to an electrically resistive layer. Id. at 17. Appellants direct our attention to the Specification, page 5, lines 10-12, and page 22, lines 26-29, wherein the plating materials may comprise metallic conductors, resistive materials, and/or semi-conductive materials. Id. at 18. In the context of these disclosures, Appellants contend the broadest reasonable interpretation of resistive materials refers to materials having electrical resistance. Id. We agree. The resistive materials disclosed are set forth in a list including conductive and semi-conductive materials. One of ordinary skill in the art would reasonably interpret each of the materials’ description refers to electrical properties, i.e. electrically conductive, electrically resistive, and/or electrically semi-conductive. The Examiner fails to direct our attention to any alternative interpretation which is consistent with the specification. As the Examiner’s position depends on an erroneous interpretation of “resistive materials”, the Examiner’s finding that Shigemoto’s and Nakagawa’s solder resistant layers read on “resistive materials” lacks evidentiary support. Accordingly, we are persuaded of reversible error in the Examiner’s obviousness rejection of claim 35. CONCLUSION In sum, for the reasons expressed in the Answer and above, we find a preponderance of the evidence favors the Examiner’s conclusion of obviousness as to appealed claims 32-34, 36, and 37. The § 103 rejections of claims 32-34, 36, and 37 are affirmed. Appeal 2012-002815 Application 10/951,972 12 However, Appellants’ arguments have persuaded us that the Examiner has not established a prima facie case of obviousness with regard to claim 35. The § 103 rejection of claim 35 is reversed. 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). 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