Yasuo Fujii

Patent Trials and Appeals Board

Aug 28, 2019

14202457 - (D) (P.T.A.B. Aug. 28, 2019)

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.
14/202,457 03/10/2014 Yasuo FUJII 36856.2968/fk 6516
54066 7590 08/28/2019
MURATA MANUFACTURING COMPANY, LTD.
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
EGOAVIL, GUILLERMO J
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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 YASUO FUJII
____________

Appeal 2018-008373
Application 14/202,457
Technology Center 2800
____________
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY,
and MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3–7, 9–13, and 15–18 of
Application 14/202,457 under 35 U.S.C. § 103(a). Final Act. (Nov. 17,
2017) 4–10. Appellant1 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
Laminated ceramic capacitors are known in the art. Spec. ¶ 2. The
Specification teaches that “[i]n a large-capacitance laminated ceramic

1 The Appellant is the Applicant, Murata Manufacturing Co., Ltd., which is
also identified as the real party in interest. Appeal Br. 2.
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capacitor, a high dielectric ceramic such as barium titanate is used as a
material constituting a dielectric.” Id. The Specification further teaches that
“high dielectric ceramic has piezoelectric and electrostrictive properties.”
Id. ¶ 3. As a result, a laminated ceramic capacitor experiences mechanical
strain when subjected to a voltage or an electric field. Id. An alternating
current applied to the laminated ceramic capacitor will generate vibration
due to such mechanical strain. Id. ¶ 4. This vibration may be transmitted to
the circuit substrate resulting in an undesirable audible hum called “acoustic
noise.” Id. ¶¶ 4–5.
The Specification teaches an embodiment including “a conductive
elastic structure connected to the external electrode at at least corner portions
of the first main surface in a portion where the external electrode covers the
first main surface.” Id. ¶ 10. The elastic structure includes a base portion
and a branched portion. Id.
Figure 6 of the Application is reproduced below.

Figure 6 depicts a side view of a laminated electric component. Id. ¶ 46.
Figure 6 shows an embodiment that includes base portion 32 and branch
portion 33. Id.
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The Specification teaches that the claimed laminated electronic
component is “capable of reducing acoustic noise while maintaining the
degree of freedom in designing a circuit substrate, and a mounting structure
thereof.” Id. ¶ 9.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A laminated electronic component, comprising:
a laminate including internal electrodes and dielectric
layers laminated alternately, and including a first main surface;
an external electrode provided to continuously cover at
least one end surface of the laminate in a longitudinal direction
and a portion of the first main surface adjacent to the one end
surface; and
a conductive elastic structure connected to the external
electrode at at least corner portions of the first main surface in a
portion where the external electrode covers the first main
surface; wherein
the conductive elastic structure includes:
a base portion connected to the external electrode
to extend along the first mainsurface; and
a branch portion branched from the base portion
and extending at a position spaced from the first
main surface to connect to another electrode, and
having elasticity;
the base portion and the branch portion include an
integral plate material, and the branch portion includes a bent
and plastically deformed portion of the plate material;
the base portion extends from a corner of the laminate in
a longitudinal direction from the at least one end surface of the
laminate towards an opposed end surface of the laminate;
when viewed in plan view, the branch portion is spaced
away from and adjacent to the base portion in a width direction
of the laminate perpendicular to the longitudinal direction and
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extends in the longitudinal direction parallel or substantially
parallel to the base portion; and
the branch portion is branched from the base portion at
an acute angle relative to the branch portion.
Appeal Br. 16 (Claims App.) (reformatted for clarity).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 4, 5, 6, 7, 10, 11, 12, 13, 16, 17, and 18 are rejected
under 35 U.S.C. § 103 as obvious over Togashi et al.2 in view of
Chen3 and further in view of Togashi et al.4 Final Act. 4–9.
2. Claims 3, 9, and 15 are rejected under 35 U.S.C. § 103(a) (pre-
AIA) as obvious over Togashi ʼ147 in view of Chen, Togashi ʼ798,
and Lee et al.5 Id. at 9–10.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 4, 5, 6, 7, 10, 11, 12,
13, 16, 17, and 18 as obvious over Togashi ʼ147 in view of Chen and
Togashi ʼ798. Id. at 4–9.
Togashi ʼ147 “relates to an electronic device able to suppress
propagation of vibration caused by piezoelectric and electrostriction
phenomena and thereby reduce noise, more particularly relates to a ceramic
capacitor used for an audio circuit or other circuit sensitive to noise.”

2 US 2004/0183147 A1, published Sept. 23, 2004 (“Togashi ʼ147”).
3 US 2006/0258218 A1, published Nov. 16, 2006 (“Chen”).
4 US2010/0188798 A1, published July 29, 2010 (“Togashi ʼ798”).
5 US 2008/0186652 Al, published Aug. 7, 2008 (“Lee”).
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Togashi ʼ147 ¶ 2. Togashi ʼ147 further teaches that “vibration is absorbed
by flexing etc. of the electrode connection part.” Id. ¶ 19.
In support of the rejection, the Examiner finds that Togashi ʼ147
teaches the claimed conductive elastic structure as follows:
the conductive elastic structure includes: a base portion
connected to the external electrode to extend along the first
main surface (Figs. 8-9 and 1[[0112] shows and indicates
conductive elastic structure 21 and 22 includes a base portion
25B {body supports} that is connected to external electrode 11
and 12 extending along the first main surface {bottom of 3}); a
branch portion branched from the base portion and extending at
a position spaced from the first main surface to connect to
another electrode (Figs. 8-9 and ¶[0096, 0101, & 0111] shows
and indicates branch portions comprised sections 23 and 24.

Final Act. 5 (italics in original). Figures 8 and 9 of Togashi ʼ147 are
reproduced below.

Figures 8 (left) and 9 (right) depict body support 25B, external terminals 21
and 22, abutting surface 23, and vertical surface 24. Spec. ¶¶ 90, 113.
The Examiner determines that Togashi ʼ147 teaches the claimed
invention except the conformation of the branch portion. Final Act. 6. The
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Examiner relies on Chen as teaching a branch portion having the
conformation as claimed. Id. at 6–7.
Chen is directed to “an electrical connector, and particularly to an
electrical connector used for a mobile phone or other electrical devices
having different designs and configurations.” Chen ¶ 2. Figure 4 of Chen is
reproduced below.

Figure 4 of Chen shows electrical connector 100 which comprises shielding
member 3, terminal block 1, and terminals 2. Chen ¶ 19. The terminal
block provides for electrical interconnection with the electrical device. Id.
¶ 8.
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The Examiner determines that branch portion 2120 branches from
base portion 211 and, when viewed in plan view, is spaced and adjacent to
base portion 211 in the width direction. Final Act. 6–7. Figure 7 of Chen is
reproduced below.

Figure 7 is a perspective view of a terminal block assembled with a plurality
of terminals. Chen ¶¶ 16, 17. Chen teaches that
[e]ach terminal 2 includes an end portion 21, a first branch 211
and a second branch 212 both being coplanar with the end
portion 21 and bifurcating from the end portion 21 towards the
same direction parallel to the bottom surface of the terminal
block 1. The end portion 21, the first branch 211 and the second
branch 212 are stamped from a strip. The first branch 211 has a
tail portion 2110 extending along a direction away from the end
portion 21, and the second branch 212 has a resilient portion
2120 extending upwardly therefrom and along a direction away
from the end portion 21. The resilient portion 2120 has a curved
mating section 2121 at a free end thereof.

Chen ¶ 21.
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The Examiner further relies on Togashi ʼ798’s teaching that “the
absorption of electrostrictive vibrations by utilizing the flexure of metal
terminals seems to be effective in preventing multilayer capacitors from
causing chattering noises.” Togashi ʼ798 ¶ 6; Final Act. 8.
Appellant argues that this rejection is in error on several bases.
Appeal Br. 6–8. First, Appellant argues that Chen is not analogous art to the
present application and, therefore, should not be considered as prior art for
purposes of the obviousness analysis. Id. at 6–7. Appellant contends that
Chen is neither from the same field of endeavor as the Specification nor is it
reasonably pertinent to the problem faced by the inventor. Id. at 7.
Appellant asserts that “Appellant’s claimed invention is directed to solving a
problem of reducing acoustic noise while maintaining the degree of freedom
in designing a circuit substrate.” Id. at 6. Appellant further asserts that
“Chen discloses a problem to be solved of providing the socket connector
with a low-profile, and accommodating and supporting the camera module
so that the camera module cannot be moved by shock.” Id. at 7.
The Examiner concurs that Chen is not from the same field of
endeavor. Answer 4. The Examiner determines, however, that Chen is
reasonably pertinent to the problem faced by the inventor. Id.
In the Final Rejection, the Examiner determines that “[t]he underlying
essential issue to solving the problem of reducing acoustic noise {recognized
by Togashi #2 in ¶[0006] by preventing chattering noise of electrostrictive
vibrations by absorption using metallic flexibility} by ‘an elastic conductive
structure’ {indicated in Applicant's Remark on page 8} using the structure of
Chen.” Final Act. 2. The Examiner further finds that “Chen’s structure
provides a base with a branch portion that elastically deforms in order to
make electrical contact.”
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In the Answer, the Examiner finds that “Chen’s main object of the
present invention is to provide an electrical connector having low-profile.”
Id. at 5 (citing Chen ¶ 5). The Examiner further finds that “[i]n order to
provide the underl[y]ing solution to an electrical connector having low-
profile, is to maintain electrical connections by resilient/flexible electrical
connections that can be pressed downwardly so that camera module can be
pressed downwardly and decrease the thickness of the consuming products.”
Id. Thus, the Examiner determines that the prior art (Togashi ʼ798) teaches
that a resilient electrical connector may reduce electrostrictive vibrations and
therefore acoustic noise. The Examiner reasons that, with such knowledge,
a person of ordinary skill in the art would regard a resilient electrical
connector (as taught by Chen) as reasonably pertinent to the problem of
vibration mitigation.
Appellant argues that there is no evidence “that teaches or suggests
that Chen’s item 2120 of Fig. 4 (resilient portion) together with item 211 of
Fig. 4 (first branch) will serve to solve the elastic structure to connect the
external electrode of the laminated electronic component to another
electrode” and is “capable of reducing acoustic noise.” Reply Br. 3–4
(internal quotation omitted). This is not persuasive.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. Absent legal error or contrary factual evidence, those
findings can establish a prima facie case of obviousness. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003). Here, the Examiner finds that
Togashi ʼ798 teaches that a resilient electrical connector may reduce
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electrostrictive vibrations and Chen teaches a suitable resilient electrical
connector. Absent a showing of error, these findings are sufficient to show
that the teachings of Chen are reasonably pertinent to the problem faced by
the inventor.
For its second argument, Appellant contends that the Examiner’s
proposed combination does not set forth a proper prima facie case of
obviousness. Appeal Br. 7–14.
Appellant argues that Chen teaches that resilient portions 2120 are
taught to be used in conjunction with the terminal block and shielding
member and the Examiner has not adequately explained “how one of
ordinary skill could possibly have incorporated the resilient portions 2120 of
Chen into the external terminals 21 and 22 of Togashi et al. ʼ147.” Id. at 8.
This is not persuasive of error.
The Examiner need not show that the components of the references
would have been physically combinable. See In re Etter, 756 F.2d 852, 859
(Fed. Cir. 1985) (en banc) (“Etter's assertions that Azure cannot be
incorporated in Ambrosio are basically irrelevant, the criterion being not
whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.”). “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA 1981), but rather
whether “a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention,”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
Appellant further argues that “Chen does not teach, suggest, or even
hint that the resilient portions 2120 of Chen should or could possibly have
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been incorporated into a multilayer capacitor structure.” Appeal Br. 8–9.
Similarly, Appellant argues that Chen does not teach that its resilient portion
2120 may be used to prevent acoustic noise. Id. at 9.
This is not persuasive of error as the Examiner does not find that Chen
includes such teachings. Rather, the Examiner finds that Togashi ʼ798
teaches that a resilient electrical connector may reduce electrostrictive
vibrations and Chen teaches a suitable elastic electrical connector. Final
Act. 7–8. Informed by such teachings, the Examiner proposes modification
of Togashi ʼ147 such that “‘base portion 25B’ of Togashi et al. ʼ147 Fig. 9 is
replaced by the ‘base portion 211’ of Chen and the ‘branch portions 23 &
24’ of Tagashi et al. ‘147 Fig. 9 is replaced by the ‘resilient branch portion
2120.’” Answer 7–8.
Appellant similarly argues that Togashi ʼ798 does not teach the
claimed branch portion. Appeal Br. 10. Appellant further argues that
Togashi ʼ798 does not teach that the resilient portion 2120 of Chen should or
could possibly have prevented chattering noise of electrostrictive vibrations.
Id.
As above, Togashi ʼ798 is relied upon for its teaching of “preventing
chattering noise of electrostrictive vibrations by absorption using metallic
flexibility in the connecting terminals of the component to the board.” Final
Act. 8 (citing Togashi ʼ798 ¶ 6). Appellant has not squarely addressed the
rejection as formulated by the Examiner. Further, it is well settled that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425–26 (CCPA 1981) (citations omitted) (“The test
[for obviousness] is what the combined teachings of the references would
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have suggested to those of ordinary skill in the art.”). Accordingly,
Appellant has not shown reversible error in this regard.
Appellant further includes certain general allegations that the rejection
is predicated upon hindsight.6 Appeal Br. 11–12. Appellant reiterates its
arguments regarding inadequate reason to combine but does not directly
respond to the substance of the rejection as stated. See Answer 13–14.
Accordingly, Appellant has not shown reversible error in this regard.
Appellant additionally argues that the Examiner has not established
that the Examiner’s hypothetical combination would have had a reasonable
expectation of success. Appeal Br. 13–14.
The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention. “[F]ailure to consider the appropriate scope of the . . .
patent’s claimed invention in evaluating the reasonable expectation of
success . . . constitutes a legal error.” Allergan, Inc. v. Apotex Inc., 754 F.3d
952, 966 (Fed. Cir. 2014). In other words, one must have a motivation to
combine accompanied by a reasonable expectation of achieving what is
claimed.
“[O]bviousness cannot be avoided simply by a showing of some
degree of unpredictability in the art so long as there was a reasonable
probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364

6 We note that, on pages 10–11, Appellant quotes a portion of the rejection
concerning whether Chen is analogous art. Appeal Br. 10–11. This is
followed by an argument purporting to rebut the Examiner’s determination
and asserting that there is an inadequate reason to combine. Id. at 11. Thus,
the argument does not properly respond to the quoted portion of the
rejection.
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(Fed. Cir. 2007). The question of whether there would have been a
reasonable expectation of success is a question of fact. See Par Pharm., Inc.
v. TWi Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014).
Appellant’s argument regarding the lack of a reasonable expectation
of success is similar to its argument that the Examiner has not shown an
adequate reason to combine. Appellant argues that none of the references
teach that the modification proposed by the Examiner could have been made
with a reasonable expectation of success. First, as above, “it is not necessary
that [the references] be physically combinable to render obvious the
[patent].” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Rather, it is
the teachings of the references which must be able to be combined. Here,
the Examiner finds that such teachings may be combined. See Answer 7–10.
Second, Appellant does not cite to factual evidence of record that rebuts the
Examiner’s finding in this regard. Attorney argument is not evidence. See,
e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir.
2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut .
. . other admitted evidence . . . .”); Estee Lauder, Inc. v. L’Oréal, S.A., 129
F.3d 588, 595 (Fed. Cir. 1997) (An argument made by counsel in a brief
does not substitute for evidence lacking in the record).
In view of the foregoing, we determine that Appellant has not shown
that the Examiner erred in finding that one of skill in the art would have had
a reasonable expectation of success in combining the teachings of the
references as proposed by the Examiner. See Final Act. 7–8.
The foregoing arguments are made in reference to the rejection of
claim 1. Appeal Br. 3, 15. The Appellant additionally argues that the
rejection of the other claims subject to the first rejection (claims 4, 5, 6, 7,
10, 11, 12, 13, 16, 17, and 18) should be reversed for the same reasons. Id.
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at 15. As we have not found such arguments to be persuasive, we determine
that Appellant has not shown reversible error with regard to the rejection of
these claims.

Rejection 2. The Examiner rejected claims 3, 9, and 15 as obvious
over Togashi ʼ147 in view of Chen and Togashi ʼ798. Final Act. 9–10.
Appellant argues that the rejection of these claims should be reversed for the
same reasons as set forth with regard to claim 1. Appeal Br. 15. As we have
not found such arguments to be persuasive, we determine that Appellant has
not shown reversible error with regard to the rejection of these claims.

Any argument not addressed above is considered to be inadequately
stated under Board rules. See 37 C.F.R. § 41.37(c)(1)(iv) (“the brief shall
contain . . . . The arguments of appellant with respect to each ground of
rejection, and the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the Record relied on. The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.”).
CONCLUSION
The rejections of claims 1, 3–7, 9–13, and 15–18 as obvious over the
cited prior art are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED