Ex Parte 6243254 et al

Patent Trial and Appeal Board

May 28, 2013

90010836 (P.T.A.B. May. 28, 2013)

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.
90/010,836 01/29/2010 6243254 36856.1899-254EPR 1145
54066 7590 05/29/2013
MURATA MANUFACTURING COMPANY, LTD.
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/29/2013 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 MURATA MANUFACTURING COMPANY, LTD.
Appellant
____________
Appeal 2013-006356
Reexamination Control Nos. 90/010,836 and 90/011,473 (merged)
U.S. Patent No. 6,243,254
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1, 2, 9-14, 19-34, and 45-63. Claims 3-8 and 15-18 have
been cancelled. The Examiner has confirmed the patentability of claims 35-
44. We have jurisdiction under §§ 134(b) and 306. We affirm.

STATEMENT OF THE CASE
Merged Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 6,243,254
(the „254 patent) was filed on January 29, 2010 and assigned Reexamination
Control No. 90/010,836. A subsequent request for ex parte reexamination of
the „254 patent was filed on February 2, 2011 and assigned Reexamination
Control No. 90/011,473. The reexamination proceedings have been merged.
The „254 patent, entitled “Dielectric Ceramic Composition and
Laminated Ceramic Capacitor Using the Same,” issued June 5, 2001, to
Nobuyuki Wada, Masamitsu Shibata, Takashi Hiramatsu, and Yukio
Hamaji, based on Application No. 09/369,988, filed August 6, 1999.
The „254 patent is said to be assigned to Murata Manufacturing
Company, Ltd., said to be the assignee and real party in interest.

Appellant’s Invention
Appellant‟s invention relates to a laminated ceramic capacitor which
satisfies the B-grade and X7R grade characteristics, using Ni for the inner
electrodes. The dielectric material contains about 0.2 to 5.0 parts by weight
of Li2O–(Si,Ti)O2–MO (MO is Al2O3 and ZrO2) or SiO2–TiO2–XO oxides
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(XO is BaO, CaO, SrO, MgO, ZnO and MnO) relative to 100 parts by
weight of a principal component represented by (Ba1-xCaxO)mTiO2 + αRe2O3
+βMgO + γMnO (Re2O3 is Y2O3, Gd2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3 or
Yb2O3). (Abstract.)

Related Litigation
The „254 patent has been asserted in a patent infringement suit,
Murata Manufacturing Co. v. Samsung Electro Mechanics Co., No. 8:09-cv-
01124-DOC-AN (C.D. Cal. Oct. 1, 2009), and involved in an investigation
at the International Trade Commission, Investigation No. 337-TA-692,
Certain Ceramic Capacitors and Products Containing Same. Both the
litigation and investigation have been terminated.

The Claims
Independent claim 1 is exemplary, with disputed limitations in italics:
1. A dielectric ceramic comprising[:]
(Ba1-xCaxO)mTiO2 + αRe2O3 +βMgO + γMnO
in which Re is at least one member selected from the group
consisting of Y, Gd, Tb, Dy, Ho, Er and Yb;
α, β, γ, m and x are molar ratios;
0.001 ≤ α ≤ 0.10;
0.001 ≤ β ≤ 0.12;
0.001< γ ≤ 0.12;
1.000 < m ≤ 1.035; and
0.005 < x ≤ 0.22, and
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about 0.2 to 5.0 parts by weight of either a first sub-component
or a second sub-component or a third sub-component relative to 100
parts by weight of (Ba1-xCaxO)mTiO2, wherein
the (Ba1-xCaxO)mTiO2 contains about 0.02% by weight or less of
alkali metal oxides,
the first sub-component is a Li2O–(Si,Ti)O2–MO oxide in
which M is at least one of Al and Zr,
the second sub-component is a SiO2–TiO2–XO oxide in which
X is at least one selected from the group consisting of Ba, Ca, Sr, Mg,
Zn and Mn, and
the third sub-component is SiO2.

The Rejections
Claims 1 and 45 stand rejected under 35 U.S.C. § 103(a) as being
obvious over JP „232 (Japanese Patent Publication No. H8-31232; Feb. 2,
1996) and Sakabe (Y. Sakabe et al., Dielectric Materials for Base-Metal
Multilayer Ceramic Capacitors, PROC. ELECTRONICS DIVISION FALL
MEETING 103-104 (1986)).
Claims 2, 9, 10, 21, 22, 46, 47, 52, and 53 stand rejected under 35
U.S.C. § 103(a) as being obvious over JP „232, Sakabe, and Sano „473 (U.S.
Patent No. 5,742,473; Apr. 21, 1998).
Claims 11-14, 19, 20, 23, 24, 27, 30-34, 48-51, 54, 55, 58, and 61-63
stand rejected under 35 U.S.C. § 103(a) as being obvious over Sano „473, JP
„232 and Sakabe.
Claims 25, 26, 28, 29, 56, 57, 59, and 60 stand rejected under 35
U.S.C. § 103(a) as being obvious over Sano „473, JP „232, Sakabe, and
Tokuda „596 (U.S. Patent No. 5,376,596; Dec. 27, 1994).
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Appellant relied upon the following
1
in rebuttal to the Examiner‟s
rejection:
Declaration under 37 C.F.R. § 1.132 of Ian Burn, dated December 2,
2010 (“First Burn Declaration”).
Declaration under 37 C.F.R. § 1.132 of Nobuyoshi Fujikawa, dated
December 3, 2010 (“Fujikawa Declaration”).
Declaration under 37 C.F.R. § 1.132 of Hiroshi Ojima, dated
December 3, 2010 (“Ojima Declaration”).
Declaration under 37 C.F.R. § 1.132 of Masahiko Nakanishi, dated
December 3, 2010 (“Nakanishi Declaration”).
Declaration under 37 C.F.R. § 1.132 of Katsuhiro Oda, dated
December 3, 2010 (“Oda Declaration”).
Declaration under 37 C.F.R. § 1.132 of Takashi Maeda, dated
December 3, 2010 (“Maeda Declaration”).
Declaration under 37 C.F.R. § 1.132 of Shinichi Oosawa, dated
December 6, 2010 (“Oosawa Declaration”).
Declaration under 37 C.F.R. § 1.132 of Ian Burn, dated November 18,
2011 (“Second Burn Declaration” or “Burn Decl.”).
Declaration under 37 C.F.R. § 1.132 of Yukio Sakabe, dated
November 18, 2011 (“Sakabe” or “Sakabe Decl.”).

1
This opinion only addresses arguments made by Appellant. Arguments
not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). We have
considered the declaration evidence to the extent raised by Appellant‟s
arguments.

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ANALYSIS
After Final Amendment
Appellant argues that “Appellant filed the After-Final Amendment on
May 1, 2012 proposing to amend for the first time the paragraphs at 2:11-36
and 3:5-29 [of the „254 patent] to correct errors in these paragraphs” (App.
Br. 5) and that the issues raised are relevant to claim construction (App.
Br. 4-6, 11-12; see also Reply Br. 4). However, because this After Final
Amendment, filed May 1, 2012, was not entered by the Examiner, such
arguments are not a part of the record, and accordingly, will not be
considered.

Claim Construction
We are unpersuaded by Appellant‟s arguments (App. Br. 7-10, 13-14;
see also Reply Br. 4-9) that the Examiner improperly construed the claimed
composition of “(Ba1-xCaxO)mTiO2 + αRe2O3 +βMgO + γMnO.”
The Examiner interpreted the claimed composition (Ba1-xCaxO)mTiO2
+ αRe2O3 +βMgO + γMnO as “starting materials (i.e., materials before
sintering).” (Ans. 6, 21-25.) We agree with the Examiner.
In the “Summary of the Invention” section, the Specification of the
„254 patent explains that:
In one aspect, the present invention provides a laminated
ceramic capacitor provided with a plurality of dielectric ceramic
layers, inner electrodes formed between the dielectric ceramic
layers and external electrodes being in electrical continuity with
the inner electrodes, the dielectric ceramic layer being
represented by the following formula:
(Ba1-xCaxO)mTiO2+αRe2O3+βMgO+γMnO
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. . . .

[with] (Ba1-xCaxO)mTiO2 as a starting material to be used for
the dielectric ceramic layer . . .

(Col. 2, ll. 11-29 (emphasis added).) The Specification of the „254 patent
further explains that:
It is preferable to use the ceramic having the composition
to be described hereinafter in order to improve the plating
resistance. The dielectric ceramic layer in the laminated
ceramic capacitor is represented by the following formula:
(Ba1-xCaxO)mTiO2+αRe2O3+β MgO+γMnO
. . . .

[with] (Ba1-xCaxO)mTiO2 as a starting material to be used for
the dielectric ceramic layers . . . .

(Col. 3, ll. 5-23 (emphasis added).) Accordingly, the Specification of the
„254 patent expressly states that the subscript “m” refers to the “starting
material.”
Additionally, the Specification of the „254 patent states:
The dielectric ceramic layers 2a and 2b are composed of
a dielectric ceramic composition having as principal
components barium calcium titanate ((Ba1-x CaxO)mTiO2, . . . .
. . . .

The composition described above allows a laminated ceramic
capacitor with high reliability and excellent insulating strength
to be obtained, wherein the ceramic capacitor can be fired
without endowing it with semiconductive properties even by
firing in a reducing atmosphere . . . .
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(Col. 4, ll. 31-46 (emphases added).) The language “wherein the ceramic
capacitor can be fired,” in addition to reference to the “[t]he composition
described above [((Ba1-x CaxO)mTiO2],” indicates that such composition with
a subscript “m” has not been fired and thus, refers to a “starting material.”
First, Appellant argues that “[t]he use of the subscript m is important
because the subscript m, in the specification of the „254 patent . . . is used to
refer to a sintered material and not to refer to starting materials.” (App.
Br. 7.) In particular, Appellants argue that “[t]he „254 specification
consistently refers to sintered materials with the subscript m and to starting
materials or pre-sintered materials with the subscript n, except for the
translation error.” (Id.) Appellants further argue that from paragraph 6 of
the Second Burn Declaration, “the subscript m must refer to a sintered
material because BaCO3 or TiO2 does not combine with the (Ba1-
xCaxO)nTiO2 to form (Ba1-xCaxO)mTiO2 until after sintering.” (App. Br. 7-8;
see also Reply Br. 5.)
Paragraph 6 of the Second Burn Declaration states that:
(Ba1-xCaxO)mTiO2 + αRe2O3 +βMgO + γMnO recited in
claims 1 and 45 of the „254 cannot be starting materials.
Claims 1 and 45 use the subscript m in (Ba1-xCaxO)mTiO2
instead of the subscript n to refer to a sintered material. The
specification of the „254 patent . . . consistently refers to
sintered materials with the subscript m and to starting materials
or pre-sintered materials with the subscript n, as seen, for
example, by comparing claims 1 and 45 and Table 2 of the „254
patent with Table 1 of the „254 patent. BaCO3 or TiO2 is added
in the „254 patent to the starting materials to adjust the ratio m
of (Ba, Ca)/Ti in the BCT.
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(Burn Decl. ¶ 6.) However, such statements are inaccurate, because
as discussed previously, the “Summary of the Invention” section from
the Specification of the „254 patent expressly refers to the subscript
“m” as “starting materials.”
Paragraph 6 of the Second Burn Declaration further states that
“[t]he subscript m must refer to a sintered material because BaCO3 or
TiO2 only combine with the (Ba1-xCaxO)nTiO2 to form (Ba1-
xCaxO)mTiO2 during sintering.” (Burn Decl. ¶ 6.) However, this
statement in the Second Burn Declaration relied upon by Appellant
lacks persuasive factual support because the Second Burn Declaration
does not cite to any persuasive corroborating evidence. See In re
Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992.)
Second, Appellant also argues that “[a]s explained in paragraph 7 of
the Second Burn Declaration, the recitation of simple oxides (αRe2O3 +β
MgO + γMnO) in claims 1 and 45 is consistent with the industry's
convention for claiming sintered material.” (App. Br. 8; see also Reply
Br. 7.)
Paragraph 7 of the Second Burn Declaration states that:
The recitation of simple oxides (αRe2O3 +βMgO + γMnO) in
claims 1 and 45 is consistent with the industry‟s convention for
claiming sintered material. This is the industry‟s convention
for describing dielectric ceramics because the dielectric ceramic
cannot be reduced to a single precise chemical formula. A
different formula would be used for starting materials because
different precursors, i.e., precursors other than Re2O3, MgO,
and MnO, can be used that would result in Re2O3, MgO, and
MnO being present in the dielectric ceramic. For example, it is
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possible to use MgCO3 and MnCO3 as precursors instead of
MgO and MnO.
(Burn Decl. ¶ 7.) Again, these statements in the Second Burn
Declaration relied upon by Appellant lack persuasive factual support
because the Second Burn Declaration does not cite to any persuasive
corroborating evidence. See Beattie, 974 F.2d at 1313.
Third, Appellant argues that by applying “the doctrine of claim
consistency” the “„[d]ielectric ceramic‟ refers to a sintered material that is
contained in a fully formed capacitor as seen, for example, in claims 11-14,
19, 20, 23-34, 41-44, 48-51, and 54-63 that are each directed to a „laminated
ceramic capacitor‟” and “[a]s explained in paragraph 8 of the Second Burn
Declaration, one of ordinary skill in the art would have understood that the
term „dielectric ceramic‟ in the phrase „the plurality of dielectric layers
containing the dielectric ceramic‟ refers to a sintered material.” (App.
Br. 9.)
However, claims 11-14, 19, 20, 23-34, 41-44, 48-51, and 54-63
recite a “laminated ceramic capacitor,” which narrows the scope of
the “dielectric ceramic” recited in independent claims 1 and 45, which
does not require the broader recitation of “dielectric ceramic” to be a
sintered material. Furthermore, paragraph 8 of the Second Burn
Declaration states that:
One of ordinary skill in the art would understand that the
phrases “ceramic green sheet” and “ceramic slurry” mean
starting materials. One of ordinary skill in the art would not
understand the use of the terms “ceramic green sheet” and
“ceramic slurry” in the „254 specification to change the
definition of “dielectric ceramic” so as to include non-sintered
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materials. One of ordinary skill in the art would have
understood that the “dielectric ceramic” in the phrase “the
plurality of dielectric layers containing the dielectric ceramic”
as recited in claims 11-14, 19, 20, 23-34, 41-44, 48-51, and 54-
63 refers to a sintered material.
(Burn Decl. ¶ 8.) Again, these statements in the Second Burn
Declaration relied upon by Appellant lack persuasive factual support
because the Second Burn Declaration does not cite to any persuasive
corroborating evidence. See Beattie, 974 F.2d at 1313.
Fourth, Appellant argues that “the Examiner misleadingly alleged that
„dielectric ceramic‟ (1) is not generally recognized, understood, or used by
lay persons; (2) is not defined in any dictionary to mean „sintered material‟;
and (3) is not explicitly defined in the claims.” (App. Br. 10.) In particular,
Appellant argues that “[t]he broadest reasonable interpretation of „dielectric
ceramic‟ consistent with the „254 patent as understood by one of ordinary
skill in the art is that „dielectric ceramic‟ refers to a sintered material.” (Id.)
However, Appellant has not provided any persuasive evidence with respect
to how one of ordinary skill in the art would interpret “dielectric ceramic.”
Arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996).
Last, Appellant argues that “the use of the term particle in claim 2 of
the „254 patent is consistent with how the term particle is used in the „254
patent.” (App. Br. 13.) In particular, Appellant argues that “Sample Nos. 17
and 18 in this portion of the „254 patent refer to the laminated ceramic
capacitors shown in Table 2 . . . and Table 3 . . . .” (Id.)
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However, the Specification of the „254 patent, immediately following
Table 3, explains that:
The cross section of the laminated ceramic capacitor obtained
was polished and subjected to chemical etching. It was found
from scanning electron microscopic observation of the grain
size in the dielectric ceramics that the grain size was almost
equal to the particle size of the barium calcium titanate starting
material in the samples having the compositions within the
range of the present invention.
(Col. 9, ll. 34-40 (emphasis added).) Thus, according to the Specification of
the „254 patent, the “grain size” refers to the dielectric ceramic after
sintering and “particle size” refers to the barium calcium titanate starting
material.
Therefore, reading the claimed composition (Ba1-xCaxO)mTiO2
in the context of the entire patent, in particular the subscript “m,” we
agree with the Examiner that the composition (Ba1-xCaxO)mTiO2 refers
to a starting material.

§ 103 Rejections
We are unpersuaded by Appellant‟s arguments (App. Br. 14-15, 16-
22; see also Reply Br. 10-14) that the combination of JP „232 and Sakabe
would not have rendered obvious independent claim 1, which includes the
limitation “the (Ba1-xCaxO)mTiO2 contains about 0.02% by weight or less of
alkali metal oxides.”
The Examiner acknowledged that JP „232 does not disclose the
limitation “the (Ba1-xCaxO)mTiO2 contains about 0.02% by weight or less of
alkali metal oxides” (Ans. 8) and thus, relied upon Table I of Sakabe, which
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lists impurities ranging from 0.09 to 0.002 weight %, as detected by
inductively coupled mass spectroscopy, for teaching a (Ba0.85Ca0.15O)1.01TiO2
ceramic with a Na2O impurity content of 0.002 weight % (Ans. 9, 33;
Sakabe, p. 104). The Examiner further found that “[i]f these impurities
[Li2O and K2O] were detected and less than 0.005% by weight, the
requirement that the alkali metal oxides is 0.02% by weight would still be
met.” (Ans. 33.) The Examiner concluded that “it would have been obvious
to use the starting materials of Sakabe as sample 36 of JP „232” because
“Sakabe suggests to use such starting materials along with other additives
containing elements recited in the „254 patent (and sample 36 of the JP „232)
including additives containing Mn and Mg.” (Ans. 8.) We agree with the
Examiner.
JP „232
2
relates to “a non-reducing dielectric porcelain composition
used in porcelain capacitors, particularly laminated porcelain capacitors
having internal electrodes which have base metals such as nickel and copper
as the main ingredients.” (¶ [0001].) The compositional formula by mole
ratio of such porcelain capacitors is 100(Ba1-xCax)1+kTiO3 + aRE2O3 + bMnO
+ cMgO + dLi2O + eSiO2, such that RE is Y, Gd, Dy, Ho, Er or Vb.
(Claim 3.) For “Sample 36” of JP „232, x = 0.10, k = 0.015, RE = Y, a =
1.0, b = 0.1, c = 2.0, d = 2.0, and e = 1.5. (¶¶ [0051]-[0052].)
Sakabe relates to Ni-electrode multilayer ceramic capacitors
(MLCs). (P. 103.) Sakabe explains that “[c]alcium, Mg, and Mn ions

2
Reference is made to the English-language translation provided by
Appellant, submitted December 22, 2009.

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were effective in inhibiting the reduction of BaTiO3 ceramics.”
(Abstract.) Sakabe further explains that powders from the highest
electrical grade BaCO3, CaCO3, SrCO3, MgCO3, TiO2, Nb2O5, and
MnO2 were prepared to form a (Ba0.85Ca0.15O)1.01TiO2 ceramic, with
an impurity content of 0.002 weight % Na2O. (P. 104; Table I.)
A person of ordinary skill in the art would have recognized that
incorporating the powders of Sakabe, which include Mg and Mn ions, for
producing a Ni-electrode MLC, with the method of forming a non-reducing
dielectric porcelain composition of JP „232, would improve JP „232 by
providing the advantage of inhibiting the reduction of BaTiO3 ceramics
during firing. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Similarly, combining JP „232 and Sakabe is no more than the simple
substitution of the known powders of Sakabe for the known powders of JP
„232, with no unexpected results. Id. Thus, we agree with the Examiner
(Ans. 8) that modifying JP „232 to incorporate the powders of Sakabe would
have been obvious.
First, Appellant argues that “[o]ne of ordinary skill in the art would
have expected a large amount of Li to enter the BCT grains of JP „232
during sintering because the amount of Li significantly affects the electrical
properties of the ceramic composition” and thus, “sample 36 of JP „232
does not include the feature of „the (Ba1-xCaxO)mTiO2 contains about 0.02%
by weight or less of alkali metal oxides.‟” (App. Br. 15; see also Reply Br.
10.) As evidence, Appellant points to the Oosawa Declaration, the Fujikawa
Declaration, the Ojima Declaration, the Nakanshi Declaration, the Oda
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Declaration, the Maeda Declaration, and the First Burn Declaration. (App.
Br. 15.)
However, Appellant‟s arguments are not commensurate in scope with
claims 1 and 45. Claims 1 and 45 recite that “the (Ba1-xCaxO)mTiO2 contains
about 0.02% by weight or less of alkali metal oxides,” which does not
exclude the later addition of Li2O. In other words, claims 1 and 45 only
require that the (Ba1-xCaxO)mTiO2 contains less than about 0.02% by weight
of alkali metal oxides, rather than requiring the dielectric ceramic to contain
less than about 0.02% by weight of alkali metal oxides. Moreover, claim 1
further recites “about 0.2 to 5.0 parts by weight of either a first sub-
component . . . wherein . . . the first sub-component is a Li2O–(Si,Ti)O2–MO
oxide.” Thus, claim 1 does not exclude the presence of Li2O, only that “the
(Ba1-xCaxO)mTiO2 contains about 0.02% by weight or less of alkali metal
oxides.”
Second, Appellant argues that “Sakabe et al. does not disclose Na2O
as the one and only alkali metal oxide” and accordingly, “Sakabe et al. fails
to teach or suggest that other alkali metal oxides (i.e., Li2O and K2O) are not
permitted or that the permissible upper limit of inclusion of alkali metal
oxides is 0.02% by weight.” (App. Br. 16.) However, claim 1 recites “the
(Ba1-xCaxO)mTiO2 contains about 0.02% by weight or less of alkali metal
oxides” (emphasis added), which is broad enough to encompass zero % by
weight alkali metal oxides.
Third, Appellant argues that “JP „232 and Sakabe et al. cannot be
combined as suggested by the Examiner” because “neither JP „232 nor
Sakabe et al. teaches or suggests that it is desirable to use starting materials
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with fewer impurities” (App. Br. 16-17.) Similarly, Appellant argues that
“contrary to the Examiner‟s allegations, one of ordinary skill in the art
would not look to Sakabe‟s discussion of Gd and Sm as providing a reason
or motivation to modify JP „232.” (Reply Br. 11.) However, the Examiner‟s
articulated reasoning for combining JP „232 and Sakabe is based on the
addition of Mg and Mn to dielectric materials, rather than using starting
materials with fewer impurities or adding Gd and Sm, as argued by
Appellant. (Ans. 8.)
Fourth, Appellant argues that “JP „232 and Sakabe et al. are directed
to different objects with respect to the temperature characteristics of the
ceramic materials” and that “[b]oth paragraph 12 of the Second Burn
Declaration and paragraph 10 of the Sakabe Declaration explain how the
different objects with respect to the temperature characteristics of the
ceramic materials are incompatible.” (App. Br. 17; see also Reply Br. 13.)
Paragraph 12 of the Second Burn Declaration and paragraph 10 of the
Sakabe Declaration state that:
JP „232 and Sakabe are directed to different objects with respect
to the temperature characteristics of the ceramic materials. The
temperature characteristic requirements of JP „232 and Sakabe
are incompatible. The object of JP „232 is to achieve more
stringent X7R temperature characteristics in which the
dielectric constant of the ceramic dielectric has a temperature
dependence of ±15% at -55°C to +125 °C, while the object of
Sakabe is to achieve less stringent E characteristic of the JIS
characteristics in which the dielectric constant of the ceramic
dielectric has a temperature dependence of -55% to +20% at -
25°C to +85 °C or F characteristic of the JIS characteristics in
which the dielectric constant of the ceramic dielectric has a
temperature dependence of -80 to +30% at -25 to +85°C. One
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of ordinary skill in the art would not have relied on any portion
of Sakabe to modify JP „232 to avoid destroying the stringent
X7R temperature characteristics required of the ceramic
materials of JP „232, including the ceramic material of
Sample 36 that the Examiner relied on in the Office Action.
(Burn Decl. ¶ 12; Sakabe Decl. ¶ 10.)
However, such statements do point out with particularity or explain
why JP „232 and Sakabe are directed towards different objectives. Instead,
the declarations merely cite language from the two references that are
worded differently with a conclusory statement that such references are
incompatible. Furthermore, the statements in the Second Burn Declaration
and the Sakabe Declaration relied upon by Appellant lack persuasive factual
support because the declarations does not cite to any persuasive
corroborating evidence that “[o]ne of ordinary skill in the art would not have
relied on any portion of Sakabe to modify JP „232 to avoid destroying the
stringent X7R temperature characteristics.” See Beattie, 974 F.2d at 1313.
Fifth, Appellant argues that “[p]aragraph [0020] of JP „232 teaches
away from limiting the alkali metal oxides to less than 0.002% by weight.”
(App. Br. 20.) In particular, Appellant argues that “because Li2O is an alkali
metal oxide, JP „232 teaches away from limiting the alkali metal oxides to
less than 0.002% by weight because JP „232 requires at least 0.19% by
weight of the alkali metal oxide Li2O.” (App. Br. 21; see also Reply Br. 14.)
However, as found by the Examiner, this argument is not
commensurate in scope with claims 1 and 45. (Ans. 35-36.) As discussed
previously, claims 1 and 45 recite that “the (Ba1-xCaxO)mTiO2 contains about
0.02% by weight or less of alkali metal oxides,” which does not exclude the
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18
later addition of Li2O. Claim 1 further recites “about 0.2 to 5.0 parts by
weight of either a first sub-component . . . wherein . . . the first sub-
component is a Li2O–(Si,Ti)O2–MO oxide.” Thus, claim 1 does not exclude
the presence of Li2O, only that “the (Ba1-xCaxO)mTiO2 contains about 0.02%
by weight or less of alkali metal oxides.” Paragraph [0020] of JP „232 is
expressly silent regarding the content of alkali metal oxides in the BaCaO3
and accordingly, does not “teach away” from the claim limitation “the (Ba1-
xCaxO)mTiO2 contains about 0.02% by weight or less of alkali metal oxides.”
Last, Appellant argues that “Sakabe et al.‟s use of iron (Fe) teaches
away from combining JP „232 and Sakabe et al.” (App. Br. 21.) In
particular, Appellants argues that “JP 3-80151, which was filed with the
Supplemental After-Final Amendment of May 15, 2012, teaches that the
addition of Fe decreases the dielectric constant of a dielectric material.”
(Id.) Because this After Final Amendment, filed May 15, 2012, was not
entered by the Examiner, JP 3-80151 is not evidence of record.
Thus, we agree with the Examiner that the combination of JP „232
and Sakabe would have rendered obvious independent claim 1, which
includes the limitation “the (Ba1-xCaxO)mTiO2 contains about 0.02% by
weight or less of alkali metal oxides.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a).
Independent claim 45 recites limitations similar to those discussed
with respect to independent claim 1, and Appellant has not presented any
additional substantive arguments with respect to this claim. We sustain the
rejection of claim 45 for the same reasons discussed with respect to claim 1.
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19
Although Appellant nominally argues the rejection of dependent
claims 2, 9-14, 19-34, and 46-63 separately (App. Br. 22), the arguments
presented do not point out with particularity or explain why the limitations
of the dependent claims are separately patentable. Instead, Appellant
summarily alleges that “Sano „473 and Tokuda „596, applied alone or in
combination, fail to cure the deficiencies of JP „232 and Sakabe et al.” (Id.)
We are not persuaded by these arguments for the reasons discussed with
respect to claims 1 and 45, from which claims 2, 9-14, 19-34, and 46-63
depend. Accordingly, we sustain these rejections.

DECISION
The Examiner‟s decision rejecting claims 1, 2, 9-14, 19-34, and 45-63
is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

alw

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U.S. Patent No. 6,243,254

20

Patent Owner :

Murata Manufacturing Company, LTD
C/O Keating & Bennett, LLP
1800 Alexander Bell Drive
Suite 200
Reston, VA 20191

Third Party Requester :

John Kappos
O‟Meil Veny & Myers LLP
400 S. Hope Street, IP & T Calendar Dept. LA-13-A7
Los Angeles, CA 90071-2899