Ex Parte Ichikawa et al

Patent Trial and Appeal Board

Feb 26, 2019

14254973 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/254,973 04/17/2014
38485 7590
ARENT FOX LLP
1301 Avenue of the Americas
Floor42
NEW YORK, NY 10019
02/28/2019
FIRST NAMED INVENTOR
Tomomichi Ichikawa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
036433.03345 9739
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOMICHI ICHIKAWA, NORIHIRO
YOSHIKAWA, ICHIRO NAKAMURA, SHINICHI
KOBAYASHI, ICHIRO NAKASO, Y ASUNORI HI OKI,
and TOMOKI INAKURA
Appeal2017-005881
Application 14/254,973
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Murata Manufacturing Co., LTD) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1--4, 6-18, 20,
and 21. We have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The claims are to a dielectric resin composition and a film capacitor
comprising the composition. Claim 1 is illustrative:
1. A dielectric resin composition for a film capacitor,
the dielectric resin composition comprising:
Appeal2017-005881
Application 14/254,973
a cured mixture containing a first organic material and
a second organic material, wherein
the first organic material includes at least two kinds of
organic material components, each having reactive groups
that cross-link with each other;
the second organic material does not have a reactive
site that reacts with the first organic material and has a
dielectric loss tan8 of 0.3% or less at a temperature of I25°C;
and
the mixture has a glass transition temperature of I30°C
or higher,
the first organic material is a thermosetting resin,
the second organic material is a thermoplastic resin,
and
the first organic material and the second organic
material are soluble in a common organic solvent.
Ichikawa1
Zhang
The References
WO 2010/114087 Al
US 2011/0110015 Al
The Rejection
Oct. 7, 2010
May 12, 2011
Claims 1--4, 6-18, 20, and 21 stand rejected under 35 U.S.C. § I03(a)
over Ichikawa in view of Zhang.
OPINION
We reverse the rejection.
Ichikawa discloses a cured dielectric resin composition which is for a
film capacitor and is made by mixing and crosslinking two or more organic
materials containing at least first and second organic materials having
functional groups that react with each other (i-f 14).
1 Citations herein to Ichikawa are to US 2012/0008250 Al (published
Jan. 12, 2012) which the Examiner relies upon as an English language
equivalent of WO 2010/114087 Al (Ans. 2).
2
Appeal2017-005881
Application 14/254,973
Zhang discloses a capacitor comprising a multilayer dielectric film
having one or more high energy density layers alternating with one or more
blocking layers (i1i1 8, 9). Each high energy density layer is a polymer
having a discharged electric energy density higher than 10 J/cm3 and
optionally a discharge time faster than 10 milliseconds (i-f 10). Each
blocking layer is a dielectric material having an electric resistivity higher
than 1015 Q·cm and a dielectric loss less than 5% (i-f 11).
Setting forth a prima facie case of obviousness requires establishing
that one of ordinary skill in the art would have had an apparent reason to
modify the prior art as proposed by the Examiner. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner finds that "[ o ]ne skilled in the art would have been
motivated to have added [Zhang's] polycarbonate or polysulfone [blocking
layer material] to the composition of Ishikawa since they can be used to
reduce the conduction loss or leakage current and allows losses to be
reduced for film capacitor applications, increasing efficiency of operation,
and lowering wasted energy and heat generation ([0072] Zhang)" (Ans. 3).
Those are benefits of Zhang' s blocking layer materials used with
alternating high energy density layers (i-f 72). The Examiner does not
establish that one of ordinary skill in the art would have been led by Zhang' s
disclosure of those benefits to mix Zhang' s blocking layer material with
Ichikawa's dielectric resin composition.
The Examiner finds that "Zhang teaches it is desirable to have a
capacitor with a combination of electrical properties, such as high electric
energy density and low dielectric loss ([0005] Zhang). Given that both
Ichikawa and Zhang are directed to dielectric film capacitors, it would be
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Appeal2017-005881
Application 14/254,973
reasonable to determine that a combination of electrical properties, such as
high electric energy density and low dielectric loss, would be desirable in
Ichikawa as well" (Ans. 8).
Zhang' s combination of electrical properties is provided by separate
high energy density layers and blocking layers. The Examiner's finding that
"it would be reasonable to determine that a combination of electrical
properties, such as high electric energy density and low dielectric loss,
would be desirable in Ichikawa" (Ans. 8) does not establish that the applied
references would have provided one of ordinary skill in the art with an
apparent reason to mix Zhang's blocking layer with Ichikawa's dielectric
resin composition.
Thus, the record indicates that the Examiner's rejection is based upon
impermissible hindsight in view of the Appellant's disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("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.").
Accordingly, we reverse the rejection.
DECISION
The rejection of claims 1--4, 6-18, 20, and 21 under 35 U.S.C. § 103(a)
over Ichikawa in view of Zhang is reversed.
The Examiner's decision is reversed.
REVERSED
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