Ex Parte Katsube et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11935854 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/935,854 11/06/2007 Hiroshi Katsube M1071.2061 8708
32172 7590 01/17/2012
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
LAM, CATHY FONG FONG
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
01/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte HIROSHI KATSUBE
and Jun Nishikawa
________________

Appeal 2010-007665
Application 11/935,854
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007665
Application 11/935,854

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A. Introduction1
Hiroshi Katsube and Jun Nishikawa (“Katsube”) timely appeal under
35 U.S.C. § 134(a) from the final rejection2 of claims 1, 2, and 4-7.3 We
have jurisdiction. 35 U.S.C. § 6. We REVERSE, substantially for the
reasons given by Katsube.
The subject matter on appeal relates to electronic devices on which
external electrodes are formed. According to the 854 Specification,
conventional devices, such as capacitors, comprise internal electrodes in a
dielectric matrix that are connected to external electrodes on the surface of
the device. The first layer of the external electrode is said to be formed by
baking a paste of metal and glass particles on the device substrate. (Spec. 2,
1st full para.) One or more layers of metals such as nickel for soldering
wettability (id.) are then formed by electroplating, followed by, e.g., a tin
(id. at 2, 1st full para.) or noble metal layer (id. at 4, 2d & 3d paras).
A problem of “glass scum” is said to arise from the baking of the
conductive paste, in which glass moves to the surface of the baked layer and
precipitates. (Spec. 3, ll. 1-7.) The precipitated glass on the surface is said

1 Application 11/935,854, Electronic Device and Method for Manufacturing
the Same, filed 6 November 2007, as a continuation of an international
application filed 24 May 2006, and claiming the benefit of a Japanese
application filed 3 June 2005. The specification is referred to as the
“854 Specification,” and is cited as “Spec.” The real party in interest is
listed as Murata Manufacturing Co., Ltd. (Appeal Brief,
filed 6 August 2009 (“Br.”), 2.)
2 Office action mailed 17 February 2009 (“Final Rejection”; cited as “FR”).
3 Copending claim 3 has been withdrawn from consideration (FR 1; Br. 3)
and is not before us.
Appeal 2010-007665
Application 11/935,854

3
to lead to plating defects, including an increase in the number of minute
voids in the plated layer. (Id. at para. bridging 4-5.) These defects, in turn,
are said to lead to entry of the plating solution and moisture from the
external environment, and consequent inferior reliability. (Id.)
The claimed invention is said to overcome these problems by first
providing a Cu plating layer on top of a baked Cu-glass paste layer.
(Spec. 6, 3d & 4th full paras.) The Cu-plated layer is then recrystallized,
e.g., by a heat treatment that is sufficient to recrystallize the copper but not
sufficient to soften the glass and cause it to migrate. (Id. at para.
bridging 6-7.) The recrystallization is said to result in a densified Cu layer
that prevents entry of plating solution and moisture from the external
environment. (Id. at para. bridging 7-8.)
Representative Claim 1 reads:
1. An electronic device comprising:
an electronic device main body; and
an external electrode formed on a surface of the
electronic device main body, wherein the external
electrode includes:
a Cu-baked electrode layer primarily composed of Cu;
a recrystallization treated Cu plating layer formed
on the Cu-baked electrode layer;
and
at least one upper-side plating layer formed on the
Cu plating layer.
(Claims App., Br. 9; indentation and emphasis added.)
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Application 11/935,854

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The Examiner maintains the following grounds of rejection:4
A. Claims 1, 2, and 4-7 stand rejected under 35 U.S.C. § 102(b) in
view of Amano.5
B. Claims 1, 2, and 4-7 stand rejected under 35 U.S.C. § 102(b) or
under § 103(a) in view of Hamaji6 or Nakamura.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Katsube argues (Br. 5-6) that the Examiner erred because Amano does
not describe a plating layer that is recrystallized. Rather, in Katsube’s view,
Amano describes a second baked electrode layer that contains inorganic
oxides. (Id. at 6.) Katsube explains that a person skilled in the art would
have understood that the recrystallized plated copper layer would not include
inorganic oxides. (Id.)
The Examiner maintains that Amano teaches that the glass frit can be
present at 0-7 wt%, and that the metal powder can be any of silver,
palladium, platinum or copper. (Ans. 3-4.) Although the Examples use
silver, the Examiner appears to take the position that the limited disclosure,

4 Supplemental Examiner’s Answer mailed 9 October 2009, (“Ans.”).
5 Koshi Amano and Kotaro Ogura, Multilayer Ceramic Chip Capacitor and
a Process for Its Manufacture, U.S. Patent 5,712,758 (1998).
6 Yukio Hamaji et al., Monolithic Ceramic Electronic Component, U.S.
Patent 6,295,196 B1 (2001).
7 Tomoyuki Nakamura et al., Electroconductive Paste, Method of
Producing Monolithic Ceramic Electronic Part, and Monolithic Ceramic
Electronic Part, U.S. Patent 6,606,238 B1 (2003).
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Application 11/935,854

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when glass is not present, provides a description of the recrystallized copper
plated layer recited in claim 1. (Id. at 4, 2d para., citing, inter alia, Amano
col. 5, ll. 3-6 and ll. 10-14.)
Amano teaches that the topcoat 9b is prepared from a paste formed
from an electroconductive metal powder and “unmolten frit containing at
least one of [specified metal oxides] in an amount from more than 0
to 7 wt % (based on the weight of the inorganic components of the paste).”
(Amano col. 5, ll. 9-15; emphasis added.) This passage supports Katsube’s
argument and indicates that the Examiner misapprehended or overlooked the
teaching that the inorganic metal oxide (glass) component is required in the
topcoat, which, the Examiner found, met the recrystallized plated metal layer
required by the claims when there is no glass present.
The rejection in view of Amano is therefore REVERSED.
Regarding the rejections for anticipation or obviousness based on
Hamaji or Nakamura, the Examiner does not dispute Katsube’s criticism
(Br. 7, 1st para.) that neither reference discloses recrystallization of the
plated metal layer. Rather, the Examiner argues that the recrystallization
requirement is a product-by process limitation and that “the fact that the
copper plating layer has been treated has not been shown to make the copper
layer different from that of the prior art.” (Ans. 6.)
The 854 Specification explains, however, that recrystallization
produces a copper layer that is denser than the plated layer and that leads to
fewer defects. (Spec., para. bridging 5-6; para. bridging 7-8.) Moreover, the
examples and comparative examples shown in Table 1 (Spec. 15) and
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Application 11/935,854

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discussed (Spec. 15-16), provide evidence supporting the teachings of
the 854 Specification in this regard. The Examiner has not come forward
with evidence or technical argument that casts doubt on the credibility of the
evidence of record.8
We therefore REVERSE the rejections in view of either Hamaji or
Nakamura.
C. Order
We REVERSE the rejection of claims 1, 2, and 4-7 under
35 U.S.C. § 102(b) in view of Amano.
We REVERSE the rejection of claims 1, 2, and 4-7 under
35 U.S.C. § 102(b) or under § 103(a) in view of Hamaji or Nakamura.
REVERSED

kmm

8 The Examiner relies on teachings of Amano regarding particle sizes of
about 3 μm, required by dependent claim 5, despite not having cited Amano
in the heading of the rejection. However, as discussed supra, Amano does
not cure the defects of Hamaji or Nakamura.