Ex Parte Tsukizawa et al

Patent Trial and Appeal Board

Jun 28, 2013

10596312 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKAYUKI TSUKIZAWA, TETSUYA IKEDA and
OSAMU CHIKAGAWA
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Appeal 2011-003961
Application 10/596,312
Technology Center 3700
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Before STEVEN D.A. McCARTHY, KEN B. BARRETT and
CARL M. DeFRANCO, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 16-22 under 35 U.S.C. § 102(b) as being 3
anticipated by Sakamoto (US 6,228,196 B1, issued May 8, 2001). Claims 1-4
15 and 26-33 are cancelled. The Examiner has withdrawn claims 23-25 5
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).6

1 The Appellants identify the real party in interest as Murata
Manufacturing Co., Ltd. of Nagaokakyo, Kyoto, Japan.
Appeal 2011-003961
Application 10/596,312

2
We AFFIRM. 1
The claims on appeal relate to a method in which the external terminal 2
electrodes of a chip electronic component such as a capacitor are integrated 3
with the surface electrodes of a ceramic substrate by sintering, without using 4
any bonding material such as solder. (Spec.2, para.0104). In accordance 5
with a preferred embodiment, a chip electronic component having terminal 6
electrodes is mounted on a ceramic body with surface conductors. A 7
ceramic portion of the chip electronic component is sintered before the 8
component is mounted on the ceramic body, as a result of which the 9
component is referred to as including a ceramic sintered compact. (See 10
Spec. 11, para. 0042). The ceramic in the ceramic body is “green,” that is, 11
not sintered or fired, at the time the chip electronic component is mounted 12
onto the ceramic body. 13
When the ceramic green body onto which the chip electronic 14
component is mounted is subsequently fired, the surface electrodes of the 15
ceramic green body and the terminal electrodes of the ceramic sintered 16
compact are sintered so as to be integrated with one another, forming a 17
secure connection between the two sets of electrodes. (See Spec. 12, para. 18
0044). This secure connection is achieved without using any bonding 19
materials. (See Spec. 12, para. 0043). 20

2 The abbreviation “Spec.” as used in this opinion refers to the
Substitute Specification dated June 8, 2006.
Appeal 2011-003961
Application 10/596,312

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ISSUES 1
The Appellants argue claims 16-22 as a group. (App. Br. 8). Sole 2
independent claim 16 is representative: 3
Claim 16: A method for manufacturing a 4
chip electronic component-mounted ceramic 5
substrate, comprising the steps of: 6
mounting a chip electronic component 7
including a ceramic sintered compact defining an 8
element assembly and terminal electrodes on a 9
ceramic green body having conductors thereon 10
such that the terminal electrodes are brought into 11
contact with the corresponding conductors; and 12
firing the ceramic green body having the 13
chip electronic component so as to integrate the 14
conductors on the green ceramic body with the 15
corresponding terminal electrodes of the chip 16
electronic component by sintering. 17
The sole issue in this appeal is: Does Sakamoto describe a method including 18
the steps of mounting a chip electronic component including a ceramic 19
sintered compact on a ceramic green body and then firing the ceramic green 20
body having the chip electronic component? (See, e.g., App. Br. 11; Reply 21
Br. 4-5). Only issues and findings of fact contested by the Appellants have 22
been considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 23
2010). 24
25
FINDINGS OF FACT 26
The record supports the following findings of fact (“FF”) by a 27
preponderance of the evidence. 28
1. Sakamoto anticipates appealed claims 16-22. 29
Appeal 2011-003961
Application 10/596,312

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2. The paragraph at column 8, lines 11-39 of Sakamoto describes 1
a method for manufacturing a chip electronic component-mounted ceramic 2
substrate. In accordance with the method described in Sakamoto, one 3
mounts a chip electronic component including an unsintered compact block 4
defining an element assembly and terminal electrodes in a ceramic green 5
body having conductors thereon such that the terminal electrodes are 6
brought into contact with the corresponding conductors. One then fires the 7
ceramic green body having the chip electronic component so as to integrate 8
the conductors on the green ceramic body with the corresponding terminal 9
electrodes of the chip electronic component by sintering.3 10
3. The paragraph at column 8, lines 11-39 of Sakamoto, 11
considered in isolation, does not describe a method including a step of 12
mounting a chip electronic component including a ceramic sintered compact 13
on a ceramic green body. 14
4. The paragraph at column 10, lines 44-52 of Sakamoto states: 15
Moreover, in these aspects of the present 16
invention, if the passive component is provided as 17
the compact block [that is, the ceramic unsintered 18
compact], since a raw composite compact [that is, 19
the ceramic green body] with the raw compact 20
block buried therein is baked, compared with the 21

3 The Appellants do not appear to argue that Sakamoto fails to
anticipate claim 16 because the ceramic unsintered compact or “compact
block containing raw ceramic material” described by Sakamoto is fitted into
a space in the ceramic green body rather than mounted flush with a surface
of the ceramic green body. In addition, the Appellants do not appear to
argue that Sakamoto fails to anticipate claim 16 because Sakamoto does not
expressly describe bringing terminal electrodes of the compact into contact
with corresponding conductors of the ceramic green body. Any arguments
which the Appellants might have made, but chose not to make, are waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2010).
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Application 10/596,312

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case of baking in the state with a preliminarily 1
baked passive component [that is, a ceramic 2
sintered compact] buried therein, the need of 3
strictly administrating the contraction behavior at 4
the time of baking can be eliminated, and thus the 5
selection range of the material to be used in a 6
ceramic green sheet to be the laminated member 7
can be widened. 8
5. The paragraph at column 10, lines 44-52 of Sakamoto 9
describes, albeit as a negative comparative example, a method identical with 10
that described in the paragraph at column 8, lines 11-39 of Sakamoto except 11
that the method includes the step of mounting a chip electronic component 12
including a ceramic sintered compact on a ceramic green body before firing 13
the ceramic green body having the chip electronic component. In doing so, 14
Sakamoto described, that is, put the public in possession of, the subject 15
matter of claim 16. 16
17
PRINCIPLES OF LAW 18
A reference anticipates a method claim if the reference describes all of 19
the steps of the method arranged as in the claim. See Net MoneyIN Inc. v. 20
VeriSign Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008). The description 21
need only be sufficiently detailed to place one of ordinary skill in the art in 22
possession of the claimed subject matter. In re Spada, 911 F.2d 705, 708 23
(Fed. Cir. 1990) (citations omitted). A reference need not “teach” the 24
subject matter of a claim in order to anticipate the claim. Kalman v. 25
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983), overruled in part 26
on other grounds, SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1125 27
(Fed. Cir. 1985) (en banc). Consequently, a reference may anticipate a 28
claim even if the reference “teaches away” from the subject matter of the 29
Appeal 2011-003961
Application 10/596,312

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claim. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 1
(Fed. Cir. 1998); see also Seachange Int’l, Inc. v. C-Cor, Inc., 413 F.3d 2
1361, 1380 (Fed. Cir. 2005). 3
4
ANALYSIS 5
The negative comparative example described at column 10, lines 44-6
52 of Sakamoto includes each and every limitation of representative claim 7
16, arranged as in the claimed method. (FF 5). Between the paragraphs at 8
column 8, lines 11-39 and column 10, lines 44-52, Sakamoto describes this 9
method in sufficient detail to have placed one of ordinary skill in the art in 10
possession of the method. (Id.) Sakamoto need not have invented or even 11
desired the method of claim 16 in order to anticipate it. The fact that 12
Sakamoto disparages the method of claim 16 and suggests the use of an 13
alternative method fabricating a chip electronic component-mounted 14
ceramic substrate by firing an unsintered compact block mounted on a 15
ceramic green body does not negate the fact that Sakamoto placed one of 16
ordinary skill in the art in possession of the disparaged method. Therefore, 17
we sustain the rejection of claims 16-22 under § 102(b) as being anticipated 18
by Sakamoto. 19
20
DECISION 21
We AFFIRM the Examiner’s decision rejecting claims 16-22. 22
No time period for taking any subsequent action in connection with 23
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). 24
25
AFFIRMED 26
Klh 27