Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Sep 1, 2020

2019005534 (P.T.A.B. Sep. 1, 2020)

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.
14/988,800 01/06/2016 Yasuaki KAINUMA 36856.3447 9348
54066 7590 09/01/2020
MURATA MANUFACTURING COMPANY, LTD.
C/O KEATING & BENNETT, LLP
1800 ALEXANDER BELL DRIVE
SUITE 200
RESTON, VA 20191
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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 YASUAKI KAINUMA, SEIJI KATSUTA, and
AKIHIRO MOTOKI
____________

Appeal 2019-005534
Application 14/988,800
Technology Center 2800
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–4, 7–13, 16, and 17.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 This Decision refers to the Specification filed Jan. 6, 2016 (“Spec.”); Final
Office Action dated Oct. 10, 2018 (“Final Act.”); Advisory Action dated
Jan. 18, 2019 (“Advisory Act.”); Appeal Brief filed Apr. 4, 2019 (“Appeal
Br.”); Examiner’s Answer dated May 16, 2019 (“Ans.”); and Reply Brief
filed July 12, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Murata Manufacturing Co., Ltd. as the
real party in interest. Appeal Br. 2.
3 Claims 5, 6, 14, and 15 are canceled. Appeal Br. 22, 23.
Appeal 2019-005534
Application 14/988,800

2
CLAIMED SUBJECT MATTER
The invention relates to an electronic component, which includes an
electronic component body and an external electrode, and an electronic
component-mounted structure. Spec. ¶ 1, Abstract. Claim 1 illustrates the
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
1. A multilayer ceramic capacitor comprising:
An electronic component body including first and second
principal surfaces extending along a length direction and a width
direction, first and second lateral surfaces extending along a
thickness direction and the length direction, and first and second
end surfaces extending along the thickness direction and the
width direction;
a plurality of internal electrodes provided inside of the
electronic component body; and
an external electrode disposed on each of the first and the
second end surfaces of the electronic component body, the
external electrodes being electrically connected to the plurality
of internal electrodes on the first and the second end surfaces;
wherein
the external electrodes each include:
a Pd plating layer that defines an outermost layer;
a Ni plating layer disposed inside the Pd plating
layer; and
a fired electrode layer that includes a glass
component and a metal, is disposed on the electronic component
body, and is disposed inside the Ni plating layer; and
the Ni plating layer is partially exposed through the Pd
plating layer.
Appeal Br. 21 (key disputed claim language italicized and bolded)
Appeal 2019-005534
Application 14/988,800

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REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Andoh US 2010/0258954 A1 Oct. 14, 2010
Owaki US 2011/0018943 Al Jan. 27, 2011
Taniguchi et al.
(“Taniguchi”)
US 2012/0007709 Al Jan. 12, 2012
Shimizu et al.
(“Shimizu”)
US 2016/0073515 Al Mar. 10, 2016
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–3, 7, and 8 are rejected under 35 U.S.C. § 103 as
being unpatentable over Taniguchi in view of Andoh (“Rejection 1”). Final
Act. 3.
2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Taniguchi in view of Andoh as applied to claim 1 and further in view of
Shimizu (“Rejection 2”). Final Act. 7.
3. Claims 9–12, 16, and 17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Taniguchi in view of Andoh as applied to claim 1
and further in view of Owaki (“Rejection 3”). Final Act. 7.
4. Claim 13 is rejected under 35 U.S.C. § 103 as being
unpatentable over Taniguchi in view of Andoh and Owaki as applied to
claim 9 and further in view of Shimizu (“Rejection 4”). Final Act. 11.

Appeal 2019-005534
Application 14/988,800

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OPINION
Rejection 1
The Examiner determines that the combination of Taniguchi and
Andoh suggests an electronic component satisfying the limitations of claim
1 and concludes the combination would have rendered the claim obvious.
Final Act. 3–4. Regarding “the Ni plating layer is partially exposed through
the Pd plating layer” recitation of claim 1, the Examiner relies on Andoh. Id.
at 4. In particular, the Examiner finds that Andoh discloses an electrode
structure having a Ni layer that is partially exposed from the Pd layer via
pinholes in the Pd layer. Id. at 4 (citing Andoh, Figs. 1, 5, ¶¶ 1, 71, 72).
Based on the above findings, the Examiner concludes
[i]t would have been obvious, to a person of ordinary skill,
before the effective filing date of the claimed invention, to
have considered Andoh’s pinholes in the Pd layer with
Taniguchi’s capacitor since Andoh teaches that it was
known that pinholes exist in a Pd plating layer which
partially exposes the Ni plating layer through the Pd
plating layer.
Id. at 4. The Examiner further finds that “a person of ordinary skill in the art
would have reasonably predicted that Ni would be exposed from
Taniguchi’s Ni layer 5 through Taniguchi’s Pd layer 6 via a pinhole, caused
by oxidation and diffusion.” Ans. 9 (citing Andoh ¶¶ 6, 7, 69).
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner fails to provide an adequate reason or motivation to
explain why one of ordinary skill in the art would have modified
Taniguchi’s electronic component to include a Ni plating layer that is
partially exposed via a pinhole through the Pd plating layer.
Appeal Br. 13–14 (arguing “the Examiner has failed to provide any reason
Appeal 2019-005534
Application 14/988,800

5
or motivation for why one having ordinary skill in the art would have
provided a pin hole in the alleged Pd plating layer 6 of Taniguchi”); see also
Reply Br. 15 (same).
The weight of the evidence supports Appellant’s argument. On the
record before us, we are not persuaded the Examiner provides the requisite
factual basis or technical reasoning sufficient to support a conclusion that it
would have been obvious to one of ordinary skill in the art to combine the
teachings of Taniguchi and Andoh to arrive at the claimed multilayer
ceramic capacitor. In particular, we are not persuaded the Examiner
identifies persuasive evidence or provides an adequate technical reason to
explain why one of ordinary skill in the art would have had reason to modify
Taniguchi’s electronic component to include pinholes such that “the Ni
plating layer is partially exposed through the Pd plating layer,” as recited in
the claim. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(requiring “reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
The Examiner’s comments at pages 8–9 of the Answer and pages 3–4
of the Final Office Action are not persuasive and do not adequately support
the Examiner’s conclusion of obviousness. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (holding the examiner bears the initial burden of
establishing a prima facie case of obviousness). Although paragraphs 71 and
72 of Andoh disclose that Au is deposited in proximity with the interface
between P-distributed Pd layer 242 and Ni layer 241 via a pinhole in the
P-distributed Pd layer and that the layer of Au deposited “can be observed,”
and paragraph 69 of Andoh mentions the “existence of a slight amount of
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Application 14/988,800

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Ni” on the surface of the Au layer, the Examiner does not identify or direct
us to any specific description or discussion in those paragraphs or elsewhere
in the record sufficient to explain how or why one of ordinary skill in the art
would have modified Taniguchi’s component to include a pinhole in its Pd
layer (electrode layer 6). The fact that paragraphs 6 and 7 of Andoh describe
an embodiment of an electrode having a Pd layer (layer 942) and a Ni layer
(layer 941) where the Ni is diffused through the Pd layer, without more, does
not suggest or explain why one of ordinary skill in the art would have had
reason to modify Taniguchi’s electrode layer 6 to include any pinholes
through which Taniguchi’s Ni layer (electrode layer 5) is partially exposed.
The Examiner’s assertions that “it was known that pinholes exist in a
Pd plating layer which partially exposes the Ni plating layer through the Pd
plating layer” (Final Act. 4) and “a person of ordinary skill in the art would
have reasonably predicted that Ni would be exposed from Taniguchi’s Ni
layer 5 through Taniguchi’s Pd layer 6 via pinhole” (Ans. 9) are not
persuasive and do not adequately support the Examiner’s obviousness
conclusion because they do not meaningfully address Appellant’s principal
argument that the Examiner’s rejection fails to adequately explain why one
of ordinary skill in the art would have had any reason or motivation to
modify Taniguchi’s electrode layer 6 to include any pinholes, as the
Examiner contends.
Contrary to what the Examiner’s rejection seems to imply, the fact
that it may have been known or technically possible to modify Taniguchi’s
electrode layer 6 to include pinholes that would partially expose Taniguchi’s
electrode layer 5, without more, does not necessarily mean or suggest it
would have been obvious to one of ordinary skill in the art to do so. See
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Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”).
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claims 2, 3, 7, and 8 depend from claim 1, we also do not sustain
the Examiner’s rejection of those claims.
Accordingly, we reverse the Examiner’s rejection of claims 1–3, 7,
and 8 under 35 U.S.C. § 103 as obvious over Taniguchi and Andoh.
Rejections 2, 3, and 4
The Examiner rejects claim 4 under § 103 as obvious over Taniguchi,
Andoh, and Shimizu (Rejection 2); claims 9–12, 16, and 17 under § 103 as
obvious over Taniguchi, Andoh, and Owaki (Rejection 3); and claim 13
under § 103 as obvious over Taniguchi, Andoh, Owaki, and Shimizu
(Rejection 4). Final Act. 7–12. The foregoing deficiencies, however, in the
Examiner’s analysis and findings regarding claim 1 and reasoning for
combining Taniguchi and Andoh in Rejection 1 are not remedied by the
Examiner’s findings regarding the additional references and combination of
references the Examiner cites in support of the second, third, and fourth
grounds of rejection.
Thus, for principally the same reasons we discuss above for reversing
the Examiner’s Rejection 1, we reverse the Examiner’s rejections of claim 4
under 35 U.S.C. § 103 as obvious over Taniguchi, Andoh, and Shimizu
(Rejection 2); claims 9–12, 16, and 17 under 35 U.S.C. § 103 as obvious
over Taniguchi, Andoh, and Owaki (Rejection 3); and claim 13 under 35
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Application 14/988,800

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U.S.C. § 103 as obvious over Taniguchi, Andoh, Owaki, and Shimizu
(Rejection 4).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7, 8 103 Taniguchi, Andoh 1–3, 7, 8
4 103 Taniguchi, Andoh,
Shimizu
4
9–12, 16, 17 103 Taniguchi, Andoh,
Owaki
9–12, 16,
17
13 103 Taniguchi, Andoh,
Owaki, Shimizu
13
Overall
Outcome
1–4, 7–13,
16, 17

REVERSED