www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/807,886
`
`06/21/2022
`
`YUJI MIYACHI
`
`083710-3711
`
`6514
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`FERGUSON,DION
`
`2848
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/01/2024
`
`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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/807 ,886
`MIYACHI etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`DION R FERGUSON
`2848
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 22 January 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1 and 5-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C) Claim(s)
`is/are allowed.
`Claim(s) 1 and 5-14 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 21 June 2022 is/are: a)(¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240130
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 2
`
`DETAILED ACTION
`
`Response to Arguments
`
`1.
`
`Applicant’s arguments with respect to claims 1-14 have been considered but are mootin light of
`
`the new grounds ofrejection set forth below, necessitated by Applicant’s amendments.
`
`2.
`
`Further, in response to Applicant’s argument on pages 9-10 of the response regarding the
`
`proposed combination of JP ‘628 and JP ‘811, the Office notes that Applicant’s comments with respect
`
`to the teachings of JP ‘628 are conclusory, at best, as they are not supported with any actual evidence
`
`from the reference.
`
`In particular, Applicant submits that the anode lead terminal can hold the capacitor
`
`element so that it is less likely to dislodge from the cathode lead terminal. However, this statementis
`
`not supported by any evidenceor citations from JP ‘628 itself. Further, on pages 9-10, Applicant submits
`
`that “connecting of the anode wire to the anode lead terminal and connecting of the cathode layer to the
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`cathode lead terminal can NOT be conducted while positioning of the capacitor element with respect to
`
`the anode lead terminal and the cathode lead terminal can befacilitated.” Again, no evidenceis
`
`provided to supportthis assertion.
`
`3.
`
`Additionally, the Office notes that the block quote from JP ‘811 found on page 10 of the
`
`responserelates to the connections between the cathode portion of a conventional solid electrolytic
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`capacitor and the cathode terminal. Nothing in this quote relates to the anode lead terminal and why
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`one of ordinary skill in the art would not consider changing the side of the anode lead to which the
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`terminal is attached, as argued by Applicant. JP ‘628 and JP ‘811 havesimilar structures for securing the
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`capacitor element, and particularly, the cathode portion of the capacitor element. That they use
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`different ways to secure the anode portion of the capacitor element can be considered evidencethatit
`
`is a design choice as to how to locate the anode lead terminal connection to the anode lead.
`
`4.
`
`Based on the above, the Applicant’s arguments that one of ordinary skill in the art would not be
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`motivated to combine JP ‘628 and JP 811 are not persuasive.
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 3
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`Claim Rejections - 35 USC § 103
`
`2.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
`
`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, if the differences between the claimed invention
`and the prior art are such that the claimed invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`4.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
`
`1.
`
`Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`5.
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat the subject matter of the various claims was commonly ownedas of the
`
`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
`
`of the obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 4
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`to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
`
`against the later invention.
`
`6.
`
`Claims 1 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 58-193628
`
`(submitted as part of an IDS dated 21 June 2022) in view of Gotoetal. (US Pat. App. Pub. No.
`
`2008/0158783).
`
`7.
`
`With respect to claim 1, JP ‘628 discloses an electrolytic capacitor comprising: a capacitor
`
`element including an anode part and a cathode part (see FIG. 3, elements 1 and 3); an anode lead
`
`electrically connected to the anode part (see FIG. 3, element 4), a cathode lead terminal electrically
`
`connected to the cathode part (see FIG. 3, element 5); and an exterior body covering the capacitor
`
`element so that a part of the cathode lead terminal is exposed (see FIG. 3, element 8), wherein:, the
`
`capacitor element has a first main surface, a second main surface, and a third main surface, the second
`
`main surface sharing one side with the first main surface, the third main surface sharing one side with
`
`the first main surface and being located opposite to the second main surface (see FIG. 3), the cathode
`
`lead terminal includesa first cathode lead part (see FIG. 4, portion 5a), a second cathode lead part bent
`
`from the first cathode lead part at a first bent part (see FIG. 4), a third cathode lead part bent from the
`
`second cathode lead part(see FIG. 4), and a fourth cathode lead part bent from the first cathode lead
`
`part at a location different from the first bent part (see FIG. 4, element 7a), the first cathode lead part
`
`faces the first main surface of the capacitor element and is electrically connected to the cathode layer
`
`(see FIG. 3, element 5a), the second cathode lead part extendsin a direction along a surface intersecting
`
`with any of the first main surface, the second main surface, and the third main surface (see FIG. 3), the
`
`third cathode lead part extends in a direction along the first main surface to be exposed from the
`
`exterior body, and further bends to extend along an outer surface of the exterior body (see FIG. 3), the
`
`fourth cathode lead part extends along the second main surface, in a normal direction of the first main
`
`surface (see FIG. 4), a height h of the fourth cathode lead part is less than or equal to a height H from
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 5
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`the first cathode lead part to a portion of the third cathode lead part that is not exposed from the
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`exterior body (see FIG. 4), the anode part includes an anode body(see FIG. 3, element 1) and an anode
`
`wire (see FIG. 3, element 2) extending from the anode body, the anode wire being electrically connected
`
`to the anode lead terminal (see FIG. 3), in a normal direction of the first main surface, the height h of the
`
`fourth cathode lead part is less than a height H2 from the first cathode lead part to the anode wire (see
`
`FIG. 3, where the fourth cathode portion is shown with a broken hidden line to be less than a height
`
`defined as H2), and the first connecting surface being connected to the anode wire, the second
`
`connecting surface being connected to the cathode layer (see FIG. 3).
`
`8.
`
`JP ‘628 fails to explicitly disclose that the cathode part includesa solid electrolyte layer
`
`containing a conductive polymer and a cathodelayer covering the solid electrolyte layer, a first
`
`connecting surface of the anode lead terminal and a second connecting surface of the first cathode lead
`
`part face to the same direction.
`
`9.
`
`Goto, on the other hand, teachesa solid electrolyte layer containing a conductive polymer and a
`
`cathode layer covering the solid electrolyte layer, a first connecting surface of the anode lead terminal
`
`and a second connecting surface of the first cathode lead part face to the same direction. See paragraph
`
`[0021], elements 3, 4, and 5, citing a conductive polymer covered by a carbon and silver layer, and
`
`further, FIG. 1, noting that the connecting surface of the anode lead terminal 20 and the connecting
`
`surface of the cathode lead part 21 face the same direction. Such an arrangementresults in a capacitor
`
`having superior ESR characteristics, superior heat resistance, and improved leakage current
`
`characteristics. See abstract and paragraphs [0015], [0017].
`
`10.
`
`Accordingly, it would have been obvious to one of ordinaryskill in the art, at the time of
`
`application, to modify JP ‘628, as taught by Goto, in order to improve ESR, heat resistance, and leakage
`
`current characteristics.
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 6
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`11.
`
`With respect to claim 11, the combined teachings of JP ‘628 and Goto teach that the cathode
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`lead terminal further includesa fifth cathode lead part bent from the first cathode lead part at a location
`
`different from the first bent part, the fifth cathode lead part extends along the third main surface, and in
`
`a normal direction of the first main surface, a height of the fifth cathode lead part is less than or equal to
`
`the height H. See JP ‘628, FIG. 4.
`
`12.
`
`With respect to claim 12, the combined teachings of JP ‘628 and Goto teach that the third
`
`cathode lead part has an exposed portion that is exposed from the exterior body, the exposed portion
`
`being bent in a direction going awayfrom thefirst main surface and further being bent and extending
`
`along the exterior body. See JP ‘628, FIGS. 3 and 4.
`
`13.
`
`With respect to claim 13, the combined teachingsof JP ‘628 and Goto teach that that the anode
`
`lead terminal includesa first anode lead part extending in a direction along the first main surface and a
`
`second anode lead part bent from the first anode lead part, the first anode lead part is in contact with
`
`the anode wire, the second anode lead part is exposed from the exterior body and extends along the
`
`outer surface of the exterior body, and the first anode lead partis flush with a portion of the third
`
`cathode lead part that is not exposed from the exterior body. See JP ‘628, FIG. 3.
`
`14.
`
`With respect to claim 14, the combined teachings of JP ‘628 and Gotofail to explicitly teach that
`
`the height h is less than or equal to 1/3 of the height H.
`
`15.
`
`However, the Office notes that the ratio of height h to height H recited in claim 14 is a design
`
`choice that is merely a changein the size/proportion from what is shownin the prior art. Such a change
`
`in size/proportion has been determined to well within the purview of an obvious modification to one of
`
`ordinary skill in the art. See MPEP 2144(IV)(A), citing In re Rose, 220 F.3e 459, 105 USPQ 237 (CCPA
`
`1958). Further, the Office notes that the instant specification provides no criticality in the height h being
`
`less than or equal to 1/3 of the height H. At best, the instant specification showsa criticality for the
`
`height h to be less than height H. See paragraphs [0021]-[0022] of the instant specification. The
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 7
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`recitations of 1/2, 1/3, or 1/4 of the height H are simply design choices that might satisfy the criticality
`
`noted in paragraphs [0021]-[0022].
`
`16.
`
`Claims 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 58-193628 in view
`
`of Goto etal. (US Pat. App. Pub. No. 2008/0158783), and further, in view of JP 58-115811.
`
`17.
`
`With respect to claim 5, the combined teachingsof JP ‘628 and Gotofail to explicitly teach that
`
`the fourth cathode lead part extends along the second main surface of the capacitor element while
`
`being away from the second main surface.
`
`18.
`
`JP ‘811, on the other hand, teaches that the fourth cathode lead part extends along the second
`
`main surface of the capacitor element while being away from the second main surface. See FIG. 1B.
`
`Such an arrangement results in the ability to fix the capacitor element between the flange parts 8b using
`
`an adhesive. See page 4 of the translation submitted with the IDS filed 21 June 2022.
`
`19.
`
`Accordingly, it would have been obvious to one of ordinaryskill in the art, at the time of
`
`application, to modify JP ‘628 as taught by JP ‘611 in order to fix the capacitor element between the
`
`flange parts using an adhesive.
`
`20.
`
`With respect to claim 6, the combined teachings of JP ‘628, Goto, and JP ‘611 teach that a
`
`constituent material of the exterior bodyis disposed in a gap between the second main surface and the
`
`fourth cathode lead part. See JP ‘611, FIG. 2(B), noting that the adhesive 6 doesnotfill the entirety of
`
`the space between the flange parts 8b and the capacitor element 2, and as such, these gaps would be
`
`filled by the resin of the exterior body; see also, FIG. 4(B), wherein the resin would fill the space
`
`between the ends of the flange portions and the capacitor body.
`
`21.
`
`With respect to claim 7, the combined teachingsof JP ‘628 and JP ‘611 teach that the cathode
`
`partis electrically connected to the first cathode lead part via a conductive adhesive disposed between
`
`the first main surface and the first cathode lead part, and the conductive adhesiveis further disposed in
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 8
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`the gap between the second main surface and the fourth cathode lead part. See JP ‘611, FIGS. 2(B) and
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`4(B), conductive adhesive 6.
`
`22.
`
`With respect to claim 8, the combined teachingsof JP ‘628 and JP ‘611 teach that the conductive
`
`adhesive disposedin the gap is not present in a region higher than the fourth cathode lead part with
`
`respectto the first main surface. See JP ‘611, FIGS. 2(B) and 4(B).
`
`23.
`
`With respect to claim 9, the combined teachingsof JP ‘628 and JP ‘611 teach that the height h of
`
`the fourth cathode lead part is greater than a thickness of the conductive adhesive disposed between
`
`the first cathode lead part and the first main surface. See JP ‘611, FIGS. 2(B) and 4(B).
`
`24.
`
`With respect to claim 10, the combined teachings of JP ‘628 and JP ‘611 teach that a constituent
`
`material of the exterior bodyis filled in a region in the gap between the fourth cathode lead part and
`
`the second main surface, the region not beingfilled with the conductive adhesive. See JP ‘611, FIG. 2(B),
`
`noting that the adhesive 6 doesnotfill the entirety of the space between the flange parts 8b and the
`
`capacitor element 2, and as such, these gaps would befilled by the resin of the exterior body; see also,
`
`FIG. 4(B), wherein the resin would fill the space between the ends of the flange portions and the
`
`capacitor body.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
`
`extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
`
`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing
`
`

`

`Application/Control Number: 17/807,886
`Art Unit: 2848
`
`Page 9
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHS from the dateof this final action.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to DION R FERGUSON whosetelephone number is (571)270-7566. The examiner can
`
`normally be reached Monday-Friday, 5:30 a.m. - 4:00 p.m..
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Timothy Dole can be reached on 571-272-2229. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`571-272-1000.
`
`/DION R. FERGUSON/
`Primary Examiner, Art Unit 2848
`
`