Ex Parte Clements

Board of Patent Appeals and Interferences

Oct 29, 2007

10449351 (B.P.A.I. Oct. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEN CLEMENTS
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Appeal 2007-1334
Application 10/449,351
Technology Center 3700
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Decided: October 29, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 1-5. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appellant claims a method and apparatus for driving a shape memory
alloy actuator.
Representative method claim 1 and apparatus claim 5 read as follows:
Appeal 2007-1334
Application 10/449,351

1. A method for driving a shape memory alloy actuator, including the
steps of:

pre-straining a shape memory alloy in its low-temperature state to
produce a shape memory actuator;

subsequently, heating the shape memory alloy actuator above its
phase transformation temperature using a focused beam so as to cause a first
portion of the shape memory alloy actuator to move relative to a second
portion; and

observing movement of the actuator using the focused beam.

5. An apparatus for driving a shape memory alloy actuator, including:

a shape memory alloy actuator having at least one protrusion
extending therefrom;

means for pre-straining shape memory actuator, by displacing the
protrusion in its low-temperature state:

a scanning microscope for receiving the pre-strained shape memory
actuator therein;

a focused beam directed at a point near the displacement for heating
the shape memory alloy actuator and thereby causing the temperature to rise
above its phase transformation temperature and the shape memory alloy
actuator to move as it returns to its earlier position; and

wherein movement of the shape memory actuator is observed using
the focused beam in the scanning microscope.

Claim 5 of the following patent is relied upon by the Examiner in the
obviousness-type double patenting rejection before us:
Clements 6,588,208 B1 Jul. 8, 2003

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Appeal 2007-1334
Application 10/449,351

Claims 1-5 are rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claim 5 of the
US Patent No. 6,588,208 to Clements.
The Examiner states that, "[e]ven though the phrase 'observing the
movement' is not in claim 5 of the patent, it's well known and inherent that
using the scanning microscope includes the observing step [of appealed
claim 1]" (Answer 4).
Appellant argues that the observing feature of the appealed claims is
not expressly or inherently taught and would not have been suggested by
claim 5 of the Clements patent (Appeal Br. 9; Reply Br. 8).
Concerning appealed apparatus claim 5, we find that the structure
defined by this claim is indistinguishable from the apparatus structure
required for practicing the method of patent claim 5.1 For example,
appealed claim 5 and patent claim 5 both require a scanning microscope.
As for the appealed claim 5 language "wherein movement of the
shape memory actuator is observed using the focused beam and the scanning
microscope," this language constitutes only a statement of intended use.
Therefore, the language is satisfied by patent claim 5 if the scanning
microscope required thereby is necessarily and inherently capable of serving
the observation function of this language. See In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Because this observing function is served by the scanning microscope
of appealed claim 5, we determine that the scanning microscope of patent

1 Likewise, the structure of appealed apparatus claim 5 is indistinguishable
from the structure of patent apparatus claim 7.
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Appeal 2007-1334
Application 10/449,351

claim 5 necessarily is capable of serving this function. Under these
circumstances, it is Appellant's burden to prove that the scanning
microscope of patent claim 5 does not actually possess the capability of
serving the function under review. See In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977). On this record, Appellant has
presented no such proof.
For the above stated reasons, we hereby sustain the obviousness-type
double patenting rejection of appealed claim 5 over claim 5 of the Clement
patent.
We reach a different result for the rejection of appealed method
claims 1-4. These claims require the step "observing movement of the
actuator using the focused beam" (claim 1). This step is not practiced or
satisfied simply because the scanning microscope of patent claim 5 is
capable of being used to observe actuator movement. This capability in no
way establishes that the patent claim 5 scanning microscope is actually used
for this observation purpose. In fact, there is nothing in patent claim 5
which teaches or would have suggested using the scanning microscope
thereof for observing movement as required by appealed claim 1.
It follows that we cannot sustain the obviousness-type double
patenting rejection of appealed method claims 1-4 over patent claim 5.
The decision of the Examiner is affirmed-in-part.

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Appeal 2007-1334
Application 10/449,351

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(vi)(effective Sept.
13, 2004).
AFFIRMED-IN-PART

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