Ex parte CULP

Board of Patent Appeals and Interferences

Feb 11, 1999

08265561 (B.P.A.I. Feb. 11, 1999)

Application for patent filed June 24, 1994. According1
to appellant, this application is a continuation of
Application No. 07/414,176 filed September 28, 1989, now
abandoned; which is a division of Application No. 07/252,197
filed September 30, 1988, now U.S. Patent No. 4,928,030 issued
May 22, 1990.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GORDON W. CULP
____________
Appeal No. 96-2162
Application No. 08/265,5611
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON and KRASS, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2162
Application No. 08/265,561
2
This is a decision on appeal from the final rejection of
claims 4, 6, 7 and 9 through 14, all of the claims pending.
The invention is directed to a piezoelectric actuator.
Appeal No. 96-2162
Application No. 08/265,561
3
Representative independent claim 4 is reproduced as
follows:
4. A piezoelectric actuator capable of providing
independently controllable motion in first and second
angularly disposed planes, comprising:
a first piezoelectric dimorph having a pair of ground
electrodes and an active electrode oriented so as to cause an
electrical potential across said piezoelectric portion and
move said first piezoelectric dimorph in said first plane;
a second piezoelectric dimorph acting in said second
plane angularly with respect to the first plane, and said
second piezoelectric dimorph being in direct physical and
conductive electrical contact with a ground electrode of said
first piezoelectric dimorph; and
means for independently controlling an electric field in
each of said first and said second piezoelectric dimorphs to
produce said independent movement in said first and second
piezoelectric dimorphs.
The examiner relies on the following references:
Heinz 4,202,605 May
13, 1980
Staufenberg, Jr. et al. 4,727,278 Feb. 23,
1988
(Staufenberg)
Claims 4, 6, 7 and 9 through 14 stand rejected under 35
U.S.C. 103 as unpatentable over Heinz in view of Staufenberg.
Appeal No. 96-2162
Application No. 08/265,561
4
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
Appeal No. 96-2162
Application No. 08/265,561
5
OPINION
As the examiner explains, Heinz discloses piezoelectric
devices acting in various modes; however, Heinz fails to
disclose the claimed dimorphs. The examiner relies on
Staufenberg for the teaching of dimorphs employed in a multi-
axes positioning device wherein the dimorphs permit additive
expansion and contraction so that the total movement of an
engaging member is greater than the displacement of a single
piezoelectric plate. The examiner then concludes that it
would have been obvious to employ the dimorph of Staufenberg
in Heinz so that Heinz would have the same advantage, i.e.,
grounded outer electrodes and additive motion for the same
applied voltage, taught by Staufenberg.
In essence, the examiner follows the same reasoning
applied by this Board in our previous decisions of May 6, 1992
and April 26, 1994. That reasoning was bottomed on the use of
dimorphs, as shown in Figure 11 of Staufenberg, for the
piezoelectric tilt and tip actuator wafers 45 and 46 in Figure
2 of Heinz, resulting in stacked dimorphs as required by the
claims.
Appeal No. 96-2162
Application No. 08/265,561
6
However, appellant now argues that such a combination of
the reference teachings would result in a stack of dimorphs
with insulators therebetween, in contradistinction to that
required by the instant claims. While the instant claims do
not recite the negative limitation “without insulation
therebetween,” the claims do require “direct physical and
conductive electrical contact” (independent claims 4 and 12)
or “conductive electrical contact” (independent claim 11).
Therefore, if the double lines between, above and below
elements 45 and 47 in Figure 2 of Heinz are, indeed,
insulators, then it appears that appellant would have a point
that the proposed combination would not result in the claimed
subject matter requiring the dimorphs to have contact
(physical and/or electrical) with each other.
We have considered the declarations of Mr. Gordon W.
Culp, who is also the applicant in the instant case, and we
find that the evidence presented therein would tend to
indicate that the double lines in Heinz must be insulators.
As Mr. Culp explains in detail, at pages 3-4 of exhibit A
appended to the brief, in order to provide for the disclosed
and desired motion of the wafers in Heinz, the adjacent
Appeal No. 96-2162
Application No. 08/265,561
7
surfaces of adjacent wafers will necessarily be biased
oppositely and, therefore, insulation must be provided in
order to isolate the negative lower surface of one wafer from
the positive upper surface of the wafer immediately below it.
Even though Heinz is silent on the character of the
double lines in question, the weight of the evidence provided
by the declarations of Mr. Culp would appear to indicate that
these lines do, in fact, represent insulators. Such evidence,
in view of the lack of any meaningful rebuttal by the examiner
on this point, leads us to conclude that there is no teaching
or suggestion by Heinz of stacking piezoelectric elements so
as to be in contact with each other.
Further, while Staufenberg does teach the use of a
dimorph, there is no teaching or suggestion therein of
stacking such dimorphs in such a manner as to have any
physical or electrically conductive contact therebetween.
Accordingly, other than hindsight, gleaned from appellant’s
own disclosure, the artisan would have had no reason to employ
dimorphs in place of the piezoelectric elements of Heinz and
to eliminate the insulator elements taught therein so as to
result in a stack of dimorphs being in direct physical or
Appeal No. 96-2162
Application No. 08/265,561
8
electrically conductive contact with each other, as required
by the instant claims.
While, in our view, the examiner has presented a prima
facie case of obviousness, the evidence presented by
appellant, in the form of declarations, successfully rebuts
the prima facie case. Accordingly, the examiner’s decision
rejecting claims 4, 6, 7 and 9 through 14 under 35 U.S.C. 103
is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 96-2162
Application No. 08/265,561
9
)
ERROL A. KRASS )
Administrative Patent Judge )
bae
Appeal No. 96-2162
Application No. 08/265,561
10
Harry B. Field
Rocketdyne Patent Dept., FB18
P.O. Box 7922
Canoga Park, CA 91309-7922