Ex parte Downs

Board of Patent Appeals and Interferences

Nov 19, 1997

08136856 (B.P.A.I. Nov. 19, 1997)

Application for patent filed October 18, 1993.1
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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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD F. DOWNS JR.
____________
Appeal No. 95-3273
Application 08/136,8561
____________
ON BRIEF
____________
Before HAIRSTON, MARTIN and LEE, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner's rejections of claims 1-11, all of the pending
claims, over prior art. The final Office action (paper No. 6)
included a number of grounds of rejection, of which only the
rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
Appeal No. 95-3273
Application 08/136,856
The grounds of rejection which were not repeated in the2
Answer, i.e., the rejections based on D'Hoog Patent 3,941,932,
Takeuchi et al. Patent 5,210,455, Dewberry et al. Patent
4,013,992, are treated as withdrawn.
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Geil et al. Patent 4,833,659 is repeated in the Answer. In2
addition to maintaining the rejection based on Geil et al., the
Answer added new grounds of rejection based on Rokurota Patent
4,747,192.
The invention is a piezoelectric microphone structure.
Claim 1, which is one of three independent claims on appeal
(claims 10 and 11 are the others), reads as follows:
1. A surface-laminated piezoelectric-
film sound transducer, comprising:
A. a thin film of piezoelectric material having two
opposite faces,
B. two thin films of conductive
material, one of said films of
conductive material being affixed to one
of said two opposite faces and another
of said films of conductive material
being affixed to another of said two
opposite faces, thereby forming a
piezoelectric sandwich element with the
thin film of piezoelectric material in
the middle and the two thin films of
conductive material on the outside,
C. a solid, flat, substantially
inflexible substrate laminated to the
piezoelectric sandwich element along
substantially the entire surface of one
of the two conductive layers, and
Appeal No. 95-3273
Application 08/136,856
Copies of these definitions are enclosed with this decision. 3
Our reliance on these definitions from standard reference works
does not constitute a new ground of rejection. See In re Boon,
439 F.2d 727-28, 169 USPQ 231, 234 (CCPA 1971).
Geil uses PVF as an abbreviation for polyvinylidene fluoride,4 2
which appellant abbreviates as "PVDF."
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D. two connecting conductors connected
to the two films of conductive material
for conducting an electrical signal
between the piezoelectric sandwich
element and some external point.
The references relied by the examiner are:
Rokurota 4,747,192 May 31, 1988
Geil et al. (Geil) 4,833,659 May 23, 1989
As explained below, we are relying on definitions of
"film" from the following dictionaries with respect to the
rejection based on Rokurota:3
(a) McGraw-Hill Electronics Dictionary 208 (1994 ed.)
(b) IEEE Standard Dictionary of Electrical and
Electronics Terms 219 (1972 ed.)
A. The rejection based on Geil
Claim 1 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Geil. The examiner reads claim 1 on the reference
as follows (final Office action at 2-3):
Geil discloses in Figs. 5 and 6, a surface-
laminated piezoelectric-film transducer, comprising: a
thin film of piezoelectric material (PVF ) , two thin2 [4]
films of conductive material (28 and 29 or copper foil
Appeal No. 95-3273
Application 08/136,856
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electrodes) forming a sandwich element; a solid, flat,
inflexible substrate laminated to the piezoelectric
sandwich element (substrate 20 containing aluminum
layers 34 and 35 with damping layer therebetween)
substantially the entire surface of one of the two
conductive layers; and two connecting connectors (91
and 92, see Fig. 12A-12C).
The only point in dispute is whether Geil's substrate
20 satisfies the requirement of claim 1 (and claims 10 and 11)
that the substrate be "substantially inflexible." Appellant
argues (Brief at 12) that this term precludes the ability to be
bent to conform to the curve of a boat hull, as shown in Geil's
Figure 8, or the ability to bend in response to incident acoustic
energy, as is the case with Geil's substrate (col. 4, lines 64-
68). We do not agree. The term "substantially inflexible" is
not defined in appellant's specification and therefore must be
given the broadest reasonable interpretation consistent with
appellant's disclosure. In re Zletz, 893 F.2d 319, 321,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (citing In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969)). The
only disclosed example of a material suitable for use as the
substrate is "a piece of printed circuit board material" (Spec.
at 6, lines 16-18), whose material, thickness, and degree of
stiffness are not disclosed. However, the specification states
that "[t]he microphone can be molded into different shapes since
Appeal No. 95-3273
Application 08/136,856
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it is a film and can be built into the head liner of a helmet,
hat or sweat band" (Spec. at 8, lines 10-12), which suggests that
the substrate is flexible enough to be bent to conform to the
curve of a head liner, which would appear to be curved at least
as much as the boat hull shown in Geil's Figure 8. Furthermore,
the invention is described as an improvement over prior art
piezoelectric microphones which employ a piezoelectric film
membrane stretched tight between two or more stretching points to
form a vibrating piezoelectric diaphragm (Spec. at 2, lines 7-
12). More particularly, the specification explains that
[b]ecause there is no necessity of a vibrating
diaphragm with the present invention, the PVDF sandwich
element is preferably firmly affixed to a firm, flat,
substantially non-vibrating substrate to form a mounted
PVDF sandwich element. [Emphasis added.] [Spec. at 3,
line 17.]
Consequently, we believe the artisan would have understood the
term "substantially inflexible" as used in claim 1 (and claims 10
and 11) to mean substantially incapable of vibrating in the
manner of a diaphragm. This conclusion is also consistent with
appellant's description of his invention as operating in only a
compression mode (Brief at 3):
Applicant has found that he can use the much smaller
signal which results from mere compression of the
sandwich to produce a signal which is at least as good
as and possibly better than those produced from flexing
the sandwich in a diaphragm, because in the compression
Appeal No. 95-3273
Application 08/136,856
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mode, the sound which affects the electrical output can
be effectively limited to that within a pressure field
or in which the microphone is in direct contact with
some physical body (more substantial than open air)
through which the sound is being carried.
Geil's piezoelectric device is likewise designed to operate
essentially in the compression mode. Unwanted signals due to
lateral elongation of the piezoelectric polymer film are reduced
by using a steel substrate having a Young's modulus at least an
order of magnitude greater than that of the piezoelectric polymer
material (col. 6, lines 10-25). Unwanted signals due to bending
and acceleration are reduced by appropriate selection of the
polarities of the piezoelectric layers and the interconnections
between the electrodes (col. 6, line 26 et seq.; Figs. 12A-C,
13A-C, 14A-C, and 15A-C). Moreover, the bending motion of the
piezoelectric sandwich members may be reduced by using a
viscoelastic material in the substrate (col. 7, lines 58-63).
Consequently, although the individual piezoelectric sandwich
members 22 and 23 experience some bending, they are substantially
prevented from experiencing diaphragm-like vibration and thus
satisfy the requirement of claim 1 for a "substantially
inflexible" substrate. Accordingly, we are affirming the
rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
Geil.
Appeal No. 95-3273
Application 08/136,856
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B. The rejections based on Rokurota
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Rokurota and claims 3-11 stand rejected under
§ 103 as unpatentable over that reference. The examiner reads
claims 1-2 onto the reference as follows (Answer at 4):
Regarding claims 1-2, Rokurota discloses in
Fig. 3, a piezoelectric-film sound transducer
comprising: a thin film of piezoelectric material (38)
having two opposite faces, two thin films (40, 42) of
conductive material, thereby forming a piezoelectric
sandwich element, a solid, flat, substantially
inflexible substrate (printed circuits formed on the
substrate 34, see column 4, lines 11-12) laminated to
the piezoelectric sandwich element along substantially
the entire surface of the conductive layers, and two
connecting conductors (60) connected to the two films
for conducting an electrical signal between the
piezoelectric sandwich element and some external point.
Appellant does not dispute that Rokurota's substrate 34
is substantially inflexible. Instead, appellant argues (Reply
Brief at 3) that Rokurota's piezoelectric material 38 fails to
satisfy claim 1's requirement for a "thin film of piezoelectric
material," because the only piezoelectric material Rokurota
discloses is a ceramic material (col. 3, line 68 to col. 4, line
2; col. 4, lines 49-52), in which notches 64 (Fig. 4E) may be cut
with a diamond saw (col. 5, lines 36-37). According to
appellant,
[e]ssentially, a thin film element is, except for its
electrical characteristics, about like any sheet of
Appeal No. 95-3273
Application 08/136,856
As appellant correctly notes in the reply thereto, the5
Supplemental Examiner's Answer mischaracterized their position to
be that the term "thin film of piezoelectric material" must be
construed to mean a PVDF film.
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plastic which can be cut with a pair of scissors. A
ceramic piezoelectric element is, except for its
electrical characteristics, about like a piece of
stone, and it can be cut with a diamond saw. [Reply
Brief at 3.]
We do not agree that the term "thin film" as used in claim 1
would have been understood by the artisan to necessarily mean a
sheet of plastic-like material that is capable of being cut with
scissors. While this is an accurate description of a PVDF film,5
which is appellant's only disclosed example of a suitable
piezoelectric film material, it is improper to read limitations
from examples given in the specification into the claims.
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571,
7 USPQ2d 1057, 1064 (Fed. Cir. 1988). On the record before us,
we believe the artisan would have construed the term "thin film"
in claim 1 broadly to mean "[a] thin sheet or coating of
material," which is the broader of the two definitions given for
"film" in McGraw-Hill Electronics Dictionary 208 (1994 ed.). As
a result, the phrase "thin film of piezoelectric material" is
broad enough to read on Rokurota's piezoelectric element 38,
which may have a thickness of, for example, 0.3 millimeters
(col. 4, lines 54-55). We note that since 0.3 millimeters is the
Appeal No. 95-3273
Application 08/136,856
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same as 0.03 centimeters, these piezoelectric elements also fall
within the following definition of "film" in IEEE Standard
Dictionary of Electrical and Electronics Terms 219 (1972 ed.):
"(1) (rotating machinery). Sheeting having a nominal thickness
not greater than 0.030 centimeters and being substantially
homogeneous in nature." In holding that Rokurota's piezoelectric
ceramic element 38 is a "thin film of piezoelectric material," we
are mindful of our conclusion, supra, that the artisan would have
construed the phrase "substantially inflexible substrate" to mean
a substrate substantially incapable of vibrating in the manner of
a diaphragm. This does not necessarily imply that the claimed
"thin film of piezoelectric material" would be capable of
vibrating in the manner of a diaphragm if it were not laminated
to the substrate.
For the foregoing reasons, the rejection of claim 1 as
anticipated by Rokurota is affirmed. The rejection of claim 2 as
anticipated by that reference is affirmed because it was not
separately argued. In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987).
Claims 3-11 stand rejected under § 103 as unpatentable
over Rokurota. Of these claims, only claim 3 is separately
argued by appellant. This claim requires that the piezoelectric
sandwich and substrate be sealed between two water resistant
Appeal No. 95-3273
Application 08/136,856
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layers for protection against environmental moisture. The
examiner stated the case for obviousness as follows:
[S]ince Rokurota's ultrasonic transducer is being used
on [sic] human body, it would have been obvious to one
of ordinary skill in the art at the time the invention
was made to provide water-resistant protective layers
for Rokurota's piezoelectric sandwich and the substrate
because this would protect Rokurota's ultrasonic
transducer from moisture generated by the human body.
[Answer at 5.]
Appellant responds by arguing that "the logically obvious
extension of the Examiner's argument is that Rokurota was not
skilled in the art to which his invention pertained" (Reply Brief
at 4). Assuming this is intended as a challenge to the
examiner's argument for obviousness, it is unpersuasive.
Inasmuch as Rokurota was under no obligation to describe every
obvious modification of his invention of which he was aware when
he filed his application, his failure to disclose a particular
modification does not imply that it was beyond his skill or, more
important, the skill of a person having ordinary skill in the
art. Hence, the failure of a reference to disclose a claimed
feature does not, in and of itself, constitute a "teaching away"
from modifying the reference to include that feature. See Para-
Ordnance Manufacturing v. SGS Importers International, 73 F.3d
1085, 1090, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995) (failure of
reference to disclose using a convergence frame is not a teaching
Appeal No. 95-3273
Application 08/136,856
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away from using such a frame). The rejection of claim 3 under
§ 103 as unpatentable over Rokurota is therefore affirmed.
The rejection of claims 4-11 under § 103 as
unpatentable over Rokurota is also affirmed, because those claims
were not separately argued. Nielson, 816 F.2d at 1572, 2 USPQ2d
at 1528.
In summary, the rejection of claim 1 under 35 § U.S.C.
102(b) as anticipated by Geil is affirmed, as are the rejection
of claims 1 and 2 under § 102(b) as anticipated by Rokurota and
the rejection of claims 3-11 under § 103 as unpatentable over
Rokurota.
Appeal No. 95-3273
Application 08/136,856
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JOHN C. MARTIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-3273
Application 08/136,856
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