Ex parte DVORSKY et al.

Board of Patent Appeals and Interferences

Sep 30, 1998

08172666 (B.P.A.I. Sep. 30, 1998)

Application for patent filed December 23, 1993. 1
According to applicants, the application is a division of
Application 07/604,306, filed October 29, 1990.
1
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GEORGE R. DVORSKY
AND DAVID W. LOVE
_____________
Appeal No. 95-4871
Application 08/172,6661
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and FLEMING, Administrative Patent
Judges.
Appeal No. 95-4871
Application No. 08/172,666
2
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
8 through 14 and 23. In an Amendment After Final (paper
number 6), claim 14 was canceled, and claims 24 and 25 were
added to the application. In a subsequent Action (paper
number 7), the examiner indicated that claims 24 and 25 were
allowed. Accordingly, claims 8 through 13 and 23 remain
before us on appeal.
The disclosed invention relates to a ceramic
actuator/sensor material that is encapsulated in a non-
conductive fiber composite material. The non-conductive fiber
composite material has a coefficient of thermal expansion
between the coefficient of thermal expansion of the ceramic
material and the coefficient of thermal expansion of a
graphite-epoxy laminate structure.
Claim 8 is illustrative of the claimed invention, and it
reads as follows:
8. An actuator/sensor package highly suited for
installation by embedding in a graphite-epoxy laminate
structure, the actuator/sensor package being made by a process
including the steps of:
Appeal No. 95-4871
Application No. 08/172,666
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bonding wire leads to electrodes of a ceramic
actuator/sensor; and
encapsulating the ceramic actuator/sensor in a non-
conductive fiber composite material having a coefficient of
thermal expansion (CTE) between the CTE of the ceramic
material and the CTE of a selected graphite-epoxy laminate
structure;
whereby the encapsulating material provides good
mechanical coupling, reduces thermally induced stresses,
electrically insulates the actuator sensor, and protects it
from mechanical damage.
The references relied on by the examiner are:
Wingrove 3,594,514 July 20,
1971
Evans 3,711,617 Jan. 16,
1973
Whatmore et al. (Whatmore) 4,876,776 Oct. 31,
1989
Claims 8, 12, 13 and 23 stand rejected under 35 U.S.C. §
103 as being unpatentable over Whatmore in view of Wingrove.
Claims 8 through 11 and 23 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Evans in view of Wingrove.
Reference is made to the brief and the answer for the
respective positions of the appellants and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejections.
Appeal No. 95-4871
Application No. 08/172,666
4
In Whatmore, a piezoelectric composite is fabricated from
a plurality of piezoelectric ceramic rods 2 that are placed in
openings in a non-conductive fiber composite material (i.e.,
KEVLAR) reinforcing structure 14 (Figure 3). Wingrove
discloses (Figure 2) an implantable hearing aid that includes
a piezoelectric ceramic 15 encapsulated within an epoxy
coating 18, and a silicon rubber 19. Both references disclose
the claimed ceramic material, but neither ceramic material is
encapsulated in a non-conductive fiber composite material.
The examiner’s rejection (Answer, pages 3 and 4) is as
follows:
It would have been obvious to one of ordinary skill
in the art to adhere a material such as KEVLAR,
which use is shown by Whatmore, to the piezoelectric
ceramic in the device of Wingrove, in place of the
silicon material around his piezoelectric ceramic.
KEVLAR is a very well known material which has
characteristics of withstanding excessive force
without braking [sic, breaking]. Thus, it extends
the life spancs [sic, span] of the devices it
covers. Alternatively it would have been obvious to
one of ordinary skill in the art to effect complete
encapsulation of Whatmore’s device, which
encapsulation is shown by Wingrove, in order to
provide for more protection of the piezoelectric
ceramic within. Again in this instance, the life
span of the device could be extended, resulting in
cost savings due to longer life and to longer mean
time between failures because of a reduction of
structural deficiencies.
Appeal No. 95-4871
Application No. 08/172,666
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Appellants argue (Brief, pages 4, 5, and 7) that the
applied references are not concerned with encapsulation of a
piezoelectric ceramic with a non-conductive fiber composite
material, and are not concerned with the differences in
thermal expansion between the ceramic and the encapsulant. We
agree.
With respect to the use of Whatmore’s KEVLAR in the
implantable hearing aid in Wingrove, the human body may or may
not accept the KEVLAR. Even if the body would accept KEVLAR,
who would want a hearing aid that needs that kind of
protection? With respect to complete encapsulation of the
piezoelectric composite in Whatmore (Figure 3), the
encapsulants taught by Wingrove are not the claimed
encapsulant. The mere fact that the prior art may be modified
in the manner suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. See In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). The obviousness rejection of claims 8, 12, 13 and 23
is reversed.
Evans was cited with Wingrove in the obviousness
Appeal No. 95-4871
Application No. 08/172,666
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rejection of claims 8 through 11 and 23. Evans discloses
(Figure 5) a piezoelectric ceramic 35 sandwiched between
layers of epoxy impregnated fiberglass cloths 36 and 37 to
form a transducer for a piano key. The epoxy impregnated
fiberglass cloth layers 36 and 37 do not encapsulate the
piezoelectric ceramic 35.
The examiner is of the opinion that it would have been
obvious to one of ordinary skill in the art to adhere the
encapsulant disclosed by Evans to the piezoelectric ceramic
Appeal No. 95-4871
Application No. 08/172,666
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disclosed by Wingrove or, in the alternative, to effect
complete encapsulation of Evans' device based upon the
teachings of Wingrove.
Appellants repeat their argument that the applied
references are not concerned with encapsulation of a
piezoelectric ceramic with a non-conductive fiber composite
material, and are not concerned with the differences in
thermal expansion between the ceramic and the encapsulant
(Brief, pages 6 and 7).
We are of the opinion that the examiner has failed again
to demonstrate that the prior art suggested the desirability
of either proposed modification. The need for Evans’ epoxy
impregnated fiberglass cloth in Wingrove’s implantable hearing
aid has not been established, and the examiner has not
explained how a completely encapsulated transducer in Evans
will function as a piano key. The obviousness rejection of
claims 8 through 11 and 23 is reversed.
Appeal No. 95-4871
Application No. 08/172,666
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DECISION
The decision of the examiner rejecting claims 8 through
13 and 23 under 35 U.S.C. § 103 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4871
Application No. 08/172,666
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