Ex Parte Garcia et al

Board of Patent Appeals and Interferences

Sep 28, 2006

10307216 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERNEST J. GARCIA, MARC A. POLOSKY, and GERARD E. SLEEFE
__________

Appeal No. 2006-2656
Application No. 10/307,216
__________

ON BRIEF
__________

Before THOMAS, JERRY SMITH, and HOMERE, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1, 3-6, 8-11 and 16. Claims 2, 12-15, 17-21
and 23-37 have been indicated by the examiner to contain allowable subject
matter. Claim 7 has been objected to as being dependent upon a rejected
base claim, but has otherwise been indicated by the examiner to contain
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allowable subject matter if rewritten in independent form. Claim 22 has
been cancelled.
The disclosed invention pertains to a mechanically latchable tiltable
platform for forming micromirrors and micromirror arrays.
Representative claim 1 is reproduced as follows:
1. A microelectromechanical apparatus, comprising:
(a) a platform supported above a substrate and electrostatically
moveable from a first position parallel to the substrate to a
second position wherein the platform is tilted at an angle to the
substrate; and
(b) an electrostatically-operable latch mechanism formed on the
substrate with a pivot arm extending substantially parallel to the
substrate for engaging with a tab protruding from the platform in
response to an applied latch actuation voltage, thereby
mechanically latching the platform in the second position even
after the applied latch actuation voltage is removed.
The examiner relies on the following references:
Raccio et al. (Raccio) WO 01/55770A2 Aug. 2, 2001
Couillard et al. (Couillard) 6,360,036 Mar. 19, 2002
(filed Jan. 14, 2000)

Pan et al. (Pan) 6,577,431 Jun. 10, 2003
(filed Jun. 15, 2001)

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Hung et al. (Hung) 6,664,706 Dec. 16, 2003
(filed Dec. 10, 2001)

Gutierrez et al. (Gutierrez) 6,738,177 May 18, 2004
(filed Sep. 5, 2001)

The following rejections are on appeal before us:
1. Claims 1, 3-5, 11 and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Raccio in view of
Couillard, and further in view of Pan [answer, pages 4 and 5].
2. Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Raccio in view of Couillard, and
further in view of Pan, and further in view of Gutierrez [answer,
pages 5 and 6].
3. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Raccio in view of Couillard, and
further in view of Pan, and further in view of Hung [answer,
page 6].
Rather than repeat the arguments of appellants or the examiner, we
make reference to the brief and the answer for the respective details
thereof.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of obviousness relied
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upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in
the examiner’s answer. Only those arguments actually made by appellants
have been considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been considered and
are deemed to be waived. See 37 C.F.R.§ 41.37(c)(1)(vii)(2004). See also
In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
It is our view, after consideration of the record before us, that the
evidence relied upon by the examiner does not support the examiner’s
rejection of claims 1, 3-6, 8-11 and 16. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. at 1343, 61 USPQ2d at 1433-34.
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The examiner cannot simply reach conclusions based on the examiner’s own
understanding or experience - or on his or her assessment of what would be
basic knowledge or common sense. Rather, the examiner must point to
some concrete evidence in the record in support of these findings. In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus
the examiner must not only assure that the requisite findings are made,
based on evidence of record, but must also explain the reasoning by which
the findings are deemed to support the examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000)).
See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to
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overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We consider the examiner’s rejection of claims 1, 3, 4, 5, 11 and 16 as
being unpatentable over the teachings of Raccio in view of Couillard, and
further in view of Pan [answer, pages 4 and 5]. Since appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we consider independent claim 1 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).
Appellants note that Raccio discloses a latching mechanism 130 (Fig.
1) which operates to hold mirror 102 in a tilted position with the mirror
being tilted at an angle with respect to substrate 145 to reflect an incident
light beam 120 (see Raccio, fig. 1; page 7, lines 23-25; page 7, line 30
through page 8, line 9) [brief, page 6]. Appellants further note that latching
mechanism 130 of Raccio is oriented vertically with respect to substrate 145
with release post 138 extending outwardly from an upper surface of
substrate 145 (page 7, lines 30-31) [id.]. Appellants argue that there is
nothing in Raccio that teaches or suggests the desirability of using “a pivot
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arm extending substantially parallel to the substrate” to hold the mirror
“tilted at an angle to the substrate” as recited in Claim 1 [id.].
Appellants note that Pan teaches the use of a latching mechanism
which is a stationary horizontal element 50 in fig. 9 comprising tenon 53 that
engages with bulge 47 on reflective mirror 44 [brief, page 6, ¶3].
Appellants note that, unlike Raccio, the latching mechanism of Pan is only
used when mirror 44 is in an untilted position that is parallel to substrate 41
[id.]. Appellants further note that Pan’s latching mechanism is not used at
all during the tilting of mirror 44 to reflect an incident light beam for optical
switching [id.]. In particular, appellants note that Raccio only latches the
micro mirror device during transportation to prevent damage to the mirror
from vibration or shock [id., emphasis added]. Appellants point to Pan’s
Abstract as explicitly disclosing this feature [id.; see Pan, abstract; see also
col. 7, lines 37-42].
Appellants argue that there is nothing in Pan that teaches or suggests
the use of a latching mechanism “extending substantially parallel to the
substrate” for latching a platform or mirror when “tilted at an angle to the
substrate” as recited in instant claim 1 [brief, page 7, ¶1]. Appellants argue
that one skilled in the art would not be motivated to modify Raccio with the
teachings of Pan in the manner suggested by the examiner [brief, page 7,
¶2]. Appellants further argue that Raccio discloses an optical switching
device that is fully functional such that no advantage would be gained by
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substituting Pan’s horizontal latching mechanism for Raccio’s latching
mechanism [id.]. Appellants assert that there is no teaching or suggestion
to use the latching mechanism of Pan for latching a mirror in a tilted position
as recited in claim 1 [id.]. Appellants further argue that the motivation
proffered by the examiner, i.e., “with the actuator being electrostatic
because it allows for electrical control rather than thermal control” is flawed
since the latching mechanism in Raccio is already electrostatic to begin with
[brief, page 8, §2]. Appellants conclude that one skilled in the art would not
be motivated to make changes to Raccio’s device that are totally
unnecessary and would provide no clear advantage [id.].
The examiner disagrees [answer, page 8, ¶1]. The examiner notes
that both Pan and Couillard teach the latch moving parallel to the substrate
to frictionally engage and hold the platform in position without the continued
application of an electrical current [id.]. The examiner points out that Raccio
suggests (at page 11, ¶2) that the disclosed embodiments are only
examples and that other embodiments and modifications would be apparent
to those skilled in the art [id.]. The examiner asserts that Raccio suggests
the latches of Pan and Couillard are known equivalents used for the same
purpose [id.]. The examiner finds unpersuasive appellants’ argument that
Raccio teaches away from the teachings of Pan [id.]. The examiner asserts
that the combined references show the optical platforms can be locked in
either position and by various types of actuators [answer, page 9, ¶2].
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At the outset, we note that to reach a proper conclusion under § 103,
the examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the examiner to ascertain
whether the examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. We note that the Court of Appeals for
the Federal Circuit has determined that the motivation to combine under
§ 103 must come from a teaching or suggestion within the prior art, within
the nature of the problem to be solved, or within the general knowledge of a
person of ordinary skill in the field of the invention, to look to particular
sources, to select particular elements, and to combine them as combined by
the inventor. Ruiz v. A.B. Chance Co., 234 F.3d 654, 665, 57 USPQ2d 1161,
1167 (Fed. Cir. 2000) [emphasis added]. It is impermissible to use a
claimed invention as a “template or guide” in order to piece together the
teachings of prior art references which show only individual elements of the
claimed invention in an effort to create a mosaic of such prior art to argue
obviousness. In re Fritch, 972 F.2d 1260, 1265-6, 23 USPQ2d 1780, 1783-4
(Fed. Cir. 1992). Piecemeal reconstruction of an invention is the result of
improper hindsighted reconstruction, which is strictly forbidden by law. In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). The
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teaching or suggestion to make the claimed combination and the reasonable
expectation of success must both be found in the prior art and not based on
applicant’s disclosure. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442, (Fed. Cir. 1991).
In the instant case, we note that the examiner asserts that Raccio
teaches every aspect of the present invention except the pivot arm
extending parallel to the substrate engaging a tab protruding from the
platform [answer, page 5, ¶1]. After carefully considering all of the
evidence before us, we agree with appellants that Raccio discloses an optical
switching device that is fully functional such that no advantage would be
gained by replacing Raccio’s latching mechanism with the latching
mechanism of Pan. We see no deficiency in Raccio’s vertical latching
mechanism 130 (fig. 1) that would motivate an artisan to look to Pan’s
horizontal latching mechanism (i.e., tenon 53, figs. 9 and 14) as a viable
substitute. We agree with appellants that if one skilled in the art wanted an
electrostatic latching mechanism, that person would use the electrostatic
latching mechanism already present in Raccio [see brief, page 8, ¶2]. We
further find that the examiner has failed to provide a convincing line of
reasoning regarding the proffered motivation of: “because it is within the
ordinary skill in the art to choose between known equivalents” [see answer,
page 5, ¶1, emphasis added].
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In light of the foregoing, it is our determination that the examiner's
obviousness conclusion is based upon impermissible hindsight derived from
appellants’ own specification and claims rather than from some teaching,
suggestion or motivation derived from the prior art. Accordingly, we reverse
the examiner's obviousness rejection of claims 1, 3, 4, 5, 11 and 16 as being
unpatentable over Raccio in view of Couillard, and further in view of Pan.
Because the deficiencies of these references are not overcome by the
additional Gutierrez and Hung references, we also reverse the examiner’s
obviousness rejection of dependent claims 6 and 8 as being unpatentable
over the combination of Raccio, Couillard, Pan and Gutierrez, and we
likewise reverse the examiner’s obviousness rejection of claims 9 and 10 as
being unpatentable over the combination of Raccio, Couillard, Pan and Hung.
In summary, we agree with appellants that the examiner has failed to
meet his/her burden of presenting a prima facie case of obviousness.
Therefore, we will not sustain the examiner’s rejection of any of the claims
on appeal. Accordingly, the decision of the examiner rejecting claims 1, 3-6,
8-11 and 16 is reversed.

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REVERSED

)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEAN R. HOMERE )
Administrative Patent Judge )
)

JS/rwk

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