Ex Parte Grannen et al

Patent Trial and Appeal Board

Jan 27, 2015

12623746 (P.T.A.B. Jan. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEVIN GRANNEN, CHRIS FENG, and
JOHN CHOY
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Appeal 2013-002980
Application 12/623,746
Technology Center 2800
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Before TERRY J. OWENS, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 8–10, and 21. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an acoustic resonator. Claim 1 is illustrative:
1. An acoustic resonator, comprising:
a first electrode;
a second electrode;
a piezoelectric layer disposed between the first electrode and the
second electrode, and comprising a C-axis having an orientation; and
a polarization---determining seed layer (PDSL) disposed beneath the
piezoelectric layer, the PDSL comprising a metal-nonmetal compound.
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Application 12/623,746

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The References
Flynn US 2003/0213964 A1 Nov. 20, 2003
Larson US 7,367,095 B2 May 6, 2008
The Rejection
Claims 1–5, 8–10, and 21 stand rejected under 35 U.S.C. § 103 over
Larson in view of Flynn.
OPINION
We reverse the rejection and, under 37 C.F.R. § 41.50(b), enter a new
ground of rejection.
Rejection under 35 U.S.C. § 103
We need address only the independent claims (1 and 21). Each of
those claims requires “a polarization-determining seed layer (PDSL)
disposed beneath the piezoelectric layer, the PDSL comprising a
metal-nonmetal compound.”
The Examiner finds that Larson discloses “a polarization-determining
seed layer (PDSL) disposed beneath the piezoelectric layer (column 2,
lines 55-61)” (Ans. 4), “Larson et al. does not disclose that the seed layer
comprises a metal-nonmetal compound,” id., and “Flynn et al. teaches a
piezoelectric device having a seed layer comprising a metal-nonmetal
compound (Paragraph 64)” (Ans. 5). The Examiner concludes that “[a]t the
time of invention, it would have been obvious to one of ordinary skill in the
art to combine the metal-nonmetal seed layer of Flynn et al. with the
acoustic resonator of Larson et al. as it has been held that the selection of a
material based on an art recognized suitability for an intended purpose is
obvious (In re Leshin, 125 USPQ 416). Flynn et al. discloses that [it] is
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Application 12/623,746

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obvious to use materials such as GaN, AlN, and InN as seed layers for like
materials (Paragraph 64 of Flynn et al.)” Id.
The portion of Flynn relied upon by the Examiner pertains to a
homoepitaxial layer on a substrate (¶ 64). The Examiner has not established
that the relied-upon disclosure is a disclosure of a seed layer or would have
fairly suggested, to one of ordinary skill in the art, any seed layer, let alone a
polarization-determining seed layer.
The Examiner, therefore, has not set forth a factual basis which is
sufficient to support a prima facie case of obviousness of the Appellants’
claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the
invention from the prior art”). Accordingly, we reverse the Examiner’s
rejection.
New ground of rejection
Under 37 C.F.R. § 41.50(b) we enter the following new ground of
rejection.
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Larson.
Larson discloses an acoustic resonator comprising a first
electrode (152), a second electrode (154), a piezoelectric layer (156)
disposed between the first electrode and the second electrode and
comprising a C-axis having an orientation (148), and a polarization-
determining seed layer (PDSL) (155) disposed beneath the piezoelectric
layer (156), the PDSL comprising a metal-nonmetal compound (AlN)
(col. 12, ll. 17–29; col. 12, l. 44 – col. 13, l. 35; Figs. 5P, 5R).
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Application 12/623,746

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Thus, Larson anticipates the acoustic resonator claimed in the
Appellants’ claim 1.
We leave it to the Examiner to address the other claims.
DECISION/ORDER
The rejection of claims 1–5, 8–10, and 21 under 35 U.S.C. § 103 over
Larson in view of Flynn is reversed. A new ground of rejection is entered
under 37 C.F.R. § 41.50(b).
It is ordered that the Examiner’s decision is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; 37 C.F.R. § 41.50(b)

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