Ex parte Hashimoto

Board of Patent Appeals and Interferences

Feb 28, 2002

08796478 (B.P.A.I. Feb. 28, 2002)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte YOSHIKI HASHIMOTO
______________
Appeal No. 2000-0196
Application 08/796,478
_______________
ON BRIEF
_______________
Before JERRY SMITH, LALL and BLANKENSHIP, Administrative Patent
Judges.
LALL, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-5, 7-10 and 15-17.
Claim 6 has been indicated as allowable, and claims 11-14 have
been canceled.
The disclosed invention relates to an ultrasonic
levitation and transport system in which an essentially flat-
Appeal No. 2000-0196
Application 08/796,478
Amendment G, filed June 9, 1998, after the final rejection (Paper No.1
(continued...)
2
bottomed body is maintained in a levitated condition by the
acoustic pressure produced by an ultrasonic generator. The
generator produces so-called “in-phase” acoustic radiation,
wherein the wavefronts extend in parallel with the “means for
vibrating” (radiating surface) of the ultrasonic generator,
owing to longitudinal vibration of the generator which in turn
drives (vibrates) the radiating surface. The system does not
employ any sort of radiation reflector, and therefore the
levitating position of the levitating body is not dependent
upon the creation of a nodal interference pattern with
reflected wavefronts. The system of the invention is most
advantageously used as a transport system, where a series of
generators are used to create a “levitational roadway” for the
transported bodies. Motive force for transport can also be
provided by external means such as air moves, or by a
deflected portion of the original ultrasonic energy. A
further understanding of the invention can be achieved by
reading the following claim.
Claim 1 reads as follows:1
Appeal No. 2000-0196
Application 08/796,478
(...continued)1
25) has been indicated on its face to be approved for entry. See Paper No. 26.
However, it appears that this amendment has not been physically entered into
the record. For our purposes, we consider claim 1 as amended by this
amendment and we leave it to the examiner to make sure the entry of this
amendment in the record. We note that there is another amendment after the
final rejection, amendment F, (Paper No. 23), which was filed on March 17,
1998. This amendment was not approved for entry. See Paper No. 24.
3
1. An object levitating apparatus, comprising: means
for vibrating uniformly in-phase and having upper and lower
surfaces, and an ultrasonic excitation device that is attached
to the lower surface of the means for vibrating, said
ultrasonic excitation device exciting the means for vibrating
such that the means for vibrating vibrates longitudinally,
roughly perpendicular to the upper surface, so that sound
waves are generated and a radiated pressure is generated by
said sound waves emitted from said means for vibrating for
levitating an object without the use of a reflector above said
object.
The examiner relies on the following references:
Rey 4,284,403 Aug. 18,
1981
Barmatz et al. (Barmatz ‘435) 4,549,435 Oct. 29,
1985
Dorr 4,735,096 Apr.
5, 1988
Murphy 4,753,579 Jun. 28,
1988
Appeal No. 2000-0196
Application 08/796,478
The examiner has listed another U.S. Patent to Danley et al.2
(4,757,227). However, from the body of the rejection it is clear that Danley
et al. (5,036,944) is the patent which is really being used. For our purposes,
we have considered Danley 5,036,944 in our decision.
4
Barmatz et al. (Barmatz ‘823) 4,777,823 Oct.
18, 1988
Danley et al. (Danley) 5,036,944 Aug. 6, 19912
Claims 1, 10 and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Barmatz ‘823 in view of Rey.
Claims 2, 4, 5 and 7-9 stand rejected under 35 U.S.C. §
103 as being unpatentable over Barmatz ‘823 in view of Rey and
Danley.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Barmatz ‘823 in view of Rey and Murphy.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Barmatz ‘435 in view of Dorr.
Appeal No. 2000-0196
Application 08/796,478
A Reply brief was filed as Paper No. 30 on March 26, 1999. The3
examiner objected to this reply brief. See Paper No. 31. Appellant filed a
substitute reply brief on May 5, 1999 as Paper No. 32, which was entered into
the record. See Paper No. 33. Therefore, our reference here to the reply
brief is a reference to the substituted reply brief.
5
Rather than repeat the arguments of the appellant and the
examiner, we make reference to the briefs and the answer for3
the respective details thereof.
OPINION
We have considered the rejections advanced by the
examiner in the supporting arguments. We have, likewise,
reviewed the appellant’s arguments set forth in the briefs.
We affirm-in-part.
In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case
of obviousness. If that burden is met, the burden of going
forward then shifts to the applicant to 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 In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
Appeal No. 2000-0196
Application 08/796,478
6
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 are further guided by the
precedent of our reviewing court that the limitations from the
disclosure are not to be imported into the claims. In re
Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957); In re
Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir. 1986). We also
note that the arguments not made separately for any individual
claim or claims are considered waived. See 37 CFR § 1.192(a)
and (c). In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued
by an appellant, looking for nonobviousness distinctions over
the prior art.”); In re Wiechert, 370 F.2d 927, 936, 152 USPQ
247, 254 (CCPA 1967)(“This court has uniformly followed the
sound rule that an issue raised below which is not argued in
this court, even of it has been properly brought here by
reason of appeal is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them.”).
Appeal No. 2000-0196
Application 08/796,478
7
At the outset, we note that of the claims on appeal,
claims 1, 2, 4, 5, 7-9, 10 and 15 have the recited limitation
of “without the use of a reflector above said object.”
Claims 3, 16 and 17 and 15 do not have the limitation of
“without the use of a reflector above said object.”
The examiner and appellant disagree regarding the
presence of this limitation being disclosed by Barmatz ‘823.
The examiner asserts (final rejection at pages 2-8, and answer
at page 4) that the means of levitation in the device of
Barmatz ‘823 is identical to that of the applicant. The
examiner continues that “[l]evitation is achieved without use
of a reflector as noted in the examiner’s response to
applicant’s remarks” (final rejection at page 5). Appellant
argues, brief at page 5, that “nowhere in Barmatz ‘823 is it
taught or suggested that the main reflector can be removed,
which indeed would be antithetical to the core teachings of
the reference since Barmatz is a resonant system. By way of
contrast, the instant claims specifically indicate that the
object is levitated ‘without the use of a reflector above said
object.’ This limitation in the claims reflects the
Appeal No. 2000-0196
Application 08/796,478
8
fundamental difference in the operational principal as between
the invention and Barmatz.”
We agree with appellant’s position. We have looked at
the various embodiments of the levitating device in Barmatz
‘823, and, like appellant, we have not found any embodiment
which does not require the use of a reflector for its
operation. The examiner relies on Barmatz alone for the
teaching of a levitating device operating without the use of a
reflector above said object. The other references used by the
examiner in rejecting various claims rely on different
combinations of the references for teachings other than the
one recited above and do not cure this deficiency of Barmatz
‘823. Therefore, we do not sustain the obviousness rejection
of claims 1 and 10 over Barmatz ‘823 and Rey; of claims 2, 4,
5, and 7-9 over Barmatz ‘823, Rey and Danley.
With respect to claim 3, the limitation “without the use
of a reflector above said object” is not recited. However,
claim 3 calls for “a traveling device ... comprises an air
flowing device that blows air onto said object ....” The
examiner uses Murphy for the teaching of a traveling means by
blowing air over the levitated object. See final rejection at
Appeal No. 2000-0196
Application 08/796,478
9
pages 8 and 9. However, we agree with appellant that Murphy
does not teach the claimed feature. (Brief at page 9).
Instead, Murphy discloses an ultrasonic fan. Moreover, we
agree with appellant that there is no motivation for adding
Murphy to the combination of Barmatz ‘823 and Rey. Therefore,
we do not sustain the obviousness rejection of claim 3 over
Barmatz, Rey and Murphy.
With respect to claims 16 and 17, claim 16 requires a
specific structure which requires a straight horn and an
ultrasonic excitation device comprising of a conical horn
which is attached to the lower surface of the straight horn.
The examiner asserts (final rejection at page 9) that “Barmatz
[435] shows (fig. 4) an object levitating apparatus
comprising: a straight horn (84) having upper and lower
surfaces, and an excitation device.” The examiner admits that
ultrasonics excitation device in Barmatz ‘435 does not
comprise a conical horn. However, the examiner contends that
conical horn 31 of Dorr would have been an obvious substitute
for ultrasonic excitation device 86 for exciting the straight
horn of Barmatz in Figure 4. See final rejection at pages 9
and 10. Appellant argues, brief at page 10, that “[t]here is,
Appeal No. 2000-0196
Application 08/796,478
10
... no teaching in either reference which would lead one to
fix Dorr’s conical horn to the bottom of Barmatz’ straight
horn.” The examiner cites column 1, lines 54-61 of Dorr as a
motivation for attaching its conical horn to the straight horn
of Barmatz ‘435 stating that all energy is delivered to the
front of the structure. However, the energy distribution in
Dorr’s system is not directed to the problem of having a
straight horn levitating an object above the straight horn.
Without the benefit of appellant’s invention, an artisan would
not have had any motivation to combine the conical horn of
Dorr, which is simply a generic ultrasonic transducer, to
attach to the straight horn of Barmatz ‘435 to arrive at the
claimed structure of claim 16. Therefore, we do not sustain
the obviousness rejection of claim 16 and its dependent claim
17 over Barmatz ‘435 in view of Dorr.
Lastly, we take claim 15. The examiner rejects claim 15
over Barmatz ‘823 in view of Rey. Final rejection at pages 5
and 6. Appellant argues, brief at page 7, that “[t]he
‘broadest reasonable interpretation’ of claim 15 ... would be
that wherein the surface which is the ‘bottom’ of the
levitator is defined when the object is levitating.” We do
Appeal No. 2000-0196
Application 08/796,478
11
not agree with the appellant’s interpretation that the bottom
of the object is defined when the object is levitating. The
claim simply calls for “placing said object having said flat
bottom above a surface of the vibrator....” A reasonable
interpretation of this language is that the object does have a
flat bottom but the orientation of the flat bottom is not
specifically defined. As such, Barmatz ‘823 alone in Figure
1a shows a levitating object 12b having a flat bottom even
though the bottom is not in the orientation alleged to be
recited in the claim by appellant. Moreover, Rey discloses at
column 3, lines 19-22, that the object levitated may be solid
or liquid of any shape and will have a size less than the size
of the surface of the reflector. From this teaching, we find
that an artisan would have been motivated to levitate in
Barmatz ‘823 objects of different shapes including an object
having a flat bottom. Therefore, we sustain the obviousness
rejection of claim 15 over Barmatz ‘823 in view of Rey.
In conclusion, we have sustained the obviousness
rejection of claim 15 over Barmatz ‘823 in view of Rey; while
we have not sustained the obviousness rejection of claims 1
and 10 over Barmatz ‘823 and Rey; of claims 2, 4, 5, and 7-9
Appeal No. 2000-0196
Application 08/796,478
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over Barmatz ‘823 in view of Rey and Danley; of claim 3 in
view of Barmatz ‘823 in view of Rey and Murphy; and of claims
16 and 17 in view of Barmatz ‘435 in view of Dorr.
The decision of the examiner rejecting claims under
35 U.S.C. § 103 is affirmed-in-part.
Appeal No. 2000-0196
Application 08/796,478
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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-IN-PART
Jerry Smith )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Howard B. Blankenship )
Administrative Patent Judge )

PSL/cam
Sughrue, Mion, Zinn, MacPeak & Seas
Appeal No. 2000-0196
Application 08/796,478
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