Ex parte Hickernell

Board of Patent Appeals and Interferences

Mar 29, 2000

08603523 (B.P.A.I. Mar. 29, 2000)

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(2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS S. HICKERNELL
__________
Appeal No. 1998-0437
Application 08/603,523
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON, and GROSS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-13
and 15-20. In an Amendment After Final (paper number 7),
claims 5, 7, 11, and 17 were canceled, and claims 8, 12, and
18 were amended. In a previous amendment (paper number 5),
claim 14 was canceled. Accordingly, claims 1-4, 6, 8-10, 12,
Appeal No. 1998-0437
Application No. 08/603,523

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13, 15, 16, and 18-20 remain on appeal.
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The disclosed invention relates to a device and a method
of producing an acoustic wave device that comprises a
substrate, a transducer disposed on the substrate, and
reflectors disposed at first and second acoustic ports of the
transducer. Each of the reflectors includes a number N ofg
reflection elements, and the number N is chosen in accordanceg
with (2B/3)(2B + 8k - 2B(B + 8k ) -(k /3) ) # N # (4B/3)(2B2 2 2 2 0.5 2 2 -0.5 2g
+ 8k -2B(B + 8k ) 2 2 2 0.5
-(2k /3) ) wherein k is an electromechanical coupling2 2 -0.5 2
coefficient of the substrate.
Claim 1 is illustrative of the claimed subject matter and
is reproduced below:
1. An acoustic wave device comprising:
a substrate for supporting acoustic wave propagation;
a transducer disposed on said substrate, said transducer for
converting electrical energy to acoustic energy and vice
versa; and
a first reflector disposed at a first acoustic port of said
transducer, wherein said first reflector includes a first
number of reflection elements, wherein said first number
includes a first number N of reflection elements, said firstg1
number N chosen in accordance with (2B/3)(2B + 8k - 2B(B +g1 2 2 2
8k ) -(k /3) ) # N # (4B/3)(2B + 8k - 2B(B + 8k ) -2 0.5 2 2 -0.5 2 2 2 2 0.5g1
(2k /3) ) , wherein k is an electromechanical coupling2 2 -0.5 2
coefficient of said substrate.
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Application No. 08/603,523

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Appeal No. 1998-0437
Application No. 08/603,523

The following references are cited as of interest for1
their teachings of a surface acoustic wave transducer having
LiNbO and LiTaO substrates:3 3
Hickernell, “The Dependencies of SAW-Transducer Equivalent-
Circuit-Model Parameters On Transducer Geometry,” IEEE
Ultrasonics Symposium, 127-30 (1997).
Hickernell et al., (Hickernell), “The Surface Acoustic Wave
Propagation Characteristics of 41E Lithium Niobate with Thin-
Film SiO ,” IEEE International Frequency Control Symposium,2
216-221 (1996).
Hickernell et al., (Hickernell), “The Surface Acoustic Wave
Propagation Characteristics of 64E Y-X LiNbO and 36 E Y-X3
LiTaO Substrates with Thin-Film SiO ,” IEEE Ultrasonics3 2
Symposium, 345-48 (1995).
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The examiner relies on the following reference:1
Satoh et al. (Satoh) 5,559,481 Sept. 24,
1996
(filed Oct. 23,
1992)
Claim 13 stands rejected under the second paragraph of
U.S.C. § 112 as being indefinite.
Claims 1-4, 6, 8-10, 12, 13, 15, 16, and 18-20 stand
finally rejected under 35 U.S.C. § 102(e) as being anticipated
by Satoh.
Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
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OPINION
The rejection is affirmed-in-part. The rejection of
claims 10, 12, 13, and 15 is reversed. The rejection of
claims 1-4, 6, 8, 9, 16, and 18-20 is affirmed.
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Application No. 08/603,523

Titanium Metals Corp. v. Banner, 778 F.2d 775, 782, 2
227 USPQ 773, 779 (Fed. Cir. 1985) (citing In re Petering,
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According to the examiner (Answer, page 4), claim 13 is
indefinite because it depends from canceled claim 11.
Appellant corrected the error (Corrected Reply Brief, pages 1
and 2). The correction was approved by the examiner (PTOL-90,
mailed July 16, 1998). Thus, the rejection under 35 U.S.C. §
112, second paragraph is reversed.
According to the examiner (Answer, page 5), Satoh
discloses (Figs. 44 and 45; and column 19, lines 11, 12, and
19) all of the device and steps of claims 1-4, 6, 8-10, 12,
13, 15, 16, and
18-20. The examiner states (Answer, page 6) that Satoh
discloses a number of reflection elements (N =50) for a LiTaOg1 3
substrate having a coupling coefficient k = 0.05 (Satoh,2
column 16, lines 38-40; column 19, line 19). The examiner
also states (Answer, page 6) that substituting k =0.5 into the2
claimed equation yields a range of 34 # N # 78 for the choseng1
number of reflective elements N . The examiner concludesg1
(Answer, page 6) that N =50 is within the range specified byg1
the equation in the claimed invention. The examiner further2
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301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)); Manual of
Patent Examining Procedure (MPEP) § 2131.03 (7th ed., July
1998).
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concludes (Answer, page 6) that the substrate and finger count
(i.e., number of reflective elements) of Satoh satisfies the
conditions of the claimed equation in spite of the broader
ranges in the disclosure. With respect to the device claims,
we agree with the examiner that the Satoh product (i.e., the
acoustic wave device) is the same as the claimed product
because N =50 is within the range that results from theg1
claimed equation. When claims are directed to a “product-by-
process,” it is the patentability of the product claimed and
not of the recited process which must be established. In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972);
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985).
It is our view that the examiner’s rejection of the
instant product-by-process claims over the device of Satoh was
appropriate given that the product of Satoh appears to be
identical, albeit produced by a different process, to the
product claimed by the appellant. Such a rejection shifts the
Appeal No. 1998-0437
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Appellant’s citation of In re Brown, 329 F.2d 1006, 1414
USPQ 245 (CCPA 1964) and In re LeGrice, 301 F.2d 929, 133 USPQ
365 (CCPA 1962) cannot take the place of an evidentiary
showing.
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burden upon appellant to come forward with evidence
establishing a difference between the claimed product and the
prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ
289, 292-93 (Fed. Cir. 1983). We hold that appellant has not
presented sufficient evidence to establish a difference
between the claimed product and the prior art product. Thus,
we disagree with appellant’s argument (Brief, page 5) that
Satoh does not teach that the first number N is chosen ing
accordance with (2B/3)(2B + 8k - 2B(B + 8k ) -(k /3) ) # N #2 2 2 2 0.5 2 2 -0.5 g1
(4B/3)(2B + 8k -2B(B + 8k ) 2 2 2 2 0.5
-((2k /3) ) , wherein k is an electromechanical coupling2 2 -0.5 2
coefficient of said substrate defined in claims 1-4, 6, 8, 9,
16, and 18-20.
Appellant further argues (Brief, page 6) that Satoh is a
non-enabling reference. Mere attorney argument (Brief, pages
6-13) will not suffice to prove non-enablement of Satoh.
Evidence of such non-enablement must be provided by appellant
to prove such a case. 4
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Appellant argues (Brief, page 12) that Satoh only teaches
a fixed number of reflective elements. We agree. As
indicated supra, the products are still the same.
Appellant also argues (Brief, page 12) that Satoh is
silent with respect to the thickness of metallization.
Appellant acknowledges (Brief, page 13) that Satoh discloses
material thickness. Furthermore, the claimed invention does
not specifically claim thickness of metallization. Therefore,
appellant’s argument concerning thickness is not persuasive.
We note that the coupling coefficient is the only
variable term that must be supplied in appellant’s claims on
appeal. Appellant’s coupling coefficient of the substrate
material (Specification, pages 7 and 8) is “tabulated in a
variety of textbooks related to piezoelectric materials.”
Satoh discloses a coupling coefficient of a substrate material
and material thickness (column 14, lines 6-14).
Appellant additionally argues (Brief, page 13) that Satoh
teaches away from the limitations of appellant’s claims.
Specifically, appellant argues that Satoh teaches only a fixed
number of reflection elements. The examiner responds (Answer,
page 6) that simply because the claims encompass a broader
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range of substrates and finger numbers than Satoh does not
mean that those chosen by Satoh fail to render the claims as
being anticipated. We agree. Appellant’s argument overlooks
the fact that the fixed number in Satoh is within the
disclosed and claimed range.
Lastly, appellant argues (Brief, page 13) that Satoh’s
invention would yield fewer than 50 reflective elements.
Appellant has not stated that this value of N would still notg1
be within the range (34 # N # 78) of appellant’s invention asg1
calculated by the examiner (Answer, page 6). Therefore, with
respect to the device claims, we agree with the examiner’s
rationale for rejecting the claims.
In summary, the rejection of apparatus claims 1-4, 6, 8,
9, 16, and 18-20 is sustained. The rejection of method claims
10, 12, 13, and 15 is reversed because the examiner has not
made a showing that the method steps of these claims read on
Satoh.
DECISION
The decision of the examiner rejecting claim 13 under the
second paragraph of 35 U.S.C. § 112 is reversed. The decision
of the examiner rejecting apparatus claims 1-4, 6, 8, 9, 16,
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and
18-20 under 35 U.S.C. § 102(e) is affirmed. The decision of
the examiner rejecting method claims 10, 12, 13, and 15 under
35 U.S.C. § 102(e) is reversed.
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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
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
KWH:CR/hh
Appeal No. 1998-0437
Application No. 08/603,523

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MOTOROLA INC.
Intellectual Property Department
Corporate Offices
1303 East Algonquin Road
Schaumburg, IL 60196
ATTENTION: Phillip H. Melamed