Ex Parte Hill

Board of Patent Appeals and Interferences

Feb 26, 2010

10739471 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte NICHOLAS P.R. HILL
_____________

Appeal 2009-004155
Application 10/739,471
Technology Center 2600
______________

Decided: February 26, 2010
_______________

Before, JOHN C. MARTIN, ROBERT E. NAPPI, and
KARL D. EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004155
Application 10/739,471

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a piezoelectric transducer that is designed
to sense vibrations. See Spec: 1-2. Claim 1 is representative of the
invention and reproduced below:
1. A piezoelectric transducer, comprising:
a plurality of poled piezoelectric regions connected
in series from a first region to a last region and
disposed in a side-by-side arrangement, each region
having first and second surfaces and a poling
direction pointing from the first surface to the second
surface of that region, each pair of connected adjacent
regions being electrically connected from the first
surface of one of the adjacent regions to the second
surface of the other adjacent regions, the pairs of
adjacent regions connected in a manner that provides
increased voltage sensitivity of the transducer to
bending wave vibrations relative to the plurality of
poled piezoelectric regions if homogenously poled;
a first terminal electrode disposed on the first
surface of the first region; and
a second terminal electrode disposed on the second
surface of the last region.

REFERENCES
Lucy US 3,150,275 Sep. 22, 1964

Green US 4,129,799 Dec. 12, 1978

Kobayashi US 5,541,892 Jul. 30, 1996
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Sullivan US 6,922,642 B2 Jul. 26, 2005
(filed Jan. 5, 2004)
IBM Technical Disclosure Bulletin, “Efficient Piezoelectric Glide
Transducer For Magnetic Recording Disk Quality Assurance,” vol. 34, No.
4A, September 1991.

REJECTIONS AT ISSUE
Claims 1-4, 6, 8, 9, 12, and 24 are rejected under 35 U.S.C. § 102(b)
as being anticipated by IBM Technical Disclosure Bulletin (hereinafter
referred to as IBM.) Ans. 3-5.
Claims 7 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over IBM. Ans. 5-6.
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over IBM in view of Lucy. Ans. 6.
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over IBM in view of Green. Ans. 6-7.
Claims 14-20 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi in view of IBM. Ans. 7-8.
Claims 14 and 21-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan in view of IBM. Ans. 8-10.

ISSUES
Rejection of claims 1-4, 6, 8, 9, 12, and 24 under 35 U.S.C. § 102(b) as
being anticipated by IBM Technical Disclosure Bulletin
Independent claim 1 and dependent claims 2-4, 6, 8, 9, and 12
Appellant argues on pages 10-12 of the Appeal Brief that the
Examiner’s rejection of claims 1-4, 6, 8, 9, and 12 is in error. Appellant
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argues that the IBM reference does not disclose a piezoelectric transducer
with a pair of adjacent regions that are connected “in a manner that provides
increased voltage sensitivity of the transducer to bending wave vibrations
relative to the plurality of poled piezoelectric regions if homogeneously
poled.” App. Br. 11. Appellant additionally argues that the IBM reference
does not disclose a piezoelectric transducer that measures bending wave
vibrations. App. Br. 11-12.
Thus, Appellant’s contentions with respect to claims 1-4, 6, 8, 9, and
12 present us with two issues. (1) Does the IBM reference disclose a
piezoelectric transducer with a pair of adjacent regions that are connected in
a manner that provides increased voltage sensitivity of the transducer to
bending wave vibrations relative to the plurality of poled piezoelectric
regions if homogeneously poled? (2) Does the IBM reference disclose a
piezoelectric transducer that measures bending wave vibrations?
Rejection of claims 5, 7, 10, 11, 13, and 24
Appellant argues on pages 12-14 and 19-20 of the Appeal Brief that
the Examiner’s rejections of claims 5, 7, 10, 11, 13, and 24 are in error.
Appellant presents the same arguments that were made with respect to
claims 1-4, 6, 8, 9, and 12. App. Br. 12-14 and 19-20. Thus, Appellant’s
arguments with respect to claims 5, 7, 10, 11, 13, and 24 present us with the
same issues as claims 1-4, 6, 8, 9, and 12.

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Rejection of claims 14-20 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi in view of IBM
Independent claim 14 and dependent claims 15-20
Appellant argues on pages 14-16 of the Appeal Brief and pages 10-14
of the Reply Brief that the Examiner’s rejection of independent claim 14 and
dependent claims 15-20 is in error. Appellant argues that the motivation to
combine Kobayashi with IBM is in error. App. Br. 15; Reply Br. 13.
Thus, Appellant’s arguments with respect to claims 14-20 present us
with the issue: Has the Examiner erred in combining Kobayashi with IBM?
Independent claim 25
Appellant argues on pages 16-17 of the Appeal Brief that the
Examiner’s rejection of independent claim 25 is in error. Appellant presents
the same arguments discussed above with respect to independent claim 14.
App. Br. 16-17. Thus, Appellant’s arguments with respect to the Examiner’s
rejection of claim 25 presents us with the same issues as claim 14.
Rejection of claims 14 and 21-23 under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan in view of IBM
Appellant argues on pages 17-19 of the Appeal Brief and page 10 of
the Reply Brief that the Examiner’s rejection of independent claim 14 and
dependent claims 21-23 is in error. Appellant argues that the motivation to
combine Sullivan with IBM is in error. App. Br. 17.
Thus, Appellant’s arguments with respect to claims 14 and 21-23
present us with the issue: Has the Examiner erred in combining Sullivan
with IBM?
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FINDINGS OF FACT
IBM
1. IBM discloses a transducer that monitors and analyzes interference
between a magnetic recording disk and a read-write head. ¶ 1.
2. The transducer includes a piezoelectric element 1, a magnetic head
slider 2, two sensing electrodes (3 and 4), and a bottom electroded
surface 5. ¶ 2 and (the sole) Fig.
3. The sensing electrodes (3 and 4) are bonded to the top of the
piezoelectric element 1. As a result, both halves are active and are
oppositely poled. ¶ 2 and (the sole) Fig.
4. This configuration creates a significant improvement in performance
as a result of “its high degree of symmetry so that only three
mechanical modes are sensed in a broad range of frequencies.” Other
sensed modes can be substantially reduced by electrical filtering in
order to create more sensitive measurements. ¶ 3.
Kobayashi
5. Kobayashi discloses a piezoelectric sensor that detects vibrations.
Col. 3, ll. 30-32.
6. In order to effectively detect vibrations, Kobayashi recognizes that the
piezoelectric elements must conform to a particular shape. Col. 2, ll.
4-6.
PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
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Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted).
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. Whether the rejection is based on "inherency" under 35
USC 102, on "prima facie obviousness" under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain and compare
prior art products. In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977).

ANALYSIS
Rejection of claims 1-4, 6, 8, 9, 12, and 24 under 35 U.S.C. § 102(b) as
being anticipated by IBM Technical Disclosure Bulletin
Independent claim 1 and dependent claims 2-4, 6, 8, 9, and 12
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 1-4, 6, 8, 9, and 12. Claim 1 recites “the
pairs of adjacent regions connected in a manner that provides increased
voltage sensitivity of the transducer to bending wave vibrations relative to
the plurality of poled piezoelectric regions if homogeneously poled.”
Claims 2-4, 6, 8, 9, and 12 depend upon claim 1, but were not argued
separately. Therefore, claim 1 is selected to represent this group.
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Appellant argues on page 11 of the Appeal Brief that the IBM
reference does not teach that the “regions are connected ‘in a manner that
provides increased voltage sensitivity of the transducer to bending wave
vibrations relative to the plurality of poled piezoelectric regions if
homogeneously poled.’” Appellant argues that since the IBM reference
senses only three mechanical modes, the IBM transducer actually decreases
sensitivity. App. Br. 11. We do not find this argument to be persuasive.
The Examiner correctly finds that the IBM reference discloses a
piezoelectric element with two halves. Ans. 10. The halves are connected
in series and one half is oppositely poled with respect to the other. Ans. 10.
In this regard, the Examiner logically explains that the IBM transducer and
Appellant’s transducer are structurally similar and, as a result, would
inherently have the same increased voltage sensitivity to vibrations. Ans.
10-11. This logical finding by the Examiner is reinforced by Appellant’s
disclosure that “any side-by-side configuration of piezoelectric devices or
regions connected in series with pole reversal through the series connections
will result in increased voltage sensitivity, particularly to vibration sensing,
relative to a single, homogeneously poled transducer having the same overall
dimensions and material properties.” Spec. 5:21-24.
Where, as here, the claimed and prior art products are identical or
substantially identical, the Patent and Trademark Office can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of the claimed product. Whether the rejection is
based on inherency under 35 U.S.C. § 102, or on prima facie obviousness
under 35 U.S.C. § 103(a), jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the inability of the Patent and
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Trademark Office to manufacture products or to obtain and compare prior
art products. Best, 562 F.2d at 1255.
Appellant does not contest with any reasonable specificity the
Examiner’s finding that the IBM transducer has the same structure as
Appellant’s transducer. Thus, it follows that Appellant has failed to carry
his burden of proving that the IBM transducer does not necessarily or
inherently possess the contested characteristics of the claim 1 transducer.
Appellant additionally argues that the IBM transducer does not
measure bending wave vibrations. App. Br. 11-12. Appellant argues that
the IBM transducer is used for quality assurance and that because the
transducer is not attached to a disk, it is incapable of measuring bending
wave vibrations. App. Br. 12. We disagree.
As discussed above, the Examiner finds that the IBM transducer has
the same structure as Appellant’s transducer and would similarly be able to
measure bending wave vibrations. Ans. 10-11. This logical finding by the
Examiner is reinforced by Appellant’s disclosure that “vibrations may be
due to an impact of the touch implement on the surface, or by frictional
movement of the touch implement across the surface.” Spec. 12:2-4. As
noted above, when the claimed and prior art products are structurally similar,
the burden shifts to Appellant to show that the prior art product does not
possess the inherent characteristic. Id. Since Appellant has not shown that
the IBM transducer is structurally different from Appellant’s transducer and
has not provided sufficient evidence to show that the IBM transducer does
not measure bending wave vibrations, the Appellant has failed to meet his
burden.
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Accordingly, we sustain the Examiner’s rejection of claim 1 and
claims 2-4, 6, 8, 9, and 12 that were grouped with claim 1.
Rejection of claims 5, 7, 10, 11, 13, and 24
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of claims 5, 7, 10, 11, 13, and 24. Independent claim
24 contains similar limitations discussed supra with respect to claim 1.
Dependent claims 5, 7, 10, 11, and 13 depend upon and also contain similar
limitations discussed supra with respect to claim 1. Appellant’s arguments
present the same issues discussed with respect to independent claim 1. App.
Br. 12-14 and 19-20. Therefore, we sustain the Examiner’s rejections of
claims 5, 7, 10, 11, 13, and 24 for the reasons discussed supra with respect
to claim 1.
Rejection of claims 14-20 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi in view of IBM
Independent claim 14 and dependent claims 15-20
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claims 14-20 and 25. Independent claim 14 recites “a series of
poled piezoelectric regions . . . , the poling direction of each region being
perpendicular to the surface of the touch plate.” Independent claim 25
recites similar limitations and claims 15-20 depend upon claim 14. Claims
25-20 and 25 were not argued separately. Therefore, claim 14 is selected to
represent this group.
Appellant argues that the Examiner has not established any motivation
to combine Kobayashi with IBM. App. Br. 14. The Examiner concluded
that it would have been obvious to combine the references in order to
provide transducers with “’improved performance due to its high degree of
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symmetry.’” Ans. 8. However, the IBM reference discloses that the
improvement in performance is related to sensing “only three mechanical
modes in a broad range of frequencies.” FF 4. In addition, the IBM
reference discloses reducing other sensed modes to create more sensitive
measurements. FF 4. The reference is silent as to which modes are and are
not sensed and which sensing modes are reduced. Therefore, it is not clear
whether replacing the Kobayashi transducer with the IBM transducer would
exhibit a significant improvement in performance. “That which may be
inherent is not necessarily known. Obviousness cannot be predicated on
what is unknown.” In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
Additionally, Kobayashi requires its piezoelectric elements to have a
particular shape in order to be effective. FF 6. If one were to modify the
piezoelectric element of the IBM reference to have a particular shape as
required by Kobayashi, it is unknown whether the new shape would provide
the significant increase in performance as claimed. As such, we find that the
Examiner erred in combining Kobayashi with IBM and we will not sustain
the Examiner’s rejection of independent claim 14 and dependent claims 15-
20.
Independent claim 25
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 25. Claim 25 contains similar limitations discussed supra
with respect to independent claim 14. Appellant’s arguments present the
same issues discussed with respect to independent claim 14. App. Br. 16-17.
Therefore, we will not sustain the Examiner’s rejection of claim 25 for the
reasons discussed supra with respect to claim 14.
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Rejection of claims 14 and 21-23 under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan in view of IBM
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claim 14 and dependent claims 21-23. As noted
above, independent claim 14 recites “a series of poled piezoelectric regions .
. . , the poling direction of each region being perpendicular to the surface of
the touch plate.” Claims 21-23 depend upon claim 14 and were not argued
separately. Therefore, claim 14 is selected to represent this group.
Appellant argues that the Examiner has not established any motivation
to combine Sullivan with IBM. App. Br. 17. The Examiner concluded that
it would have been obvious to combine the references in order to provide
transducers with “’improved performance due to its high degree of
symmetry.’” Ans. 9. However, as discussed above, it is not clear whether
replacing the Sullivan transducer with the IBM transducer would have been
expected to exhibit a significant improvement in performance. “That which
may be inherent is not necessarily known. Obviousness cannot be
predicated on what is unknown.” In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
Cir. 1993) As such, we find that the Examiner erred in combining Sullivan
with IBM and we will not sustain the Examiner’s rejection of independent
claim 14 and dependent claims 21-23.

CONCLUSION
Appellant has not persuaded us that the Examiner erred in finding that
the IBM reference discloses a piezoelectric transducer with a pair of adjacent
regions that are connected in a manner that provides increased voltage
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sensitivity of the transducer to bending wave vibrations relative to the
plurality of poled piezoelectric regions if homogeneously poled.
Appellant has not persuaded us that the Examiner erred in finding that
the IBM reference discloses a piezoelectric transducer that measures bending
wave vibrations.
Appellant has persuaded us that the Examiner erred in combining
Kobayashi with IBM.
Appellant has persuaded us that the Examiner erred in combining
Sullivan with IBM.

SUMMARY
The Examiner’s decision to reject claims 1-4, 6, 8, 9, 12, and 24 under
35 U.S.C. § 102(b) is affirmed. The Examiner’s decision to reject claims
14-23 and 25 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv).
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AFFIRMED-IN-PART

ELD

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