Ex Parte Horning

Board of Patent Appeals and Interferences

Apr 10, 2008

10673453 (B.P.A.I. Apr. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT D. HORNING
____________

Appeal 2007-2395
Application 10/673,453
Technology Center 2800
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Decided: April 10, 2008
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, 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 1-15 and 22-26. Claims 16-21 have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

Appeal 2007-2395
Application 10/673,453

BACKGROUND
Appellant’s invention relates to a polymer actuator having a circular
unit cell. An understanding of the invention can be derived from a reading
of exemplary claim 1, which is reproduced below.
1. A microactuator device, comprising:

at least a pair of polymeric sheets each having conductive and
dielectric films deposited thereon, the polymeric sheets facing each
other and bonded together to create at least one cell having a
substantially circular shape parallel to a plane in which the polymeric
sheets lie, the at least one cell having at least one egress hole to allow
a fluid to pass there through when a source of electric potential is
applied to the conductive films to cause a portion of the polymeric
sheets in the vicinity of a perimeter of the cell to be attracted to one
another and thereby cause the cell to retract.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Ohnstein US 5,180,623 Jan. 19, 1993
Scheurenbrand US 6,182,941 B1 Feb. 6, 2001
Horning US 2002/0125790 A1 Sep. 12, 2002

REJECTIONS
Claims 1-15, 22, and 23 stand rejected under 35 U.S.C.§ 103(a) as
being unpatentable over Horning and Ohnstein. Claims 24-26 stand rejected
under 35 U.S.C.§ 103(a) as being unpatentable over Horning and Ohnstein
in view of Scheurenbrand.
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Rather than reiterate the conflicting viewpoints advanced by the
Examiner and Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed April 18, 2007) for the
reasoning in support of the rejections, and to Appellant’s Brief (filed April
20, 2006) and Reply Brief (filed April 9, 2007 ) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court

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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). "[W]hen a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). More specifically,
"when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." Id. at
1740 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).
Appellant's contention is that the Examiner has failed to establish a
prima facie case of obviousness. Appellant contends that the Examiner has
not set forth a clear articulation of a motivation for combining the elements
in different prior art references. Specifically, Appellant contends that there
is no articulation at all as to why one of ordinary skill in the art would have
been motivated to change the configuration of the linear polymer cells of
Horning to circular polymer cells in light of the teachings of Ohnstein (Br.
9). Here, we find Appellant's argument to be a rather narrow and a literal
interpretation of only the express teachings of Ohnstein and Horning. While
we agree with Appellant’s argument that neither Horning or Ohnstein
individually teach or suggest the totality of the instant claimed invention, it
is the combined teachings of Horning and Ohnstein in light of what would
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have been readily apparent to those skilled in the art at the time of the
invention which the Examiner has relied upon in the rejection. (Ans. 4-6).
At page 6 of the Answer, the Examiner has clearly identified the
teachings of Ohnstein with respect to figures 6a and 7a which teach two
similar square and circular embodiments of the microvalve. Here, the
Examiner maintains that Ohnstein teaches the equivalence of the valve being
square or circular and that those skilled in the art would have known to
choose between those equivalent structures or orientations in shape, size,
and arrangement.
Appellant argues that Ohnstein does not state that the circular shape of
the closure plate specifically allows the device of Ohnstein to operate as a
semi-conductor electrostatic valve and only operates similarly to a closure
plate with another's shape. Appellant asserts that Ohnstein offers no
explanation as to why a closure plate with a circular shape offers advantages
over or operates differently from a closure plate with a different shape.
Appellant argues that since Ohnstein offers no explanation as to why a
circular-closure plate all shape offers advantages over or operates differently
from any other closure plate shape, and the Examiner has pointed to no other
objective evidence in either reference, the Examiner has failed to provide a
sufficient motivation to combine the teachings. (Reply Br. 3-4). We cannot
agree with Appellant's broad sweeping argument/conclusion. Here, the
Examiner has found these “similar” embodiments to be equivalents. We do
not find that Appellant has shown that the combination does more than yield
a predictable result when a structure already known in the prior art is altered
by the mere substitution of one shape for another known in the field.
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We find the teachings of Ohnstein to clearly teach and fairly suggest
the use of the disclosed shapes including rectangular, square, or circular.
Therefore, we find that Ohnstein provides at least a general motivation to
those skilled in the art to implement the microvalve or micro-actuator in
various shapes. Here, we find no limitations in the language of independent
claim 1 which would require the more specific level of teachings, suggestion
or motivation as Appellant contends. We find Appellant's argument
concerning the need for disclosure of recited shape related advantages or
operational differentiation between shapes to go beyond the express scope of
independent claim 1. We find that independent claim 1 which merely recites
a micro-actuator device reciting the structural relationship only of the parts
of the device. Here, we find that Ohnstein does provide an express teaching
and suggestion of the use of various shapes in the closure plate for various
applications of the device. While Ohnstein does not go into great depth into
the various embodiments, we find that those skilled in the relevant art would
have been motivated to implement the various shapes for alternative
applications. Therefore, we do not find Appellant's argument to be
persuasive of error in the Examiner's prima facie case, and we will sustain
the rejection of independent claims 1, 7, and 12 and dependent claims 2-6,
8-11, 13-15, and 22-23.
With respect to dependent claims 24-26, Appellant argues that
Scheurenbrand does not overcome any of the deficiencies associated with
the above combination. Since we did not find Appellant's argument above
to be persuasive, we similarly do not find the same argument persuasive with
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respect to dependent claims 24-26, and we will sustain the rejection of
dependent claims 24-26.

CONCLUSION
To summarize, we have sustained the rejection of claims 1-15 and 22-
26 under 35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

pgc

Matthew S. Luxton
Honeywell International, Inc.
Law Dept. AB2
101 Columbia Road
Morristown, NJ 07962
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