Ex Parte Ikegami

Board of Patent Appeals and Interferences

Jul 30, 2003

09142464 (B.P.A.I. Jul. 30, 2003)

1 In the Advisory Action mailed September 27, 2001 (Paper No. 28) the examiner indicated that
the Amendment After Final Rejection filed September 20, 2001 (Paper No. 27, Amendment F) amending
claims 1, 4, 14 and 17 would be entered upon the filing of an Appeal. And yet, the face of the file and the
amendment itself, does not show that this has been done. However, since it appears that the amendment
should have been entered, we will examine the claims as amended in Paper No. 27. Upon return of the
application to the examining corps, this matter should be corrected as appropriate.
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and is not binding precedent of the Board.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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YASUMITSU IKEGAMI
____________
Appeal No. 2003-0053
Application No. 09/142,464
____________
HEARD: July 16, 2003
____________
Before RUGGIERO, DIXON, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 3-7,
14 and 16-20.1 Claims 8-13 and 21-26 have been withdrawn from consideration.
Claims 2 and 15 have been canceled.
We REVERSE.
Appeal No. 2003-0053
Application No. 09/142,464
2
Appellant's invention relates to a piezoelectric resonator, method for
manufacturing same and piezoelectric resonator unit. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A piezoelectric resonator, comprising:
a piezoelectric resonator element having a piezoelectric body and
electrodes disposed on the piezoelectric body;
a supporting member supporting said piezoelectric resonator
element; and
a plurality of leads mechanically connecting said piezoelectric
resonator element to said supporting member and permitting electrical
connection thereof, each of said leads being provided with a flat leading
end portion having a substantially U-shaped edge which opens toward a
leading end of the leads, each flat leading end portion being connected
substantially in parallel with an electrode using a connecting layer formed
with a conductive resin between the flat leading end portion and said
electrode;
a fixing layer made of a UV-setting type resin disposed on said
piezoelectric resonator having a short setting time, the fixing layer fixing
the leading end portions of said leads and said piezoelectric resonator
element prior to formation of said connecting layer; and
said piezoelectric resonator element being attached to the
substantially U-shaped edge, on a side of said piezoelectric resonator
element which faces said leads, so that an edge of said piezoelectric
resonator element on the side which faces said leads may be positioned
on the substantially U-shaped edge and that the piezoelectric resonator
element is supported by said leads so that a gap is formed between said
supporting member and said piezoelectric resonator element.
Appeal No. 2003-0053
Application No. 09/142,464
2 Appellant references the pagination of Ogiso ‘074 in place of a translation of the Ogiso ‘075
patent which was applied by the examiner. Since appellant does not dispute the use the text of this patent
based upon a national stage application which issued, we will similarly reference this document for
uniformity.
With this decision, we supply a copy of a translation of the Ogiso ‘075 document which was prepared by
FLS, Inc. for the USPTO in Sep. 2002.
3
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Pennybacker 2,413,579 Dec. 31, 1946
Ogiso et al. (Ogiso ‘074) 5,867,074 Feb. 02, 1999
(Filed Jan. 18, 1996)2
Ogiso et al. (Ogiso ‘075) WO 95-24075 Sep. 08, 1995
Claims 1, 3-7, 14 and 16-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ogiso ‘075 in view of Pennybacker.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 32, mailed Feb. 11, 2002) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 31, filed Dec. 31, 2002) and reply
brief (Paper No. 34, filed Apr. 10, 2002) for appellant's 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 which follow.
Appeal No. 2003-0053
Application No. 09/142,464
4
Appellant argues that the examiner has not established a prima facie case of
obviousness of the claimed invention. (See brief at pages 4-6.) Appellant argues that
Ogiso teaches a “V” shaped connection and that the examiner’s reliance upon
Pennybacker to teach and suggest a “U” shaped connection is misplaced, and
Pennybacker does not provide a motivation to modify the “V” in Ogiso to a substantially
“U” shaped connection since the “V” shaped connection is used by Ogiso to limit the
positioning of the bump 40 relative to the connection end 25c. (See brief at page 6.)
Appellant argues that Pennybacker does not provide the required motivation to modify
Ogiso. Appellant argues that Pennybacker does not teach or suggest that each of the
leads being provided with a flat leading end portion having a substantially U-shaped
edge which opens towards a leading edge of the leads as recited in the language of
independent claim 1. (See brief at pages 6-7.) Appellant argues that the “V” shaped
end of Ogiso would destroy of positioning function of the “V” shape in Ogiso. (See reply
brief at page 2-3.) Therefore, appellant argues that it would not have been obvious to
one of ordinary skill in the art to replace the “V” shape with a “U” shape since the “U”
shaped end would allow movement which would not be conducive to positioning.
The examiner maintains at page 3 of the answer that selection from any known
lead end would have been obvious to skilled artisans. While the examiner maintains
that any known shape end may be used, the examiner does not provide any motivation
for modifying the end of Ogiso. While we agree that the shape of the end may be
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Application No. 09/142,464
5
varied, the examiner merely speculates on a modification to Ogiso without regard to
why Ogiso selected the specific shape disclosed and what impact a change may have
on the operation and manufacturing of the device of Ogiso. Therefore we find that the
examiner has not provided a convincing line of reasoning why it would have been
obvious to one of ordinary skill in the art to modify the shape of the connection end of
the lead in Ogiso.
At the oral hearing appellant’s representative was asked if the difference in the
shape was significant to the operation of the claimed invention. Appellant’s
representative stated that appellant disputes the shape with respect to the motivation to
modify the teachings of the prior art references applied by the examiner. Appellant’s
representative further stated that the shape was not as significant as the use of the“UV-
setting type resin disposed on said piezoelectric resonator having a short setting time,
the fixing layer fixing the leading end portions of said leads and said piezoelectric
resonator element prior to formation of said connecting layer.” The UV setting resin is
used to tack the connection leads to the resonator body to allow a better connection of
the connection layer. Furthermore, appellant’s representative stated that although
Ogiso does disclose the use of a UV setting resin, it is used to connect the resonator 1
in Fig. 11 to a ceramic case 32 rather than to connect to the piezoelectric element.
(See answer at page 4, Ogiso at columns 9, 11 and 13.) We agree with appellant that
Appeal No. 2003-0053
Application No. 09/142,464
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since the connection to the ceramic element would not permit electrical connection as
recited in the claims, this use of the UV resin would not have taught or suggested the
use for connection of the U-shaped end of the connection to the resonator element.
The examiner maintains that any method steps for producing the element are
irrelevant to the patentability of the product. (See answer at page 4.) We agree with
the examiner with the exception that the layers within the product must still be in the
final product and they must be in the claimed invention in the claimed manner and
location. The examiner maintains that all the reasons for use of a UV or thermosetting
epoxy for the non-conductive adhesive would be just as valid for the conductive resin.
(See answer at page 4.) While this may be true, it does not address the use of both
and the specific locations recited in the language of independent claim 1 as
distinguished by appellant at pages 7-10 of the brief. We find that the examiner has not
addressed the use of both the fixing layer and the connecting layer along with the
placement thereof on the product. Therefore, we will not sustain the rejection of
independent claim 1 and its dependent claims 3-7.
With respect to independent claim 14, we find the claim to have similar
limitations to the connection and fixing layers of which we have previously found that
the examiner has not addressed. Therefore, we will not sustain the rejection of
independent claim 14 and its dependent claims 16-20.
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Application No. 09/142,464
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 3-7, 14 and 16-20
under 35 U.S.C. § 103 is reversed.
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JLD/vsh
Appeal No. 2003-0053
Application No. 09/142,464
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