Ex Parte Mehta

Board of Patent Appeals and Interferences

Jul 20, 2009

10421303 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SARABJIT MEHTA
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Appeal 2009-005283
Application 10/421,303
Technology Center 2800
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Decided:1 July 20, 2009
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Before ROBERT E. NAPPI, SCOTT R. BOALICK, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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The present appeal follows an earlier Board decision in this
application that affirmed-in-part the Examiner’s rejections that were based in
part on prior art cited in this appeal, namely the Gammel and Oomen
references.2 See Ex parte Mehta, No. 2007-2854, slip op. (BPAI Jan. 7,
2008).
Following that decision, prosecution was reopened and Appellant now
appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1,
2, 4, and 5. Claims 3, 6-18, and 42-47 have been indicated as containing
allowable subject matter. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
Appellant invented a layered piezoelectric actuator for tuning
microwave components. Specifically, a variable capacitor includes a
deflectable membrane connected to a conductive element. Changes in shape
of the piezoelectric arrangement move the membrane upwardly and
downwardly to vary the capacitance.3 Claim 1 is illustrative with the key
disputed limitation emphasized:
1. An actuating assembly for tuning a circuit, comprising:

a deflectable membrane having a top portion and a bottom portion, the
membrane overlying the circuit to be tuned;

a conductive element, connected with the bottom portion of the
membrane, the conductive element overlying the circuit to be tuned; and

2 See p. 3, infra, of this decision for full citations of these references.

3 See generally Abstract; Spec. 4-8.
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a piezoelectric arrangement disposed on the top portion of the
membrane, wherein changes in shape of the piezoelectric arrangement allow
a movement of the membrane and a corresponding controllable upward and
downward movement of the conductive element from a resting condition of
the conductive element, and wherein, at any given time, a substantially
uniform gap is formed between the conductive element and the circuit to be
tuned.

The Examiner relies on the following as evidence of unpatentability:
Oomen US 3,646,413 Feb. 29, 1972
Gammel US 6,212,056 B1 Apr. 3, 2001

1. The Examiner rejected claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Gammel. Ans. 3 and 4.
2. The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Gammel and Oomen. Ans. 4 and 5.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

4 Throughout this opinion, we refer to (1) the Appeal Brief filed August 18,
2008; (2) the Examiner’s Answer mailed November 3, 2008; and (3) the
Reply Brief filed November 24, 2008.
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THE ANTICIPATION REJECTION
Regarding independent claim 1, the Examiner finds that Gammel
discloses a variable capacitor with a flexible membrane (or diaphragm) that
moves upwardly and downwardly from a resting condition via an actuated
piezoelectric element. According to the Examiner, since a “resting position”
is “any position which the diaphragm stops during its lifetime” (Ans. 5),
Gammel’s membrane can have many “resting positions” depending on the
particular air gap selected between the conductive elements via the
piezoelectric element. The Examiner reasons that if Gammel’s capacitor is
later adjusted from one of these “resting positions” via the piezoelectric
element, the membrane would be controllably movable both upwardly and
downwardly from these “resting positions” and therefore meet the claim.
Ans. 3-5.
Appellant argues that Gammel does not allow the membrane to move
downward from its original or resting position since Gammel only maintains
a selected air gap by electrically powering the piezoelectric actuator.
Otherwise, the membrane falls back to its original (or resting) position. But
there is no controllable downward movement from this resting position.
Reply Br. 2-3.
Appellant also notes that the Examiner’s position runs counter to the
previous Board decision which found the Examiner’s position regarding
momentary resting positions “problematic,” but nonetheless sustained the
rejection since the Board held that the membrane’s flexing back towards the
resting condition in Gammel was downward movement with respect to the
resting condition (a limitation recited in the claims at issue in the earlier
appeal). But Appellant notes that the Board in the earlier decision
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emphasized that the claim did not require downward movement from the
conductive element’s resting condition—a limitation that is now present in
claim 1 on appeal. App. Br. 12-16.
Appellant also argues that the Examiner has not shown that Gammel
will, at any given time, maintain a substantially uniform air gap between the
conductive element and the circuit to be tuned as claimed. According to
Appellant, Gammel’s membrane deforms when a control signal is applied,
but will not maintain a substantially uniform air gap as claimed. App. Br.
16.
The issues before us, then, are as follows:

ISSUES
Under § 102, has Appellant shown that the Examiner erred in
rejecting claim 1 by finding that Gammel discloses:
(1) a piezoelectric arrangement allows movement of a deflectable
membrane such that there is a corresponding controllable upward and
downward movement of a conductive element from its resting condition, and
(2) at any given time, forming a substantially uniform air gap between
the conductive element and the circuit to be tuned?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. As shown in Figure 12, the variable capacitor in Gammel is formed
from a fixed upper plate 48 and a movable lower plate 27. The lower plate
27 moves toward the upper plate via upward flexure of the membrane 24
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which may have a piezoelectric element 60 attached thereto. Gammel, col.
7, ll. 9-32; Figs. 12 and 13.
2. The lower plate 27 is moved upward responsive to applied control
signals, and the amount of upward movement is a direct function of the
magnitude of the applied control voltage. Thus, capacitance can be varied in
an electrically controlled way. Gammel, col. 7, ll. 18-23.

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
“Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of circum-
stances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (citations omitted).

ANALYSIS
We begin by noting that Gammel is silent as to any downward
membrane movement at all, let alone from its original position. Rather,
Gammel describes only upward movement responsive to an applied control
voltage. See FF 1 and 2. Nevertheless, as the previous Board decision
indicates, it is undisputed that Gammel’s membrane flexes back toward its
original position following actuation. Mehta, at 8. This original position is
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therefore a “resting position” since it is the “default” position of the
membrane and the attached conductive element when the piezoelectric
element is not actuated and the membrane is not flexed. See FF 1 and 2.
Since Gammel is silent regarding any downward movement at all
(except for the membrane’s inherent flexing back to the resting position as
noted above), it follows that Gammel is likewise silent regarding downward
movement from this resting position or “resting condition.”
The Examiner apparently acknowledges this fact, but nonetheless
maintains that (1) a “resting position” can be any position at which the
diaphragm stops during its lifetime (i.e., intermediate “resting positions”
following actuation), and (2) the diaphragm can subsequently move up or
down from any of these intermediate “resting positions.” Ans. 5.
The Board found this position to be problematic in the previous
decision (Mehta, at 8), and it is likewise problematic here. First, we find
that the membrane’s original position in Gammel in which the membrane is
not flexed is its resting condition. As such, the “intermediate” positions
noted by the Examiner would not be resting positions since they would
involve some flexing of the membrane to attain a position other than the
original position. See FF 1 and 2. Simply put, a flexed membrane is not in a
resting condition.
Second, even assuming, for the sake of argument, that the
“intermediate” positions following initial actuation could be considered
“resting positions” as the Examiner contends (a finding we do not reach),
Gammel is silent regarding any “intermediate” position such that the
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membrane is further moved upwardly and downwardly from such a position
(i.e., movement resulting from a second actuation following the first
actuation).
To be sure, Gammel does indicate that amount of upward movement
is a direct function of the magnitude of the applied control voltage (FF 2), a
teaching which suggests that a particular membrane position can be attained
via a corresponding applied voltage. But Gammel does not necessarily
further move the membrane from these particular positions as the Examiner
contends, let alone both upwardly and downwardly from these positions.
“Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” Robertson, 169 F.3d at 745. Thus, while it may be possible
that such subsequent membrane movement can occur following initial
actuation in Gammel, the Examiner has simply not shown that this is
necessarily the case.
For this reason alone, we cannot sustain the Examiner’s anticipation
rejection of independent claim 1 and dependent claim 2 for similar reasons.
We therefore need not reach Appellant’s second argument regarding
Gammel’s alleged failure to disclose, at any given time, forming a
substantially uniform air gap between the conductive element and the circuit
to be tuned (App. Br. 16). Nevertheless, we note that the Examiner failed to
respond to this argument in any event. See Ans. 5.

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THE OBVIOUSNESS REJECTION
PRINCIPLES OF LAW
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). If the
Examiner’s burden is met, the burden then shifts to the Appellant 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
(Fed. Cir. 1992).

ANALYSIS
Regarding the obviousness rejection of dependent claims 4 and 5
(Ans. 4-5), since we find that Oomen does not cure the deficiencies noted
above with respect to independent claim 1, we will not sustain the
obviousness rejection for similar reasons.

CONCLUSION
Appellant has shown that the Examiner erred in rejecting (1) claims 1
and 2 under § 102, and (2) claims 4 and 5 under § 103.

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ORDER
The Examiner’s decision rejecting claims 1, 2, 4, and 5 is reversed.

REVERSED

pgc

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