Ex Parte Murphy

Board of Patent Appeals and Interferences

Jan 10, 2003

09081393 (B.P.A.I. Jan. 10, 2003)

1 Application for patent filed May 18, 1998, which claims the filing
priority benefit under 35 U.S.C. § 119 of Provisional Application No.
60/051,694, filed July 3, 1997.
2 The Oral Hearing set for September 18, 2002 was waived by Appellant
in a communication, received by facsimile, on July 22, 2002.
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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES MORGAN MURPHY
____________
Appeal No. 2001-1570
Application No. 09/081,3931
____________
ON BRIEF2
____________
Before RUGGIERO, BLANKENSHIP and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-8, 10-12, 14-17 and 21-30. Claims 9 and 13
have been canceled and claims 18-20 are withdrawn from
consideration as being drawn to a non-elected invention.
We affirm-in-part.
Appeal No. 2001-1570
Application No. 09/081,393
2
BACKGROUND
Appellant’s invention is directed to a second-stage, fine-
positioning piezoelectric microactuator for positioning the head
of a disk drive relative to a recording surface. The
microactuator, as depicted in Figure 6, includes a flat metal
sheet having a central beam 80 and two bent-up tabs 72 and 74
extending from opposite sides of the beam (specification, page
8). Piezoelectric elements 76 and 78 are attached to the tabs
and form two monomorphs aligned symmetrically on either side of
the central beam.
Representative independent claim 1 is reproduced below:
1. Apparatus for positioning a head adjacent a recording
surface of a recording media, said recording surface defining
multiple data track locations, the apparatus comprising:
a movable support arm supporting the head adjacent the
recording surface and movable for course positioning of the head
relative to each of the data track location; and
fine positioning means disposed on the movable support arm,
for selectively mounting and fire [fine] positioning of the head
relative to each of the data track location wherein the fine
positioning means includes two monomorphs constructed from a
metal sheet having symmetrically bent tabs on which a
piezoelectric element is attached.
The Examiner relies on the following reference in rejecting
the claims:
Boutaghou et al. (Boutaghou) 5,521,778 May 28, 1996
Appeal No. 2001-1570
Application No. 09/081,393
3 Appellant’s amendments (paper No. 11, filed April 10, 2000 and Paper
No. 14, filed May 26, 2000) that included changes to claim 27 to correct this
typographical error, were denied entry by the Examiner. Additionally, the
Examiner has withdrawn the rejection with respect to “the lever arm” based on
Appellant’s argument asserting that the claim recites “wherein a lever arm is
attached to the pivot point” and provides antecedent basis for “the lever
arm.”
3
Claim 27 stands rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
Claims 1-8, 10-12, 14-17 and 21-30 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Boutaghou.
Rather than reiterate the viewpoints of the Examiner and
Appellant regarding the above-noted rejections, we make reference
to the answer (Paper No. 19, mailed October 19, 2000) for the
Examiner’s reasoning and the appeal brief (Paper No. 18, filed
October 6, 2000) for Appellant’s arguments thereagainst.
OPINION
With respect to the rejection of claim 27 under the second
paragraph of 35 U.S.C. § 112, Appellant asserts that the term
“pivot pin” is merely a typographical error and was intended to
refer to the previously recited “pivot point” (brief, page 11).
The Examiner agrees with Appellant’s position and states that an
amendment to correct “pin” to “point” would remove the rejection3
(answer, page 5). Accordingly, the 35 U.S.C. § 112 rejection of
claim 27 is sustained pro forma.
Appeal No. 2001-1570
Application No. 09/081,393
4
Turning now to the 35 U.S.C. § 102(b) rejection of the
claims, we note that Appellant states his intention that claims
1-8, 10-12, 14-17 and 21-30 be grouped together so that they
stand and fall together (brief, page 10). Accordingly, we will
consider the claims as one group and will limit our consideration
to independent claim 1 as the representative claim of the group.
To rebut the 35 U.S.C. § 102 rejection of the claims, the
focus of Appellant’s arguments is that Boutaghou does not
disclose monomorphs constructed from a metal sheet having two
bent up tabs with attached piezoelectric elements (brief, page
12). Additionally, Appellant points out that the claimed “bent
tabs” and “bent-up tabs” are different from tabs 47 of Boutaghou,
which are “bent” only when the piezoelectric elements are
energized (id.).
The Examiner responds to Appellant’s arguments by relying on
the disclosure of Boutaghou stating “PZT elements 44 preferably
should be bi-morph in nature” (column 6, line 14) and concludes
that the reference does not preclude using monomorphs since both
bi-morphs and monomorphs are well known (answer, page 5).
Additionally, the Examiner asserts that each piezoelectric
element 44 on the sides of tab 47 of Boutaghou can be considered
a monomorph structure (id.). The Examiner further argues that
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Application No. 09/081,393
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piezoelectric elements 44 cause tabs 47 to undergo deformation
during the operation of the microactuator and thus, read on the
claimed recitation of “bent tabs” and “bent-up tabs” (answer,
page 6).
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
such that a person of ordinary skill in the art could practice
the invention without undue experimentation. See Atlas Powder
Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947
(Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d
1671, 1673 (Fed. Cir. 1994).
After reviewing Boutaghou, we agree with Appellant’s
assertion that the reference includes no teaching or suggestion
related to monomorphs made of a metal sheet having bent tabs on
which a piezoelectric element is attached. Boutaghou provides
for PZT elements 44 which are preferably bi-morph in nature and
are bonded to the sides of spokes 47 (column 6, lines 5-13). The
Examiner provides no specific reference in Boutaghou related to
the use of monomorph elements, nor can we find the necessary
teachings in the reference that would have pointed to using such
elements.
Appeal No. 2001-1570
Application No. 09/081,393
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Additionally, in contrast to the Examiner’s assertion and
different from the claimed monomorphs having bent tabs, the
disclosed spokes of Boutaghou are bent only when the bi-morph
elements are energized by an electrical potential and current
(column 6, lines 14-19). Furthermore, we find nothing in
Boutaghou that relates to the use of monomorphs formed of a
piezoelectric element attached to bent tabs of a metal sheet. In
fact, the Examiner has incorrectly identified bi-morph elements
44 attached to the sides of spoke 47 as two monomorphs, one on
each side of the spoke, that may be combined to produce a bi-
morph structure. Additionally, the Examiner’s reference to the
bent spokes that are deformed during the movement of the
actuator, falls short of the claimed “two monomorphs constructed
from a metal sheet having symmetrically bent tabs.” In that
regard, the spokes of Boutaghou, although bendable and deformable
by an electrical potential and current energizing the bi-morphs,
include neither the metal sheets nor any portions that are the
same as the claimed “bent tabs.” Accordingly, because the
claimed monomorphs on bent tabs is not taught by Boutaghou, the
prior art does not anticipate the claims and the 35 U.S.C. § 102
rejection of claims 1-8, 10-12, 14-17 and 21-30 cannot be
sustained.
Appeal No. 2001-1570
Application No. 09/081,393
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claim 27 under 35 U.S.C. § 112 is affirmed, but
reversed with respect to the rejection of claims 1-8, 10-12, 14-
17 and 21-30 under 35 U.S.C. § 102.
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
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2001-1570
Application No. 09/081,393
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