Ex Parte Orcutt

Board of Patent Appeals and Interferences

Jul 17, 2008

10138402 (B.P.A.I. Jul. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN W. ORCUTT
____________

Appeal 2008-0777
Application 10/138,402
Technology Center 2800
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Decided: July 17, 2008
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Before CHARLES F. WARREN, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals from a rejection of claims 1, 3-14, 16-18, 21,
27 and 34-37, which are all of the pending claims.
THE INVENTION
The Appellant claims a torsional hinge apparatus and a method for
making it. Claim 1 is illustrative:
Appeal 2008-0777
Application 10/138,402

1. A torsional hinge apparatus having minimal hinge stress due to
temperature variations comprising:

a support substrate having a first coefficient of expansion;

an integral torsional hinge device formed from a material having a
different coefficient of expansion, and having an inside portion attached to a
support portion along an axis by at least one pair of torsional hinges; and

anchor means for attaching said support portion of said integral
torsional hinge device to said support substrate to allow substantially
unrestricted expansion and contraction along two dimensions of said integral
torsional hinge device and to disallow movement with respect to said
support substrate in a third dimension said anchor means consisting of a
single anchor attaching said support portion of said integral torsional hinge
device to said support substrate at a single location; and

a biasing member attached to said support substrate and applying a
force against said support portion of said integral torsional hinge device at in
said third direction another location spaced from said single location. [ ]1

THE REFERENCES
Neukermans US 5,969,465 Oct. 19, 1999
Dhuler US 6,428,173 B1 Aug. 6, 2002
(filed May 3, 1999)
Carr US 6,519,075 B2 Feb. 11, 2003
(filed Jan. 25, 2001)
Sun US 6,706,202 B1 Mar. 16, 2004
(filed Sep. 28, 2000)

1 It appears that in claim 1, “at in said third direction another” should read
“in said third dimension at another”, and that in claims 3, 14, 21 and 27,
“said third direction” should read “said third dimension”.
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Application 10/138,402

THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
5, 6, 11, 12 and 34-36 over Sun; claims 3, 8, 14, 17, 21, 27 and 37 over Sun
in view of Dhuler; claims 4 and 9 over Sun in view of Carr; claims 7, 10
and 13 over Sun in view of Neukermans; and claims 16 and 18 over Sun in
view of Dhuler and Neukermans.
OPINION
We reverse the Examiner’s rejections.
Rejections of claims 1, 5, 6, 11, 12 and 34-36
over Sun, claims 4 and 9 over Sun in view of Carr, and
claims 7, 10 and 13 over Sun in view of Neukermans

We need to address only claim 1, which is the sole independent claim
among claims 1, 4-7, 9-13 and 34-36.2
Sun uses stressed thin films to make shaped micro-electromechanical
(MEMS) and micro-opto-electromechanical (MOEMS) mirrors (abstract;
col. 1, ll. 25-30). To make a mirror (100), Sun forms on a substrate (510),
sequentially, sacrificial layers (520, 525), a structural layer (530), a stress
gradient layer (110) and a reflective layer (140) (Fig. 1b; col. 2, ll. 35-37;
col. 4, ll. 35-53). “After structure layer 530 is released from substrate 510
(see FIG. 5), the stress gradient in stress gradient layer 110 causes released
structure layer 530 to bend” (col. 2, ll. 23-26). Structure layer 530 includes,
on its side opposite stress gradient layer 110, reinforcing beams (130) that
are parallel to a common axis and prevent the mirror from bending in the
direction perpendicular to the common axis (col. 2, ll. 27-30). The mirror is

2 The Examiner does not rely upon Carr or Neukermans for any disclosure
that remedies the deficiency in Sun as to the independent claim (Ans. 7-8).
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Application 10/138,402

supported, in one embodiment, by a torsion bar (220) and is angularly
adjustable using a sliding actuator (210) or an electrostatically driven comb
drive actuator (not shown) (Fig. 2; col. 2, l. 61 – col. 3, l. 2).
The Appellant’s claim 1 requires a biasing member that is attached to
a support substrate and applies a force against a support portion that is
attached to an inside portion of an integral torsion hinge device by at least
one pair of torsional hinges.
The Examiner relies upon Sun’s reinforcing beams 130 as
corresponding to the Appellant’s biasing member (Ans. 4). The Examiner
refers to “support portion (Fig. 2)”, see id., but does not specifically point
out what the Examiner considers to be the support portion. The Examiner
relies upon Sun’s substrate 510 as corresponding to the Appellant’s support
substrate, and Sun’s torsion bar 220 as corresponding to the Appellant’s
torsional hinges (Ans. 4).
Sun’s substrate 510 is removed from structure layer 530 to cause the
released structure layer 530 to bend (col. 2, ll. 22-25). Hence, Sun’s
substrate 510 is not part of the bent mirror structure attached to torsion
bar 220 (fig. 2) and, therefore, cannot correspond to the Appellant’s support
substrate to which the biasing member is attached.
Regarding Sun, the Examiner refers to “an anchor means (210) for
attaching the support portion of the integral torsional hinge device to the
support substrate” (Ans. 4).
The Examiner, however, has not established that any substrate to
which Sun’s sliding actuator 210 (fig. 2) is attached also is attached to Sun’s
reinforcing beams 130 (on the underside of the curved mirror in fig. 2) such
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Application 10/138,402

that the reinforcing beams can correspond to the Appellant’s biasing
member attached to the support substrate.
For the above reasons we conclude that the Examiner has not
established a prima facie case of obviousness of the invention claimed in the
Appellant’s claim 1 and its dependent claims 4-7, 9-13 and 34-36.
Rejections of claims 3, 8, 14, 17, 21, 27 and 37 over
Sun in view of Dhuler, and claims 16 and 18 over
Sun in view of Dhuler and Neukermans

We need to address only the independent claims among claims 3, 8,
14, 16-18, 21, 27 and 37, i.e., claims 3, 14, 21 and 27.
Each of the Appellant’s apparatus claims 3, 21 and 27 requires the
biasing member discussed above with respect to claim 1. The Examiner
does not rely upon Dhuler or Neukermans for any disclosure that remedies
the above-discussed deficiency in Sun as to the biasing member, or explain
how Sun would have rendered the Appellant’s biasing member prima facie
obvious to one of ordinary skill in the art (Ans. 6-8). Hence, the Examiner
has not established a prima facie case of obviousness of the inventions
claimed in the Appellant’s independent claims 3, 21 and 27, and dependent
claim 8.
The Appellant’s method claim 14 does not require a biasing member
attached to a support substrate. That claim requires “restraining said support
portion from movement due to vibrations and inertia forces by applying a
biasing force in said third direction at a location on said support portion of
said integral torsion hinge device spaced from said single location.” The
Appellant does not argue that Sun’s reinforcing beams 130, which prevent
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Application 10/138,402

bending in the direction perpendicular to their common axis (col. 2, ll. 27-
30), fail to provide that restraint to at least some extent.
Claim 14, however, also requires “attaching said support portion of
said integral torsional hinge device to said support substrate … at [a] single
location [using] a single anchor”.
As pointed out above, the Examiner does not specify what the
Examiner relies upon as corresponding to the Appellant’s support portion,
and Sun’s substrate 510, which is removed during the process of making the
mirror, cannot correspond to the Appellant’s support substrate. The
Examiner argues that Sun’s sliding actuator 210 is attached to a support
substrate (Ans. 4-5). Sun’s mirror, however, does not appear to be attached
to the same support substrate as the sliding actuator (Fig. 2). Thus, Sun does
not appear to disclose attaching to the sliding actuator’s support substrate
any portion of the mirror which reasonably can be considered to correspond
to the Appellant’s support portion, and the Examiner has not explained how
the applied prior art would have rendered such attachment prima facie
obvious by the applied prior art.
Hence, the Examiner has not established a prima facie case of
obviousness of the inventions claimed in the Appellant’s claim 14 or its
dependent claims 16-18 and 37.
Independent claims 3, 21 and 27, and dependent claim 8, also require
that the anchor means is a clamp. For a disclosure of a clamp the Examiner
relies upon Dhuler (Ans. 6-7).3

3 Method claim 14 and its dependent claims 16 and 18 do not require a
clamp. Hence, it is not apparent why Dhuler is relied upon in the rejection
of those claims.
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Application 10/138,402

Dhuler discloses an MEMS mirror structure comprising a
microactuator (30) adapted to move in response to thermal actuation, and a
mirror (20) adapted to move with the microactuator (col. 6, ll. 7-9, 20-21).
The mirror structure also includes a mechanical latch (70) that
is adapted to open in response to thermal actuation so as to receive the
microactuator 30 and adapted to close once thermal actuation is
removed so as to clamp the microactuator in position. As such, once
the microactuator is clamped in position, the mirror 20 will be
correspondingly held in place, in an actuated position, even after
thermal actuation is removed from the microactuator [col. 7, ll. 29-
36].

The Examiner argues that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to have the Sun
reference include a clamp to attach the apparatus to a support substrate as
taught by Dhuler for the purpose of releasably attaching the Sun MEMS
device to allow the Sun device to be movable” (Ans. 6-7).
The Appellant argues that “[t]here is no showing or suggestion that
the anchor means which allows unrestriction [sic, unrestricted] expansion
and contractions in two dimensions and disallows movement in a third
dimensions [sic] can be met by the thermally actuated mechanical latch 70
of Dhuler et al.” (Br. 6).
The Examiner responds (Ans. 10):
The movement limitations of the anchor are taught by the Sun
reference as discussed above. The Dhuler reference is used merely to
teach that it is known in the art to incorporate a clamp into an anchor
in a MEMS device. The Dhuler reference therefore would not be
required to teach the movement limitations as asserted by the
applicant.

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The Examiner does not point out where Sun indicates that there would
be a reason to make the sliding actuator, which is the component the
Examiner relies upon as being attached to the support substrate (Ans. 4),
releasable. Also, the Examiner has not established that Dhuler’s mechanical
latch, which is used to clamp a thermally actuatable microactuator (30)
(col. 7, ll. 59-61), would be suitable for clamping Sun’s sliding actuator.
Hence, the record indicates that the Examiner’s reason for combining
Sun and Dhuler comes from the Appellant’s disclosure rather than coming
from the applied prior art and that, therefore, the Examiner used
impermissible hindsight in rejecting the Appellant’s claims. See W.L. Gore
& Associates v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393, 396 (CCPA
1960). Accordingly, for this additional reason we conclude that the
Examiner has not established a prima facie case of obviousness of the
inventions claimed in the Appellant’s independent claims 3, 21 and 27, and
dependent claim 8.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 5, 6, 11, 12 and 34-
36 over Sun, claims 3, 8, 14, 17, 21, 27 and 37 over Sun in view of Dhuler,
claims 4 and 9 over Sun in view of Carr, claims 7, 10 and 13 over Sun in
view of Neukermans, and claims 16 and 18 over Sun in view of Dhuler and
Neukermans are reversed.
REVERSED

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Application 10/138,402

PL initials:
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