Ex Parte Sugg

Patent Trial and Appeal Board

Feb 7, 2013

10540026 (P.T.A.B. Feb. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/540,026 01/25/2006 Bertram Sugg R.304045 8866
2119 7590 02/07/2013
RONALD E. GREIGG
GREIGG & GREIGG P.L.L.C.
1423 POWHATAN STREET, UNIT ONE
ALEXANDRIA, VA 22314
EXAMINER
GORDON, BRYAN P
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
02/07/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERTRAM SUGG1
____________

Appeal 2010-007351
Application 10/540,026
Technology Center 2800
____________

Before BRUCE R. WINSOR, JEREMY J. CURCURI,
and JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9, 10, 13, 14, and 29-32. Claims 1-8, 11, 12, and 15-28
are cancelled. App. Br. 4.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Robert Bosch GmbH is the real party in interest.
2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
October 19, 2009; (2) the Examiner’s Answer (Ans.) mailed January 20,
2010; and (3) the Reply Brief (Reply Br.) filed March 22, 2010.
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INVENTION
Appellant’s invention relates to piezoelectric actuators. See Spec.,
¶ [0009]. Moreover, Appellant’s invention relates to such actuators made by
particular methods. Id. at ¶ [0026]. Claims 9 and 29 are illustrative and are
reproduced below with disputed limitations emphasized:
9. A piezoelectric actuator, comprising
a multi-layered construction of piezoelectric layers interleaved with
inner electrodes, and
an alternating contacting of the inner electrodes with outer electrodes,
the regions between the outer electrodes being provided with an insulation
layer, comprised of the same ceramic material as the piezoelectric layers,
and thus having the same properties as the piezoelectric layers themselves,
and the insulating layer being applied to the outer surface of the
piezoelectric actuator in the green state of the piezoelectric actuator, before
sintering.

29. An apparatus made by the following steps,
providing a piezoelectric stack having alternating layers of
piezoelectric material and inner electrodes, and
prior to any sintering of the stack, coating the outside of the
piezoelectric stack with a layer of material which is the same material as the
piezoelectric layers.

The Examiner relies on the following as evidence of unpatentability:
Schreiner US 2002/0175591 A1 Nov. 28, 2002
THE REJECTION
The Examiner rejected claims 9, 10, 13, 14, and 29-32 under 35
U.S.C. § 102(b) as anticipated by Schreiner. Ans. 3-6.

ANTICIPATION REJECTION BY SCHREINER
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief, the Answer, and the Reply Brief.
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Only those arguments actually made by Appellant have been considered in
this decision. 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) (2010)).
ISSUES
Under § 102, has the Examiner erred by finding that Schreiner
discloses:
(1) “[an] insulating layer . . . applied to the outer surface of the
piezoelectric actuator in the green state of the piezoelectric actuator, before
sintering,” as recited in claim 9 (emphasis added), and “prior to any
sintering of the stack, coating the outside of the piezoelectric stack with a
layer of material” (emphasis added), as recited in claim 29?
(2) “[the] insulation layer, comprised of the same ceramic material as
the piezoelectric layers,” as recited in claim 9 (emphasis added), and “[the]
layer of material . . . [of] the same material as the piezoelectric layers”
(emphasis added), as recited in claim 29?
ANALYSIS
1. Claims 9, 10, 13, 14, and 29.
Based on the record before us, we find no error in the Examiner’s
rejection of claims 9 and 29. Regarding claim 9, the Examiner finds that
Schreiner discloses each and every recited element. Ans. 3 (citing
Schreiner, ¶ [0006]; Abstract; Figs. 1, 3). The Examiner notes that claim 9
recites that “the insulating layer [is] applied to the outer surface of the
piezoelectric actuator in the green state of the piezoelectric actuator, before
sintering.” Id. at 3-4. The Examiner finds, however, that this is a
description of a method of making the claimed actuator and is not germane
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to the issue of patentability of an apparatus claim. Id. Further, to the extent
that claim 9 recites a product-by-process claim, the Examiner finds that the
patentability of such claims depends on the characteristics of the final
product and that, here, Schreiner discloses the final product of the recited
process. Id. at 4.3
Regardless of the interpretation of claim 9, claim 29 unquestionably is
a product-by-process claim. The Examiner finds that the patentability of
claim 29 depends on the characteristics of the final product and that
Schreiner discloses the final product of the recited process. Id. at 4-5.
Despite the recitation in claim 9 that the insulating layer is applied to
the actuator’s outer surface “before sintering,” the Examiner finds that
Schreiner’s sinter skin 17 discloses this insulating layer. Id. at 3, 7.
Schreiner clearly discloses that sinter skin 17 may form an insulating layer
on an actuator. Schreiner, ¶ [0006] (cited by the Examiner); see also
Schreiner, ¶ [0009] (“[S]inter skin produced by sintering can also be
advantageously used as an insulating layer.” (emphasis added)). Appellant
argues, however, that, unlike the insulating layer of claim 9, sinter skin 17
“is created as part of the sintering process.” App. Br. 9. Consequently,
Appellant argues that sinter skin 17 does not disclose Appellant’s insulating
layer, as recited in claim 9.
Although Appellant has included a method of making limitation in an
apparatus claim, the Examiner is not free simply to ignore that claim

3 See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (The patentability of
the product-by-process claim is determined by the product itself.); Atl.
Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 845-6 (Fed. Cir. 1992)
(If the end products are the same, method of making limitations do not have
to be given weight in ex parte examination.).
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language. We conclude that claim 9 is a product-by-process claim. In
considering claim 9, the structure recited in claim 9 must be compared to the
structure of the prior art reference. See Thorpe, 777 F.2d. at 697 (“The
patentability of a product does not depend on its method of production. . . .
If the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” (citations omitted)). All of
Appellant’s claim language must be considered here at least to the extent
that it describes structural features of the insulating layer. To this point,
Appellant states that
[t]his process step of coating the stack with material which is
recited to be comprised of the same material as the piezoelectric
layers, and doing so before or prior to sintering, leads to an
insulation layer, after sintering, which coats the entire outside
of the stack and this includes the edges of the internal
electrodes.
App. Br. 11. Appellant does not provide persuasive evidence that the
structure of the insulating layer created by the recited process is different
from the structure of Schreiner’s sinter skin 17. Consequently, we are not
persuaded that the Examiner erred in finding that Schreiner discloses the
insulating layer, as recited in claim 9. For this same reason, we are not
persuaded that the Examiner erred in finding that Schreiner discloses the
layer of material, as recited in claim 29.
Appellant further argues that Schreiner discloses that, unlike the
insulating layer recited in claim 9, the surface of sinter skin 17 is not
continuous and that “the edges of inner electrodes will not be insulated.”
App. Br. 9. Referring to Schreiner’s Figures 2 and 3, the Examiner finds
that Schreiner’s actuator “has a circular cross-section 12 and is fully coated
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by a sinter skin 17.” Ans. 7 (quoting Schreiner, ¶ [0023] (emphasis added)).
Appellant argues, however, that Schreiner goes on to state in the very next
sentence that “the internal electrodes 11 of the same polarity are fully
exposed on the peripheral face.” App. Br. 10 (quoting Schreiner, ¶ [0023]
(underlining omitted; emphasis added)).
Despite this apparent inconsistency in Schreiner’s disclosure, we find
that Appellant’s arguments are not commensurate with the scope of claim 9
or 29. Neither claim describes the extent to which the insulating layer
(claim 9) or the layer of material (claim 29) coats the actuator in the final
product. Moreover, referring to Appellant’s Figure 5, Appellant describes
that the layer may be removed by grinding or etching to uncover the edges
of the inner electrodes. Spec., ¶¶ [0020], [0026]-[0028]. As with
Schreiner’s actuator, this removal permits the edges of the inner electrodes
to contact the outer electrodes. Compare Schreiner, ¶ [0023] (“The sinter
skin 17 is removed in this region by grinding, and the internal electrodes 11
are exposed at their peripheral face.”) with Spec., ¶ [0009] (“The inner
electrodes are contacted on alternating sides by outer electrodes, the regions
between the outer electrodes being provided with a suitable insulation.”).
Therefore, we are not persuaded by Appellant’s argument.
Finally, with respect to claim 9, Appellant argues that Schreiner
“lacks a teaching of an apparatus which has a piezoelectric stack, which also
has a coating which consists of the same material as the piezoelectric layers
themselves.” App. Br. 11; Reply Br. 3.4 “A claim is anticipated only if each

4 We note that Appellant makes a contradictory statement in the Appeal
Brief. App. Br. 9 (The skin “is formed from the material of the piezoelectric
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and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner
finds that
[r]egarding the applicant’s argument that Schreiner [sic]
insulation layer is not made from the same material as the
piezoelectric layer as the applicant stated in the previous office
action Schreiner states (abstract) that the actuators contain a
ceramic material and that the insulation skin is produced from
sintering. It is well-known that sintering ceramic materials is
done to assure a tight seal. Therefore, it can be concluded that
the insulation skin is indeed made of the same ceramic material
that the piezoelectric layers contain since the reason for the two
same ceramic materials as stated in the applicant’s application
(paragraph 0011) is to assure a very tight, integral bond.
Final Rej. 4-5 (emphasis added).
Initially, we find that the Examiner’s reliance on the disclosure of
Appellant’s own invention (Final Rej. 5)5 to support the anticipation
rejection is inappropriate. Nevertheless, Schreiner describes that “the sinter
skin is produced by sintering.” Schreiner, Abstract (emphasis added).
Further, Schreiner describes that, “[d]uring sintering, a so-called sinter skin
forms.” Id. at ¶ [0007] (emphasis added); see also id. at ¶ [0006]. Thus, we
find that Schreiner discloses that the sinter skin is formed merely by
sintering the actuator block. Consequently, we find that Schreiner describes
that the insulating sinter skin is formed by the sintering of the actuator block
and, hence, that Schreiner discloses that the sinter skin is made from the

layers of the stack.”). Because this statement represents an aberration, we
treat it as a typographical or grammatical error.
5 Although the Examiner cites Specification paragraph [0011], the text relied
upon appears in Specification paragraph [0013] (“[T]he subsequent sintering
produces a very tight, integral bond.”).
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sintered materials of the block, i.e., from the piezoelectric material of the
stacked green films. Schreiner, Abstract. Therefore, we are not persuaded
of the Examiner’s error in rejecting claim 9, as well as claim 29 which
similarly recites that the “layer of material . . . is the same material as the
piezoelectric layers” (emphasis added).
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claims 9 and 29 or of dependent claims 10, 13,
and 14, which are not argued separately. App. Br. 11.
2. Claims 30-32.
Appellant argues that Schreiner’s sinter skin is formed by sintering,
whereas Appellant’s insulating layer is applied to the piezoelectric stack
before sintering and that, unlike Schreiner, Appellant’s insulating layer will
be hard, smooth, and impervious. App. Br. 14. Moreover, Appellant argues
that Schreiner’s sinter skin is rough or uneven on the outer periphery and
that Schreiner does not disclose that its sinter skin “covers the end or edges
of the inner electrodes.” Id. Nevertheless, Appellant fails to demonstrate
where Schreiner discloses a rough or uneven sinter skin on the outer
periphery. Further, Appellant’s arguments attempting to distinguish
Schreiner based on the coverage of the sinter skin are not commensurate
with the scope of claim 30. Ans. 7. Therefore, Appellant has not shown that
the final product of Schreiner differs from the final product recited in
Appellant’s claim 30, and we find that Schreiner discloses the elements of
Appellant’s claim 30. Accordingly, we are not persuaded of error in the
Examiner’s rejection of claim 30.
With respect to claims 31 and 32, we find that Schreiner discloses
every element of those claims. In particular, Schreiner discloses that “[t]he
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sinter skin 17 is removed in [the regions where the external electrodes are
attached] by grinding, and the internal electrodes 11 are exposed at their
peripheral face.” Schreiner, ¶ [0023]; see Ans. 7. Therefore, we are not
persuaded of error in the Examiner’s rejection of claims 31 and 32.

CONCLUSION
The Examiner did not err in rejecting claims 9, 10, 13, 14, and 29-32
under § 102(b).

DECISION
The Examiner’s decision rejecting claims 9, 10, 13, 14, and 29-32 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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