Ex parte USUI et al.

Board of Patent Appeals and Interferences

Mar 7, 2002

08809042 (B.P.A.I. Mar. 7, 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for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MINORU USUI, TAKAHIRO KATAKURA, FUJIO AKAHANE,
KAZUMI KAMOI, SATOSHI SHINADA, YUKIHISA TAKEUCHI,
and NOBUO TAKAHASHI
____________
Appeal No. 2000-0166
Application No. 07/809,042
____________
HEARD: February 5, 2002
____________
Before RUGGIERO, LALL, and BLANKENSHIP, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-3 which constitute all
the claims in the application.
The disclosed invention is directed to a piezo-
electric/electrostrictive film type chip including a ceramic
substrate having a spacer plate with a windows-disposed pattern
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Application No. 07/809,042
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comprising at least a plurality of window portions and a thin
closure plate for closing the window portions which is unitarily
connected with the spacer plate. The window portions and the
closure plate form pressurizing rooms. The film-type chip also
includes a plurality of piezo-electric/electrostrictive working
portions each of which includes a laminate of a lower electrode,
a piezo-electric/electrostrictive layer, and an upper electrode,
each working portion being disposed at a closure portion of each
window on the outer window of the surface of the closure plate,
wherein all the working portions are disposed in a single plane
(see Figure 1 and 3 of the disclosure). A positioning pin hole
(52) is disposed in or near the center of gravity of the window-
disposed pattern, and is separated from the pressurizing rooms
and extends in a direction perpendicular to the plane. This
configuration of the pin hole near the center of the plates
gives a product that can be readily used in ink-jet printers and
the like, wherein one may be assured that there is a proper
correspondence between the orifices in the piezo-
electric/electrostrictive film type chip and the ink-jet
nozzles. Accordingly, one may be assured that the device
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Application No. 07/809,042
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operates properly and efficiently. A further illustration of
the invention can be obtained from the following claim.
1. A piezo-electric/electrostrictive film type chip comprising:
a ceramic substrate having a spacer plate having a windows-
disposed pattern comprising at least a plurality of window
portions and a thin closure plate for closing the window
portions which is
unitarily connected with the spacer plate, said window portions
and closure plate forming pressurizing rooms:
a plurality of piezo-electric/electrostrictive working
portions each including a laminate of a lower electrode, a
piezo-electric/ electrostrictive layer, and an upper electrode
and each being disposed at a closure portion of each window on
the outer surface of the closure plate, all of said working
portions being disposed in a single plane; and
a pin hole for positioning disposed in or near the center
of gravity of the windows-disposed pattern, the pin hole (i)
being separated from said pressurizing rooms and (ii) extending
in a direction perpendicular to said plane.
The examiner relies on the following reference:
Maltsev 4,752,789 Jun. 21, 1988
Admitted Prior Art
Claims 1-3 stand rejected under 35 § U.S.C. § 103(a) as
being unpatentable over the admitted prior art in view of
Maltsev.
Appeal No. 2000-0166
Application No. 07/809,042
A reply brief was filed on August 9, 1999 as paper no.1
22.
4
Rather than repeat the arguments of appellants and the
examiner, we make reference in the briefs and the answer for1
the respective details thereof.
OPINION
We have considered the rejection advanced by the examiner
and the supporting arguments. We have, likewise, reviewed the
appellants’ arguments set forth in the briefs.
We reverse.
In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case of
obviousness. If that burden is met, the burden of going forward
then shifts to the applicant 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
Appeal No. 2000-0166
Application No. 07/809,042
5
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976). We are further guided by the precedent of our
reviewing court that the limitations from the disclosure are not
to be imported into the claims. In re Lundberg, 244 F.2d 543,
113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d 461, 230 USPQ
438 (Fed. Cir. 1986). We also note that the arguments not made
separately for any individual claim or claims are considered
waived. See 37 CFR § 1.192(a) and (c). In re Baxter Travenol
Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for
nonobviousness distinctions over the prior art.”); In re
Wiechert, 370 F.2d 927, 936, 152 USPQ 247, 254 (CCPA 1967)(“This
court has uniformly followed the sound rule that an issue raised
below which is not argued in that court, even if it has been
properly brought here by reason of appeal is regarded as
abandoned and will not be considered. It is our function as a
court to decide disputed issues, not to create them.”).
Appeal No. 2000-0166
Application No. 07/809,042
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At the outset, we note that claims 1-3 are grouped
together, see brief at page 4.
We take claim 1 for our discussion here. The examiner
asserts (answer, at page 4) that the admitted prior art, as
demonstrated by appellants’ figs. 4 and 5, teaches all the
recited features of the piezo-electrostrictive film type chip
except that the pin holes used in assembling the unit are not
located near the center of gravity of the transducer. The
examiner relies on Maltsev for the teaching of the recited pin
being near the central gravity of the transducer assembly. The
examiner asserts (id. at 4) that “it would have been obvious . .
. to place the alignment hole of the prior art [at] the center
of the transducer assembly.”
Appellants argue, brief at pages 5 and 6, that “[t]here
would have been no reason for the person of ordinary skill in
the art to have even looked to a stacked structure such as
Maltsev to solve problems associated with the planar devices
having a pin hole at an edge portion thereof.” The examiner
responds, answer at page 5, that “it is not seen how two
transducers both using the same materials [,] both used as ink
jet printers and, both cited in the European search report and
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both classified in the same class and subclass of the U.S.
Patent system can be viewed [as non-related.] Maltsev shows the
hole at a non-geometric center when considering only one plate.”
We agree with the examiner to the extent that both the admitted
prior art and the Maltsev references are directed to the
problems with ink-jet printers and the alignment of the nozzles
and the working chambers formed by different plates. However,
the construction of Maltsev is distinctly different from the
appellants’ recited structure. The structure in Maltsev is made
up of a plurality of plates forming the working chambers stacked
on top of each other in the vertical direction, whereas in the
appellants’ recited structure, the sets of plates forming the
working chambers lie in the same plane, and are separated from
each other in the horizontal direction. Therefore, the problem
of alignment in the Maltsev device is different from the
alignment problem in the Appellants’ arrangement. The position
and the importance of pin 14 and hole 10d in Maltsev together
with the alignment notch 10e (Figure 2) is different from the
function of the pin 58 in the pin hole 52 of the appellants’
structure (figure 2 of appellants disclosure). Therefore, we
agree with appellants that an artisan would not have looked to
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Application No. 07/809,042
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Maltsev pin 14 for the purposes of alignment of pin 58 in the
pin hole 52 of the single plane structure of appellants.
Furthermore, we find, by looking at Figures 2 and 3a of Maltsev,
that pin 14 corresponding to the pin hole 10d is not separated
from the recited pressurizing rooms. We do not see any reason
whatsoever shown in Maltsev or given by the examiner that pin 14
in Maltsev would suggest putting pin 42 of the prior art (Figure
5 of appellants disclosure) in the geometric center of the
plates. Therefore, we are in agreement with appellants that the
admitted prior art and Maltsev would not have been found obvious
to be modified as suggested by the examiner to meet the recited
structure in claim 1. Consequently, we do not sustain the
obviousness rejection of claim 1 and its dependent claims 2 and
3 over the admitted prior art in view of Maltsev.
The decision of the examiner rejecting claims 1-3 under
35 U.S.C. § 103 is reversed.
Appeal No. 2000-0166
Application No. 07/809,042
9
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )

PSL/lp
Appeal No. 2000-0166
Application No. 07/809,042
10
ROGER W. PARKHURST
PARKHURST, WENDEL & BURR
1421 PRINCE STREET
SUITE 210
ALEXANDRIA, VA 22314-2805
Letty
JUDGE LALL
APPEAL NO. 2000-0166
APPLICATION NO. 07/809,042
APJ LALL
APJ BLANKENSHIP
APJ RUGGIERO
DECISION: REVERSED
PREPARED: Sep 30, 2002
OB/HD
PALM
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