Ex parte Yamamoto

Board of Patent Appeals and Interferences

Nov 26, 2001

08674727 (B.P.A.I. Nov. 26, 2001)

Application for patent filed July 2, 1996, entitled1
"Surface Acoustic Wave Resonator Filter," which is a
continuation of Application 08/419,764, filed April 10, 1995,
now U.S. Patent 5,592,040, issued January 7, 1997, which is a
continuation of Application 08/110,997, filed August 24, 1993,
now abandoned, which claims the foreign filing priority
benefit under 35 U.S.C. § 119 of Japanese Application
223698/1992, filed August 24, 1992.
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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and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte YASUSHI YAMAMOTO

Appeal No. 1999-0863
Application 08/674,7271

ON BRIEF

Before KRASS, BARRETT, and BLANKENSHIP, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 1999-0863
Application 08/674,727
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 10, 11, and 17-21.
We affirm-in-part.
BACKGROUND
The disclosed invention relates to a surface acoustic
wave (SAW) band-pass filter with a widened pass band.
Claim 17 is reproduced below.
17. A surface acoustic wave resonator filter
comprising:
a first longitudinal mode coupling type resonator
connected to an input terminal; and
a second longitudinal mode coupling type resonator
connected to an output terminal and acoustically coupled
to said first longitudinal mode coupling type resonator;
said first longitudinal mode coupling type resonator
and said second longitudinal mode coupling type resonator
each comprising interdigital electrodes, wherein at least
one of said interdigital electrodes of said first
longitudinal mode coupling type resonator and of said
second longitudinal mode coupling type resonator is a
dummy electrode, comprising electrically shorted
interdigital electrodes.
The Examiner relies on the following prior art:
Mitchell 4,178,571 December 11, 1979
Ehata 61-142812 June 30, 1986
(Japanese Kokai)
Appeal No. 1999-0863
Application 08/674,727
The translation spells the inventor's name as2
"Takeuma." We use the spelling "Takema" used in the
prosecution.
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Ruile et al. (Ruile) WO 91/09465 June 27, 1991
(PCT publication)
Takema 03-278608 December 10, 19912
(Japanese Kokai)
Translations of Ehata, Ruile, and Takema have been prepared by
the U.S. Patent and Trademark Office and accompany this
opinion.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ehata or Ruile or Mitchell.
Claims 17-21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by any of Ehata, Ruile, Mitchell, or Takema.
We refer to the final rejection (Paper No. 7) (pages
referred to as "FR__") for a statement of the Examiner's
position. The examiner's answer (Paper No. 14) (pages
referred to as "EA__") merely refers back to and incorporates
the final rejection. We refer to the brief (Paper No. 13)
(pages referred to as "Br__") and the reply brief (Paper
No. 15) for a statement of Appellant's arguments thereagainst.
Appeal No. 1999-0863
Application 08/674,727
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OPINION
Grouping of claims
The Examiner errs in stating that claims 10, 11, and
17-21 stand or fall together because the brief does not
include a statement that this grouping of claims does not
stand or fall together and does not provide reasons in support
thereof (EA2).
The brief clearly points out five groups of claims (Br4):
(1) claim 10; (2) claim 11; (3) claims 17-19; (4) claim 20;
and (5) claim 21. Separate arguments are provided for each of
the claim groupings as noted in the reply brief. Thus, these
are the groups to be considered.
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Application 08/674,727
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35 U.S.C. § 103(a)
The dispositive issue is whether Ehata, Ruile, and
Mitchell teach or suggest the following functional limitations
of claim 10: (1) "said first and second longitudinal mode
coupling type resonators are arranged to match a longitudinal
mode resonation of an even symmetric mode and a longitudinal
mode resonation of an odd symmetric mode"; (2) "said first
longitudinal mode coupling type resonator being arranged to
generate two longitudinal mode resonations"; and (3) "said
second longitudinal mode coupling type resonator being
arranged to generate two longitudinal mode resonations."
The Examiner states (FR3; FR4; FR5):
It is not clear that [Ehata's, Ruile's, or Mitchell's]
first and second longitudinal mode coupling type
resonators are arranged to match a longitudinal mode
resonation of an even symmetric mode and a longitudinal
mode resonation of an odd symmetric mode. The Applicants
note that two longitudinal mode resonances are
"accomplished by appropriately selecting the number of
IDT pairs, the longitudinal mutual interval between the
IDT electrodes and the longitudinal distance between the
IDT and the reflector". It would have been obvious to
one having ordinary skill in the art at the time of the
invention to arrange [Ehata's or Ruiles' or Mitchell's]
first and second longitudinal mode coupling type
resonators so that they are arranged to match a
longitudinal mode resonation of an even symmetric mode
and a longitudinal mode resonation of an odd symmetric
mode since it has been held that rearranging parts of an
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Application 08/674,727
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invention involves only routine skill in the art.
In re Japikse, 86 USPQ 70.
We assume this reasoning is intended to apply to all three
limitations. Because the Examiner does not address claim 11,
the same reasoning must apply to claim 11.
Appellant argues that the theory of rearranging parts in
Japikse, which dealt with relocating the position of a switch,
does not apply here because any modification to Ehata, Ruile,
or Mitchell which would result in some form of the claimed
invention would be more than simply relocating the position of
parts. It is argued that there is no motivation to modify the
references to provide the functional limitations.
We agree. Japikse, to the extent it is good law, is
inapplicable to the present rejection. The Examiner proposes
more than just moving parts around: he proposes making changes
in the structure of the surface acoustic wave filter so as to
provide the claimed operational characteristics. There is
absolutely no suggestion for providing the claimed functional
characteristics (1), (2), or (3) in Ehata, Ruile, or Mitchell
and, thus, the obviousness rejection must fail. "The mere
fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
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Application 08/674,727
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obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992), citing In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The
Examiner has failed to establish a prima facie case of
obviousness as to limitations (1), (2), and (3); therefore, it
is not necessary to address the other deficiencies in the
Examiner's rejections. The obviousness rejections of claims
10 and 11 over Ehata, Ruile, and Mitchell are reversed.
35 U.S.C. § 102(b)
Claims 17-19
Appellant argues that Ehata, Ruile, Mitchell, and
Takema fail to teach or suggest "a filter which includes first
and second longitudinal resonators each comprising
interdigital electrodes where at least one of the electrodes
is electrically shorted, as required in claims 17 and 21 and
illustrated in Figure 3A (2A and 2B)" (Br15: Br17).
The Examiner's position is that Ehata, Ruile, and
Mitchell each show "'dummy' electrodes, which are their
respective reflector electrodes" (FR6). Appellant does not
address this finding in the brief or reply brief.
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Application 08/674,727
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The reflectors 13 and 23 in Ehata have electrically
shorted interdigital electrodes and are part of first and
second longitudinal mode coupling type resonators. Appellant
provides no arguments why a reflector electrode cannot be a
"dummy" electrode and, absent an argument of error, we will
not provide any special interpretation of the term "dummy."
The rejection of claims 17-19 over Ehata is sustained.
The reflector structure 6 illustrated in Ruile, Fig. 1,
and the reflector structures R1, R2 in Mitchell, Fig. 1, do
not have electrically shorted interdigital electrodes.
Evidently not all grating reflectors have electrically shorted
interdigital electrodes. The rejections of claims 17-19 over
Ruile and Mitchell are reversed.
The Examiner finds that Fig. 3 of Takema shows "at least
one of said interdigital electrodes is a 'dummy' electrode,
comprising shorted interdigital electrodes (3)" (FR6).
Appellant does not address the Examiner's finding in the brief
or reply brief.
The two grounded interdigital electrodes 2 in Takema,
positioned one above the other in Fig. 2 and positioned on a
diagonal line in Fig. 3, have both sets of fingers connected
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Application 08/674,727
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to the same ground potential. Thus, the interdigital
electrodes are shorted to each other in the electrical sense.
Claim 17 does not define over this structure. The rejection
of claims 17-19 over Takema is sustained.
Claims 20 and 21
Because the rejections of independent claim 17 over Ruile
and Mitchell have been reversed, the rejections of dependent
claim 20 over Ruile and Mitchell are reversed.
Claim 21 contains the same limitation of "a dummy
electrode, comprising electrically shorted interdigital
electrodes" as claim 17. This limitation is not found in
Ruile and Mitchell, as discussed in connection with claim 17.
Thus, the rejection of claim 21 over Ruile and Mitchell is
reversed.
Claim 20 further recites "wherein said first longitudinal
mode coupling type resonator and said second longitudinal mode
coupling type resonator each generate two resonance
frequencies, wherein a higher resonance frequency of said
first longitudinal mode coupling type resonator is equal to a
lower resonance frequency of said second longitudinal mode
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Application 08/674,727
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coupling type resonator." Claim 21 contains an almost
identical limitation, except that "generate" is "generates."
The Examiner finds (FR6): "Given that the entire claimed
structure is shown by the Takema invention, the device thus
inherently meets the goals of the invention also described in
the claims." Although not expressly stated, it is apparently
also the Examiner's position that the functional limitations
of claims 20 and 21 are inherent in Ehata.
Appellant notes that a claimed feature which is said to
be inherent must necessarily flow from the teachings of
reference. It is argued that Takema does not inherently teach
or suggest the limitations. This same argument would apply to
Ehata.
There is absolutely no indication that the functional
characteristics of claims 20 and 21 are inherent in Ehata or
Takema. The operational characteristics of surface acoustic
wave filters depend on the selection of IDT pairs, the
longitudinal mutual interval between the IDT electrodes, and
the longitudinal distance between the IDT and the reflector,
among other factors, and there is no indication in Ehata or
Takema that these structural features have been selected to
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Application 08/674,727
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provide the claimed characteristics. The rejections of
claims 20 and 21 over Ehata and Takema are reversed.
CONCLUSION
The rejections of claims 10 and 11 under 35 U.S.C.
§ 103(a) over Ehata or Ruile or Mitchell are reversed.
The rejections of claim 17-19 under § 102(b) over Ehata
or Takema are sustained. The rejections of claims 20 and 21
under § 102(b) over Ehata or Takema are reversed. The
rejections of claims 17-21 under § 102(b) over Ruile or
Mitchell are reversed.
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
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
Appeal No. 1999-0863
Application 08/674,727
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)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-0863
Application 08/674,727
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SUGHRUE, MION, ZINN, MacPEAK & SEAS
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037