Ex Parte Yamamoto

Board of Patent Appeals and Interferences

Nov 25, 2002

09016304 (B.P.A.I. Nov. 25, 2002)

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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today was not written for publication and is not
binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MITSURU YAMAMOTO
________________
Appeal No. 2001-0713
Application 09/016,304
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-12, which
constituted all the claims in the application. An amendment
after final rejection was filed on April 24, 2000 and was entered
by the examiner. This amendment cancelled claims 9-12.
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Application 09/016,304
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Accordingly, this appeal is directed to the rejection of claims
1-8.
The disclosed invention pertains to the field of
piezoelectric ceramic transformers. More particularly, the
invention relates to a piezoelectric ceramic plate having an
outer shape of a disk which can be driven in a radial direction
expansion vibration basic mode. The invention also relates to a
piezoelectric ceramic plate having an outer shape of a square
plate which can be driven in a contour direction expansion
vibration basic mode.
Representative claim 1 is reproduced as follows:
1. A piezoelectric ceramic transformer comprising:
a piezoelectric ceramic plate having an outer shape of a
disk, wherein:
said piezoelectric ceramic plate is divided, where circular
surfaces of said piezoelectric ceramic plate are defined as
principal surfaces, in a thickness direction into two regions
parallel to said principal surfaces and one of said two regions
is formed as a driving part while the other region is formed as a
generating part, and each of said driving part, and said
generating part forms a layering structure which comprises a
plurality of inner electrode pairs formed in parallel to said
principal surfaces and opposing each other in the thickness
direction and regions between the inner electrodes, said regions
between the inner electrodes being polarized so that any adjacent
ones of said inner electrodes may have opposite polarization
directions to each other;
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Application 09/016,304
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an intermediate region between said driving part and said
generating part is set as a non-polarized insulating layer; and
the inner electrodes which oppose each other are partially
exposed to different side end faces of said piezoelectric ceramic
plate so that the polarities thereof may be opposite to each
other and are alternately connected to each other by outer
electrodes and further connected to respective electronic
terminals, said piezoelectric ceramic transformer being driven in
a radial direction expansion vibration basic mode.
The examiner relies on the following references:
Clawson et al. (Clawson) 3,610,969 Oct. 05, 1971
Ogawa 4,564,782 Jan. 14, 1986
Sugishita 5,828,160 Oct. 27, 1998
(filed Sep. 10, 1997)
The following rejections are on appeal before us:
1. Claim 3 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by the disclosure of Ogawa.
2. Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Ogawa taken alone.
3. Claims 2 and 4 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Ogawa in view of
Clawson.
4. Claims 5 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Sugishita taken alone.
5. Claims 6 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Sugishita in view of
Clawson.
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Application 09/016,304
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does not support any of the
rejections as formulated by the examiner. Accordingly, we
reverse.
We consider first the rejection of claim 3 under 35
U.S.C. § 102(b) as being anticipated by the disclosure of Ogawa.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
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recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner indicates how he finds anticipation with
respect to claim 3 [answer, page 3]. Appellant argues that Ogawa
fails to disclose a piezoelectric transformer driven in a profile
direction expansion vibration basic mode or a ceramic plate
having an outer shape of a square plate. Appellant argues that
Ogawa only operates in a thickness direction extension vibration
mode at the disclosed frequencies. Appellant also argues that
Ogawa does not disclose the claimed arrangement of the inner and
outer electrodes [brief, pages 6-7]. The examiner responds that
Ogawa discloses a transformer with a square outer shape that is
driven in the claimed direction [answer, page 11]. Appellant
responds that the Ogawa drawing is not drawn as a square shape
and that it cannot be presumed that the shape is a square.
Appellant also reiterates that there is no disclosure within
Ogawa that the transformer is driven in the profile direction
expansion vibration basic mode as claimed or that the inner and
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outer electrodes are connected as claimed [reply brief,
pages 1-5].
We will not sustain the rejection of claim 3 for
essentially the reasons argued by appellant in the briefs. The
examiner’s “findings” are based on opinion, speculation and
conjecture. The disclosure of Ogawa simply does not disclose the
specific recitations of claim 3 which are argued by appellant.
We now consider the various rejections of the claims
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
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Application 09/016,304
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(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden 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 Id.; 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). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
With respect to the rejection of claim 1 based on Ogawa
taken alone, the examiner finds that Ogawa teaches the claimed
invention except for the shape of the disc and a radial
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Application 09/016,304
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polarization. The examiner finds that change of shape has no
patentable significance without unexpected results. The
examiner, therefore, finds that it would have been obvious to the
artisan to change the shape of the ceramic plate in Ogawa. The
examiner also takes “Official Notice” that it was well known to
drive piezoelectric devices in the radial direction [answer,
pages 4-5].
Appellant argues that Ogawa fails to teach that the
piezoelectric transformer is driven in a radial direction
expansion vibration basic mode or that the ceramic plate has an
outer shape of a disk as claimed. Appellant argues that the
examiner improperly relied on a per se rule of obviousness that a
change in shape is not patentable. Appellant also argues that
Ogawa does not teach the arrangement of inner and outer
electrodes as claimed [brief, page 7]. The examiner responds
that appellant has shown no unexpected results and that a change
in shape is not patentable. The examiner also notes that the
taking of “Official Notice” has become admitted prior art because
appellant did not seasonably traverse this position [answer,
pages 10-11]. Appellant reiterates his position that there is no
basis for the examiner’s holding that a change in shape is not
patentable. Appellant also responds that he challenged the
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examiner’s taking of “Official Notice” during the prosecution of
this application and that the examiner has failed to provide a
teaching in support of the official notice [reply brief, pages
5-10].
We will not sustain the rejection of claim 1 for the
reasons argued by appellant in the briefs. The examiner’s
reliance on Ogawa is erroneous for reasons discussed above.
Additionally, the examiner has improperly relied on a per se rule
of obviousness and has improperly taken official notice of the
facts. The examiner should avoid using any per se rules of
obviousness. Obviousness must be determined on a case by case
basis. The examiner must always consider the specific
recitations of the claimed invention and the specific teachings
of the applied prior art. The Federal Circuit has also
determined that an examiner’s reliance on “findings” of official
notice or design choice do not establish a prima facie case of
obviousness when properly challenged.
With respect to the rejection of dependent claims 2 and 4
based on Ogawa and Clawson, since Clawson does not overcome the
deficiencies of Ogawa discussed above, we do not sustain the
rejection of claims 2 and 4.
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Application 09/016,304
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We now consider the rejection of claims 5 and 7 based on
Sugishita taken alone. The examiner’s rejection indicates that
Sugishita does not disclose that the piezoelectric ceramic plate
is square, that adjacent electrodes are exposed at different
sides, that the device has a disk shape, or what mode the
transformer is driven in [answer, page 7]. The examiner
dismisses these differences by relying on per se rules of
obviousness, by relying on official notice, and by simply stating
that the differences between the claimed invention and the prior
art would have been obvious to the artisan [id., pages 7-8].
Appellant basically argues that Sugishita suffers the
same deficiencies as Ogawa and makes the same arguments that we
considered above. Since we agree with appellant that the issues
with respect to this rejection are the same as the issues with
respect to the rejection based on Ogawa, we will not sustain the
rejection of claims 5 and 7. With respect to the rejection of
dependent claims 6 and 8 based on Sugishita and Clawson, since
Clawson does not overcome the deficiencies of Sugishita discussed
above, we do not sustain the rejection of claims 6 and 8.
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In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-8 is reversed.
REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS/ki
Appeal No. 2001-0713
Application 09/016,304
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