Ex Parte Yao et al

Patent Trial and Appeal Board

Feb 26, 2014

10206244 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MING GAO YAO and MASASHI SHIRAISHI
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Appeal 2011-010422
Application 10/206,244
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010422
Application 10/206,244

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STATEMENT OF CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10, 21, and 22. Claims 11-20 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis and
bracketed lettering added to the disputed portion of the claim (limitation
[A]), reads as follows:
1. A system to improve shock resistance of an actuator
element comprising:

an actuator element having a generally ‘U’-shaped
structure, the ‘U’-shaped structure being formed by at least a
first arm joined at one end to an actuator base and a second arm
joined at one end to said actuator base, said first arm and said
actuator base forming a first angle and said second arm and said
actuator base forming a second angle; wherein

said actuator element is adapted to be coupled to a slider
element;

[A] a first piezoelectric element is attached along
substantially all of the outside edge of a first side of the
actuator base and along the outside edge of said first arm and a
second piezoelectric element is attached along substantially all
of the outside edge of a second side of the actuator base and
along the outside edge of said second arm; and

1 In our Decision, infra, we make reference to the Advisory Action mailed
April 16, 2009; Appellants’ Appeal Brief (“App. Br.”) filed July 22, 2009;
the Examiner’s Answer (“Ans.”) mailed March 24, 2011; and Appellants’
Reply Brief (“Reply Br.”) filed July 29, 2009.
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the interior of at least one of said first angle and said
second angle is filled with a reinforcing material.

The Examiner’s Rejections
(1) The Examiner rejected claims 1-10, 21, and 22 as being
unpatentable under 35 U.S.C. § 103(a) over Boutaghou (US 6,639, 761 B1;
Oc. 28, 2003; filed June 7, 2000) and Shiraishi (US 2002/0051326 A1; May
2, 2002). Ans. 5-6.
(2) The Examiner rejected dependent claims 3 and 5-7 as being
unpatentable under 35 U.S.C. § 103(a) over Boutaghou, Shiraishi, and
Appellants’ Admitted Prior Art, found in paragraphs [0002] and [0003] and
Figures 1 and 2 of the Specification (hereinafter “AAPA”). Ans. 7-8.
Principal Issue on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-7)
and the Reply Brief (Reply Br. 2-3), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1-10, 21, and 22 as being
obvious over the base combination of Boutaghou and Shiraishi because the
base combination, and specifically Shiraishi, fails to teach or suggest the
system to improve shock resistance of an actuator element including the
subject matter (of limitation [A] of claim 1) of: first and second piezoelectric
elements “attached along substantially all of the outside edge” of first and
second sides of the actuator base and along the outside edges of first and
second arms of the U-shaped actuator, as recited in independent claim 1, and
as similarly recited in remaining independent claims 21 and 22, as well as
claims 2-10 depending from claim 1?

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Application 10/206,244

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief and Reply Brief that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 5-8), as well as the Advisory Action mailed April 16,
2009, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 10) in response to Appellants’ Appeal Brief. We concur with
the conclusions reached by the Examiner, and highlight and emphasize
certain findings with regard to the applied references.
We agree with the Examiner (Advisory Action mailed April 16, 2009,
at 2) that Shiraishi’s Figures 5 and 6 show an actuator element structure very
similar to Appellants’ actuator 404 shown in Appellants’ Figure 4. We also
agree with the Examiner’s findings (see Ans. 6, 10) that Shiraishi discloses
piezoelectric elements 51b and 52b attached to outside edges of first and
second arm members 51a and 52a, and extending to the actuator base 50
(Figs. 5, 6; see also ¶¶ [0075]-[0079]). Shiraishi’s Figures 5 and 6 disclose
first and second piezoelectric elements (51b and 52b) attached along
substantially all of the outside edge of first and second sides of the actuator
base 50, and along the outside edges of first and second arms (51b and 52b)
of the U-shaped actuator 22. Therefore, Shiraishi discloses limitation [A] of
claim 1, as well as the similarly recited subject matter of remaining
independent claims 21 and 22.
With regard to the obviousness rejection of claims 1-10, 21, and 22
over the combination of Boutaghou and Shiraishi, Appellants’ contentions
(App. Br. 5-6; Reply Br. 2) that Shiraishi fails to teach or suggest limitation
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[A] of claim 1 are not persuasive in light of Shiraishi’s disclosure addressed
supra. Appellants’ arguments (App. Br. 6; Reply Br. 2) that Figure 5 of
Shiraishi shows an embodiment where the piezoelectric elements 51b and
52b do not extend to an actuator base, as recited in claim 1, are not
persuasive. Claim 1 on appeal does not recite that the piezoelectric elements
extend to the actuator base. Instead, limitation [A] of claim 1 recites that the
piezoelectric elements are “attached along substantially all of” the outside
edges of first and second sides of the actuator base, and “along the outside
edge[s]” of the first and second arms. Shiraishi’s piezoelectric elements 51b
and 52b are indeed attached to the outside edges of the sides of the actuator
base 50 and along the outside edges of the arms 51 and 52 and arm members
51a and 52a (see Fig. 5).
In view of the foregoing, we sustain the rejection of independent
claims 1, 21, and 22, as well as claims 2-10 depending from claim 1, as
being obvious over the combination of Boutaghou and Shiraishi. We also
sustain the obviousness rejection of dependent claims 3 and 5-7 for the
reasons provided as to claim 1 from which these claims ultimately depend,
and because Appellants make the same argument for claims 3 and 5-7 as
presented for claim 1 already discussed (see App. Br. 6).

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-10, 21, and 22 as
being unpatentable under 35 U.S.C. § 103(a) over Boutaghou and Shiraishi.
(2) The Examiner did not err in rejecting claims 3 and 5-7 as being
unpatentable under 35 U.S.C. § 103(a) over Boutaghou, Shiraishi, and
AAPA.
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Application 10/206,244

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DECISION
The Examiner’s rejections of claims 1-10, 21, and 22 are 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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