Ex Parte Yao

Board of Patent Appeals and Interferences

May 15, 2007

10263001 (B.P.A.I. May. 15, 2007)

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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MING GAO YAO
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Appeal 2007-0592
Application 10/263,001
Technology Center 2600
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Decided: May 15, 2007
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Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and
ALLEN R. MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2007-0592
Application 10/263,001

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-3, 5-12, and 14-16. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant invented a system and actuator for preventing particle
generation by a micro-actuator. (Specification 2 and 5). The micro-actuator
is “U” shaped. (Specification 2; Figures 2 and 4-6).
Representative independent claim 1 under appeal reads as follows:
1. An actuator, comprising:

an actuator element having a generally ‘U’-shaped structure, the
actuator including a support frame of a first material; and

a coating at least partially encapsulating the actuator element to
prevent particle generation, the coating comprising a second material.

The Examiner rejected claims 1-3, 5-12, and 14-16 under 35 U.S.C.
§ 102(e).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kurano US 6,617,762 B2 Sep. 9, 2003
(Filed Aug. 2, 2001)

Appellant contends that the claimed subject matter is not anticipated
by Kurano. More specifically, Appellant contends that “the micro-actuator
used by Kurano is not U-shaped.” (Br. 4). Appellant further contends that
the Examiner misidentifies element 17 (a flexible substrate) as the
microactuator because “a ‘microactuator’ is not the equivalent of a ‘flexible
substrate’.” (Reply Br. 2). Lastly, Appellant contends the embodiments
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described in Kurano describe “a ‘flexible substrate’ 17 that resemble a
sideways “H” bearing a centralized pivot point (e.g. Figure 11) as opposed
to a proper U-shaped actuator as described in embodiments of the present
application.” (Reply Br. 3-4).
The Examiner contends that Kurano describes “an actuator element
having a generally ‘U’-shaped structure” as required by Appellant’s claims 1
and 8. Specifically, Kurano teaches the feature as the right half of the “H”
structure 17 of Figure 11. (Answer 4 and Addendum A2).
We affirm.
ISSUE
Has Appellant shown that the Examiner has failed to establish that
Kurano describes “an actuator element having a generally ‘U’-shaped
structure” as required by claims 1 and 8?

FINDINGS OF FACT
Appellant invented a system and actuator for preventing particle
generation by a micro-actuator. (Specification 2 and 5). The micro-actuator
is “U” shaped. (Specification 2; Figures 2 and 4-6).
Appellant describes (Specification 3) the problem in the art as
follows:
Since the [piezoelectric Lead Zirconate Titanate] PZT is an
anisotropic structure, meaning the Weiss domains will increase
the alignment proportionally, and since the top surface of the
PZT is a soft, electric material (i.e., gold or platinum), the PZT
does not generate any particles during this deformation.
However, as the Zirconia support frame is a hard material
lacking the Weiss domain properties, the inner force present
during deformation generates particles. Particle generation is
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particularly heavy on the inside surface of the ‘U’ shaped
micro-actuator where the interior forces are strongest. Particles
generated on the ‘U’ shaped micro-actuator may interfere with
the operation of the actuator.
(Specification 3).
Appellant’s Figure 3 describes:
[O]ne embodiment of a hard disk drive head gimbal assembly (HGA)
with a ‘U’-shaped microactuator. In one embodiment, a slider 302 is
bonded at two points 304 to a ‘U’-shaped micro-actuator 306. In a
further embodiment, the ‘U’-shaped micro-actuator has a piezoelectric
Lead Zirconate Titanate (PZT) beam (arm) 308 on each side of a
Zirconia support frame (actuator base) 310.

(Specification 5).

Appellant’s Figure 4 illustrates “one embodiment of the ‘U’ shaped
micro-actuator 306. A support frame 310 supports two piezoelectric Lead
Zirconate Titanate (PZT) beams 308.” (Specification 5).
In one embodiment of Appellant’s invention, “an encapsulation
coating is applied to the ‘U’ shaped micro-actuator to prevent particle
generation.” (Specification 6).
In a further embodiment of Appellant’s invention, “the encapsulation
coating is made of a soft and tenacious material, such as gold, platinum,
epoxy resin, etc. The encapsulation coating can be applied to the support
frame 310 with any of a variety of techniques including printing, spraying,
sputtering, electric plating, electricless plating, or chemical vapor
deposition.” (Specification 6).
Appellant admits that the prior art includes “a ‘U’ shaped micro-
actuator.” (Specification 2; Figures 1 and 2).
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Appellant further admits that “[t]he ‘U’-shaped micro-actuator may
have a piezoelectric Lead Zirconate Titanate (PZT) beam (arm) on each side
of a Zirconia support frame (actuator base)” and “[d]uring excitation of the
PZT, the PZT beam will deform, further causing the Zirconia support frame
to deform.” (Specification 2-3).
The prior art Kurano patent describes that “[o]n both sides of the
connect spring 13, the microactuator devices 2 described in conjunction with
FIG. 2 are arranged. A combination of the base plate 3, the support spring 5,
the connect spring 13, and the microactuator devices 2 forms the above-
mentioned suspension.” (Col. 6, ll. 16-20; apparatus shown in Fig. 9).
The prior art Kurano patent describes that “to connect the
microactuator devices 2 between the base plate 3 and the support spring 5, a
flexible substrate 17 having an H shape in plan view is used.” (Col. 6,
ll. 61-63; apparatus shown in Fig. 11).
The prior art Kurano patent further describes that:
the microactuator devices 2 are coated with a coating film 16
collectively with portions of the base plate 3 and the support spring 5
which are adjacent to the microactuator devices 2. For example, the
coating film 16 can be obtained by vapor deposition of a coating
material “diX (Registered Trademark)” manufactured by Daisan
Kasei, Ltd. Thus, a thin and compact coating film of about 10 μm
thick can be formed even if the microactuator devices 2, the base plate
3, and the support spring 5 have uneven surfaces.

(Col. 6, ll. 37-46).
ALLEN – do you want to skip this line?
The prior art Kurano patent further describes that “[t]he coating film
16 serves to prevent fall of the released particles from the microactuator
devices 2. Therefore, the recording medium used in the disk recording
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apparatus is prevented from being damaged by the released particles.” (Col.
6, ll. 47-51).

PRINCIPLES OF LAW
On appeal, Appellants bear the burden of showing that the Examiner
has not established a legally sufficient basis for anticipation based on the
Kurano patent. Appellants may sustain this burden by showing that the prior
art reference relied upon by the Examiner fails to disclose an element of the
claim. It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

ANALYSIS
The Examiner correctly shows where all the claimed elements appear
in the Kurano prior art reference.
First, contrary to Appellant’s contentions, Kurano’s flexible substrate
17 is part of Kurano’s microactuator just as Appellant’s support frame
(actuator base) 310 forms part of Appellant’s ‘U’-shaped micro-actuator
306. Therefore, Appellant has not established that the Examiner erred with
respect to this contention.
Second, contrary to Appellant’s contentions, the right half of
Kurano’s “H” shaped structure 17 in Figure 11 is “generally ‘U’-shaped” as
required by claims 1 and 8. The fact that Appellant’s preferred
embodiments show what Appellant describes as “a proper U-shaped”
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actuator is irrelevant as Appellant claims “a generally ‘U’-shaped” actuator.
Additionally, we note that in Kurano’s Figure 9, base plate 3 and devices 2
form what Appellant calls “a proper U-shaped” actuator. Therefore,
Appellant has not established that the Examiner erred with respect to this
contention.

REJECTION OF CLAIMS 4 AND 13 UNDER 37 C.F.R. § 41.50(b)
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
Claims 4 and 13 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kurano in view of Appellant’s admitted prior art (AAPA).
The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
The Supreme Court reaffirmed and relied upon the Graham three
pronged test in its consideration and determination of obviousness in the fact
situation presented in KSR Int’l. v. Teleflex Inc., 550 U.S. ___, 82 USPQ2d
1385, 1391 (Apr. 30, 2007). The Court stated:
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While the sequence of these [Graham] questions might be
reordered in any particular case, the factors continue to define
the inquiry that controls. If a court, or patent examiner,
conducts this analysis and concludes the claimed subject matter
was obvious, the claim is invalid under § 103.
KSR, 550 U.S. ___, 82 USPQ2d at 1391. Further, the Court stated:
To facilitate review, this analysis should be made explicit. See
In re Kahn, 441 F.3d 977, 988 [78 USPQ2d 1329] (CA Fed.
2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). As our
precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
KSR, 550 U.S. ___, 82 USPQ2d at 1396. Additionally, the Court stated:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR, 550 U.S. ___, 82 USPQ2d at 1396.
As we have already determined, Kurano teaches all the features of
claims 4 and 13 except that Kurano’s support frame is not shown to be of
Zirconia. However, AAPA teaches that it is known in the art to make the
support frame from Zirconia. (Specification 3: 1). The level of skill in the
art is shown by Kurano to include the knowledge of how to manufacture
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micro-actuator devices (e.g., Kurano’s Background of the Invention). Based
on the scope and content of the prior art, the differences between the prior
art and the claims, and the level of ordinary skill in the pertinent art, we
conclude that using Zirconia as the support frame (Appellant’s claimed first
material) in the Kurano device would have been obvious at the time of
Appellant’s invention.
We note that Appellant has labeled this section of the Specification as
“Background Information” rather than Prior Art. However, Appellant has
labeled as “Prior Art” the figures corresponding to this section of the
Specification. Therefore, until such time as the Appellant positively states
that it is not prior art, we treat as admitted prior art the entire contents of the
“Background Information” section of the Specification.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal (37 C.F.R. § 1.197(b)) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request Rehearing. Request that the proceeding be reheard under
[37 C.F.R.] § 41.52 by the Board upon the same record …

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CONCLUSION OF LAW
(1) Appellant has failed to establish that the Examiner erred in
rejecting claims 1-3, 5-12, and 14-16 as being unpatentable under
35 U.S.C. § 102(e) over Kurano.
(2) Claims 4 and 13 fail to meet the requirements of 35 U.S.C. § 103.
(3) Claims 1-16 are not patentable.

DECISION
The Examiner's rejection of claims 1-3, 5-12, and 14-16 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).

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37 C.F.R. § 41.50(b)

tdl/ce

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