Ex Parte Florian et al

Patent Trial and Appeal Board

Mar 16, 2015

11916725 (P.T.A.B. Mar. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEINZ FLORIAN, MICHAEL HIRSCHLER, and
HELMUT SOMMARIVA
____________

Appeal 2012-009306
Application 11/916,725
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, MARK NAGUMO, and
DONNA M. PRAISS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–9, 11–27, and 29.
1
We have jurisdiction under
35 U.S.C. § 6.

1
On page 2 of the Appeal Brief, Appellants indicate that claims 30–32
were cancelled in the “Second Reply” to the Final Office Action of August
5, 2011. Appellants indicate that the Examiner granted entry of this “Second
Reply” in the Advisory Action of December 29, 2011. Hence, claims 30–32
have been cancelled.
Appeal 2012-009306
Application 11/916,725

2
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below (with text in bold for emphasis):
1. A piezoelectric multi-layer component comprising a stack of
layers, the stack of layers comprising:
piezoelectric layers;
electrode layers, the electrode layers being among the piezoelectric
layers; and
an absorption layer to produce an interface effect for a pressure wave
or a vibration pulse that affects the piezoelectric multi-layer component, the
absorption layer being among piezoelectric and electrode layers in the stack;
wherein the piezoelectric layers, the electrode layers, and the
absorption layer together form a sintered monolithic component; and
wherein the absorption layer is thicker than individual piezoelectric
layers.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ragossnig et al. US 2006/0238073 A1 Oct. 26, 2006
(hereinafter “Ragossnig “)
2

Hayano et al. (as translated) JP 2002-353529A Dec. 6, 2002
(hereinafter “Hayano”)

THE REJECTION
Claims 1–9, 11–27, and 29 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Hayano in view of Ragossnig.

2
On page 4 of the Answer, that Examiner lists this U.S. patent as well as
Ragossnig et al., WO 2004/077583 A1 (issued on September 10, 2004).

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ANALYSIS
We reverse the above § 103 rejection, for substantially the reasons
provided by Appellants in their Brief and Reply Brief. We add the
following.
It is the Examiner’s position that the primary reference of Hayano
discloses the claimed subject matter, except for the recitation of “wherein
the piezoelectric layers, the electrode layers, and the absorption layer
together form a sintered monolithic component”. Ans. 4–5. The Examiner
relies upon Ragossnig for suggesting this aspect of the claimed subject
matter. Ans. 5.
It is Appellants’ position that the Examiner’s proposed modification
of Hayano according to Ragossnig frustrates the purpose of Hayano. Appeal
Br. 10–12. Appellants argue that Hayano purposefully uses two or more
small unit electrostrictive actuators, rather than a sintered monolithic
component, such as the one claimed by Appellants, to obtain an actuator
having “high displacement and high-reliability”. Appeal Br. 12. Appellants
argue that modifying Hayano according to Ragossnig to form a sintered
monolithic component would frustrate the purpose of Hayano of achieving
an actuator having “high displacement and high-reliability” for the reasons
provided by Appellants in the record. Appeal Br. 13–14.
In reply, on page 12 of the Answer, the Examiner argues, with regard
to the claimed term involving sintering (i.e., “sintered monolithic
component”), that:
[t]he claim does not require that sintering is the only process used in
the production of the device, or that the sintering is performed on the
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monolithic component as a whole; therefore, Hayano et al. discloses
the claimed sintered monolithic component.
Using this claim interpretation, the Examiner states that Hayano
teaches sintering in paragraph 11 of the English translation, and thus Hayano
discloses this aspect of the claimed invention.
However, the Examiner’s claim interpretation is flawed. Claim 1
requires a “sintered monolithic component”. That is, the plain language of
the claim requires that the monolithic body be sintered. Appellants’
Specification discloses, on page 12, that
[t]he component is produced through common sintering of the layers
located in the layer stack. This occurs preferably in a single
processing step.
We thus interpret the claim in this manner, and note that the words of
the claim must be given their plain meaning unless the plain meaning is
inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989). Thus, contrary to the Examiner’s claim interpretation, the claimed
phrase of “wherein the piezoelectric layers, the electrode layers, and the
absorption layer together form a sintered monolithic component” is properly
interpreted as meaning that the “sintered monolithic component” is the
piezoelectric layers, the electrode layers, and the absorption layer sintered
together. See also In re Garnero, 412 F.2d 276, 279 (CCPA 1979) (holding
“interbonded by interfusion” to limit structure of the claimed composite and
noting that terms such as “welded,” “intermixed,” “ground in place,” “press
fitted,” and “etched” are capable of construction as structural limitations.)
Thus, the sintering step that the Examiner points to in Hayano in
paragraph 11 is not helpful regarding the claim limitation because it is the
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“block body” of Hayano that is calcined. The block body does not include
the absorption layer (insulating plate 14 of Hayano). Appellants rightly
point this out on page 5 of the Reply Brief. This fact undermines the
Examiner’s response (made on page 13 of the Answer) to Appellants’
argument (that the proposed modification frustrates the purpose of Hayano).
Therein, the Examiner states that the teaching away argument is not
persuasive because Hayano does in fact form a monolithic component, albeit
in the form of two or more small actuators. However, insulating plate 14 is
not sintered together with the other layers in Hayano. Appellants argue that
the reason is because Hayano desires two or more small units, connected by
non-sintered insulating plates 14, in order to obtain an actuator having “high
displacement and high-reliability”. Appeal Br. 12. Appellants argue that
when modified as proposed by the Examiner, Hayano would not achieve this
result. Id. Notably, in reply to argument, the Examiner does not adequately
address this specific aspect of Appellants’ position.
On the other hand, based upon the disclosure of Hayano as pointed
out by Appellants (Appeal Br. 11–12), Appellants’ position is a reasonable
one, for the reasons stated by Appellants in the record.
We add that “[i]f the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)” (emphasis added). “If the
proposed modification or combination of the prior art would change the
principle of operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the claims prima
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facie obvious. In re Ratti, 270 F.2d 810, 812 (CCPA 1959) (emphasis
added).
In view of the above, we therefore reverse the rejection.

CONCLUSIONS OF LAW AND DECISION
The rejection of claims 1–9, 11–27, and 29 is reversed.

REVERSED

cdc