Ex parte Kotani

Board of Patent Appeals and Interferences

May 18, 1998

08195844 (B.P.A.I. May. 18, 1998)

Application for patent filed February 14, 1994.1
According to the appellant, the application is a continuation
of Application No. 07/998,602 filed December 30, 1992, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENICHI KOTANI
____________
Appeal No. 95-3001
Application No. 08/195,8441
____________
HEARD: May 7, 1998
____________
Before HAIRSTON, KRASS and FLEMING, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 4. In an Amendment After Final (paper number 15),
claim 5 was added to the application. Accordingly, claims 1
through 5 are on appeal.
Appeal No. 95-3001
Application No. 08/195,844
2
The disclosed invention relates to a piezoelectric resonance
device in which the width of the dielectric substrate of a
capacitor portion of the device is larger than the width of
adjacent portions of terminals.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A piezoelectric resonance device comprising:
a piezo-resonator which has oscillation electrodes provided
on front and back sides of a piezoelectric substrate and vibrates
in a shear mode;
an input terminal and an output terminal for supporting
the piezo-resonator, each of the input terminal and the output
terminal having cup portions connected with the oscillation
electrodes electrically;
a capacitor which has a common electrode on one side of a
dielectric substrate, and opposed electrodes on the other side of
the dielectric substrate spaced from one another along a first
dimension of the dielectric substrate, the opposed electrodes
being connected electrically with an outer side of the cup
portions of the terminals along said first dimension and along a
second dimension, the second dimension of the dielectric
substrate being larger than that of the cup portions of the
terminals; and
a grounding terminal which is connected electrically with
the common electrode of the capacitor.
The references relied on by the examiner are:
Yoshida 5,091,671 Feb. 25, 1992
Yoshinaga 5,184,043 Feb. 2, 1993
(filed Dec. 17, 1991)
Japanese patent publication 1-133816 Sept. 12, 1989
Appeal No. 95-3001
Application No. 08/195,844
3
Claims 1 through 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Yoshida, the Japanese patent publication
or Yoshinaga.
Reference is made to the brief, the final rejection (paper
number 14), and the answer for the respective positions of the
appellant and the examiner.
OPINION
We have carefully considered the entire record before
us, and we will reverse the obviousness rejection of claims 1
through 5.
According to the examiner (paper number 14):
Each reference teaches the claimed piezoelectric
resonance device except for the specific width of the
capacitor dielectric substrate. The size of the
dielectric and the electrode area are functions of the
desired properties of the capacitor; with the values
dictated by job requirements. Selecting optimum values
for a known device has long been held to be within the
skill expected of the routineer, and therefore a
manipulation that would have been obvious to one of
ordinary skill in the art. Note that Yoshida (fig. 1)
shows the capacitor equal in width to the cup terminal
width, while Japan (figs. 2-4) shows the capacitor
substrate is wider than the common (ground) terminal.
Appellant argues (Brief, page 10) that “[t]he Yoshida patent
at best discloses matching the second dimension of dielectric
plate 8a to that of cup portions 2a and 3a,” “[t]he Yoshinaga
patent discloses forming the second dimension of the capacitor
Appeal No. 95-3001
Application No. 08/195,844
4
dielectric 11 smaller than that of U-shaped holding parts 21/31,”
and “[t]he Japanese ’816 document, like the Yoshinaga patent,
discloses a capacitor dielectric having a second dimension which
is smaller than that of U-shaped terminals 5a/6a.” With respect
to the examiner’s statement that “Japan (figs. 2-4) shows the
capacitor substrate is wider than the common (ground) terminal,”
appellant argues (Brief, page 10) that the T-shaped grounding
terminal 7 in the Japanese reference does not correspond to the
claimed input and output terminals, and that the T-shaped
grounding terminal does not include cup-shaped portions as
required by the claims on appeal. In rebuttal to the examiner’s
position concerning optimization, appellant argues (Brief,
page 9) that:
[T]he Yoshida, Yoshinaga and Japanese ’816 documents,
taken either alone or in combination, at best, merely
disclose sizing a dielectric substrate as a function of
circuit requirements. Those skilled in the art
desiring increased capacitance would have been
motivated to laterally increase the dielectric or
capacitor electrode size, or increase the size of the
overall device (i.e., maintain the relative dimensions
of the terminals and the dielectric substrate).
We agree. The obviousness rejection is reversed because nothing
in the record supports the examiner’s position that the skilled
artisan seeking optimum capacitance would have sized the
Appeal No. 95-3001
Application No. 08/195,844
5
dielectric with respect to the size of the cup-shaped portions of
the terminals.
DECISION
The decision of the examiner rejecting claims 1 through 5
under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3001
Application No. 08/195,844
6
Platon N. Mandros
Burns, Doane, Swecker & Mathis
P.O. Box 1404
Alexandria, VA 22313-1404
KWH/jrg
APPEAL NO. 95-3001 - JUDGE HAIRSTON
APPLICATION NO. 08/195,844
APJ HAIRSTON
APJ FLEMING
APJ KRASS
DECISION: REVERSED
Typed By: Jenine Gillis
DRAFT TYPED: 11 May 98
FINAL TYPED:
3 Member Conf. Yes No