Ex parte MATSUDA

Board of Patent Appeals and Interferences

Apr 21, 1998

08148307 (B.P.A.I. Apr. 21, 1998)

Application for patent filed November 8, 1993.1
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ASHER T. MATSUDA
__________
Appeal No. 96-4204
Application 08/148,3071
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH, and FLEMING, 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 rejection of claims 1-20, which constitute
all the claims in the application.
Appeal No. 96-4204
Application 08/148,307
2
The disclosed invention pertains to a planar
semiconductor accelerometer sensor plate. Such a sensor plate is
suspended in parallel between two capacitor plates. A force
acting on the sensor plate causes it to accelerate in a direction
towards one of the capacitor plates. The invention is
particularly directed to a technique for preventing the sensor
plate from bending when subjected to such forces. Specifically,
the planar sensor plate has a first mass bounded by a plurality
of constraint points and a second mass cantilevered from the
first mass disposed outside the constraint points.
Representative claim 1 is reproduced as follows:
1. A planar semiconductor accelerometer sensor plate
comprising:
a first mass of the sensor plate bounded by a plurality of
constraint points, wherein the first mass is disposed inside the
plurality of constraint points; and
a second mass of the sensor plate cantilevered from the
first mass in order to produce a counterbalancing moment on the
first mass, wherein the second mass is disposed outside the
plurality of constraint points for restoring the sensor plate to
a substantially planar condition in response to acceleration
forces.
The examiner relies on the following references:
Albert 4,656,383 Apr. 07, 1987
Wiegand et al. (Wiegand) 4,930,042 May 29, 1990
Appeal No. 96-4204
Application 08/148,307
3
Claims 1-20 were finally rejected under the first
paragraph of 35 U.S.C. § 112 as failing to provide an adequate
written description of the invention. This rejection is not
repeated in the examiner’s answer and has apparently been
withdrawn. Claims 1-4, 7-11, 14, 17 and 18 remain rejected under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
Albert. Claims 5, 15 and 20 remain rejected under 35 U.S.C.
§ 103 as unpatentable over the teachings of Albert taken alone.
Finally, claims 6, 12, 13, 16 and 19 remain rejected under 35
U.S.C. § 103 as unpatentable over the teachings of Albert in view
of Wiegand.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief 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 brief along with the
Appeal No. 96-4204
Application 08/148,307
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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 Albert does not fully meet the invention as recited in
claims 1-4, 7-11, 14, 17 and 18. We are also of the view that
the evidence relied upon and the level of skill in the particular
art would not have suggested to one of ordinary skill in the art
the obviousness of the invention as set forth in claims 5, 6, 12,
13, 15, 16, 19 and 20. Accordingly, we reverse.
We consider first the rejection of claims 1-4, 7-11, 14,
17 and 18 under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Albert. 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 recited functional limitations. RCA Corp. v.
Applied Digital Data Sys., 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).
Appeal No. 96-4204
Application 08/148,307
5
The examiner has attempted to read the claims on the
disclosure of Albert on pages 3-4 of the answer. With respect to
independent claim 1, appellant argues that the masses of Albert
identified by the examiner as the first mass [30 or 32] and the
second mass [34 or 36] are not part of a planar sensor plate as
required by claim 1. The examiner responds that Albert meets
this limitation since “the definition of ‘plane’ defined by the
examiner is ‘to be within the same region and/or area’ wherein
the transducer sensor have a two-dimensional characteristic”
[answer, page 6].
Our first observation is that the examiner is not free to
define a term of the claim in a manner which is inconsistent with
the conventional meaning of the term and is also inconsistent
with the definition of the term disclosed in an applicant’s
specification. An item is planar only if all points of the item
exist in a single plane. This is the accepted definition of
planar and the definition intended by appellant. As appellant
points out, the masses of Albert identified by the examiner are
not part of a planar sensor plate as required by claim 1. We
note that the examiner has identified a portion of Albert which
discusses that the masses can be selected so that the center of
gravity of the masses will lie on the same plane as the vibratory
Appeal No. 96-4204
Application 08/148,307
6
beam. The center of gravity being coplanar with the beam,
however, is not the same as the masses being coplanar with the
sensor plate as recited in claim 1. The masses of Albert are
clearly not part of a planar sensor plate. Therefore, we do not
sustain the rejection of claim 1 as anticipated by the disclosure
of Albert.
With respect to independent claim 8, appellant argues
that Albert does not teach the claimed semiconductor substrate
and a planar sensor plate suspended between a first and a second
capacitor plate [brief, pages 7-8]. The examiner responds that
the transducer of Albert is made of piezoelectric material,
quartz or metal and since quartz and semiconductors are both
crystalline materials, the recitation of claim 8 is fully met.
We do not agree.
Although a semiconductor material such as silicon or
germanium is a crystalline material, not every crystalline
material is a semiconductor. The examiner’s conclusion that the
quartz of Albert is a semiconductor substrate is untenable and
defies accepted knowledge that quartz is not a semiconductor.
The examiner’s own supplied dictionary definition is that quartz
is an oxide of silicon and such an oxide is known to be an
insulating material and not a semiconductor. We note for the
Appeal No. 96-4204
Application 08/148,307
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record that appellant’s other arguments with respect to claim 8
are also correct and show error in the examiner’s position.
Therefore, we do not sustain the rejection of claim 8 as
anticipated by the disclosure of Albert.
With respect to independent claim 18, appellant makes the
same arguments previously made with respect to claims 1 and 8.
Therefore, for reasons already discussed above, Albert does not
anticipate the invention of claim 18 within the meaning of 35
U.S.C. § 102. Since none of the independent claims is fully met
by Albert as discussed above, none of the dependent claims is
fully met by Albert either. Therefore, we do not sustain the
rejection under 35 U.S.C. § 102 of claims 1-4, 7-11, 14, 17
and 18.
With respect to the examiner’s rejection of claims 5, 6,
12, 13, 15, 16, 19 and 20 under 35 U.S.C. § 103, the examiner’s
errors in interpreting the claim language and in evaluating the
teachings of Albert render the examiner’s § 103 rejections as
being fatally deficient. There is nothing in Albert or Wiegand
which compares to the claimed planar sensor plate having a first
mass and a cantilevered second mass arranged about constraint
points as recited in the claims on appeal. The examiner’s
misinterpretation of the claims and misreading of the prior art
Appeal No. 96-4204
Application 08/148,307
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references have resulted in a failure to establish a prima facie
case of the obviousness of the claims on appeal. Therefore, we
do not sustain the rejection of the claims under 35 U.S.C. § 103.
In summary, we have not sustained the examiner’s
rejections of the claims under either 35 U.S.C. § 102 or § 103.
Accordingly, the decision of the examiner rejecting claims 1-20
is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Vincent B. Ingrassia
Motorola, Inc.
Intellectual Property Dept., Suite R3108
P.O. Box 10219
Scottsdale, AZ 85271-0219