Ex Parte Ruby et al

Patent Trial and Appeal Board

Mar 1, 2016

12769791 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121769,791 04/29/2010
57299 7590 03/03/2016
Kathy Manke
A vago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525
FIRST NAMED INVENTOR
Richard C. RUBY
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009- ll 6USORG 8405
EXAMINER
SAN MARTIN, JA YD! A
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
03/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kathy.manke@broadcom.com
patent.info@broadcom.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD C. RUBY, WEI PANG, QIANG ZOU, and
DONALDLEE 1
Appeal2014-004927
Application 12/769,791
Technology Center 2800
Before TERRY J. OWENS, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 21-25 and 27-31. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to an acoustic resonator device.
Spec. i-f 7; Claim 21. Claim 21 is reproduced below from page 20 (Claims
Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is A vago
Technologies Wireless IP (Singapore) PTE., LTD, Inc. App. Br. 3.
Appeal2014-004927
Application 12/769,791
21. An acoustic resonator device, comprising:
a substrate;
a composite electrode disposed over the substrate, the composite
electrode comprising first and second electrically conductive
layers and a temperature compensating layer disposed between
the first and second electrically conductive layers, wherein the
second electrically conductive layer forms an electrical contact
with the first electrically conductive layer on at least one side of
the temperature compensating layer, the electrical contact
electrically shorting a capacitive component of the temperature
compensating layer;
a piezoelectric layer adjacent to the composite electrode; and
an acoustic reflector disposed beneath the composite electrode.
EVIDENCE RELIED ON BY THE EXAMINER
Larson, III
Yamada et al.
N akatsuka et al.
US 6,420,820 B 1
US 6,906,451 B2
US 7 ,259 ,498 B2
July 16, 2002
June 14, 2005
Aug. 21, 2007
REJECTIONS ON APPEAL 2
1. Claims 21, 22, 27, 30, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Larson in view ofNakatsuka.
2. Claims 23-25 and 27-29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Larson in view ofNakatsuka, further in view of
Yamada.
2 The Final Action dated September 25, 2012, included a rejection under
35 U.S.C. § 112, i-f 2. Final Act. 2. Although the Examiner does not
expressly withdraw that rejection in the Answer, the grounds of rejection
listed in the Answer omit that ground. See Ans. 4--6. As the Appellants
explain, App. Br. 5 n.4, that is likely because the Examiner entered an
amendment after final in which the Appellants remedied the § 112, i-f 2 issue
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Application 12/769,791
ANALYSIS
The Appellants present arguments only for claims 21 and 23.
Therefore, claims 22, 27, 30, and 31 stand or fall with claim 21, and claims
24, 25, and 27-29 stand or fall with claim 23. See 37 C.F.R.
§ 41.37(c)(l)(iv).
After review of the evidence in the appeal record and the opposing
positions of the Appellants and the Examiner, we determine that the
Appellants have not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth by the Examiner
in the Answer. See generally Ans. 4--7. We add the following for emphasis
and completeness.
Relying largely on Figure 4 of Larson, the Examiner finds that Larson
teaches each element of claim 1 except the "acoustic reflector" limitation.
Ans. 4. The Examiner finds that Nakatsuka teaches an acoustic mirror and
that it would have been obvious "to provide an acoustic mirror in Larson for
its known, predictable and expected benefit." Id. at 5. Concerning the claim
recitation "the electrical contact electrically shorting a capacitive component
of the temperature compensating layer," the Examiner finds that it is a
functional recitation "with no commensurate structure to achieve the
function." Id. However, the Examiner finds that, even if that recitation does
constitute a structural limitation, "any metallic element," including the
compensating layer of Larson, necessarily would possess "internal
identified by the Examiner. See Amendment Initialed by Examiner dated
Dec. 12, 2012. Thus, for purposes of this appeal, we consider the§ 112, i12
rejection to be withdrawn. If the Examiner did not intend to withdraw it, it
can be addressed in the event of further examination of this application.
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Application 12/769,791
impurities and/or surface oxidation" and therefore "would actually have
some inherent capacity." Id. at 6. The Examiner further explains that, even
if the compensating layer of Larson does not possess a capacitive
component, the structure of Larson as modified by Yamada would have a
capacitive component (i.e., the oxide compensating layer) and would
therefore meet the claim limitation. Id. at 6-7.
The Appellants argue that the claim recitation "the electrical contact
electrically shorting a capacitive component of the temperature
compensating layer" is not a recitation that can be disregarded, and that
"there is no capacitive component to [Larson's] compensator body." App.
Br. 8. According to the Appellants, because Larson "does not have a
capacitive component," the contact between Larson's electrically conductive
layers cannot "short[] a capacitive component of the temperature
compensating layer," as required by claim 21. Id. at 9.
Although we agree with the Appellants that the disputed recitation
affirmatively requires the temperature compensating layer to have a
capacitive component, and therefore cannot be disregarded, we nevertheless
do not find the Appellants' arguments to be persuasive. As explained above,
the Examiner finds that the compensating layer of Larson necessarily would
possess "internal impurities and/or surface oxidation" and therefore "would
actually have some inherent capacity." Ans. 6. The Appellants do not
meaningfully refute that finding, and claim 21 is not limited to any particular
capacitive component that might exclude "internal impurities and/or surface
oxidation." In the Reply Brief, the Appellants repeat that "there is no
disclosure or discussion of capacitance caused by internal impurities and/or
surface oxidation or its magnitude, or especially its impact on the oxidation
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Application 12/769,791
of the device in Larson, III." Reply Br. 7. However, if a person of ordinary
skill would have understood a capacitive component to be inherent in the
compensating layer of Larson, as the Examiner finds, Larson's
compensating layer would meet the disputed limitation of claim 1 regardless
of whether Larson expressly discusses capacitance or its impact on the
operation of the device. The argument presented by the Appellants provides
no basis to reject the Examiner's findings.
Moreover, the Appellants' argument does not address the Examiner's
finding that Larson as modified by Yamada (Rejection 2, affirmed below)
would include a compensating layer (Si02) that possesses a capacitive
component. E.g., Final Act. 3--4; Ans. 6-7 ("[I]t would have been obvious .
. . for the reasons given ... in regard to [Rejection 2] ... to select a
nonmetallic temperature compensating element (such as the Si02 taught by
Yamada) which would clearly have a capacitive component which would be
short-circuited when used in Larson."). Therefore, we do not find the
Appellants' argument persuasive. See In re Keller, 642 F.2d 413, 426
(CCP A 1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.").
The Appellants next appear to argue, similar to the foregoing
argument, that Larson's compensating layer does not fall within the scope of
claim 21 's "compensating layer" because it does not possess a capacitive
component to be shorted. App. Br. 12-13. As explained above, however,
the Examiner finds that a person of ordinary skill in the art would understand
Larson's compensating layer to possess a capacitive component, and the
Appellants do not meaningfully refute that finding. Nor do the Appellants
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refute the Examiner's finding that Larson as modified by Yamada would
comprise a compensating layer including a capacitive component.
Focusing on claim 23 (Rejection 2), which further recites that "the
temperature compensating layer comprises an oxide material," the
Appellants argue that substitution of the Si02 compensating layer of
Yamada for the compensating layer of Larson would render Larson
unsatisfactory for its intended purpose. App. Br. 17. They also argue that
Larson "teaches away from using a non-metallic material." Id.
We do not find those arguments to be persuasive. The Appellants do
not adequately explain why the substitution proposed by the Examiner
would render Larson unsatisfactory for its intended purpose. As the
Examiner explains, Larson and Yamada teach compensating layers that
serve similar purposes and that require similar properties, and Yamada
teaches a compensating layer comprising an oxide material. Ans. 5---6.
While Larson teaches that the compensator body is "preferably" a metallic
alloy, it does not disparage or preclude other materials, such as oxides. See
Larson at 4:30-31. The Appellants' arguments provide no explanation as to
why the proposed substitution would render Larson unsatisfactory for its
intended purpose. Nor do they establish that Larson "teaches away from
using a non-metallic material." App. Br. 17; cf In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of the[] [disclosed]
a tematlves . . . . . 1 . ")
Substitutions of one known element for another, such as the
compensating layer of Yamada for that of Larson, typically do not result in
nonobvious subject matter. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
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Application 12/769,791
416 (2007) ("[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.").
The Appellants' arguments provide no basis to reverse the Examiner's
rejection.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 21-25 and 27-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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