Ex Parte Yao

Board of Patent Appeals and Interferences

Sep 29, 2010

10263001 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/263,001 10/01/2002 Ming Gao Yao 4593-230 7038
23117 7590 09/29/2010
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HEINZ, ALLEN J
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MING GAO YAO
____________

Appeal 2009-010135
Application 10/263,001
Technology Center 2600
____________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and
JOHN C. MARTIN, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010135
Application 10/263,001

2
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 1 to 16.2 We will affirm.
The disclosed invention relates to a generally U-shaped actuator
element that includes a support frame of a first material. A coating partially
encapsulates the actuator element and an interior side of arms of the support
frame to prevent the generation of particles (Figs. 3, 4, 6; Spec. 5, 6;
Abstract).
Claim 1 is representative of the claims on appeal, and it 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 and an
interior side of arms of the support frame to prevent particle generation, the
coating comprising a second material.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kurano US 6,617,762 B2 Sep. 9, 2003
The Examiner rejected claims 1 to 3, 5 to 12, and 14 to 16 under 35
U.S.C. § 102(e) based upon the teachings of Kurano.
The Examiner rejected claims 4 and 13 under 35 U.S.C. § 103(a)
based upon the teachings of Kurano.

2 In a prior appeal in the subject application, the Board in a Decision dated
May 15, 2007, affirmed the anticipation rejection of claims 1 to 3, 5 to 12,
and 14 to 16 based upon the teachings of Kurano.
Appeal 2009-010135
Application 10/263,001

3
Turning first to the anticipation rejection, Appellant argues (Br. 5) that
the flexible substrate 17 in Kurano is not part of the microactuator device 2,
and Kurano fails to teach a coating at least partially encapsulating an
actuator element and an interior side of arms of the support frame.
Thus, we have to determine whether the flexible substrate 17 in
Kurano is part of the microactuator device 2, and whether Kurano teaches a
coating at least partially encapsulating an actuator element and an interior
side of arms of the support frame.
We agree with the findings in the prior Board decision that “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,” and “the right half of Kurano’s “H” shaped structure 17
in Figure 11 is ‘generally ‘U’-shaped’ as required by claims 1 and 8”
(Decision, 6). As seen in referenced Figure 11 of Kurano, the open ends of
the U-shaped support frame/flexible substrate 17 form arms that have an
“interior side.” Furthermore, each “interior side” of the arms of the support
frame/flexible substrate 17 is partially encapsulated by the coating that coats
the microactuators (col. 7, ll. 3-14).
In summary, the anticipation rejection of claims 1 to 3, 5 to 12, and 14
to 16 is sustained because: the Examiner did not err by finding that the
flexible substrate 17 in Kurano is part of the microactuator device 2; the
Examiner did not err by finding that Kurano teaches a coating at least
partially encapsulating an actuator element and an interior side of arms of
the support frame; and each and every limitation in the claims is found either
Appeal 2009-010135
Application 10/263,001

4
expressly or inherently in the cited reference to Kurano. In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004).
The obviousness rejection of claims 4 and 13 is sustained because
Appellant has not presented any patentability arguments for these claims
apart from the arguments presented for claims 1 to 3, 5 to 12, and 14 to 16.
The decision of the Examiner 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)(v).
AFFIRMED

KIS

NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203