Ex Parte Yao et al

Board of Patent Appeals and Interferences

Jan 26, 2009

10763727 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MINGGAO YAO and MASASHI SHIRAISHI
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Appeal 2008-5277
Application 10/763,727
Technology Center 2600
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Decided: January 26, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 10-21 (see Br. 2, Final Rejection, mailed October 11,
2006). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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I. STATEMENT OF THE CASE
Appellants invented a multi-layered piezoelectric actuator to improve
the recording density of hard disk drives. (See generally Spec. 2-3)
Claim 10, which further illustrates the invention, follows:
10. An actuator component comprising:
at least one layer of electrically-conductive material; and
at least one layer of electrically-insulative material, wherein
said conductive material and said insulative material are to be applied
to an actuator finger one layer upon another in an alternating manner, and
said layer of insulative material is wider than said layer of conductive
material such that an insulative layer, applied to said actuator finger and
sandwiching a conductive layer between said insulative layer and said
actuator finger, at least partially encloses and electrically isolates said
conductive layer latitudinal to said actuator finger.
The Examiner relies upon the following prior art references to show
unpatentability:
Shiraishi JP 2002-74870 A Mar. 15, 2002
Claims 10, 13-16 and 19-21 stand rejected under 35 U.S.C. § 102(a)
as being unpatentable Shiraishi.
Claims 11, 12, 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shiraishi.
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Rather than repeat the arguments of the Appellants or the Examiner,
we refer to the Briefs and the Answer for their respective details. In this
decision, we have only considered those arguments actually set forth by the
Appellants. Arguments in which the Appellants could have made but did
not make in the Briefs filed have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37 (c)(1)(vii).

ISSUE
The issue before us is whether the Appellants have shown that the
Examiner erred in finding that Shiraishi anticipates the limitations of claims
10, 13-16 and 19-21? Further, have the Appellants shown that the Examiner
erred in finding that Shiraishi renders the limitations in claims 11, 12, 17 and
18 obvious? The issue turns on whether the Shiraishi reference discloses
sandwiching a conductive layer between an insulative layer and an actuator
as claimed by the Appellants.

FINDINGS OF FACT
1. Figure 7a of the Appellants’ invention shows a cross sectional view,
element 704, of the claimed invention, elements 712 are conductive
materials such as gold, platinum or copper, elements 714 are insulative
materials such as piezoelectric layers and elements 716 are bonding pads
(Spec. 5-6).

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Figure 7a shows a cross sectional view of micro-actuator arm of the claimed
invention.
2. Figure 5 of Shiraishi shows an actuator, element 22, having a pair of
movable arms, elements 51 and 52; arm members, elements 51a and 51b;
piezoelectric members, elements 51b and 52b; slider adhesion portion,
element 53; and base, element 50.

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Figure 5 of Shiraishi

Figure 5 shows an actuator having movable arms.
3. Figure 6 of Shiraishi shows a cross sectional view of the piezoelectric
members; elements 51b and 52b; ground electrodes, elements 62; signal
electrodes, element 61 and piezoelectric members, elements 60.

Figure 6 of Shiraishi

Figure 6 shows a cross sectional view of the piezoelectric member of
the Shiraishi actuator.
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PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
"'A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellants argue that elements 60, 61 and 52a of Shiraishi do not
represent what the Examiner stated them to be (App. Br. 5-6). According to
Appellants, element 60 is not the same as the insulative material of the
claimed invention, element 61 is not the same as the conductive material of
the claimed invention and element 51a is not the same as the actuator finger
of the claimed invention (App. Br. 5). The Appellants, however, fail to
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provide evidence or convincing arguments as to why the Examiner’s
characterization of the elements is incorrect. Therefore the Examiner’s
characterization of the elements is considered to be correct. “As discussed
in In re Piasecki, the examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant.” See In re Oetiker, 977 F.2d at
1445.
The Appellants also argue that the acceptance of the Examiner’s
characterization of the Shiraishi’s elements does not resolve the fact that,
“[i]n order to show an embodiment wherein a conductive layer is
sandwiched between the insulative layer and the actuator finger, the
Shiraishi reference would need to show element 61 sandwiched between
element 60 and element 52a.” (App. Br. 6). Appellants’ arguments however
are not commensurate with the scope of claim 10. Claim 10 states, “An
actuator component comprising . . . “(App Br. A-1). The direct spatial
interpretation set forth by the Appellants is not persuasive because the
“comprising” terminology employed in the claims is considered to be open-
ended. Therefore the direct laying or sandwiching advocated by the
Appellants is not persuasive because other elements and other layers can be
positioned within the framework of Shiraishi’s invention without affecting
the anticipatory significance of Shiraishi.
The MPEP specifically provides that “[t]he transitional
term ‘comprising,’ ... is synonymous with
‘including,’ ‘containing,’ or ‘characterized by,’ [and] is
open-ended and does not exclude additional, unrecited
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elements or method steps.” MPEP, 8th ed., rev. 1 §
2111.03 (2003); see, e.g., Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising is a
term of art used in claim language which means that the
named elements are essential, but other elements may be
added and still form a construct within the scope of the
claim.”). Thus, neither the dictionary nor the MPEP
provides a definition for “containing” that excludes
additional, unnamed ingredients.
See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1375-76 (Fed. Cir. 2004).
Figure 6 of Shiraishi discloses a piezoelectric insulative material (60)
sandwiching conductive layers (61 and/or 62) between the actuator arm (FF2
and FF3). Claim 10 is not distinguishable over the Shiraishi invention.
The Appellants further argue that the piezoelectric multilayer element
of Shiraishi fails to anticipate claim 10 because its orientation is on the side
of the actuator as opposed to the top of the actuator as claimed. (App. Br.
6). This is not persuasive because the orientation of the multilayer element
is subject to reasonable interpretation by the Examiner. See Bigio, 381 F.3d
at 1324. Claim 10 does not disclose the top/side orientation argued by the
Appellants (App. Br. A-1) and therefore, the Appellants arguments are not
commensurate with the scope of claim 10. However, Shiraishi discloses
positioning the piezoelectric multilayer element on the top portion of the
side of the actuator (FF2). Shiraishi’s orientation is the same claimed in
claim 10 (App. Br. A-1).
Thus, the 35 U.S.C. § 102(a) rejection of claims 10, 13-16 and 19-21
over Shiraishi will be sustained.
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The 35 U.S.C. § 103(a) rejection of claims 11, 12, 17 and 18 over
Shiraishi will be sustained since the arguments presented by the Appellants
are the same for both rejections. (App. Br. 8).

CONCLUSION OF LAW
The Appellants have not shown that the Examiner erred in finding that
Shiraishi both anticipates the limitations of claims 10, 13-16 and 19-21 and
renders the limitations in claims 11, 12, 17 and 18 obvious.

DECISION
The Examiner’s decision rejecting claims 10-21 is affirmed.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KIS

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