Ex Parte Kurachi et al

Patent Trial and Appeal BoardAug 30, 2017

13487530 (P.T.A.B. Aug. 30, 2017)

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. 13/487,530 06/04/2012 Katsuyuki KURACHI 153696 4189 759025944 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 09/01/2017 EXAMINER GORDON, BRYAN P ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): OfficeAction25944@oliff.com j armstrong @ oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATSUYUKI KURACHI, HITOSHI SAKUMA, YASUHIRO AIDA, KAZUHIKO MAEJIMA, and MAYUMINAKAJIMA Appeal 2015-008294 Application 13/487,530 Technology Center 2800 Before CARLA M. KRIVAK, JASON V. MORGAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—3 and 5—17, constituting all claims pending the current application. An oral hearing was held on July 25, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-008294 Application 13/487,530 STATEMENT OF THE CASE Appellants’ invention is directed to a dielectric device. Spec. 11. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A dielectric device comprising: a first electrode film having a non-oriented or amorphous structure; a dielectric film comprising (K,Na)Nb03 provided on the first electrode film and having a preferentially oriented structure; and a second electrode film provided on the dielectric film and having a nonoriented or amorphous structure wherein an oxidation-reduction potential of every metal element forming the first and second electrode films is higher than an oxidation-reduction potential of every metal element forming the dielectric film. REJECTIONS Claims 1—3, 5, 8, 9, and 14—17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Murayama et al. (US 2008/0248324 Al; published Oct. 9, 2008) (“Murayama”) and Shibata et al. (US 2011/0121690 Al; published May 26, 2011) (“Shibata”). Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Murayama, Shibata, and Applicant’s own prior art (“APA”). Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Murayama, Shibata, and Sano et al. (US 2008/0074005 Al; published Mar. 27, 2008) (“Sano”). 2 Appeal 2015-008294 Application 13/487,530 Claims 10, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Murayama, Shibata, and Iwashita (US 2006/0214542 Al; published Sep. 28, 2006) (“Iwashita”). Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Murayama, Shibata, and Hayashi et al. (US 2010/00117493 Al; published May 13, 2010) (“Hayashi”). ANALYSIS Claim 1 Issue 1: Did the Examiner err in finding the combination of Murayama and Shibata teaches or suggests “wherein an oxidation-reduction potential of every metal element forming the first and second electrode films is higher than an oxidation-reduction potential of every metal element forming the dielectric film,” as recited in independent claim 1 ? The Examiner relies on Murayama to teach or suggest a first and second electrode film and a dielectric film, and relies on Shibata to teach or suggest a dielectric film comprising (K,Na)NbC>3. Non-Final Act. 3; Ans. 2— 4. The Examiner finds Murayama teaches using either aluminum or copper for the first and second electrodes, and if copper is selected, the disputed limitation is taught by the combination of the two references. Ans. 3, citing Murayama 45; see also November 11, 2007 Advisory Action at p. 2. Appellants argue1 “[njone of the applied references teaches or suggests the claimed combination of first and second electrode films having a non-oriented or amorphous structure and a dielectric film comprising 1 We only consider those arguments that Appellants actually raise in the Briefs. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). 3 Appeal 2015-008294 Application 13/487,530 (K,Na)Nb03, let alone the claimed relationship between the oxidation- reduction potentials of the metals forming the electrodes and the dielectric film.” App. Br. 7—8. Appellants argue The metal element having the highest oxidation reduction potential in the (K,Na)NbC>3 piezoelectric thin film taught by Shibata is Nb3+’ which has an oxidation-reduction potential of Nb3+ = -1.099 V.... Even though the asserted Cu electrodes may have an oxidation-reduction potential higher than that of the metal elements forming the (K,Na)NbC>3 piezoelectric thin film, assuming that Cu is the only metal element present in those electrodes, Murayama also discloses the upper and lower electrodes containing, e.g., Al, which has an oxidation reduction potential of -1.676 V. See Murayama, 1 [0045]. As the oxidation-reduction potential of Al3+ (-1.676 V) is not higher than the oxidation-reduction potential of Nb3+ (-1.099 V), the proposed combination of Shibata’s (K,Na)NbC>3 piezoelectric thin film with Murayama’s piezoelectric device including the upper and lower electrodes does not necessarily or inherently exhibit the claimed relationship between the oxidation-reduction potentials of every metal element forming the electrodes and every metal element forming the dielectric film. Id. at 9—10. Appellants further argue “even if the copper element in Murayama itself has an oxidation-reduction potential higher than that of the metal elements forming the (K,Na)Nb03 piezoelectric thin film, [it] does not mean that the oxidation-reduction potential of every metal element forming the first and second electrode films is higher than an oxidation-reduction potential of every metal element forming the dielectric film.” Id. at 10; see also Reply Br. 3. We are not persuaded by Appellants’ arguments and agree with the Examiner’s findings. See Final Act. 3^4; Ans. 2—5. Appellants’ argument that neither reference teaches the “claimed combination of first and second 4 Appeal 2015-008294 Application 13/487,530 electrode films having a non-oriented or amorphous structure and a dielectric film comprising (K,Na)Nb03, let alone the claimed relationship between the oxidation-reduction potentials of the metals forming the electrodes and the dielectric film” (App. Br. 7—8) is not persuasi ve because the rejection is based on a combination of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (nonobviousness cannot be shown by attacking references individually where the rejection is based on combination of the references). We agree with the Examiner that the combination of Murayama and Shibata teaches or suggests first and second electrode films with a higher oxidation-reduction potential of every metal element forming (K,Na)Nb03. Specifically, Murayama teaches using copper for upper and lower electrodes (Murayama % 45) and Shibata teaches a dielectric film comprising (K,Na)Nb03 (Shibata Ij 43).2 In this combination, the oxidation-reduction potential of copper is higher than an oxidation-reduction potential of potassium, sodium, and niobium, and therefore teaches the disputed limitation. See Spec. Fig. 2. We are not persuaded by Appellants’ argument that every metal disclosed in Murayama must meet the claim limitations. Rather, “[t]he test for obviousness is what the combined teachings of [prior art] references would have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Although Appellants argue 2 For emphasis, we also note Shibata teaches using a first electrode film material (Pt, An, Ru, or Ir) and a second electrode film material (Pt, Au) higher than an oxidation-reduction potential of a dielectric film comprising (K,Na)Nb03. See Shibata f]} 35, 37. We also note Murayama teaches using first and second electrode films comprising (Cu) higher than an oxidation- reduction potential of a dielectric film comprising (BaTiCE) or (PbTiCb). See Murayama flj 43-45. 5 Appeal 2015-008294 Application 13/487,530 “the recited relationship between oxidation-reduction potentials was not known at the time the invention was made,” Reply Br. 4, Appellants point to no evidence in the record supporting this argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Accordingly, we are not persuaded the Examiner erred. Issue 2\ Did the Examiner err in combining Murayama and Shibata? The Examiner modifies Murayama’s device to include the dielectric film of Shibata “for the benefit of providing a lead free dielectric film which is better for the environment” and further finds “replacing one dielectric material for another would not destroy Murayama’s device and provide the same function for the device since it is well known piezoelectric material.” Final Act. 3; see also Ans. 4. Appellants argue “the Examiner fails to provide a proper reason or rationale for the suggested combination of the (K,Na)NbC>3 piezoelectric thin film of Shibata with only the Cu electrodes of Murayama.” App. Br. 11; see Reply Br. 2. Appellants argue “the piezoelectric thin film element of Shibata already encompasses both the asserted benefit of being lead-free and the benefit taught by Murayama of improved adhesiveness due to the adhesive metal layer.” App. Br. 12. We are not persuaded by Appellants’ argument because it is not responsive to the Examiner’s rejection. The Examiner modifies Murayama with Shibata, not the other way around. Appellants further argue “none of the applied references teaches or suggests the claimed relationship between the oxidation-reduction potentials 6 Appeal 2015-008294 Application 13/487,530 of every metal element forming the electrodes and every metal element forming the dielectric film. As such, the only motivation for the specific combination asserted by the Examiner is based on improper hindsight gleaned from Appellants’ specification.” App. Br. 12; see also Reply Br. 4— 5. We are not persuaded. Appellants have not adequately explained why the Examiner’s proposed modification of Murayama with Shibata involves more than a mere simple substitution of a known element ((K,Na)NbC>3 dielectric film) or that the substitution of the known element would have been beyond the level of ordinary skill in the art. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 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.”). Further, although Appellants argue “one of ordinary skill in the art would not have reasonably expected that the (K,Na)Nb03 piezoelectric film of Shibata could even be combined with the non-oriented electrodes of Murayama,” Reply Br. 5, Appellants provide no persuasive evidence in support of their position in the briefs and do not persuasively rebut the Examiner’s findings. Accordingly, we are not persuaded the Examiner erred in rejecting independent claim 1. Appellants do not present separate arguments for dependent claims 2, 3, 5, and 7—17. App. Br. 13. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—3, 5, and 7—17. 7 Appeal 2015-008294 Application 13/487,530 Claim 6 Issue 3: Did the Examiner err in finding the combination of Murayama, Shibata, and Suno teaches or suggests “wherein the first and second electrode films are composed of an alloy containing at least one selected from Cu, Al, Ti, Zr, Ta, Cr, Co, and Ni,” as recited in dependent claim 6? The Examiner relies on Sano to teach or suggest the disputed limitation. Final Act. 6; Ans. 4—5; see Sano 1149 (“an alloy containing Al, Cu, and the like, in major proportions, may be desirable”). Appellants present similar arguments as with respect to claim 1, namely that “Sano teaches that other metals may be present in the electrodes, and none of the applied references teaches or suggests that all of those elements must also have an oxidation-reduction potential higher than that of the metal elements forming the (K,Na)NbC>3 piezoelectric film.” App. Br. 14. We are not persuaded by Appellants arguments and agree with the Examiner’s findings for the same reasons as set forth above with respect to claim 1. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of dependent claim 6. DECISION For the above reasons, the Examiner’s35 U.S.C. § 103(a) rejection of claims 1—3 is 5—17 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)(l)(iv). AFFIRMED 8