Ex parte ARYA

Board of Patent Appeals and Interferences

Feb 22, 2002

08825424 (B.P.A.I. Feb. 22, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SATYA P. ARYA
____________
Appeal No. 2000-0356
Application No. 08/825,424
____________
ON BRIEF
____________
Before BARRETT, DIXON, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected claims 40-55. The appellant
appeals therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue in this appeal is a suspension for
a transducer in a disk drive. A disk drive stores data on
and retrieves data from concentric tracks of a rotatable
magnetic disk. A transducer is moved from track-to-track to
Appeal No. 2000-0356 Page 2
Application No. 08/825,424
write or read the desired data. Typically, the transducer is
positioned on an air bearing slider that flies above the
surface of the disk as the latter rotates. A suspension
connects the slider to a rotary or linear actuator.
The appellant asserts that, heretofore, each disk drive
manufacturer had to design its own suspension for its own
drives. (Spec. at 2.) The reason given by the appellant for
this is that if the length of the suspension was varied, the
dynamic characteristics of the suspension also changed. (Id.)
This resulted in the need to redesign each suspension for
every change in suspension length. The appellant also asserts
that past designs used a large, thick actuator arm that
projected toward the disk and to which the suspension was
attached. (Id. at 2-3.) To obtain a desirable frequency
response characteristic in the suspension, the actuator arm
was extended as far as possible toward the disk. Because the
large actuator arm contributed to the mass of the actuator, it
slowed the actuator's speed, thereby slowing the storage and
retrieval of data.
Appeal No. 2000-0356 Page 3
Application No. 08/825,424
Figures 3 and 4 of the appellant’s specification show his
inventive suspension. The suspension comprises a first rigid
beam section 132 connected to an actuator arm 34. The first
section 132 has at least one ridge 130 stamped along its
length. A flexible spring section 140 is connected to the
first section 132. A second rigid section 150 is connected to
the spring section 140 on one end and receives a transducer 30
on the other end.
The stamped ridge 130 provides stiffness to the first
section 132 and, in effect, extends the stiffness of the
actuator arm 34 out through the first section 132 to the
beginning of the spring section 140. Consequently, the
actuator arm 34 need not be extended as far as in the past.
The spring section 140 and the second section 150 may be of a
standard length so that the overall length of the suspension
may be varied by simply changing the length of the first
section 132 without substantially changing the dynamic
characteristics of the suspension.
Appeal No. 2000-0356 Page 4
Application No. 08/825,424
Claim 40, which is representative for present purposes,
follows:
40. A transducer suspension system comprising:
a first rigid beam section having a longitudinal
and a lateral axis, a first portion for connection
to a support member and a second portion extending
beyond the support member, the first rigid beam
section having a flat planar base with a stamped
ridge rising above the base and extending along an
interior portion of its length from the first
portion overlying the support member, through the
second portion extending beyond the support member,
and terminating at a position proximate to, but not
inside, a flexible spring section, the stamped ridge
providing stiffness to the rigid beam section to
resist movement by the rigid beam in a direction
perpendicular to a plane containing the longitudinal
and lateral axes;
the flexible spring section connected to the
second portion of the first rigid beam section at a
location a distance beyond an edge of the support
member; a second rigid beam section connected to the
flexible spring section; and
a transducer assembly receiving section
connected to the second rigid beam section for
receiving a transducer assembly.
(Appeal Br. at 9.)
The prior art applied by the examiner in rejecting the
claims follows:
NHK Spring Co. (“NHK”) NP30-La/Fa ver. 1 Sep. 27, 1993
Appeal No. 2000-0356 Page 5
Application No. 08/825,424
Karam II 5,408,372 Apr. 18,
1995
Frater et al. (“Frater”) 5,353,181 Oct.
4, 1994.
Claims 40-47 stand rejected under 35 U.S.C. § 103(a) as
obvious over NHK in view of Karam II. Claims 48-55 stand
rejected under § 103(a) as obvious over NHK in view of Karam
II further in view of Frater.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 40-55. Accordingly, we
reverse.
Rather than reiterate the positions of the examiner or
appellant in toto, we address the main point of contention
therebetween. Admitting that “NHK does not show the first
rigid beam section having at least one stamped ridge extending
along an interior portion of its length from the first portion
through the second portion and terminating before reaching the
Appeal No. 2000-0356 Page 6
Application No. 08/825,424
spring section,” (Final Rejection at 4), the examiner makes
the following assertion.
One of ordinary skill in the art at the time of the
invention would have been motivated to provide the
suspension of NHK with the ridges as taught by Karam
so that they extend over an edge of the support
member and terminate prior to the spring section
since ridges are taught to increase the rigidity of
a suspension.
(Id.) The appellant argues, "none of these references teach
the use of permanent ridges to extend the spring section a
distance beyond the end of the support member." (Appeal Br.
at 7.)
In deciding obviousness, “[a]nalysis begins with a key
legal question -- what is the invention claimed?” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d
1593, 1597 (Fed. Cir. 1987). Here, independent claims 40 and
48 specify in pertinent part the following limitations: "the
first rigid beam section having a flat planar base with a
stamped ridge rising above the base and extending along an
interior portion of its length from the first portion
overlying the support member, through the second portion
Appeal No. 2000-0356 Page 7
Application No. 08/825,424
extending beyond the support member, and terminating at a
position proximate to, but not inside, a flexible spring
section, the stamped ridge providing stiffness to the rigid
beam section to resist movement by the rigid beam in a
direction perpendicular to a plane containing the longitudinal
and lateral axes. . . ." Accordingly, the claims require
inter alia a ridge that is formed by stamping.
Having determined what subject matter is being claimed,
the next inquiry is whether the subject matter is obvious.
"’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, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Appeal No. 2000-0356 Page 8
Application No. 08/825,424
Here, the examiner cites Figure 8 of Karam II to show
“ridges extend[ing] over an edge of a support member (61).”
(Final Rejection at 4.) We agree with the appellant, however,
that “there are no permanent ridges in the finished suspension
of Fig. 8.” (Reply Br. at 1.) To the contrary, the ridges 58
shown in the Figure are elastically deformed and leave no
permanent contour in the suspension. Specifically, “[t]he
metal can also be elastically deformed as shown in FIG. 8.
Elastic deformation is effected into the part by external
forces that leave no permanent contour in the material when
the external forces are removed.” Col. 10, ll. 7-10.

The examiner turns to Karam II’s “teach[ing] (Col. 9,
lines 63-66) that ‘the metal can be plastically, or
irreversibly, deformed on a small scale’ (Emphasis added). . .
.’" (Examiner’s Answer at 4.) The cited teaching does not
refer, however, to the embodiment of Figure 8. To the
contrary, it refers to the embodiments of “FIGS. 5, 6, and 7.
. . .” Col. 9, l. 63. Of those Figures, only the embodiment
of Figure 7 is formed by stamping. Specifically, “FIG. 7
Appeal No. 2000-0356 Page 9
Application No. 08/825,424
shows the formed area micro-stiffened by stamping the metal
with a positive mandrel on
one side and a negative mandrel on the other to create
longitudinal creases 54 along the formed area 50.” Id. at
ll. 46-50.

“[T]o establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the
applicant.”
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed.
Cir. 2000)(citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[E]vidence of a
suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature
of the problem to be solved. . . .” In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(citing
Appeal No. 2000-0356 Page 10
Application No. 08/825,424
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996);
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)). “The range
of sources available, however, does not diminish the
requirement for actual evidence. That is, the showing must be
clear and particular. See, e.g., C.R. Bard, 157 F.3d at 1352,
48 USPQ2d at 1232. Broad conclusory statements regarding the
teaching of multiple references, standing alone, are not
‘evidence.’" Id., 50 USPQ2d at 1617(citing McElmurry v.
Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993); In re Sichert, 566 F.2d 1154,
1164, 196 USPQ 209, 217 (CCPA 1977)).
Here, the examiner fails to allege, let alone to show
clear and particular evidence of, the desirability of using
stamped ridges shown in the embodiment of Figure 8. Absent
evidence of a benefit of stamped ridges, we are not persuaded
that teachings from the prior art would have suggested
combining the teachings of the various embodiments. Relying
Appeal No. 2000-0356 Page 11
Application No. 08/825,424
on Frater merely “for the details of the magnetic disk drive,”
(Final Rejection at 5), the examiner fails to allege, let
alone show, that the tertiary reference cures the defect of
the primary and secondary references. Therefore, we reverse
the rejection of claims 40 and 49 and of claims 41-47 and 49-
55, which respectively depend therefrom.
CONCLUSION
In summary, the rejection of claims 40-55 under § 103(a)
is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 2000-0356 Page 12
Application No. 08/825,424
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0356 Page 13
Application No. 08/825,424
BARRETT, Administrative Patent Judge, concurring-in-part and
dissenting-in-part.
I concur in the result, but dissent from the reasoning
the majority uses in reversing the Examiner's rejection based
on NHK Spring and Karam.
NHK Spring shows a suspension assembly having a first
rigid beam section having a first portion for connection to a
support member and a second portion extending beyond the
support member, a flexible spring section connected to the
second portion of the first rigid beam section, and a second
rigid beam section connected to the flexible spring section.
A transducer assembly is intended to be connected to the
second rigid beam section. NHK Spring shows stamped raised
ridges extending along the edges of the first and second rigid
beam sections. One of ordinary skill in the art would have
appreciated that the stamped raised ridges provide stiffness
to the first and second sections. However, NHK Spring does
not show a stamped raised ridge in the interior portion of the
first rigid section and extending from the first portion
through the second portion.
Appeal No. 2000-0356 Page 14
Application No. 08/825,424
The Examiner finds (final rejection, p. 4): "Karam
teaches a method of increasing the rigidity of a suspension by
forming ridges in the metal. Karam further teaches that the
ridges can be formed by stamping the metal . . . ." The
Examiner finds that "Karam further shows in Figure 8 that the
ridges extend over an edge of a support member (61)" (final
rejection, p. 4). The Examiner concludes that it would have
been obvious to provide the suspension of NHK Spring with
ridges that extend over an edge of the support member and
terminate prior to the spring section in view of Figure 8 of
Karam (final rejection, p. 4).
Out of the entire limitation of "the first rigid beam
section having a flat planar base with a stamped ridge rising
above the base and extending along an interior portion of its
length from the first portion overlying the support member,
through the second portion extending beyond the support
member, and terminating at a position proximate to, but not
inside, a flexible spring section," the majority concludes
that the Examiner has failed to establish the obviousness of
Appeal No. 2000-0356 Page 15
Application No. 08/825,424
the limitation of a "stamped ridge," that is, a permanent
ridge.
The majority finds that Figure 8 does not show a stamped
ridge. I agree. The specification states that the metal is
elastically deformed in Figure 8 and that the ridges will not
remain when the force is removed (col. 10, lines 7-17). In
addition to stating that Karam taught forming ridges by
stamping (final rejection, p. 4), the Examiner points to (in
the examiner's answer, p. 4) the following teachings in
Karam (col. 9, lines 63-66): "FIGS. 5, 6, and 7 are
illustrative of a few of the ways the metal can be
plastically, or irreversibly, deformed on a small scale. Each
of these methods can be performed on various areas of the
suspension." (col. 9, lines 63-65). The majority finds that
this statement refers only to the embodiment of Figures 5, 6,
and 7, and does not refer to the embodiment of Figure 8. The
majority finds that the Examiner fails to allege, or provide
evidence of, the desirability of using stamping to form the
ridges in the embodiment of Figure 8. The majority concludes:
"Absent evidence of a benefit of stamped ridges, we are not
Appeal No. 2000-0356 Page 16
Application No. 08/825,424
persuaded that teachings from the prior art would have
suggested the teachings of the various embodiments."
I believe the majority misapprehends the rejection. The
rejection is that Karam teaches stamped ridges, and discloses
in Figure 8 that ridges may be located to extend over the edge
of the support member (two separate teachings) and, therefore,
would have suggested to one skilled in the art locating
stamped ridges in the first section of NHK Spring. I do not
perceive the rejection to be based on modifying Figure 8 to
use stamped ridges and then using that to modify NHK Spring
(although, in my opinion, this also would have been obvious).
Karam teaches "micro-stiffening" of the suspension by
placing small distortions in the metal of the suspension.
"Micro-stiffening can be formed in the metal in numerous ways"
(col. 9, lines 36-37), such as by crimps (Figure 5), spot
welding (Figure 6), stamping (Figure 7), or elastic
deformation against a form (Figure 8). "The above examples
represent but a small fraction of the many potential ways
micro-stiffening can be implemented." (Col. 10, lines 18-20.)
Appeal No. 2000-0356 Page 17
Application No. 08/825,424
Figure 11 also shows a pattern of stamped ridges formed in an
interior portion of the second rigid beam section. Karam
expressly discloses that ridges may be formed by stamping.
Since Karam as a whole discloses alternative methods of
forming the ridges, one of ordinary skill in the art would
have been taught that the ridges in Figure 8 could be formed
by stamping, but this is not necessary to the rejection.
Karam, Figure 8, discloses that ridges may be located to
extend over the edge of the support member. I agree with the
Examiner's conclusion that Karam teaches using stamped ridges
and the ridges may be located as shown in Figure 8.
Accordingly, I disagree with the majority's reasoning for
reversing the Examiner's rejection.
However, the Examiner's rejection, as stated, is not
without its problems. First, the rejection does not address
the limitation of the stamped ridges rising above a flat
planar base. Figure 8 does not show this limitation. While
ridges rising above a planar base are shown, for example, in
Figure 11, the rejection ignores the limitation. Second,
Appellant argues that Figure 8 is concerned with making ridges
Appeal No. 2000-0356 Page 18
Application No. 08/825,424
to provide damping in the spring section and does not provide
ridges to extend the first rigid section a distance beyond the
edge of the support member (brief, pp. 5-6). The Examiner
does not address this argument. More explanation for
modifying NHK Spring is needed than just the fact that Karam
shows the ridges extending beyond the edge, because Karam does
not teach stiffening a rigid section. There may be reasons
why it would have been obvious to stiffen the interior of the
second portion of NHK Spring, such as the fact that NHK Spring
already has stamped ridges along the edges, but these reasons
are not stated in the rejection. Absent an accounting for
these limitations and arguments, I conclude that the Examiner
has not established a prima facie case of obviousness and,
therefore, concur in the result of reversing the rejection.
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
)
INTERFERENCESDOUGLAS R. MILLETT
IBM CORPORATION
INTELLECTUAL PROPERTY LAW
Appeal No. 2000-0356 Page 19
Application No. 08/825,424
5600 COTTLE ROAD L2PA 014 2
SAN JOSE, CA 95193
Once signed, forward to Team 3 for mailing.
APPEAL NO. 2000-0356 - JUDGE BARRY
APPLICATION NO. 08/825,424
APJ BARRY - 2 copies
APJ DIXON
APJ BARRETT
Prepared By: APJ BARRY
DRAFT SUBMITTED: 26 Sep 02
FINAL TYPED:
Team 3:
I typed all of this opinion.
Please proofread spelling, cites, and quotes. Mark your
proposed changes on the opinion, but do NOT change matters of
form or style. I will include the diskette with the
signed copy so that you can make all changes before
mailing.
For any additional reference provided, please prepare PTO 892
and include copy of references
Thanks,
Judge Barry