Ex Parte Arya

Board of Patent Appeals and Interferences

Mar 30, 2007

10132844 (B.P.A.I. Mar. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte SATYA PRAKASH ARYA
___________

Appeal 2007-0633
Application 10/132,844
Technology Center 2600
___________

Decided: March 30, 2007
___________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
JEAN R. HOMERE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-10 and 31-32. Claims 11-30 and 33-
36 have been canceled.

We AFFIRM.

Appeal 2007-0633
Application 10/132,844

BACKGROUND
Appellant’s invention relates to a method of manufacturing a
suspension member for a disk drive using coining. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below.
1. A method of manufacturing a disk drive suspension member,
comprising:

forming said suspension member into a desired length and width
configuration with a nominal thickness dimension;

forming one or more pockets in a surface of said suspension member;
and

treating said one or more pockets to minimize pocket depth tolerances
and introduce hardness and strength into surface areas of said one or more
pockets.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Arya US 6,219,203 B1 Apr. 17, 2001
Fahey US 6,301,081 B1 Oct. 09, 2001
Aoyagi US 6,181,529 B1 Jan. 30, 2001

REJECTIONS
Claims 1-10 and 31-32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arya in view of Fahey. Aoyagi has been relied upon by
the Examiner to support the use of Official Notice.
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Application 10/132,844

Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Feb. 22, 2006) for the
reasoning in support of the rejections, and to Appellant’s Brief (filed Dec.
01, 2005) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
With respect to independent claim 1, the Examiner maintains that
Arya teaches the claimed invention, but is silent as to specifically treating
the pockets after forming the pockets. We agree with the Examiner that
Arya does not contain a great discussion of the treating of the pockets, but
we also agree with the Examiner that Arya does discuss that any necessary
press forming operations may be performed at Column 3, lines 10-11 and
48-49. Additionally, we find that the discussion in the Background of the
Invention section discusses that prior art suspension shapes are typically
created by two-sided etching processes and supplemental forming
procedures to increase their stiffness. (Arya, col. 1, ll. 24-27.) We find this
teaching alone to be a sufficient express suggestion to treat the pockets after
etching to improve the stiffness of the suspension member for at least
independent claim 1. Yet, the Examiner relied upon the teachings of Fahey
to teach and suggest the combination of etching and coining of the at least
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Application 10/132,844

one pocket. The Examiner maintains that the second portion 58 of Fahey
teaches at least one pocket being etched and coined to increase smoothness
of the cammed surface. We agree with the Examiner that the combined
teachings of Arya and Fahey would have suggested the “treating said one or
more pockets to minimize pocket depth tolerances and introduce hardness
and strength into surface areas of said one or more pockets.”
While Fahey arguably only involves a pair of pockets or cammed
surfaces, the language of independent claim 1 requires only one pocket. We
find that the teachings of Arya alone would have suggested some etching
followed by some press-forming operations to improve stiffness and this
would have suggested to skilled artisans to look to other specific press-
forming operations such as either punch or roll coining of the “said one or
more pockets to minimize pocket depth tolerances and introduce hardness
and strength into surface areas of said one or more pockets” as suggested by
the combined teachings of Arya and Fahey. Therefore, we find that the
Examiner has set forth a prima facie of obviousness, and we look to
Appellant’s Brief to show error therein.
With respect to independent claim 1, Appellant contends that the
Examiner has not given any patentable weight to the limitation “treating said
one or more pockets to minimize pocket depth tolerances and introduce
hardness and strength into surface areas of said one or more pockets” (Br.
10). Appellant argues that the disclosure of Arya is fairly generic and non-
specific with respect to pockets and does not mention “coining” (Br. 11-12).
We disagree that the Examiner disregarded the limitation, but agree with
Appellant that the disclosure and discussions of Arya are generally non-
specific.
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Application 10/132,844

We find that Appellant’s arguments relate to plural pockets and
coining rather than the express language of independent claim 1. Here, we
find that the language of independent claim 1 merely requires a single etched
section of a suspension member that is treated. There need not be a teaching
of processing plural defined “pockets” which have been etched and coined in
a specific manner to achieve Appellant’s DISCLOSED invention.
Therefore, Appellant’s argument is not persuasive.
With respect to the teachings of Fahey, Appellant argues that the
coining is limited to the head lifting tab and cannot be reasonably read as
encompassing other portions of the suspension (Br. 12-14). We find this
argument to go beyond the scope of the claim language since only one
pocket need be treated in independent claim 1. Therefore, Appellant’s
argument is not persuasive. Appellant argues there is no teaching or
suggestion for “coin etched pockets” in the combination (Br. 13). We find
this argument to go beyond the scope of the claim language since only one
pocket need be treated in independent claim 1. Therefore, Appellant’s
argument is not persuasive.
Appellant argues that the limitation “treating said one or more pockets
to minimize pocket depth tolerances and introduce hardness and strength
into surface areas of said one or more pockets” is more than a statement of
desired result and that the limitation breathes life and meaning into the
claims and must be given patentable weight as an integral part of the recited
physical action. (Br. 14). Appellant opines that the treating step could refer
to virtually anything without the language “to minimize . . .” including
“painting them [pockets] red” (Br. 14). We are unsure what Appellant is
arguing in this portion of the Brief. We agree with Appellant that the
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language of the claim needs to be considered, and we find that it has been
considered by the Examiner, but the Examiner did not find it specific enough
a limitation to define/differentiate over the combined teachings of Arya and
Fahey.
For example, we find with respect to Appellant’s argument to painting
a pocket red that this would be “treating” which would “minimize pocket
depth tolerances [by adding more material inside the pocket] and introduce
hardness and strength into surface areas of said one or more pockets [by
reinforcing the material].” Therefore, we find this argument unpersuasive,
and we find it a breadth of claim language issue with generalized functions
which are not specifically defined or limited in the language of the claims or
as interpreted by the Specification. Therefore, we do not find that the
Examiner has been unreasonable in the application of the prior art in the
instant prosecution, and we do not find that Appellant has shown error in the
Examiner’s prima facie case of obviousness, and we will sustain the
rejection of claim 1.
We find that Appellant has not separately argued and we find no
separate headings for other groupings set forth by Appellant. Therefore, we
group claims 2-10 and 31-32 with independent claim 1 and sustain the
rejection of those claims.

CONCLUSION
To summarize, we have sustained the rejection of claims 1-10 and 31-
32 under 35 U.S.C. § 103(a).

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Appeal 2007-0633
Application 10/132,844

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(2006).

AFFIRMED

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