Ex Parte Banshak et al

Patent Trial and Appeal Board

Feb 15, 2017

13273437 (P.T.A.B. Feb. 15, 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.
13/273,437 10/14/2011 WALTER G. BANSHAK JR. T5572 8171
35219 7590 02/17/2017
WESTERN DIGITAL CORPORATION
TANYA JOSEPHS/SANDRA JACKSON -IP LAW DEPARTMENT
3355 MICHELSON DRIVE, SUITE 100
IRVINE, CA 92612
EXAMINER
KIM, PAUL D
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
IPDocket @ wdc. com
Tanya.Josephs@wdc.com
Sandra.Jackson@wdc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WALTER G. BANSHAK, JR., MARK S. SEYMOUR,
MITCHELL D. DOUGHERTY, and GEOFFREY A. HALES
Appeal 2015-0039141
Application 13/273,4372
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—3 and 11—13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Specification (“Spec.,” filed Oct. 14,
2011), Appeal Brief (“Appeal Br.,” filed Sept. 16, 2014), and Reply Brief
(“Reply Br.,” filed Feb. 5, 2015), as well as the Examiner’s Answer
(“Answer,” mailed Dec. 11, 2014).
2 According to Appellants, “[t]he real party in interest... is Western
Digital Technologies, Inc.” Appeal Br. 1.
Appeal 2015-003914
Application 13/273,437
According to Appellants, the Specification describes “[a] transfer
tool... for clamping a disk drive suspension to an actuator arm.” Spec.,
Abstract. Claims 1 and 11 are the only independent claims. See Appeal Br.,
Claims App. We reproduce claim 1, below, in the Analysis section of this
Decision, as representative of the appealed claims.
REJECTION AND PRIOR ART
The Examiner rejects claims 1—3 and 11—13 under 35 U.S.C. § 102(b)
as anticipated by Seigneur (US 5,143,131, iss. Sept. 1, 1992). Answer 2.
ANALYSIS
Independent claim 1, from which claims 2 and 3 depend, recites the
following:
1. A transfer tool for clamping a disk drive suspension
to an actuator arm, the transfer tool comprising:
a first actuator operable to actuate at least one push pin to
compress a spring of a suspension clamp; and
a second actuator operable to actuate a driving pin,
wherein the driving pin for rotating a latching member of the
suspension clamp about a pivot.
Appeal Br., Claims App. The Examiner and Appellants disagree as to what
extent the claim recitation of “a second actuator operable to actuate a driving
pin, wherein the driving pin for rotating a latching member of the suspension
clamp about a pivot” must be disclosed by Seigneur for Seigneur to
anticipate claim 1.
More specifically, the Examiner finds that Seigneur’s disclosure of
“driving pin (344)” (Answer 2) is sufficient, because even though Seigneur
is directed to “[a] fluid spraying saw bar, and a chain sawing apparatus . . .
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Appeal 2015-003914
Application 13/273,437
having such a saw bar” (Seigneur, Abstract), the statement in claim 1 of
“wherein the driving pin for rotating a latching member of the suspension
clamp about a pivot” (Appeal Br., Claims App.) relates to “the intended use
or intended function of the [claimed] transfer tool” (Answer 3). Thus,
according to the Examiner, with respect to the above-discussed recitation of
claim 1, Seigneur is required to teach only “a second actuator operable to
actuate a driving pin.” Answer 3^4.
Conversely, Appellants argue that claim 1 ’s recitation of “the driving
pin for rotating a latching member of the suspension clamp about a pivot”
must be given patentable weight. Appeal Br. 3^4; Reply Br. 3. Based on
our review of the record, we agree with Appellants. Claim 1 requires, in
relevant part, “a second actuator operable to actuate a driving pin ... for
rotating a latching member of the suspension clamp about a pivot.” Appeal
Br., Claims App. For Seigneur’s pin 344 to teach the claimed driving pin for
rotating a suspension clamp latching member, Seigneur’s pin 344 at least
must be capable of rotating such a latching member. See Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)) (the prior art must disclose structure capable of
performing the claimed function). The Examiner does not find that pin 344
is capable of rotating a suspension clamp latching member. Further,
inasmuch as Seigneur is directed to a mechanism for a chain saw spray bar,
it does not appear to us that Seigneur’s pin 344 is capable of rotating such a
suspension clamp latching member as set forth in the claim.
Thus, based on the foregoing, we do not sustain the rejection
of claims 1—3. Further, because independent claim 11 and its dependent
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Appeal 2015-003914
Application 13/273,437
claims 12 and 13 each recite a similar recitation to that discussed above, we
also do not sustain the rejection of claims 11—13.
DECISION
We REVERSE the Examiner’s anticipation rejection of claims 1—3
and 11—13.
REVERSED
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