Ex parte Bordes et al.

Board of Patent Appeals and Interferences

Sep 28, 1999

08274807 (B.P.A.I. Sep. 28, 1999)

Application for patent filed July 14, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACQUES BORDES and MARC FROUIN
__________
Appeal No. 1997-1230
Application 08/274,8071
___________
ON BRIEF
___________
Before CALVERT, STAAB and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-14, all the claims currently pending in
the application.
Appellants’ invention pertains to a magnetic hard disk
platter assembly. Independent claim 1 is illustrative of the
Appeal No. 1997-1230
Application 08/274,807
2
appealed subject matter and reads as follows:
1. A magnetic hard disk platter assembly for use in a
removable hard disk cartridge, comprising:
a hub comprising injection-molded liquid crystal plastic
material and having molding accuracies in the range of five to
ten micrometers;
a magnetic disk mounted to the hub and having a magnetic
coating for the recording of data with a read/write head in a
matching disk drive that mates with said magnetic hard disk
platter assembly; and
a screw top mated to the hub with twist-locks for
securing the magnetic disk to the hub.
A further appreciation of appellants’ invention is
derived from the following passages found in the
specification:
Another advantage of the present invention is
that a hard disk assembly is provided in which the
expensive step of machining the critical hub
component is avoided because acceptable finished
component tolerances can be achieved with liquid
crystal plastic when simply injection molded.
[Specification, page 2.]
* * *
The fit of the magnetic disk 14 and especially
the center opening 15 to the plastic hub 16 and its
lip 18 must be precise so that wobble and runout
when the disk 14 is rotated are controlled.
Conventional metal hubs include a machining step in
Appeal No. 1997-1230
Application 08/274,807
Our understanding of this foreign language document is2
derived from a translation prepared in the Patent and
Trademark Office. A copy of said translation is attached to
this decision.
3
their fabrication. The plastic hub 16 is preferably
injection-molded of liquid crystal plastic to five
to ten micrometer accuracy using otherwise
conventional fabrication techniques. With liquid
crystal plastic material and a readily-attained five
to ten micrometer molding accuracy, no subsequent
machining is required to give good results.
[Specification, page 4.]
The following references are relied upon by the examiner
as evidence of obviousness:
Cheney 3,917,068 Nov. 4, 1975
Sakaguchi et al (Sakaguchi) 4,847,826 Jul. 11, 1989
Suzuki 4-125879 Apr. 27, 19922
(Japan)
Claims 1-5, 8, 9 and 11 stand rejected under 35 U.S.C. §
103 as being unpatentable over Sakaguchi in view of Suzuki.
Claims 6, 7, 10 and 12-14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sakaguchi and Suzuki as
applied in the rejection of claim 1 et al., and further in
view of Cheney.
The rejections are explained in the examiner’s answer
Appeal No. 1997-1230
Application 08/274,807
Appellants’ first reply brief (Paper No. 11, filed3
August 2, 1996) has not been entered. See the examiner’s
advisory letter (Paper No. 12, mailed August 23, 1996).
4
(Paper No. 10, mailed May 30, 1996).
The opposing viewpoints of appellants are set forth in
the main brief (Paper No. 9, filed April 5, 1996) and the
second reply brief (Paper No. 13, filed September 17, 1996).3
Opinion
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). "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, 189 USPQ 143
(CCPA 1976)). If the examiner fails to establish a prima
Appeal No. 1997-1230
Application 08/274,807
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facie case, the rejection is improper and will be overturned.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed.
Cir. 1988).
Sakaguchi, the examiner’s primary reference, pertains to
a disk cartridge for a disk-shaped recording medium D such as
a compact disk (CD). The invention is not limited to compact
disks but may be applied to various other recording media in
disk form
(column 3, lines 16-25). Sakaguchi’s cartridge includes a
case comprising a lower half 22 constituting a main housing
and an upper half 23 constituting a lid hinged to the lower
half. The lid carries a clamp unit 26 comprising a clamper 40
of plastic material and a magnetic plate 41. The magnetic
plate of the clamp unit is secured to the clamper by means of
retaining projections 42 on the outer periphery of the plate
which cooperate with hook means 50 on the clamper. The clamp
unit 26 is loosely retained in an opening 53 in the lid by a
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Application 08/274,807
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cover plate 58 so that the clamp unit is free to rotate
relative to the lid. See Figures 9 and 12. In use, a compact
disk D is received in the case between the upper and lower
halves of the housing (see Figure 12) for driving engagement
with a drive spindle assembly 140 of a disk drive unit. To
this end, the disk drive unit includes a table member 135 that
engages the lower surface of the disk and a magnetic holding
member 147 that extends through a central opening 120 of the
disk. As explained at column 8, lines 41-53:
When the disk D is mounted to the disk table 135 in
this manner, the magnetic plate 141 secured to the
clamper 40 is magnetically attracted by the magnet
146 and the centering surface 56 is engaged with the
clamper centering surface 148 of the magnet holding
member 147 so that the clamper 40 is attracted onto
the disk table 135 with correct centering to the
magnet holding member 147. The clamper 40 can be
rotated in unison with the disk table 135 with the
disk supporting member 57 pushing against the
perimeter of the center opening 120 of the disk D to
force the disk against the disk table 135 and to
clamp the disk D in cooperation with the disk table
135.
According to the examiner (answer, page 5), Sakaguchi
discloses a disk cartridge 21 comprising, inter alia, a hub 40
to which disk D is mounted, and a screw top 41 mated to the
Appeal No. 1997-1230
Application 08/274,807
Although not specifically disputed by appellants, it is4
clear that the examiner’s findings are, at best,
misrepresentative of the teachings of Sakaguchi. In this
regard, when the cartridge D of Sakaguchi is received in the
drive unit, the disk D is clamped between the clamp unit 26 as
a whole and the table member 135, rather than between the
clamper 40 and the magnetic plate 41 of clamp unit, as implied
by the examiner. Accordingly, it is clear that in Sakaguchi
the twist-lock connection between the clamper 40 and the
magnetic plate 41 is not “for securing the magnetic disk to
the hub” as set forth in each of the independent claims on
appeal.
7
hub with a twist-lock for securing the disk to the hub. The4
examiner concedes that Sakaguchi does not disclose (1) that
the hub 40 is made of injection molded liquid crystal plastic
material, and (2) that the hub 40 is molded with molding
accuracies in the range of five to ten micrometers, as called
in for each of the independent claims on appeal. It is the
examiner’s foundation position however that these differences
would have been obvious to one of ordinary skill in the art.
Specifically, as to (1), the examiner considers (answer, page
6) that it would have been obvious to make the disk cartridge
hub of Sakaguchi of injection molded liquid crystal plastic
material in view of Suzuki in order to improve the compression
strength of the hub. Concerning (2), the examiner further
Appeal No. 1997-1230
Application 08/274,807
An objective of Sakaguchi is to reduce manufacturing5
costs by providing a clamp unit 26 wherein the magnetic plate
41 does not require the use of an ultrasonic welding process
in order to secure it to the clamper 40 (column 2, lines 3-
26).
8
considers (answer, page 7) that it would have been obvious to
mold the hub of Sakaguchi with molding accuracies in the range
of five to ten micrometers as an obvious matter of routine
experimentation and/or optimization.
The examiner’s position with respect to difference (1) is
not well taken. First, Suzuki is directed to a completely
different type of recording medium (a cassette tape) and
addresses a completely different problem (deformation of the
hubs over time due to the compression force of wound tape
(translation, page 2)) as compared to Sakaguchi, which is
concerned primarily with reducing production costs. Second,5
there is nothing in Sakaguchi which would indicate that
compression strength of the hub (i.e., clamper 40) is of any
particular concern, or that increasing its compression
strength would be of any particular benefit. Third, Suzuki
does not disclose injection molding and it is not clear that
it would be feasible to use an injection molding process in
Appeal No. 1997-1230
Application 08/274,807
9
practicing Suzuki’s method, which requires that the liquid
crystal polymer be molded and solidified in the presence of a
precisely oriented magnetic field in order to achieve the
increased compression strength benefit Suzuki desires.
Fourth, it appears likely that making Sakaguchi’s clamper 40
according to Suzuki’s method would complicate production and
increase costs, which runs directly counter to Sakaguchi’s
stated objectives. For at least these reasons, the examiner’s
foundation position that it would have been obvious to one of
ordinary skill in the art in view of Suzuki to make the hub
(i.e., clamper 40) of Sakaguchi of injection molded liquid
crystal plastic material is not supportable.
In light of the above, we will not sustain the rejection
of claims 1-5, 8, 9 and 11 as being unpatentable over
Sakaguchi in view of Suzuki.
Concerning the rejection of claims 6, 7, 10 and 12-14 as
being unpatentable over Sakaguchi and Suzuki and further in
view of Cheney, the Cheney reference additionally applied in
this rejection does not overcome the deficiencies of Sakaguchi
and Suzuki noted above. Hence, this rejection also will not
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Application 08/274,807
10
be sustained.
Remand
This application is remanded to the examiner for
consideration of the appropriateness of new rejections based
on whether:
a) the subject matter recited in any of the appealed
claims is unpatentable under the judicially created doctrine
of obviousness type double patenting over the claims of Patent
No. 5,805,379; and
b) the subject matter recited in any of the appealed
claims would have been obvious under 35 U.S.C. § 103 over the
teachings of prior art as outlined below and other prior art
of which the examiner may be aware.
With regard to the double patenting issue, the examiner’s
attention is directed to Patent No. 5,805,379 issued to
Jacques Borders, one of the co-inventors of the present
application on September 8, 1998. According to the
bibliographic data on the cover sheet of the ‘379 patent, the
effective filing date and the assignee of the ‘379 patent are
Appeal No. 1997-1230
Application 08/274,807
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the same as those of the present application.
Claim 1 of the ‘379 patent is directed to a recording
platter for a cartridge disk comprising: (1) a disk with a
magnetic coating, (2) an injection-molded plastic hub
comprising a liquid crystal plastic material having a twenty-
five micrometer molding process accuracy, and (3) a hub top
for attaching the disk to the hub and for maintaining a center
and axial location of the disk on the hub.
Claim 1 of the ‘379 patent does not specify that the hub
of the claimed disk has molding accuracies in the range of
five to ten micrometers as required by appealed claim 1, nor
does claim 1 of the ‘379 patent specify that the hub top is a
screw top mated to the hub with twist-locks, also as required
by appealed claim 1. The examiner should determine whether or
not these differences would have been obvious to one of
ordinary skill in the art at the time of appellants’
invention, and if so, enter a new rejection of claim 1, as
well as any of the other presently appealed claims as may be
appropriate, under the judicially created doctrine of
obviousness type double patenting.
Appeal No. 1997-1230
Application 08/274,807
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As to the obviousness issue, the following prior art
references are brought to the examiner’s attention for their
disclosures regarding the known properties of Vectra A130™, a
material acknowledged by appellants on page 4 of the
specification to be a liquid crystal plastic material suitable
for use in the presently claimed invention. Specifically,
Patent No. 4,904,364 to Davis is cited for its
teaching at column 5, line 64 through column 6, line
5, of Vectra A130 as a suitable material for molding
where a very low rate of shrinkage is desired.
Patent No. 4,928,032 to Skoch is cited for its
teaching at column 4, lines 34-58, of Vectra A130 as
an injection moldable polymeric material that can
achieve a high degree of dimensional precision.
Patent No. 5,179,607 to Sellers is cited for it’s
teaching at column 6, lines 4-39, of Vectra A130 as
the preferred material for patentee’s device where
the material must permit injection molding, provide
the required shape, tight tolerances and smooth
surfaces for the molded part, and also provide
adequate creep resistance to insure stable geometry
for long periods of time.
In addition, Patent No. 5,112,078 to Davis is cited for
its teaching at column 2, lines 31-41, of Vectra 130 as a
moldable liquid plastic polymer material having substantially
no shrink rate.
Appeal No. 1997-1230
Application 08/274,807
See footnote 2, supra.6
13
Also, in the description of the prior art in the
background section of Patent No. 5,805,379 at column 1, lines
41-45, it is noted that prior art cartridge disks
conventionally require the use of finely machined parts having
exceptionally close tolerances.
In light of the foregoing, the examiner should consider
whether it would be appropriate to enter a prior art new
rejection of one or more of the pending claims of the present
application based on the above noted teachings and other prior
art references pertaining to the construction of the hub of a
platter assembly for a magnetic storage disk of which the
examiner may be aware. In this regard, in that appellants in
this appeal have not specifically argued the claimed twist-
lock connection feature of the platter assembly top to the
platter assembly hub as a patentably distinguishing feature of
the appealed claims over the cited prior art notwithstanding
that the applied prior art may not adequately address this
feature, the examiner may wish to have appellants clarify the6
record as to the nature of the prior art platter assemblies
Appeal No. 1997-1230
Application 08/274,807
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for disk drives and removable cartridges referred to on page
1, lines 22-31, of the specification, and the conventional
metal hubs referred to on page 4, lines 21-26, of the
specification.
Summary
The examiner’s rejections under 35 U.S.C. § 103 are
reversed.
This application is remanded to the examiner under 37
CFR 1.196(e).
This application, by virtue of its “special” status,
requires an immediate action, MPEP § 708.01(d).
REVERSED AND REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1997-1230
Application 08/274,807
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LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS/pgg
David R. Halvorson
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