Ex Parte Buitron

Board of Patent Appeals and Interferences

Apr 21, 2009

10435360 (B.P.A.I. Apr. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte GERARDO BUITRON 8
____________________ 9
10
Appeal 2009-0062 11
Application 10/435,360 12
Technology Center 3700 13
____________________ 14
15
Decided:1 April 22, 2009 16
____________________ 17
18
Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0062
Application 10/435,360

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 9-15, 40-43 and 45. Claims 1-6, 8 and 44 have been allowed. 3
Claim 7 has been canceled. Claims 16-39 have been withdrawn from 4
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 5
6
SUMMARY OF DECISION 7
We REVERSE. 8
THE INVENTION 9
The Appellant’s claimed invention is directed to a method for 10
handling single-sided hard memory disks by merging pairs of the disks that 11
are concentrically contact merged (Spec.2:10-12 and Spec.10:9-17). Claim 12
9, reproduced below, is representative of the subject matter on appeal. 13
9. A method of manufacturing single-sided hard memory 14
disks, the method comprising: 15
a. providing a movable container at a first location; 16
b. providing a plurality of disks; 17
c. orienting the disks in the container in parallel axial 18
alignment one pair of disks at a time; 19
d. as part of step c, orienting the disks of each pair with a 20
surface of one disk abutting a surface of the second disk; 21
e. providing a space between each of the pairs of disks; 22
f. moving the container to a second location 23
g. following step f, separating the disks of each pair. 24
25
THE REJECTIONS 26
The Examiner relies upon the following as evidence of 27
unpatentability: 28
Davey US 3,382,647 May 14, 1968 29
Lau US 4,856,957 Aug. 15, 1989 30
Kos US 5,111,936 May 12, 1992 31
Appeal 2009-0062
Application 10/435,360

3
d’Aragona US 5,314,107 May 24, 1994 1
Usui US 6,230,891 B1 May 15, 2001 2
3
The following rejections by the Examiner are before us for review: 4
1. Claims 40 and 43 are rejected under 35 U.S.C. § 102(b) (2002) as 5
being as being anticipated by Usui. 6
2. Claims 41 and 42 are rejected under 35 U.S.C. § 103(a) (2004) as 7
being unpatentable over Usui in view of Lau. 8
3. Claims 9-13 are rejected under 35 U.S.C. § 103(a) (2004) as being 9
unpatentable over d’Aragona in view of Davey. 10
4. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) (2004) as 11
being unpatentable over d’Aragona in view of Davey and further in 12
view of Kos. 13
5. Claim 45 is rejected under 35 U.S.C. § 103(a) (2004) as being 14
unpatentable over d’Aragona in view of Davey and further in view of 15
Usui. 16
17
ISSUES 18
The issues before us are whether the Appellant has shown that the 19
Examiner erred in rejecting claims 40 and 43 over Usui, claims 41 and 42 20
over Usui in view of Lau, claims 9-13 over d’Aragona in view of Davey, 21
claims 14 and 15 over d’Aragona in view of Davey and further in view of 22
Kos, claim 45 over d’Aragona in view of Davey and further in view of Usui. 23
These issues turn on whether: (1) Usui discloses contacting the cassette with 24
the disks and causing the orientation of the disks within the container to 25
change; and (2) Davey discloses stacking a group of hard memory disks in a 26
Appeal 2009-0062
Application 10/435,360

4
parallel arrangement in sequential fashion one pair of disks at a time, and 1
separating pairs of disks at a second location. 2
3
FINDINGS OF FACT 4
We find that the following enumerated findings are supported by at 5
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 6
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 7
proceedings before the Office). 8
1. Usui discloses a container 1 having an upper case 3 and a bottom 9
case 4 for memory disks 2, a supporting member 5 supported on 10
the rim of the container 42, the supporting member having notches 11
55 and being insertable inside central holes 21 in the memory disks 12
2 to retain the disks 7 (col. 4, l. 49-col. 5, l. 3). 13
2. Usui teaches that a problem with the prior art container 9, 14
illustrated in figs. 29 and 30, was that when the outer peripheral 15
portions of the disks contact the case, the outer peripheral portions 16
are likely to become damaged (col. 1, l. 57-col. 2, l. 2). 17
3. Usui further discloses that when the supporting member 5 that is 18
supporting the disks is set in place in the bottom case 4, the outer 19
peripheries of the disks are kept, that is, prevented from contacting 20
the inner surface of the bottom case 4 (col. 6, ll. 13-16), thereby 21
addressing the problem presented by the prior art container. 22
4. Usui still further discloses that when the bottom case 4 is closed 23
with the upper case 3, the rim 42 of the bottom case 4 is closely 24
contacted with the rim 32 of the upper case 3 thereby tightly 25
packing the memory disks 2 while preventing the outer peripheries 26
Appeal 2009-0062
Application 10/435,360

5
of the memory disks from being contacted with the inner surface of 1
the upper case 3 (col. 6, ll. 17-26). 2
5. d’Aragona discloses permanently bonding two silicon wafers 11, 3
12 (col. 2, l. 11) set in slots in a retainer 14, the retainer 14 lifts the 4
wafers to side holding vanes 17, wherein the vanes hold the wafers 5
11 (col. 3, ll. 63-68), the wafers 12 are then lowered, rotated 180 6
degrees and raised again (col. 4, ll. 1-6), thereafter the vanes 17 7
release the wafers 11 into slot 16 of the retainer 14 to become 8
intertwined with and abut the wafers 12 for joining or remaining in 9
close proximity for later joining (fig. 5) (col. 4, ll. 28-32). 10
6. d’Aragona further discloses that it is important that the wafers do 11
not slide against each other during the joining process since wafer 12
pairs that slide against each other result in an unusable product 13
(col. 3, ll. 30-37). 14
7. Davey discloses a coin wrapping machine wherein a predetermined 15
number of coins 26 are dropped into a counting tube 23 (col. 3, ll. 16
28 and 29) to form a stack, a pallet 27 mounted at the lower end of 17
the counting tube 23 for supporting a stack of coins 26 in the 18
counting tube 23, wherein the pallet 27 is retracted to permit the 19
stack of coins 26 to drop through the lower end of the counting 20
tube 23 to a transfer tube 36, wherein the stack of coins 26 is then 21
transferred to a wrapping station 22 for wrapping the stack of coins 22
26 in paper (col. 3, ll. 19-51 and col. 4, ll. 29-52). 23
8. In Davey, when the coins drop into the counting tube (col. 3, ll. 28 24
and 29), they drop on top of each other (fig. 1). 25
Appeal 2009-0062
Application 10/435,360

6
9. The ordinary meaning of the word “change” includes “to give a 1
different position, course or direction.” Merriam-Webster’s 2
Collegiate Dictionary (10th ed. 1996). 3
10. The ordinary meaning of the word “orientation” includes 4
“arrangement, alignment.” Merriam-Webster’s Collegiate 5
Dictionary (10th ed. 1996). 6
7
PRINCIPLES OF LAW 8
Appellant has the burden on appeal to the Board to demonstrate error 9
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 10
2006) (“On appeal to the Board, an applicant can overcome a rejection 11
[under § 103] by showing insufficient evidence of prima facie obviousness 12
or by rebutting the prima facie case with evidence of secondary indicia of 13
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 14
1998)). 15
Anticipation is established only when a single prior art reference 16
discloses, expressly or under the principles of inherency, each and every 17
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys., 18
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no 19
difference between the claimed invention and the reference disclosure, as 20
viewed by a person of ordinary skill in the field of the invention. Scripps 21
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 22
1991). It is not necessary that the reference teach what the subject 23
application teaches, but only that the claim read on something disclosed in 24
the reference, i.e., that all of the limitations in the claim be found in or fully 25
Appeal 2009-0062
Application 10/435,360

7
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 1
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). 2
“Section 103 forbids issuance of a patent when ‘the differences 3
between the subject matter sought to be patented and the prior art are such 4
that the subject matter as a whole would have been obvious at the time the 5
invention was made to a person having ordinary skill in the art to which said 6
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 7
(2007). The question of obviousness is resolved on the basis of underlying 8
factual determinations including (1) the scope and content of the prior art, 9
(2) any differences between the claimed subject matter and the prior art, (3) 10
the level of skill in the art, and (4) where in evidence, so-called secondary 11
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 12
also KSR, 550 U.S. at 406-07 (“While the sequence of these questions might 13
be reordered in any particular case, the [Graham] factors continue to define 14
the inquiry that controls.”). 15
In KSR, the Supreme Court stated that 16
[o]ften, it will be necessary for a court to look to 17
interrelated teachings of multiple patents; the 18
effects of demands known to the design 19
community or present in the marketplace; and the 20
background knowledge possessed by a person 21
having ordinary skill in the art, all in order to 22
determine whether there was an apparent reason to 23
combine the known elements in the fashion 24
claimed by the patent at issue. 25
26
Id. at 418. The Court noted that “[t]o facilitate review, this analysis should 27
be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) 28
(“[R]ejections on obviousness grounds cannot be sustained by mere 29
Appeal 2009-0062
Application 10/435,360

8
conclusory statements; instead, there must be some articulated reasoning 1
with some rational underpinning to support the legal conclusion of 2
obviousness”)). However, “the analysis need not seek out precise teachings 3
directed to the specific subject matter of the challenged claim, for a court 4
can take account of the inferences and creative steps that a person of 5
ordinary skill in the art would employ.” Id. 6
When construing claim terminology in the United States Patent and 7
Trademark Office, claims are to be given their broadest reasonable 8
interpretation consistent with the specification, reading claim language in 9
light of the specification as it would be interpreted by one of ordinary skill in 10
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 11
2004). 12
Where the proposed modification would render the prior art invention 13
being modified unsatisfactory for its intended purpose, the proposed 14
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg. 15
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999). 16
17
ANALYSIS 18
Rejection of claims 40 and 43 under 35 U.S.C. § 102(b) as being anticipated 19
by Usui; and claims 41 and 42 under 35 U.S.C. § 103(a) as being 20
unpatentable over Usui in view of Lau. 21
22
Appellant contends that Usui does not disclose “contacting the 23
cassette with the disks and causing the orientation of the disks within the 24
container to change” as called for in claim 40, lines 7 and 8 (Br. 10). 25
Appellant further contends that neither the upper case nor the lower case 26
contacts the disks at any point (Br. 10). We find that the limitation 27
“contacting the cassette with the disks and causing the orientation of the 28
Appeal 2009-0062
Application 10/435,360

9
disks within the container to change” as called for in claim 40, lines 7 and 8 1
requires that the contacting of the disks with the cassette causes the 2
orientation of the disks within the container to change. Usui discloses a 3
container 1 having an upper case 3 and a bottom case 4 for memory disks 2, 4
a supporting member 5 supported on the rim of the container 42, the 5
supporting member having notches 55 and being insertable inside central 6
holes 21 in the memory disks 2 to retain the disks 7 (col. 4, l. 49-col. 5, l. 3) 7
(Fact 1). Usui’s container 1 and supporting member 5 arrangement is an 8
improvement over the prior art container 9, illustrated in figs. 29 and 30, in 9
which when the outer peripheral portions of the disks contact the case, the 10
outer peripheral portions are likely to become damaged (col. 1, l. 57-col. 2, l. 11
2) (Fact 2). Usui further discloses that when the supporting member 5 that is 12
supporting the disks is set in place in the bottom case 4, the outer peripheries 13
of the disks are kept, that is, prevented from contacting the inner surface of 14
the bottom case 4 (col. 6, ll. 13-16) (Fact 3), thereby addressing the problem 15
with the prior art. Usui still further discloses that when the bottom case 4 is 16
closed with the upper case 3, the rim 42 of the bottom case 4 is closely 17
contacted with the rim 32 of the upper case 3 thereby tightly packing the 18
memory disks 2 while preventing the outer peripheries of the memory disks 19
from being contacted with the inner surface of the upper case 3 (col. 6, ll. 20
17-26) (Fact 4). 21
When construing claim terminology in the United States Patent and 22
Trademark Office, claims are to be given their broadest reasonable 23
interpretation consistent with the specification, reading claim language in 24
light of the specification as it would be interpreted by one of ordinary skill in 25
the art. In re Am. Acad. of Sci. Tech. Ctr. at 1364. We find that Usui’s 26
Appeal 2009-0062
Application 10/435,360

10
intent is to prevent the outer peripheral portions of the disks from contacting 1
the lower case or upper case. Therefore, we do not agree with the 2
Examiner’s Analysis (Ans. 7-10) that when giving the claims their broadest 3
reasonable interpretation Usui’s disks would be considered as being in 4
contact with the lower case upon the supporting member being inserted 5
through the disks and the supporting member being in contact with the rim 6
portion of the lower case since that would be against the intent of Usui. The 7
ordinary meaning of the word “change” includes “to give a different 8
position, course or direction” (Fact 9), and the ordinary meaning of the word 9
“orientation” includes “arrangement, alignment” (Fact 10). Merriam-10
Webster’s Collegiate Dictionary (10th ed. 1996). Therefore, in order for 11
“the orientation of the disks to change” the disks must have a different 12
position or arrangement. Since Usui’s disks do not contact either the lower 13
or the upper case, Usui’s disks cannot have a different position or 14
arrangement caused by the disks contacting the cassette. Therefore, we 15
conclude that Usui does not disclose contacting the cassette with the disks 16
and causing the orientation of the disks within the container to change as 17
called for in claim 40, lines 7 and 8. Moreover, any modification to Usui’s 18
container and supporting member arrangement so as to have the disks 19
contact the cassette would be counter to the stated objective of Usui and 20
would not have been obvious. We conclude that the Examiner erred in 21
rejecting claims 40 and 43 over Usui, and claims 41 and 42 over Usui in 22
view of Lau. We reverse the rejection of claims 40 and 43 under 35 U.S.C. 23
§ 102, and claims 41 and 42 under 35 U.S.C. § 103. 24
Appeal 2009-0062
Application 10/435,360

11
Rejection of claims 9-13 under 35 U.S.C. § 103(a) as being unpatentable 1
over d’Aragona in view of Davey, claims 14 and 15 under 35 U.S.C. § 2
103(a) as being unpatentable over d’Aragona in view of Davey and further 3
in view of Kos, and claim 45 under 35 U.S.C. § 103(a) as being 4
unpatentable over d’Aragona in view of Davey and further in view of Usui. 5
6
Appellant contends that contrary to the Examiner’s position, Davey 7
does not teach stacking a group of hard memory disks in a parallel 8
arrangement in sequential fashion one pair of disks at a time (Br. 9). 9
Appellant further contends that there is no teaching in Davey to separate 10
pairs of coins at a second location as Davey teaches moving bundled coins to 11
a second location for wrapping the coins in a paper wrapper and removing 12
the entire bundle of wrapped coins from the machine (Br. 9 and 10). 13
Appellant still further contends that there is an extreme difference in 14
handling coins compared to handling hard memory disks (Br. 9). d’Aragona 15
discloses permanently bonding two silicon wafers 11, 12 (col. 2, l. 11) set in 16
slots in a retainer 14, the retainer 14 lifts the wafers to side holding vanes 17, 17
wherein the vanes hold the wafers 11 (col. 3, ll. 63-68), the wafers 12 are 18
then lowered, rotated 180 degrees, and raised again (col. 4, ll. 1-6), 19
thereafter the vanes 17 release the wafers 11 into slot 16 of the retainer 14 to 20
become intertwined with and abut the wafers 12 for joining or remaining in 21
close proximity for later joining (fig. 5) (col. 4, ll. 28-32) (Fact 5). 22
d’Aragona further discloses that it is important that the wafers do not slide 23
against each other during the joining process since wafer pairs that slide 24
against each other result in an unusable product (col. 3, ll. 30-37) (Fact 6). 25
We agree with the Examiner’s Analysis (Ans. 4-5) that d’Aragona 26
does not disclose both “orienting the disks in the container in parallel axial 27
alignment one pair of disks at a time” as called for in claim 9, lines 4 and 5; 28
Appeal 2009-0062
Application 10/435,360

12
and “f. moving the container to a second location” and “g. following step f, 1
separating the disks of each pair” as called for in claim 9, lines 9 and 10. 2
Davey discloses a coin wrapping machine wherein a predetermined number 3
of coins 26 are dropped into a counting tube 23 (col. 3, ll. 28 and 29) to form 4
a stack, a pallet 27 mounted at the lower end of the counting tube 23 for 5
supporting a stack of coins 26 in the counting tube 23, wherein the pallet 27 6
is retracted to permit the stack of coins 26 to drop through the lower end of 7
the counting tube 23 to a transfer tube 36, wherein the stack of coins 26 is 8
then transferred to a wrapping station 22 for wrapping the stack of coins 26 9
in paper (col. 3, ll. 19-51 and col. 4, ll. 29-55) (Fact 7). We find that there is 10
no disclosure in Davey as to what manner the coins are dropped into the 11
counting tube 23 to form the stack. It appears from figure 1 in Davey that 12
the coins are either dropped one at a time or in no set pattern, but are not 13
dropped one pair at a time. Therefore, we agree with Appellant (Br. 10) that 14
Davey does not disclose “orienting the disks in the container in parallel axial 15
alignment one pair of disks at a time” as called for in claim 9, lines 4 and 5. 16
As Davey discloses wrapping the entire stack of coins at the second location, 17
we agree with Appellant (Br. 9-10) that Davey does not disclose separating 18
the disks of each pair at the second location as called for in claim 9, lines 9 19
and 10. In any event, even if Davey did teach separating the coins (disks), it 20
is not apparent why a person of ordinary skill in the art would have found a 21
reason to separate the wafers 11, 12 of d’Argona. Moreover, in Davey, 22
when the coins drop into the counting tube (col. 3, ll. 28 and 29), they drop 23
on top of each other (fig. 1) (Fact 8). We agree with Appellant and find that 24
coins are solid metal and are made to withstand physical abuse (e.g., 25
dropping on the floor or against one another) while hard memory disks are 26
Appeal 2009-0062
Application 10/435,360

13
fragile and easily damaged (Br. 8). Therefore, we agree with Appellant and 1
find that there is an extreme difference in handling coins compared to 2
handling hard memory disks (Br. 9). Accordingly, it is not apparent why a 3
person of ordinary skill would have been prompted to apply the coin 4
handling technique of Davey to the wafer handling process of d’Aragona. 5
For the above reasons, the combined teachings of d’Aragona and 6
Davey do not render the subject matter of claims 9-13 obvious. We 7
conclude that the Examiner erred in rejecting claims 9-13 over d’Aragona in 8
view of Davey. 9
The Examiner has not relied on Kos or Usui for any teaching that 10
would remedy the deficiency in the combination of d’Aragona and Davey. 11
We thus conclude that the Examiner also erred in rejecting claims 14 and 15 12
over d’Aragona in view of Davey and further in view of Kos, and claim 45 13
over d’Aragona in view of Davey and further in view of Usui. We reverse 14
the rejections of claims 9-15 and 45 under 35 U.S.C. § 103. 15
16
CONCLUSIONS OF LAW 17
We conclude that the Appellant has shown that the Examiner erred in 18
rejecting claims 40 and 43 under 35 U.S.C. § 102(b) as being anticipated by 19
Usui, claims 41 and 42 under 35 U.S.C. § 103(a) as being unpatentable over 20
Usui in view of Lau, claims 9-13 under 35 U.S.C. § 103(a) as being 21
unpatentable over d’Aragona in view of Davey, claims 14 and 15 under 35 22
U.S.C. § 103(a) as being unpatentable over d’Aragona in view of Davey and 23
further in view of Kos, and claim 45 under 35 U.S.C. § 103(a) as being 24
unpatentable over d’Aragona in view of Davey and further in view of Usui. 25
26
Appeal 2009-0062
Application 10/435,360

14
DECISION 1
The decision of the Examiner to reject claims 40 and 43 over Usui, 2
claims 41 and 42 over Usui in view of Lau, claims 9-13 over d’Aragona in 3
view of Davey, claims 14 and 15 over d’Aragona in view of Davey and 4
further in view of Kos, and claim 45 over d’Aragona in view of Davey and 5
further in view of Usui is reversed. 6
7
REVERSED 8
9
10
11
12
13
14
15
16
hh 17
18
McCarthy Law Group 19
5830 Northwest Expressway, #353 20
Oklahoma City, OK 73132 21