Ex parte Cameron

Board of Patent Appeals and Interferences

Oct 21, 1999

08191060 (B.P.A.I. Oct. 21, 1999)

Application for patent filed February 2, 1994. According to1
appellant, this application is a continuation of Application 07/937,530,
filed August 28, 1992 (abandoned).
1
Paper No. 29
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte SCOTT W. CAMERON
______________
Appeal No. 1996-2199
Application 08/191,0601
_______________
HEARD: October 4, 1999
_______________
Before JERRY SMITH, BARRETT and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 2, 4-11, 13, 15-21,
Appeal No. 1996-2199
Application 08/191,060
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23, 24 and 26-29, which constitute all the claims remaining in
the application. An amendment after final rejection was filed
on April 20, 1995 and was entered by the examiner.
The disclosed invention pertains to a controller
circuit incorporated into the same substrate as a driver
circuit for a polyphase DC motor such as that used in modern
computer disk drives. A temperature sensor monitors the
temperature of the substrate. The controller adjusts the
speed of the motor based on the temperature of the substrate
using a hysteresis relationship between the measured
temperature and the speed of the motor.
Representative claim 1 is reproduced as follows:
1. An integrated circuit fabricated on a semiconductor
substrate for providing drive signals to a polyphase dc motor,
comprising:
a driver for sequentially supplying drive currents to
drive coils of the motor;
a commutation controller for commutatively selecting, at
first and second frequencies, the drive coils to which the
drive currents are sequentially supplied by the driver, said
first frequency being higher than said second frequency;
a temperature sensing element fabricated in said
substrate to indicate the temperature of said substrate;
Appeal No. 1996-2199
Application 08/191,060
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a temperature measuring circuit connected to said
temperature sensing element and to said commutation
controller, for causing the commutation controller to operate
at the second frequency responsive to the temperature of the
substrate exceeding a first threshold temperature and for
subsequently causing the commutation controller to operate at
the first frequency responsive to the temperature of the
substrate falling below a second threshold temperature, the
second threshold temperature being lower than the first
threshold temperature.
The examiner relies on the following reference:
Ohi 5,296,789 Mar. 22, 1994
(effectively filed May 17, 1991)
Claims 1, 2, 4-11, 13, 15-21, 23, 24 and 26-29 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness
the examiner offers Ohi taken alone. A rejection of claim 27
under 35 U.S.C. § 112 has been withdrawn [answer, page 5].
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.

OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
Appeal No. 1996-2199
Application 08/191,060
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for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1, 2, 4-6, 8-11, 13, 15-17, 19-21, 23, 24
and 26-29. We reach the opposite conclusion with respect to
claims 7 and 18. Accordingly, we affirm-in-part.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
Appeal No. 1996-2199
Application 08/191,060
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led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
In response to a rejection made under 35 U.S.C. §
103, an applicant must present arguments and/or evidence which
successfully rebut the examiner’s case for obviousness or
which demonstrate that a prima facie case of obviousness has
not been established. For purposes of deciding this appeal,
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Application 08/191,060
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only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
We consider the rejection first with respect to claims
1, 2 and 4-9 which nominally stand or fall together [brief,
page 4]. With respect to representative, independent claim 1,
the examiner essentially determines that Ohi specifically
teaches all the features of claim 1 except for the
semiconductor substrate and the use of the motor in a computer
disk drive environment. The examiner asserts that
semiconductor drive circuits on a substrate were well known
and that brushless DC motors such as taught by Ohi were known
to be used in computer disk drives [answer, pages 3-4].
Appellant argues that the relationship between
temperature and frequency control as recited in claim 1 sets
forth a hysteresis relationship which is not taught or
suggested by Ohi [brief, pages 8-10]. The examiner responds
that this hysteresis relationship does not appear within the
claimed invention [answer, pages 5-6].
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We agree with the examiner that the invention as
recited in claim 1 does not require that a hysteresis
relationship exist between temperature and frequency. Using
the language of claim 1 and Figure 5 of Ohi, we read claim 1
on Ohi as follows: the first frequency is 30 Khz, the second
frequency is 20 Khz (for example), the first temperature is
70 C (corresponding to the 20 Khz frequency), and the secondo
temperature is 40 C (corresponding to the 30 Khz frequency). o
With these assigned values for the two frequencies and the
threshold temperatures, we find that the temperature measuring
circuit of claim 1 is met by the operation of the Ohi circuit.
We note that Ohi’s flow charts in Figures 3 and 4 indicate
that the Ohi control process is a continuous process which
continuously adjusts frequency as a function of temperature
regardless of the direction in which the temperature might be
changing.
Although we agree with the examiner that claim 1 does
not require a hysteresis relationship between temperature and
frequency, claim 7 specifically recites that the comparator
have a hysteresis characteristic between the first and second
Appeal No. 1996-2199
Application 08/191,060
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temperatures. We interpret this claim language as requiring
that the plot of temperature versus frequency between the two
predetermined temperatures and the two frequencies take the
form of a conventional hysteresis loop. It is clear from
Ohi’s Figure 5 that no portion of Ohi’s controller operates
with a hysteresis characteristic. Therefore, Ohi does not
teach or suggest this argued limitation of claim 7.
The examiner never specifically addressed this
limitation of claim 7 except to assert that Ohi operated in
the same manner as the claimed invention or to assert that
hysteresis was not claimed. Since hysteresis is claimed in
claim 7 and the examiner has never addressed how Ohi teaches
this claimed characteristic of the controller, we find that
the examiner has failed to establish a prima facie case of the
obviousness of claim 7.
In summary, even though appellant has nominally
grouped claims 1, 2 and 4-9 together, we find that appellant’s
hysteresis argument only applies to dependent claim 7.
Therefore, we sustain the examiner’s rejection with respect to
claims 1, 2,
Appeal No. 1996-2199
Application 08/191,060
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4-6, 8 and 9, but we do not sustain the rejection with respect
to claim 7.
Dependent claim 28 is argued separately by appellant.
Claim 28 recites that a disk read signal must be present
before control at the first frequency is authorized as the
temperature falls below the second threshold. Appellant
argues that Ohi does not disclose that the motor is for a disk
drive so that there is no suggestion of using a disk read
signal in the selection of frequency operation [brief, pages
11-12].
The examiner has taken the position that it was known
to the artisan that motors such as disclosed by Ohi were known
to be used in the control of disk drives. We agree that the
artisan would have appreciated that the Ohi controller circuit
pertained to the control of disk drive motors. Thus, we find
that the broad use of the Ohi controller in a disk drive
control environment would have been obvious to the artisan.
We note
that the first frequency in Ohi (30KHz) corresponds to
operation of the motor under normal circumstances or in the
Appeal No. 1996-2199
Application 08/191,060
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usual ON condition. The ON condition for a disk drive motor
is whenever a disk access has to be accomplished. A disk
access operation in a disk drive system is nothing more that a
disk read signal. Therefore, we interpret claim 28 as
reciting nothing more than that the frequency of the disk
drive system is controlled only when the system is in the ON
condition. It would have been obvious to the artisan to
control the Ohi motor in a disk drive system only when a disk
read or disk access command is present. We now
consider the rejection with respect to claims 10, 11, 13 and
15-20 which nominally stand or fall together [brief, page 4].
With respect to representative, independent claim 10, the
examiner has essentially applied the teachings of Ohi in the
same manner discussed above with respect to claim 1.
Appellant makes arguments similar to those considered above
with respect to claim 1. Appellant also argues that Ohi does
not teach producing a warm signal and a hot signal and
inactivating the warm signal in the manner recited in claim 10
[brief, pages 12-13].
Appeal No. 1996-2199
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We interpret Figure 5 of Ohi as teaching that a warm
signal is produced whenever the temperature of the circuit
exceeds 40 C and a hot signal is produced whenever theo
temperature exceeds 120 C. A regular signal is produced foro
temperatures below 40 C. Since only one signal can be appliedo
to the motor at any time, it would have been obvious to the
artisan that Ohi inactivates the warm signal in order to apply
the regular signal.
Dependent claim 18 recites the hysteresis
characteristic of the comparators in the same manner as
discussed above with respect to claim 7. For reasons
discussed above, even though appellant has nominally grouped
claims 10, 11, 13 and 15-20 together, we find that appellant’s
hysteresis argument only applies to dependent claim 18.
Therefore, we sustain the examiner’s rejection with respect to
claims 10, 11, 13, 15-17, 19 and 20, but we do not sustain the
rejection with respect to claim 18.
Dependent claim 29 is argued separately by appellant.
This claim is similar to claim 28 which was considered above.
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We sustain the rejection of claim 29 for basically the same
reasons discussed above with respect to claim 28.
Claims 21 and 23 are argued separately by appellant as
a single group. Appellant argues that Ohi does not teach the
step of increasing the frequency of the motor after the motor
has been initially slowed [brief, pages 15-16]. We view
Figure 5 of Ohi as being time independent so that the order of
decreasing and increasing frequency is simply a function of
what happens to temperature. Ohi’s Figure 3 confirms that the
speed control circuit operates irrespective of the direction
that the temperatures are changing. Appellant also argues
that Ohi does not teach the claimed demand for use of the disk
drive in determining speed selection. We consider a demand
for use signal to be the same as the disk read signal
discussed above. Therefore, we sustain the rejection of
claims 21 and 23.
Claims 24 and 27 are argued separately by appellant as
a single group. These claims recite features which we have
considered above with respect to other claims. We sustain the
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Application 08/191,060
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rejection of claims 24 and 27 for reasons discussed above with
respect to these other claims.
Claim 26 is argued separately by appellant. This
claim recites features which we have considered above with
respect to other claims. We sustain the rejection of claims
26 for reasons discussed above with respect to these other
claims.
In summary, we have sustained the examiner’s rejection
of the claims with respect to claims 1, 2, 4-6, 8-11, 13, 15-
17, 19-21, 23, 24 and 26-29, but we have not sustained the
rejection with respect to claims 7 and 18. Therefore, the
decision of the examiner rejecting claims 1, 2, 4-11, 13, 15-
21, 23, 24 and 26-29 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1996-2199
Application 08/191,060
14
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JS/cam
Appeal No. 1996-2199
Application 08/191,060
15
Richard K. Robinson
SGS-Thomson Microelectronics, Inc.
1310 Electronics Drive
Carrollton, TX 75006