Ex Parte CHOI

Board of Patent Appeals and Interferences

Apr 24, 2003

09232138 (B.P.A.I. Apr. 24, 2003)

1 The rejection of claims 1-5 and 15-20 under 35 U.S.C.
§ 112, second paragraph, has apparently been withdrawn by the examiner
(answer, page 5) who has not repeated the rejection in the examiner's answer,
and states (answer, page ) that "[f]or purposes of this appeal, the examiner
will ignore the rejections under 112, 2nd paragraph and focus solely on the
prior art rejections." See Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
2 An amendment (Paper No. 13, filed July 24, 2001) submitted subsequent
to the final reaction (Paper No.10, mailed February 7, 2001) was denied entry
by the examiner (Paper No. 14, mailed July 31, 2001).
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SOO-IL CHOI
____________
Appeal No. 2002-2015
Application No. 09/232,138
____________
HEARD: APRIL 2, 2003
____________
Before RUGGIERO, BARRY, and LEVY, Administrative Patent Judges.
LEVY, 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 1-13 and 15-2012. Claim 14
has been canceled.
Appeal No. 2002-2015
Application No. 09/232,138
Page 2
BACKGROUND
Appellant's invention relates to a hard disk drive having a
plurality of head disk assemblies. An understanding of the
invention can be derived from a reading of exemplary claim 6,
which is reproduced as follows:
6. A hard disk drive, comprising:
a main control board; and
a plurality of head disk assemblies, each
electrically connected by connectors to said main
control board and each containing at least one
controller.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bajorek et al. (Bajorek) 5,264,975 Nov. 23, 1993
Hatchett et al. (Hatchett) 5,422,767 Jun. 06, 1995
Claims 1-3, 6-11, 15, 16, 18, and 19 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Hatchett.
Claims 4, 5, 12, 13, 17 and 20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hatchett in view of
Bajorek.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 20, mailed
Appeal No. 2002-2015
Application No. 09/232,138
Page 3
March 26, 2002) for the examiner's complete reasoning in support
of the rejections, and to appellant's brief (Paper No. 19, filed
January 7, 2002) and reply brief (Paper No. 21, filed May 3,
2002) for appellant's arguments thereagainst. 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).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, appellant's arguments set forth in the
briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answer. Upon consideration of the record before us, we affirm-
in-part.
We observe at the outset that appellant states (brief,
page 9) that “claim 6 is considered representative of all the
Appeal No. 2002-2015
Application No. 09/232,138
Page 4
independent claims and the independent claims are all argued
together on the basis of that illustrative claim.” Consistent
with this statement, appellant's arguments are directed to
independent claim 6. Accordingly, we consider claim 6 to be
representative of the group. However, to the extent that
appellant (brief, pages 24 and 25) additionally argues the term
“plurality” in independent claim 18, claim 18 will be separately
considered.
With respect to claims 4, 5, 12, 13, 17, and 20, rejected
under 35 U.S.C. § 103(a), appellant states (brief, page 9) that
"the claims are all argued together." Accordingly, we select
claim 4 as representative of the group of claims rejected under
35 U.S.C. § 103(a).
As a preliminary matter, appellant asserts (brief, page 7)
that the examiner's refusal to enter the amendment submitted
subsequent to the final rejection was an “abuse of discretion.”
Appellant provides two appendices to the brief. The first,
Appendix I, shows the claims with the proposed amendment entered.
Appendix II shows the claims of record, as they stand without
entry of the proposed amendment. Appellant asks (brief, page 12)
that we “rule that the amendment should have been entered and
Appeal No. 2002-2015
Application No. 09/232,138
Page 5
that the case it [sic] will be considered on the basis as if the
amendments [sic, amendment] were entered, as they [sic, it]
should have been.”
We decline to rule that the amendment presented subsequent
to the final rejection should have been entered. The refusal by
the examiner to enter appellant's amendment after final rejection
relates to a petitionable matter and not to an appealable matter.
See In re Schneider, 481 F.2d 1350, 1356-57, 179 USPQ 46, 51
(CCPA 1973) and In re Mindick, 371 F.2d 892, 894, 152 USPQ 566,
568 (CCPA 1967). See also Manual of Patent Examining Procedure
(MPEP) (8th Ed., August 2001) § 1002.02(c), item 3(g) and § 1201.
Thus, the relief sought by the appellants would have been
properly presented by a petition to the Commissioner under 37 CFR
§§ 1.127 and 1.181 instead of by appeal to this Board. Because
appellant has not timely petitioned the decision of the examiner
refusing entry of the amendment, we find the issue to be moot.
Accordingly, we will not further consider this issue, and will
address the claims as they appear in Appendix II.
We begin with the rejection of claims 1-3, 6-11, 15, 16, 18,
and 19 under 35 U.S.C. § 102(b) as being anticipated by Hatchett.
Anticipation is a question of fact. In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986). The inquiry as to
Appeal No. 2002-2015
Application No. 09/232,138
Page 6
whether a reference anticipates a claim must focus on what
subject matter is encompassed by the claim and what subject
matter is described by the reference.
The examiner (answer, page 3) takes the position that the
controller of claim 6 is met by the sub PCB 137 which performs
read/write operation (data channel operation) between the heads
and disks, and refers our attention to col. 5, lines 18-31 and
col. 6, line 55 et seq. of Hatchett.
Appellant asserts (brief, page 18) that claim 6 recites that
each of the HDAs contain at least one controller adapted for
performing, responsively to the main PCB, a driving operation or
a read/write operation of the disks and heads included in the
HDA. Appellant argues (brief, page 14) that each HDA in the
Hatchett patent includes only heads 127 and disks 135, without a
control module integrated into each HDA."
As stated by our reviewing court in In re Hiniker Co., 150
F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) “[t]he
name of the game is the claim.”
Claim 6 recites “ a main control board; and a plurality of
head disk asssemblies, each electrically connected by connectors
to said main control board and each containing at least one
Appeal No. 2002-2015
Application No. 09/232,138
Page 7
controller." Thus, although claim 6 requires that each HDA
contains at least one controller, we find no recitation that each
controller is responsive to the main PCB, or that the controllers
are adapted for performing a driving operation or a read/write
operation. We have revived the portions of Hatchett relied upon
by the examiner as a teaching of each HDA containing a
controller.
Hatchett discloses that controller board 17 provides the
required electronic circuitry to facilitate operation and control
of the HDAs 11 and 13 (col. 5, lines 18-22). Hatchett further
discloses (col. 6, line 58 through col. 7, line 6) that
For the purposes of the description of the controller
board 17, the two HDAs 11 and 13 will be referred to as
drive A and drive B, respectively. Each drive A, B is
electronically controlled by an interface micropro-
cessor, a servo control microprocessor, several logic
modules, digital/analog converters and various drivers
and receivers and associated circuitry. With the
exception of the data channel circuitry which is
mounted on a separate channel board 137 (as shown in
FIG. 6) for each drive A, B, all of the control
circuitry and components are mounted on the controller
board 17. While some of the components physically may
be shared by the two drives A, B for efficiency and
parts reduction, logically, the controller board 17 is
divided into halves, one-half A, 149, providing control
for drive A and the other half B, 151, provide control
for drive B.
Thus, with regard to independent claim 6, the issue is whether
the data channel circuitry on data channel board 137 for each
Appeal No. 2002-2015
Application No. 09/232,138
Page 8
drive, performs control functions. Although not brought to our
attention by the examiner, we find from our review of Hatchett
(col. 7, lines 50-56) that this issue is addressed by Hatchett,
who states that:
All data processing circuitry and logic including
coding for write and detection and decoding operations,
error detection and error correction is implemented on
a separate data channel board 137 (as shown in FIG. 6)
for each drive A, B coupled to its microprocessor via
lines 139A and 139B, respectively.
Hatchett continues (col. 7, lines 56-62) by stating
The interface microprocessor controls the transfer of
data between its respective drive A, B and the lost
[sic, host] computer system, read/write access of the
disk media and disk defect management and error
recovery. Additionally, the interface microprocessor
performs diagnostics and provides monitoring of the
spindle status.
From the disclosure of Hatchett, we find that even though all
data processing circuitry and logic including coding for write
and detection decoding operations, error detection and error
correction are implemented on data channel board 137, that it is
the interface microprocessor (on control board 17) that controls
the transfer of data, read/write access of the disk media and
disk defect management and error recovery, as well as diagnostics
and monitoring of the spindle status. Thus, we find that
Hatchett does not disclose control operations being performed by
Appeal No. 2002-2015
Application No. 09/232,138
Page 9
the circuitry on data channel board 137. Accordingly, we find
that the examiner has failed to establish a prima facie case of
anticipation of independent claim 6. The rejection of claim 6
under 35 U.S.C. § 102(b) as anticipated by Hatchett is therefore
reversed. Independent claims 1, 15, and 18 similarly recite that
the sub PCBs are adapted for controlling, responsive to said main
PCB, reading/writing of data by the heads of the HDAs. With
respect to claim 18, although we agree with the examiner (answer,
page 6) that the term “plurality” does not require that the disks
have different storage capacities, as advanced by appellant
(brief, pages 23 and 24) we cannot sustain the rejection of
independent claims 1, 15, 16, and 18 because Hatchett does not
teach that the sub PCBs 137 are adapted for controlling,
responsively to said main PCB, reading /writing of data by the
heads of the HDAs. Accordingly, the rejection of claims 1-3, 7-
11, 15, 16, 18, and 19 under 35 U.S.C. § 102(b) is reversed.
We turn next to the rejection of claims 4, 5, 12, 13, 17,
and 20 under 35 U.S.C. § 103(a) as unpatentable over Hatchett in
view of Bajorek.
Appeal No. 2002-2015
Application No. 09/232,138
Page 10
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 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. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); 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.
Appeal No. 2002-2015
Application No. 09/232,138
Page 11
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We turn to representative claim 4. The examiner's position
(answer, page 4) is that Hatchett does not disclose each of the
HDAs having a head position and spindle motor controller. To
overcome this deficiency in Hatchett, the examiner turns to
Bajorek for a teaching of a plurality of HDAs 50 that are
connected to a main PCB 51 wherein Bajorek sets forth in col. 3,
line 6 et seq. that the electronic functions for controlling the
HDAs are performed by components 40 which are placed inside each
of the HDAs. The examiner opines (answer, page 4) that:
Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was
made to provide each of the HDA's of Hatchett et al
with the head and spindle control circuitry taught by
Bajorek et al. The rationale is as follows: one of
Appeal No. 2002-2015
Application No. 09/232,138
Page 12
ordinary skill in the art would have been motivated to
place the head and spindle control circuitry within
each of the HDA's as doing this would permit the
control circuitry to be hermetically isolated from
outside environmental hazards such as dust while also
permitting easy replacement of disk drives that have
damaged control circuitry instead of replacing the
entire main printed circuit board.
The examiner (answer, pages 5 and 6) adds that:
[T]he fact remains that both Hatchett et al and Bajorek
et al use a single main PCB shared with multiple
head/disk assemblies wherein each head/disk assembly
has its own respective sub PCB. Thus, one of ordinary
skill in the art would have found it obvious to provide
each of the HDA's of Hatchett et al with the head and
spindle control circuitry taught by Bajorek et al.
Therefore, the combination of Hatchett et al with
Bajorek et al is still seen as proper.
Appellant asserts (brief, page 19) that “the office action
contains no findings as to what is the ordinary level of skill in
the art, and the record lacks substantial evidence that could
support such findings if they had been made.” Appellant argues
(brief, page 20) that the conclusionary statement by the examiner
“does not tell the reviewing body whether the ordinary level of
skill of the alleged routineer in the art is that of a B.S.E.E.
or of a Ph.D. in Chemistry.”
We are not persuaded by appellant's position that the level
of ordinary skill in the art has not been established. From our
review of Hatchett and Bajorek, we find that the references are
Appeal No. 2002-2015
Application No. 09/232,138
Page 13
representative of the level of ordinary skill in the art. See In
re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("the
PTO usually must evaluate both the scope and content of the prior
art and the level of ordinary skill solely on the cold words of
the literature"); In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d
1116, 1121 (Fed. Cir. 1995) (the Board did not err in adopting
the approach that the level of skill in the art was best
determined by the references of record); Okajima v. Bourdeau, 261
F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001) ("[T]he
absence of specific findings on the level of skill in the art
does not give rise to reversible error 'where the prior art
itself reflects an appropriate level and a need for testimony is
not shown.'"). One of ordinary skill in the art must be presumed
to know something about the art apart from what the references
expressly disclose. See In re Jacoby, 309 F.2d 513, 516, 135
USPQ 317, 319 (CCPA 1962). See also In re Sovish, 769 F.2d 738,
743, 226 USPQ 771, 774 (Fed. Cir. 1985) (skill in the art must be
presumed).
Appellant further asserts (brief, pages 21-24) that there is
no motivation to combine the teachings of the references.
Appeal No. 2002-2015
Application No. 09/232,138
Page 14
From our review of Hatchett and Bajorek, we agree with
appellant (brief, page 22) that no motivation has been provided
that would have suggested combining Hatchett and Bajorek in the
manner necessary to meet appellant's claims. The rationale
presented by the examiner (supra) merely sets forth the results
that would be obtained from combining the references, and does
not provide a rationale as to why an artisan would have been
motivated to combine the teachings of Hatchett and Bajorek.
Claim 4 recites, inter alia, that each head disk assembly
comprises “a position controller for controlling movement of the
head into a predetermined portion of the disk; and a spindle
motor controller for controlling a spindle motor to a constant
rotation speed.” Hatchett discloses (col. 7, lines 13 and 14)
that “[t]he servo microprocessor controls the spindle motor
speed.” It is further disclosed (col. 7, lines 26-29) that
“[a]ll actuator control signals providing closed loop control of
transducer head positioning and tracking on the disk surface are
generated by the microprocessor.” From the disclosure of
Hatchett, we find that both head position and spindle motor speed
Appeal No. 2002-2015
Application No. 09/232,138
Page 15
are controlled by the servo processor, which is on control board
17. Although Bajorek discloses (col. 3, lines 6-8) that "t]he
electronic functions for controlling the disk drive are performed
by components 40 and VSLI chips 41 mounted directly to the base
structure," we find no suggestion, and no teaching or suggestion
has been pointed to by the examiner, of moving the servo
controller from the main board 17 of Hatchett and placing the
servo controller on data channel board 137. In addition, even
though Bajorek discloses (col. 2, lines 65-68) providing a sealed
enclosure to isolate the components from contamination, Bajorek
accomplishes this by providing a metal cap 35 for the assembly
(figures 3 and 5), and does not disclose moving the controller
functions from the main board to a sub board, because all of the
disk drives share a single circuit board 51.
From all of the above, We therefore find that the examiner
has failed to establish a prima facie case of obviousness of
claims 4, 5, 12, 13, 17, and 20. Accordingly, the rejection of
claims 4, 5, 12, 13, 17, and 20 under 35 U.S.C. § 103(a) is
reversed.
New Ground of Rejection under 37 CFR § 1.196(b)
We use our authority under 37 CFR § 1.196(b) to enter a new
ground of rejection of claims 6-8. Claims 6-8 are rejected under
Appeal No. 2002-2015
Application No. 09/232,138
Page 16
35 U.S.C. 102(b) as anticipated by Bajorek. Beginning with claim
6, Bajorek discloses a hard disk drive (col. 2, line 31)
comprising a main control board 51 (See figure 7 and col. 3,
lines 23-25) and a plurality of head disk assemblies 50 (col. 3,
lines 23 and 24). Each of the head disk assemblies is connected
by connectors (pins 44, col. 3, lines 17-22) to the main control
board 51, which connects the clustered drives to the system
through the edge connector 52 (col. 3, lines 26 and 27). Each of
the head disk assemblies contains at least one controller 40, 41
(col. 3, lines 6-8). Turning to claim 7, each head disk assembly
50 contains a plurality of disks for storing magnetized data and
a corresponding plurality of heads for reading and writing data
to and from the disks (col. 2, lines 38-40 and 58). With regard
to claim 8, Bajorek discloses that the electronic functions of
the disk drive are controlled by components 40 and 41 which are
mounted on base 10 which in turn is mounted on control board 51
(col. 3, lines 6-8).
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-3, 6-11, 15, 16, 18, and 19 under 35 U.S.C. § 102(b) is
Appeal No. 2002-2015
Application No. 09/232,138
Page 17
reversed. The decision of the examiner to reject claims 4, 5,
12, 13, 17, and 20 under 35 U.S.C. § 103(a) is reversed. A New
Ground of Rejection under 35 U.S.C. § 102(b) has been entered
under 37 CFR § 1.196(b) with respect to claims 6-8.
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that,
"[a] new ground of rejection shall not be considered final for
purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. . . .
Appeal No. 2002-2015
Application No. 09/232,138
Page 18
REVERSED
New Ground of Rejection under 37 CFR1.196(b).
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
ssl/vsh
Appeal No. 2002-2015
Application No. 09/232,138
Page 19
ROBERT E. BUSHNELL
ATTORNEY-AT LAW
1522 K STREET N W
SUITE 300
WASHINGTON, DC 20005-1202