Ex parte Combe

Board of Patent Appeals and Interferences

Mar 30, 2001

08274771 (B.P.A.I. Mar. 30, 2001)

-1-
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and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ANTHONY D. COMBE
________________
Appeal No. 1998-0820
Application No. 08/274,771
________________
ON BRIEF
________________
Before JERRY SMITH, FLEMING and RUGGIERO, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-4 and 7-8. Claims 5-6 and 9-14 have been canceled.
The invention relates to a removable magneto-resistive
hard disk cartridge system. The system provides for the
interchange-ability of hard disk cartridges between disk
Appeal No. 1998-0820
Application No. 08/274,771
See pages 4-5 of the specification.1
-2-
drives as well as for consistency in recording levels on the
hard disk cartridges. An embedded servo method is used for
magneto-resistive hard disk recording.1
Independent claim 1 is as follows:
1. A rotating disk drive for the magnetic storage of
computer data, comprising:
a grounded actuator arm with an inductive head for
writing and a magneto-resistive (MR) read head for reading a
plurality of data tracks with embedded servo features on a
surface of a rotating magnetic rigid disk within a removable
cartridge;
grounding means for connecting said rotating magnetic
rigid disk to a disk drive ground and the actuator to provide
electrostatic discharge (ESD) protection to said MR head,
wherein the voltage potential between said MR head and said
rotating magnetic rigid disk is limited to two to three volts;
and
cartridge receiving means proximate to the magneto-
resistive read head for accepting and ejecting said removable
cartridge.
No prior art is relied upon by the Examiner in the
rejection of claims under appeal.
Claim 2 is rejected under 35 U.S.C.§ 112, second
paragraph. Claims 1-4 and 7-8 are rejected under 35 U.S.C.§
112, first paragraph. Appellant has indicated that claims 1-4
and 7-8 stand or fall together.
Appeal No. 1998-0820
Application No. 08/274,771
See the brief filed January 10, 1997 and the answer2
mailed May 22, 1997.
See page 5 of the answer.3
See page 8 of the brief.4
-3-
Rather than reiterate all arguments of Appellant and
Examiner, reference is made to the briefs and answer for the
respective details thereof.2
OPINION
We will not sustain the rejection of claim 2 under
35 U.S.C.§ 112, second paragraph, nor of claims 1-4 and 7-8
under 35 U.S.C.§ 112, first paragraph.
Turning first to the rejection of claim 2 under 35 U.S.C.
§ 112, second paragraph, the Examiner asserts that use of the
term "conductive material" is unclear because "all materials
are 'conductive'" and "the specification sets no conductive
requirement to the protective material." Appellant responds3
that not all materials are conductive and provides examples
that fall within that category. 4
Analysis of 35 U.S.C. § 112, second paragraph, should
begin with the determination of whether claims set out and
Appeal No. 1998-0820
Application No. 08/274,771
-4-
circumscribe the particular area with a reasonable degree of
precision and particularity; it is here where definiteness of
the language must be analyzed, not in a vacuum, but always in
light of teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977), citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (1971). "The legal standard for definiteness is whether a
claim reasonably apprises those of skill in the art of its
scope." In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994).
Claim 2 specifically recites "a protective layer of hard
and conductive material capping said magneto-resistive read
head." The sole issue under 35 U.S.C. 112, second paragraph,
is whether the scope of protection sought by this language
sets out and circumscribes a particular area with a reasonable
degree of precision and particularity when viewed in light of
teachings of the disclosure. The ordinary meaning of the term
"conductive" as defined by the dictionary is "having
conductance." The dictionary definition of conductance is
Appeal No. 1998-0820
Application No. 08/274,771
See Webster's New World Dictionary 290 (3d ed. 1986).5
-5-
"the ability of a component to conduct electricity." We find5
in view of the ordinary meaning of the term "conductive,"
Appellant's claim 2 meets the requirements of 35 U.S.C.§ 112,
second paragraph.
We turn next to the issue of the rejection of claims 1-4
and 7-8 for lack of written description. There are two issues
presented to us: (1) whether the claims are supported by
written description in the original filed specification and
(2) whether amendments to the specification constitute new
matter under
35 U.S.C. § 132.
With respect to the written description of claims in the
originally filed application, the Examiner argues on page 6 of
the answer that "grounding means for connecting said rotating
magnetic rigid disk to a disk drive ground and the actuator to
provide electrostatic discharge (ESD) protection to said MR
head, wherein the voltage potential between said MR head and
said rotating magnetic rigid disk is limited to two or three
volts" was not properly described under 35 U.S.C.§ 112, first
paragraph.
Appeal No. 1998-0820
Application No. 08/274,771
-6-
As noted by our reviewing court, "[t]he function of the
description requirement [of the first paragraph of 35 U.S.C.
112] is to ensure that the inventor had possession, as of the
filing date of the application relied on, of the specific
subject matter later claimed by him." In re Wertheim, 541
F.2d 257, 262,
191 USPQ 90, 96 (CCPA 1976). "It is not necessary that the
application describe the claim limitations exactly . . . but
only so clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented
processes including those limitations." Wertheim, 541 F.2d at
262,
191 USPQ at 96 citing In re Smythe, 480 F.2d 1376, 1382, 178
USPQ 279, 284 (CCPA 1973). Furthermore, the Federal Circuit
points out that "[i]t is not necessary that the claimed
subject matter be described identically, but the disclosure
originally filed must convey to those skilled in the art that
applicant had invented the subject matter later claimed." In
re Wilder,
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert.
denied, 469 U.S. 1209 (1985), citing In re Kaslow, 707 F.2d
Appeal No. 1998-0820
Application No. 08/274,771
-7-
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). "To fulfill
the written description requirement, the patent specification
'must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed."
Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479, 45
USPQ 1498, 1503 (Fed. Cir. 1998) citing In re Gosteli, 872
F.2d 1008, 1012,
10 USPQ2d 1614, 1618 (Fed. Cir. 1989). "An applicant is
entitled to claims as broad as the prior art and his
disclosure will allow." In re Rasmussen, 650 F.2d 1212, 1214,
211 USPQ 323, 326 (CCPA 1981). (Emphasis added).
On page 6 of the original specification, Appellant
describes the hub 16 as being "included in disk drive 10" and
as engaging "the hard disk 14 and [rotating] it . . ." In
addition, Appellant notes that "it is preferable to ground
hard disk 14 through hub 16 to disk drive 10." Therefore, it
is clear that the term "hub" in this instance refers to the
shaft connected to the spindle that is used by the motor to
rotate the disk. Thus, if the hub were used to ground the
disk to drive 10, it would itself have to be grounded.
Appeal No. 1998-0820
Application No. 08/274,771
See page 12 of the specification.6
-8-
Because the hub is attached to the motor shaft spindle, the
spindle would also be grounded.
Appellant also directs our attention to Figures 2 and 6.
Appellant argues that reference numeral 25 points to the end
of grounded actuator arm 18 which includes heads 20 and 22.
In addition, Appellant argues that the originally filed Figure
6 has reference numeral 25 pointing to a box around MR read
head 20. Appellant concludes that the skilled artisan would
read from these figures "that something enveloping or
surrounding the MR read head was grounded." Finally,
Appellant notes that the originally filed specification limits
the voltage difference between MR head 20 and hard disk 14 "to
not exceed 2-3 volts."6
We agree and find that while the specification did not
identically describe the claimed limitations at issue here,
persons of ordinary skill in the art would have recognized
from the passage found on page 6 as well as from Figures 2 and
6, that Appellant had possession of "grounding means for
connecting said rotating magnetic rigid disk to a disk drive
ground and the actuator to provide electrostatic discharge
Appeal No. 1998-0820
Application No. 08/274,771
-9-
(ESD) protection to said MR head, wherein the voltage
potential between said MR head and said rotating magnetic
rigid disk is limited to two or three volts" as recited in
claim 1 and thereby properly described under 35 U.S.C.§ 112,
first paragraph.
On page 5 of the answer, Examiner asserts that ESD
protection recited in claim 1 was "newly described." However,
page 6, lines 24-28, of the specification as originally filed
describes grounding of both disk 14 and MR head 20 to drive 10
as a way of preventing damage by ESD to the read head. Thus,
recitation of ESD protection recited in claim 1 was described
in the specification as originally filed.
The Examiner argues on page 4 of the answer that "spindle
rotation means connected to said cartridge receiving means for
rotating said removable cartridge at a first speed while
reading a track of data previously recorded by an inductive
head at a second speed with said removable cartridge" does not
have proper written description under 35 U.S.C.§ 112, first
paragraph. The Examiner asserts there "is no indication of
any single
Appeal No. 1998-0820
Application No. 08/274,771
See pages 4 and 8 of the answer.7
-10-
device . . . that writes at one speed and reads at another." 7
Appellant argues on page 10 of the brief that claim 4,
which formed part of the originally filed specification,
recites "spindle rotation means connected to said cartridge
receiving means for rotating [the] removable cartridge at a
first speed while reading a track of data previously recorded
by an inductive head at a second speed." Appellant goes on to
note that a "two-speed spindle motor 52 simply represents an
ordinary kind of spindle rotation means for independently
rotating the removable cartridge at a first speed and a second
speed." Appellant concludes that a fair reading of the
specification will reveal "the drive can run the disk at two
different speeds."
We note that the invention of claim 4 at the time of the
filing date includes "spindle rotation means connected to
receiving means for rotating said removable cartridge at a
first speed while reading a track of data previously recorded
by an inductive head at a second speed with removable
cartridge." Therefore, because claim 4 recited the limitation
originally filed, we find that this is evidence in and of
Appeal No. 1998-0820
Application No. 08/274,771
-11-
itself that the patent specification clearly conveys to
persons of ordinary skill in the art that Appellant had
invented what is claimed.
We note that we have addressed all of the Examiner's
arguments relating to the rejection of claims 1-4 and 7-8
under 35 U.S.C.§ 112, first paragraph. We will not sustain
the rejection for the reasons set out above.
In regard to the issue of whether the amendment to the
specification is new matter under 35 U.S.C.§ 132, we find that
because the amendment does not affect the claims before us, it
is a petitionable issue and not an appropriate matter for
decision by the Board.
For these reasons, we reverse the rejection of claim 2
under 35 U.S.C. § 112, second paragraph and the rejection of
claims 1-4 and 7-8 under 35 U.S.C.§ 112, first paragraph.
The decision of the examiner is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
Appeal No. 1998-0820
Application No. 08/274,771
-12-
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:clm
Appeal No. 1998-0820
Application No. 08/274,771
-13-
David R. Halvorson
Blakely, Sokoloff, Taylor & Zafman
12400 Wilshire Blvd.
Los Angeles, CA 90025