Ex Parte Dunfield et al

Board of Patent Appeals and Interferences

Sep 12, 2002

08438091 (B.P.A.I. Sep. 12, 2002)

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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today was not written for publication and is not
binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN C. DUNFIELD and GUNTER K. HEINE
________________
Appeal No. 1998-0828
Application 08/438,091
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH and DIXON, 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, 4-19, 21-24 and 27-
33, which constitute all the claims remaining in the application.
An amendment after final rejection was filed on December 30, 1996
but was denied entry by the examiner.
Appeal No. 1998-0828
Application 08/438,091
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The disclosed invention pertains to a method and
apparatus for positioning a transducer having read and write
heads in a disc drive.
Representative claim 1 is reproduced as follows:
1. An apparatus in a disc drive for positioning a
transducer relative to a magnetic disc, the magnetic disc having
a surface and a track on the surface, the apparatus comprising:
a rotary actuator;
an actuator arm coupled to the rotary actuator;
a load beam coupled to the actuator arm;
a suspension coupled to the load beam;
an air bearing coupled to the suspension;
a transducer coupled to the air bearing and positioned to access
the surface of the disc, the transducer having a pair of
spaced disc accessing elements;
a second actuator operably coupled to the air bearing and the
load beam and being controllable to move the air bearing
relative to the surface of the disc and relative to the load
beam; and
a controller, coupled to the second actuator to reposition the
transducer to align one of the pair of spaced disc accessing
elements with the track on the surface of the disc, the
controller varying an amount by which the transducer is
repositioned based on a radial position of the track on the
surface of the disc and based on spacing between the disc
accessing elements on the transducer.
Appeal No. 1998-0828
Application 08/438,091
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The examiner relies on the following references:
Pierce et al. (Pierce) 3,863,124 Jan. 28, 1975
Elliott 3,914,541 Oct. 21, 1975
Frandsen 4,314,295 Feb. 02, 1982
Chi 4,802,033 Jan. 31, 1989
Nihei et al. (Nihei) 5,055,731 Oct. 08, 1991
Mori et al. (Mori) 5,189,578 Feb. 23, 1993
Imamura et al. (Imamura) EP 0549814 July 07, 1993
The following rejections are on appeal before us:
1. Claims 19 and 21-24 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on an inadequate
disclosure.
2. Claims 19, 21, 22 and 24 stand rejected under 35
U.S.C. § 102(b) as being anticipated by the disclosure of Mori.
3. Claim 23 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Mori in view of Nihei.
4. Claims 2, 5, 8, 14, 17, 18, 27-29 and 33 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
teachings of Mori in view of Chi.
5. Claims 4, 6, 30 and 32 stands rejected under 35 U.S.C.
§ 103 as being unpatentable over the teachings of Mori in view of
Chi and Pierce.
6. Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Mori in view of Elliott.
Appeal No. 1998-0828
Application 08/438,091
1 This rejection was added as a new ground of rejection in
the examiner’s answer.
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7. Claims 7 and 31 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Mori in view of Chi
and Elliott.
8. Claims 15 and 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Mori in view of Chi
and Nihei.
9. Claims 9 and 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Mori in view of Chi
and Frandsen.
10. Claims 11-13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Mori in view of Chi,
Frandsen and Imamura.
11. Claims 28 and 29 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Mori in view of Chi1.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
Appeal No. 1998-0828
Application 08/438,091
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OPINION
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 prior art rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
the appellants’ arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the specification properly supports the invention of
claims 19 and 21-24. We are also of the view that the evidence
relied upon by the examiner does not support any of the prior art
rejections made by the examiner. Accordingly, we reverse.
We consider first the rejection of claims 19 and 21-24
under the first paragraph of 35 U.S.C. § 112. With respect to
independent claim 19, the examiner asserts that the claimed
invention lacks written description in the specification.
Specifically, the examiner states that the phrase “moving the air
bearing relative to the actuator arm without deflecting the air
bearing” is not supported by the original specification because
Appeal No. 1998-0828
Application 08/438,091
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moving the air bearing deflects the structure by definition
[answer, page 4].
Appellants argue that the specification clearly
demonstrates that the microactuators move the heads via
deflection of cantilevered beams and not by deflection of the air
bearing [brief, pages 6-7]. The examiner responds that the
phrase is a contradiction in terms because if an object is moved,
it is deflected [answer, page 10].
We do not sustain this rejection of the claims. The
examiner is equating the word deflecting with the word moving.
We interpret the use of deflecting in claim 19 to mean a
structural deflecting of the air bearing. Thus, an air bearing
can be moved from one location to another location without
causing a structural deflection of the air bearing itself. When
interpreted in this manner, the specification clearly provides
support for the invention of claim 19. Therefore, this rejection
of claims 19 and 21-24 is not sustained.
We now consider the rejection of claims 19, 21, 22 and 24
under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Mori. These claims are argued as a single group. Anticipation
is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every
Appeal No. 1998-0828
Application 08/438,091
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element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to representative, independent claim 19, the
examiner indicates how he reads the claimed invention on the
disclosure of Mori [answer, pages 4-5]. Appellants argue that
Mori does not disclose a controllable microactuator being located
closer to the air bearing than the actuator arm [brief,
pages 7-9]. The examiner responds that Mori performs in the same
manner as the claimed invention. The examiner notes that the
microactuator of Mori is closer to the head than the voice coil
actuator [answer, page 10].
The examiner has not properly considered the claimed
invention. Claim 19 does not recite that the microactuator is
located closer to the air bearing than the voice coil actuator.
Instead, claim 19 recites that the microactuator is located
closer proximate the air bearing than the actuator arm. The
microactuator 9a of Mori is not closer to the air bearing than
Appeal No. 1998-0828
Application 08/438,091
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guide arm 21 or load arms 22 and 22'. The claimed invention
permits the microcontroller to control movement of the air
bearing right at the location of the air bearing. The
“microcontroller” of Mori can not accomplish this operation.
Since there is at least one feature of the claimed invention
which is not disclosed in Mori, we do not sustain this rejection
of claims 19, 21, 22 and 24.
We now consider the various rejections under 35 U.S.C.
§ 103. 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.), cert. denied, 488 U.S. 825
Appeal No. 1998-0828
Application 08/438,091
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(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). 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 and the relative persuasiveness of the
arguments. 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). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived by appellants [see 37 CFR § 1.192(a)].
With respect to the rejection of dependent claim 23 based
on Mori and Nihei, since Nihei does not overcome the deficiencies
in Mori discussed above with respect to the anticipation
Appeal No. 1998-0828
Application 08/438,091
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rejection of claim 19, we do not sustain the rejection of claim
23 for the same reasons discussed above.
We now consider the rejection of independent claims 2 and
27 based on Mori and Chi. The examiner finds that Mori teaches
the invention of these claims except for the claimed control
between read and write operations. The examiner cites Chi as
teaching that it was known to calibrate for the offset between
read and write heads. The examiner finds that it would have been
obvious to the artisan to modify Mori as taught by Chi to permit
accurate tracking regardless of the offset between the read and
write heads [answer, pages 6-7].
Appellants argue that Mori relates to a linear actuator
system to accommodate for offset between a servo head and data
heads, not between read and write transducers on a single head.
Appellants argue that Mori discloses nothing about a transducer
having a pair of spaced disc accessing elements or for
compensating for the position offset between spaced read and
write transducers. Appellants argue that although Chi discloses
a system for adjusting for the offset between read and write
transducers on a common support, Chi does not teach the use of a
second actuator for accomplishing this offset compensation.
Appellants also argue that there is no motivation to combine the
Appeal No. 1998-0828
Application 08/438,091
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teachings of Mori and Chi [brief, pages 9-13]. The examiner
responds that Chi teaches to compensate for the offset between
integral read and write heads [answer, page 11].
We do not sustain the rejection of independent claims 2
and 27 because the examiner has failed to negate the persuasive
arguments of appellants. We agree with appellants that Chi
appears to show the compensation of offset which is built into a
single actuator. The examiner has not pointed to two separate
actuators as required by the claims. Although Mori shows
different actuators, these actuators do not compensate for offset
resulting from spaced disc accessing elements. Therefore, there
is no motivation from within Mori and Chi as to why Mori, which
does not relate to offset compensation, would have been modified
to account for such compensation as taught by Chi. We also find
no teaching within the applied references that the second
actuator is controlled between read and write operations as
recited in claims 2 and 27. Since appellants’ arguments are
persuasive of error in the examiner’s rejection, we do not
sustain the rejection of independent claims 2 and 27.
Appeal No. 1998-0828
Application 08/438,091
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We also do not sustain the rejection of any of the claims
which depend from claims 2 or 27. Neither Pierce, Elliott,
Nihei, Frandsen or Imamura, either alone or in combination,
overcomes the deficiencies in the teachings of Mori alone or Mori
in view of Chi as discussed above.
We now consider the rejection of independent claim 1
based on Mori and Elliott. The examiner indicates how he finds
the invention of claim 1 to be obvious [answer, page 7].
Appellants argue that claim 1 not only recites the two actuators
as in claims 2 and 27, but also recites that the adjustment for
the offset is based upon the radial position of the track.
Appellants argue that Elliott does not teach or suggest a system
for compensating for offset variations between read and write
transducers and a data track based upon the x-y orientation of
read and write transducers at various radial positions of the
data heads [brief, pages 13-17]. The examiner disagrees [answer,
page 11].
We agree with appellants for reasons set forth in the
brief. We do not find the transducer having a pair of spaced
disc accessing elements and the second actuator for controlling
the air bearing based on the radial position of the track as
claimed. Therefore, we do not sustain the rejection of claim 1.
Appeal No. 1998-0828
Application 08/438,091
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In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1, 2, 4-19, 21-24 and 27-33 is
reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JS/ki
Appeal No. 1998-0828
Application 08/438,091
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Joseph R. Kelly
Westman Champlin & Kelly, D.A.
Suite 1600
International Centre
900 Second Avenue South
Minneapolis, MN 55402-3319