Ex Parte Erpelding et alDownload PDFPatent Trial and Appeal BoardMar 24, 201410974485 (P.T.A.B. Mar. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte A. DAVID ERPELDING and VICTOR WING CHUM SHUM ____________________ Appeal 2011-012158 Application 10/974,485 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012158 Application 10/974,485 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-5, 8-13, and 16-20. Claims 6, 7, 14, and 15 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary independent claim 1 under appeal, with emphasis added to the disputed portion of the claim, reads as follows: 1. A wireless suspension apparatus comprising: a multi-layered substrate material; a flex cable; a plurality of standoffs forming a pocket from said substrate material, said plurality of standoffs configured to be coupled to a slider via direct contact to said slider, wherein said plurality of standoffs are further configured to electrically couple said slider to said flex cable to dissipate electrical charges that can build up on the slider; and a non-electrically conductive epoxy disposed within said pocket for bonding said wireless suspension to said slider. Appeal 2011-012158 Application 10/974,485 3 Examiner’s Rejections (1) The Examiner rejected claims 1-5, 8-13, 16, and 17 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Yagi (JP 2000-215428), Schaenzer (US 6,016,692), and Kahn (US 6,351,352 B1). Ans. 5-9. (2) The Examiner rejected claims 1, 9, 17, 18, and 20 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Rancour (US 2002/0051323 A1), Schaenzer, and Kahn. Ans. 9-12. (3) The Examiner rejected claim 19 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Rancour, Schaenzer, Kahn, and Shiraishi (US 5,880,908). Ans. 12-13. The Examiner makes new findings at pages 14 and 15 of the Answer (Ans. 14-15, Section (10), Response to Argument), including the citations to Yagi (Ans. 14 (citing ¶¶ [0036], [0037], and [0046])) and Rancour (Ans. 15 (citing col. 3, ll. 59-67)) regarding attaching a slider with a non-conductive adhesive, as recited in claims 1, 9, and 17 on appeal. Appellants do not dispute these new findings (see Reply Br. 2-3), or otherwise provide evidence to the contrary. Issues on Appeal Based on Appellants’ arguments in the Appeal Brief (Br. 8-16) and Reply Brief (Reply Br. 2-4), the following issues are presented on appeal: (1) Did the Examiner err in rejecting claims 1-5, 8-13, 16, and 17 as being obvious, because (a) Yagi, Schaenzer, and Kahn are not properly combinable, (b) the combination of Yagi, Schaenzer, and Kahn fails to teach or suggest the limitations of claims 1, 9, and 17 at issue, and (c) the Appeal 2011-012158 Application 10/974,485 4 Examiner considers Schaenzer to be a superfluous reference due to Yagi’s teaching of a non-conductive adhesive? (2) Did the Examiner err in rejecting (i) claims 1, 9, 17, and 20 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Rancour, Schaenzer, and Kahn, and (ii) claim 19 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Rancour, Schaenzer, Kahn, and Shiraishi, because (a) Schaenzer teaches or suggests using a non- conductive adhesive as recited in claims 1, 9, and 17; (b) the combination of Rancour, Schaenzer, Kahn, and/or Shiraishi teaches or suggests the limitations of independent claims 1, 9, and 17 at issue, (c) Rancour, Schaenzer, and Kahn are properly combinable, and (d) the Examiner’s reliance on Kahn’s flex cable with Schaenzer’s non-conductive adhesive would change Schaenzer’s operation to preclude the use of a differential pre- amplifier and prevent electrical isolation of the piezoelectric element? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 8-16) and the Reply Brief (Reply Br. 2-4) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 14-15). We disagree with Appellants’ conclusions. Rejection of Claims 1-5, 8-13, 16, and 17 over Yagi, Schaenzer, and Kahn We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 5-13), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response Appeal 2011-012158 Application 10/974,485 5 to Appellants’ Appeal Brief (see Ans. 14-15), with one exception. We do not agree with the Examiner’s findings with regard to Rancour’s disclosure of a non-conductive adhesive (Ans. 15), and instead find that Rancour discloses an adhesive without specifying whether or not it is non-conductive or isolating (see Rancour, ¶¶ [0021], [0026], [0028], [0029], and [0031]).1 With regard to claims 1-5, 8-13, 16, and 17, it is our view that since Yagi reasonably teaches or suggests a non-electronically conductive epoxy (i.e., adhesive) to bond the suspension to the slider (see Yagi, ¶¶ [0038] and [0046]), Schaenzer is not actually necessary for a proper rejection under 35 U.S.C. § 103, as the combination of Yagi (non-conductive adhesive) and Kahn (flexible cable) teaches or suggests all that is claimed. The Board may rely on less than all of the references applied by the Examiner in an obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). Appellants’ contentions (App. Br. 8-12; Reply Br. 2-3) that Schaenzer’s column 4 and Figure 6 teach away from the claimed invention (e.g., Appellants assert at page 9 of the Appeal Brief that Schaenzer’s discussion of the benefits of not using a differential pre-amplifier lead away from electrically coupling the slider to the flex cable to dissipate built up electrical charges) are not persuasive for two reasons. First, Schaenzer is not 1 Notably, the Examiner determines that “Rancour does not clearly disclose or fairly suggest the non-electrically conductive epoxy disposed within the pocket for bonding the wireless suspension to the slider” (Ans. 10), which is in total conflict with the Examiner’s findings that Rancour’s column 3, lines 59-67 “specifically discloses using a non-conductive adhesive to attach a slider to a suspension member (see col. 3, lines 59-67 of Rancour)” (Ans. 15). Appeal 2011-012158 Application 10/974,485 6 actually necessary to the rejection since less than all of the references (e.g., Yagi and Kahn) meet the claim limitations. Second, the Examiner does not rely on Schaenzer for the preclusion of a differential pre-amplifier or the elimination of any electrical isolation to prevent electric charge build up on the slider; instead, the Examiner merely relies upon Schaenzer for a disclosure of using a non-conductive adhesive to isolate the slider (see Ans. 6 and 10). In this light, Appellants’ contentions as to claims 1-5, 8-13, 16, and 17 (App. Br. 8-12; Reply Br. 2-3) concerning that the use of a flex cable as claimed would change the principle of operation of Schaenzer are not persuasive. Similarly, Appellants’ contentions as to claims 1, 9, 17, 19, and 20 (App. Br. 13-15) that the Examiner’s modification of Schaenzer to use a flex cable (as taught by Kahn) as claimed is disadvantageous and would change the operational principles of Schaenzer are not persuasive in light of the Examiner’s reliance upon (i) Kahn, and not Schaenzer, as disclosing a flex cable, and (ii) Schaenzer as disclosing the use of non-conductive adhesive to bond the slider to the suspension, and not a flex cable. Rejections of Claims 1, 9, 17, and 20 over Rancour, Schaenzer, and Kahn; and Claim 19 over Rancour, Schaenzer, Kahn, and Shiraishi As to the obviousness rejections based on Rancour, we disagree with the Examiner (Ans. 9 and 15) that Rancour teaches or suggests using a non- conductive adhesive for isolation. A close review of Rancour reveals no disclosure of non-conductive adhesive at column 3, lines 59-67 or any other location in the reference. More specifically, Rancour discloses an “adhesive” 94 (¶¶ [0028] and [0029], and makes several citations to using an adhesive (¶¶ [0021], [0026], and [0031]), but never specifies whether the Appeal 2011-012158 Application 10/974,485 7 adhesive is conductive (i.e., non-isolating) or non-conductive (i.e., isolating). However, this defect is cured by Schaenzer’s disclosure of a non-conductive adhesive (see col. 4, ll. 8-11). Thus, we concur with the conclusions reached by the Examiner that claims 1, 9, 17, 19, and 20 are obvious in view of the combinations of Rancour, Schaenzer, Kahn, and/or Shiraishi (Ans. 9-13) since Appellants do not dispute Rancour’s disclosure of the method, apparatus, and hard disk drive recited in claims 1, 9, 17, 19, and 20 except for the non-conductive adhesive (taught by Schaenzer at column 4, lines 8-11) and the flex cable (for which the Examiner relies upon Kahn). With regard to claims 1, 9, 17, 19, and 20, we also agree with the Examiner (Ans. 9-13) that combining the teachings of Shiraishi with Rancour, Schaenzer, and Kahn would not change the basic operating principle of the combination taught or suggested by (i) Rancour, Schaenzer, and Kahn, and/or (ii) Rancour, Schaenzer, Kahn, and Shiraishi, for the reasons discussed supra. Rejection of Claim 18 over Rancour, Schaenzer, and Kahn Appellants have not presented any separate arguments with respect to the rejection of claim 18 as being obvious under 35 U.S.C. § 103(a) over Rancour, Schaenzer, and Kahn. As such, Appellants have not argued that the Examiner erred in rejecting claim 18, or otherwise shown the obviousness rejection to be in error. See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, we will sustain the Examiner’s rejection of claim 18 on the same basis we sustained the rejection of as claim 17 from which claim 18 depends. See In re Nielson, 816 F.2d 1567, 1569, 1572 (Fed. Cir. 1987) (dependent claims, not argued separately, fall with the independent claims, Appeal 2011-012158 Application 10/974,485 8 even though the dependent claims were rejected based on additional (or different) references). CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-5, 8-13, 16, and 17 as being obvious, because (a) Yagi, Schaenzer, and Kahn are properly combinable, (b) the combination of Yagi, Schaenzer, and Kahn teaches or suggests the limitations of claims 1, 9, and 17 at issue, and (c) the Examiner is correct (Ans. 14) that Schaenzer is superfluous since Yagi teaches a non- conductive adhesive, and thus the combination of Yagi and Kahn teaches or suggests the limitations of claims 1, 9, and 17 at issue. (2) The Examiner did not err in rejecting claims 1, 9, 17, and 20 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Rancour, Schaenzer, and Kahn because (a) Schaenzer teaches or suggests using a non-conductive adhesive as recited in claims 1, 9, and 17; (b) the combination of Rancour, Schaenzer, and Kahn teaches or suggests the limitations of independent claims 1, 9, and 17 at issue, (c) Rancour, Schaenzer, and Kahn are properly combinable, and (d) Appellants have not shown that the Examiner’s reliance on Kahn’s flex cable with Schaenzer’s non-conductive adhesive would change Schaenzer’s operation to preclude the use of a differential pre-amplifier and cause electrical isolation of the piezoelectric element. (3) The Examiner did not err in rejecting claim 19 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Rancour, Schaenzer, Kahn, and Shiraishi for similar reasons as given for independent claim 17, from which claim 19 ultimately depends. Appeal 2011-012158 Application 10/974,485 9 (4) Appellants have not presented any separate arguments with respect to the rejection of claim 18 as being obvious under 35 U.S.C. § 103(a) over Rancour, Schaenzer, and Kahn. As such, Appellants have not argued that the Examiner erred in rejecting claim 18, or otherwise shown this obviousness rejection to be in error. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION The Examiner’s rejections of claims 1-5, 8-13, and 16-20 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation