Ex Parte Genheimer et al

Board of Patent Appeals and Interferences

Mar 27, 2002

09114954 (B.P.A.I. Mar. 27, 2002)

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not binding precedent of the Board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 STEPHEN R. GENHEIMER,
KENNETH L. POTTEBAUM, JON P. BAKER
and JOHN D. STRICKLIN
______________
Appeal No. 2000-1232
Application 09/114,954
_______________
ON BRIEF
_______________
Before THOMAS, BARRETT and LALL, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants have appealed to the Board from the examiner's
final rejection of claims 18-24. Of these claims, the examiner
has indicated the allowability of claims 18-23 at pages 2 and 5
of the answer. Therefore, only claim 24 remains for our
consideration on appeal.
Appeal No. 2000-1232
Application 09/114,954
2
Claim 24 is reproduced below:
24. A disc drive, comprising:
a rotatable disc; and
limit means for limiting deflection of the disc in response
to application of a non-operational shock to the disc drive.
The reference relied upon by the examiner is:
Alt 5,422,770 June 6, 1995
The most recent prosecution history of claim 24 is
problematic. Page 3 of the final rejection included a rejection
of claim 24 under 35 U.S.C. § 102(e) as being anticipated by Alt.
In a responsive amendment filed under 37 CFR § 1.116 on June 11,
1999, appellants attempted to cancel claim 24. This amendment
contains a handwritten notation to the left-center portion of
page 1 from the examiner indicating that the amendment would be
entered upon a filing of a Notice of Appeal and an appeal brief.
The substance of the Advisory Action mailed on June 21, 1999, in
Paper No. 11 is consistent with this handwritten notation,
further indicating that only claims 18-23 remained for purposes
of appeal. As explained at the top of page 4 of the brief,
appellants consider that the examiner has refused entry of the
Appeal No. 2000-1232
Application 09/114,954
3
amendment under 37 CFR § 1.116. Although the answer makes clear
that the examiner has reconsidered the rejection of claims 18-23
such as to indicate at the time of the answer that these claims
were considered allowable, the examiner correspondingly
maintained the position that claim 24 was still rejected under
35 U.S.C. § 102. Since both the examiner and appellants consider
claim 24 to remain active, we will treat it as the only claim in
this appeal.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and answer for their
respective positions.
OPINION
For the reasons generally set forth by the examiner at page
3 of the final rejection as amplified beginning at page 3 of the
answer, we sustain the rejection of claim 24 under 35 U.S.C.
§ 102 as being anticipated by Alt.
Page 6 of the brief indicates that all claims that
appellants consider to be on appeal, including claims 18-24, to
stand or fall together. On the other hand, however, appellants
Appeal No. 2000-1232
Application 09/114,954
4
have directed no arguments to the specific features of claim 24
in the arguments portion of the brief beginning at the bottom of
page 6. Whereas independent claims 18 and 21 on appeal recite
specifically ?a disc snubber," claim 24 more broadly recites a
?limit means." The disc snubber of independent claims 18 and 21
further requires a layer of material over-molded onto a portion
of the rigid actuator arm recited earlier in these claims such
that the snubber performs the function of limiting deflection of
the disc resulting from application of a non-operational shock to
the disc drive. Without reciting any of these intermediate
structural features and relationships and without reciting a
corresponding rigid actuator arm, claim 24 only more broadly
recites the same limiting function.
Although we noted earlier that appellants have presented no
specific arguments as to independent claim 24 on appeal, the
focus of the arguments relies upon the claimed disc snubber which
appears only in independent claims 18 and 21 on appeal. On the
other hand, appellants recognize that the teachings in Alt
indicate that a shock bumper 124 absorbs forces resulting from
non-operational shock inflicted upon a computer disc drive.
Appeal No. 2000-1232
Application 09/114,954
5
In accordance with the arguments between pages 9 and 10 of the
brief, while appellants recognize that Alt discloses attaching a
shock bumper 124 to a flexible load arm, they assert that the
claimed invention requires a disc snubber over a portion of a
rigid actuator arm. Again, it is noted that neither of these
features are recited in independent claim 24 on appeal.
On balance, therefore, we consider the arguments presented
by the examiner to substantiate the rejection beginning at page 3
of the answer to be well-taken. The examiner has showed
equivalent structural means and function in Alt to correspond to
the limit means set forth in broad form in independent claim 24
on appeal. Thus, the examiner has set forth a prima facie case
of anticipation that has not been successfully rebutted by
appellants' arguments in the brief and in the absence of a filing
of a reply brief to the contrary. Therefore, the rejection of
claim 24 under 35 U.S.C. § 102 is affirmed.
Appeal No. 2000-1232
Application 09/114,954
6
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Lee E. Barrett ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Parshotam S. Lall )
Administrative Patent Judge )
JDT/cam

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