Ex parte Goss

Board of Patent Appeals and Interferences

May 27, 1999

08216474 (B.P.A.I. May. 27, 1999)

Application for patent filed March 22, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LLOYD C. GOSS

_____________
Appeal No. 96-3704
Application 08/216,4741
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and FRAHM, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 96-3704
Application 08/216,474
2
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1 through 6 and 8 through 14. Claim 7 has been
cancelled. Claims 15 through 19 have been withdrawn from
consideration.
The invention relates to a head suspension assembly
for positioning a floating read-write head assembly for use in
a computer disk drive memory. In particular, the head suspen-
sion assembly has a monocoque region 30 shown in Figure 2.
The monocoque region is shown in cross section in Figure 4.
The monocoque region is a hollow shell having a closed plane
figure cross-sectional profile. This allows an integrated
circuit to be placed within the hollow shell of the monocoque
region as shown in Figure 2.
Independent claim 1 is reproduced as follows:
1. A head suspension assembly for positioning a
floating head assembly having electrical terminals over se-
lected tracks on the surface of a rotating data storage de-
vice, said head suspension assembly comprising;
Appeal No. 96-3704
Application 08/216,474
3
a first surface;
a proximal end region;
a gimbal region for providing gimballing support to
a head assembly;
a spring region adjacent the proximal end region;
a monocoque region located in between the gimbal
region and the spring region, where the monocoque region is a
hollow shell having a closed plane figure cross sectional
profile and covering an inner chamber, the monocoque region
including a ceiling region and a floor region separated and
spaced from each other;
an integrated circuit substantially encased inside
the inner chamber, between the ceiling region and the floor
region, the integrated circuit having a plurality of control
pins and a plurality of read-write pins;
a first set of electrical conductors connecting
electrical terminals on a head assembly to the read-write
pins;
a second set of electrical conductors connecting the
control pins to exit terminal means for electrically coupling
the second set of conductors to circuitry outside of the head
suspension assembly wherein the first and the second set of
conductors are placed over the first surface and include
conductors made of a conductive material laid down in long
strips atop a thin insulating coating which electrically
isolates the conductors from the first surface.
The Examiner relies on the following references:
Appeal No. 96-3704
Application 08/216,474
4
Slezak 5,121,273 June 9, 1992
Hashimoto 59-207065 Nov. 24, 1984
(Japanese Kokai)
Morikawa 3-25717 Feb. 4, 1991
(Japanese Kokai)
Toda 4-219618 Aug. 10, 1992
(Japanese Kokai)
Oe et al. (Oe) 4-219066 Oct. 15, 1992
(Japanese Kokai)
Claims 1 through 6, 8 through 11, 13 and 14 are
rejected under 35 U.S.C. § 103 as being unpatentable over
Hashimoto in view of Morikawa and Slezak. Claims 1 through 6,
8, 11, 13 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hashimoto in view of Morikawa and Toda.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatent-
able over Hashimoto in view of Morikawa and Toda or Slezak and
further in view of Oe. On page 14 of the Examiner's answer,
the Examiner sets forth a new ground of rejection in which
claims 8 through 11 and 13 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particu-
larly point out and distinctly claim the subject matter which
Appellant regards as the invention.
Appeal No. 96-3704
Application 08/216,474
5
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief and answer for
the respective details thereof.
OPINION
We will not sustain the rejection of claims 1
through 6 and 8 through 14 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found
in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
Appeal No. 96-3704
Application 08/216,474
6
'heart' of the invention." Para-Ordnance Mfg. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Appellant argues on pages 12 through 16 of the brief
that the present claims are not rendered obvious by any of the
teachings of the Hashimoto, Morikawa, Slezak, Toda and Oe
references, whether taken separately or in combination with
any of the other references of record. Appellant argues that
the Examiner has failed to show that the prior art suggests,
expresses or implies a combination of a monocoque load beam in
which an integrated circuit chip is mounted in the enclosed
shell portion of the monocoque region of the load beam as
required in
Appellant's claims 1 through 6 and 8 through 14. On page 4 of
the Examiner's answer, the Examiner states that Hashimoto does
Appeal No. 96-3704
Application 08/216,474
7
not expressly show an integrated circuit provided on the load
beam within the monocoque region. The Examiner further states
that Morikawa teaches providing an integrated circuit on a
load beam. On page 5 of the Examiner's answer, the Examiner
argues that it would have been obvious to one of ordinary
skill in the art to provide an integrated circuit chip on the
suspension load beam of Hashimoto as taught by Morikawa. The
Examiner reasons that the modification would have been
motivated in order to reduce external noise interference
within the lead wires as expressly suggested by Morikawa.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg., 73 F.3d at
Appeal No. 96-3704
Application 08/216,474
8
1087, 37 USPQ2d at 1239, citing W. L. Gore, 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-313.
Turning to Appellant's claims, we note that the
claims require a monocoque load beam in which an integrated
circuit chip is mounted within the enclosed shell portion of
the monocoque region of the load beam. In particular,
Appellant's claim 1 recites the following:
a monocoque region located in between
the gimbal region and the spring region,
where the monocoque region is a hollow
shell having a closed plane figure cross
sectional profile and covering an inner
chamber, the monocoque region including a
ceiling region and a floor region separated
and spaced from each other;
an integrated circuit substantially
encased inside the inner chamber, between
the ceiling region and the floor region.
We note that Appellant's only other independent claim, claim
13, requires similar limitations requiring an integrated
circuit encased inside the inner chamber of the monocoque
region.
Upon our close review of Hashimoto, we note that
Hashimoto teaches in Figures 4a, b, c and d a structure having
Appeal No. 96-3704
Application 08/216,474
9
a shell-like structure between the gimbal spring and the
floating head. We also note that Hashimoto fails to teach
placement of an integrated circuit anywhere on this structure.
Upon our close review of Morikawa, we find that
Morikawa teaches on page 7 that Figure 1 is a top view of the
practical example of the main part of the magnetic head device
of Morikawa's invention. Morikawa shows an integrated circuit
5 placed on top of the head suspension 3. We note that
Morikawa does not teach a shell in which the integrated
circuit is placed inside. Furthermore, we note that Morikawa
does not teach the same structure that Hashimoto teaches in
which the head suspension includes a hollow structure.
Upon a close review of the Examiner's answer, we
fail to find that the Examiner has addressed Appellant's
argument as to why one of ordinary skill in the art would have
a reason to place the integrated circuit within the hollow
Appeal No. 96-3704
Application 08/216,474
In a conversation on March 4, 1999 with Pamela Bennett,2
Paralegal Specialist for the Board of Patent Appeals and
Interferences, Walter Linder, Registration No. 31,707,
informed Ms. Bennett that no response to the new ground of
rejection in the Examiner's Answer was filed.
10
structure as disclosed in Hashimoto. Upon reviewing the art
cited by the Examiner, we fail to find that this art suggests
any desirability of the proposed Examiner's modification.
Therefore, we will not sustain the rejection of claims 1
through 6 and 8 through 14 under 35 U.S.C. § 103.
Due to a new ground of rejection, claims 8 through
11 and 13 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and
distinctly claim the subject matter which Appellant regards as
the invention. We note that the Appellant has failed to
respond to this new ground of rejection. 2
37 CFR § 1.193(b) as amended at 58 Fed. Reg. 54510,
Oct. 22, 1993, which was controlling at the time of
Appellant's filing the brief, states as follows:
Appeal No. 96-3704
Application 08/216,474
11
If the examiner's answer expressly states
that it includes a new ground of rejection,
appellant must file a reply thereto within
two months from the date of such answer to
avoid dismissal of the appeal as to the
claims subject to the new ground of
rejection.
Since Appellant did not file a reply to the new ground of
rejection within two months from the date of the answer, we
dismiss the appeal as to claims 8 through 11 and 13.
In view of the foregoing, the decision of the
Examiner rejecting claims 8 through 11 and 13 under 35 U.S.C.
§ 112, second paragraph, is affirmed. However, the decision
of the Examiner rejecting claims 1 through 6 and 14 under 35
U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
Appeal No. 96-3704
Application 08/216,474
12
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
ERIC FRAHM )
Administrative Patent Judge )
MRF:psb
Appeal No. 96-3704
Application 08/216,474
13
Charles E. Steffey
2200 Norwest Center
90 South Seventh Street
Minneapolis, MN 55402-3901