Ex Parte Gubbins et al

Patent Trial and Appeal Board

Dec 29, 2016

12571959 (P.T.A.B. Dec. 29, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/571,959 10/01/2009 Mark Anthony Gubbins STL 14488.00 2955
64776 7590
HolzerlPLaw, P.C.
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
OLSON, JASON C
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
01/03/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket @ holzeriplaw .com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANTHONY GUBBINS,
ROBERT WILLIAM LAMBERTON,
ROBERT EDWARD WEINSTEIN, and
JAMES JOSEPH TOUCHTON
Appeal 2014-001551
Application 12/571,959
Technology Center 2600
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
JAMES W. DEJMEK, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-001551
Application 12/571,959
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to placing the electronics on a
transducer head for use in a disc drive because electrical connections may be
made physically shorter than in conventional systems. The electronics may
include one or more of a control system circuit, a write driver, and/or a data
buffer. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus comprising:
on-head control system circuitry located on a transducer
head and configured to synchronize a clock signal with a bit-
detected reference signal to generate a modified clock signal
synchronized with the bit locations on a storage device; and
a writer configured to record data received from off-head
electronics to bit locations on the storage device using the
modified clock signal.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims
appeal is:
Semba US 7,133,229 B2 Nov. 7, 2006
Carey et al. US 7,298,597 B2 Nov. 20, 2007
White et al. US 7,450,342 B2 Nov. 11,2008
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Application 12/571,959
REJECTIONS
The Examiner made the following rejections:
Claim 4 stands rejected under 35U.S.C. §112 first paragraph as
failing to comply with the written description requirement.
Claims 1—3, 5—9, 12—16, 19, and 21—23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Semba in view of White.
Claims 4 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Semba in view of White and further in view of Applicant
Admitted Prior Art (AAPA).
Claims 10, 11, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Semba and White in view of Carey.
ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of Semba and White teaches or suggests the limitation of “on-
head control system circuitry located on a transducer head and configured to
synchronize a clock signal,” as recited in claim 1.
ANALYSIS
Claim 4 rejected under 35 U.S.C. §112, first paragraph
We summarily affirm the Examiner’s rejection of claim 4 under § 112
first paragraph because Appellants did not respond to the Examiner’s
rejection.
Claims 1—23 rejected under 35 U.S.C. § 103(a)
Appellants argue that the combination of Semba and White do not
teach the limitation of “on-head control system circuitry located on a
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transducer head and configured to synchronize a clock signal,” as recited in
claim 1 (App. Br. 5—6). Appellants argue Semba teaches a write clock
generation circuit having a PLL (phase locked loop) that is located away
from a read head and/or a write head formed of poles PI, P2, and write gap
30 (see Semba, FIG. 4). Thus, Appellants assert there is no disclosure in
Semba about locating the PLL on the read head or the write head (App.
Br. 6). Appellants further argue, in particular, that as seen from White’s
Figure 3 (as relied upon by the Examiner), although the conditioning
circuitry (313) is attached to the transducer head (304) via an integrated
circuit substrate (310), a first substrate bond pads (312), and transducer bond
pads (306), the conditioning circuitry is not located on the transducer head
(See White, col. 5,11.11. 37^12) (App. Br. 7).
We are not persuaded by Appellants’ argument. “[0]ne cannot show
non-obviousness by attacking references individually where ... the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). The Examiner finds, and we agree, that the
transducer head taught by White comprises the attached substrate and bond
pads (Ans. 9). The Examiner’s interpretation of the claim language is
consistent with Appellants’ transducer head and attached bond pads or
substrate (Ans. 9; see also Spec. 126). The Examiner relies on White for
teaching that circuitry can be attached to a transducer head, and therefore be
considered “on-head circuitry” (Ans. 9, see Final Act. 5 and White, Fig. 3).
Appellants further argue that White teaches as desirable to process
signals away from the transducer head, thereby necessarily teaching away
from processing any signal, such as a “bit-detected reference signal” using
“on-head control system circuitry located on a transducer head” (App.
Br. 9).
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Application 12/571,959
We are also not persuaded by Appellants’ argument regarding
teaching away because the secondary reference does not discourage the
element taught by the primary reference (Ans. 9). As explained in DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009):
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006)). A reference does not
teach away, however, if it merely expresses a general
preference for an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Appellants further argue that the combination would modify the
principle of operation of White because White will no longer require
conditioning of signals as there is no communication of signals in an off-
head circuitry (App Br. 9—10).
We do not agree with Appellants’ argument. We agree with the
Examiner’s finding that it is Sembra that is modified, not White, and by
placing the control circuitry on the head would not modify the principle of
operation of Semba, just change the location of the controller (Ans. 10).
Appellants further argue that the omission of an element and retention
of its function is an indicia of non-obviousness, and, thus, by providing the
control circuitry on the transducer head, the invention claimed in claim 1
allows operation of the transducer head while omitting use of any
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conditioning circuit as disclosed in White or any off head control circuit as
disclosed in Semba (App. Br. 9).
We do not agree with Appellants’ argument. We agree with the
Examiner’s finding that the control circuit, is not omitted, but rather White is
relied upon to teach the existence of “on-head circuitry” (Ans. 11). The
Examiner does not rely on the particular type of the circuit, which is signal
conditioning, but rather on White’s broader teaching of attaching circuitry
on the head transducer as taught by White.
Appellants separately argue claim 22, stating that Semba merely
teaches a reader but does not teach an on-head bit detector and a read sensor
located on the transducer head (App. Br. 13).
We are not persuaded by Appellants’ argument. The Examiner finds,
and we agree, Semba teaches a read sensor configured to transmit incoming
data bits read off the device to off-head electronics (Fig. 4 illustrates that the
element 100 is a bit detector and a read sensor that transmit read bits to off
head electronics such as pre-amp 105 or decoder 110) (see Final Act. 8, Ans.
10). Furthermore, the combination of Sembra and White teaches on head
circuitry that would include the bit detector and the read sensor (see supra).
Accordingly, we affirm the Examiner’s rejection of claim 1 and for
the same reasons the Examiner’s rejections of 2—21 and 23. Furthermore we
affirm the Examiner’s rejection of claim 22 for the reasons stated above.
CONCLUSION
The Examiner did not err in finding that combination of Semba and
White teaches or suggests the limitation of “on-head control system circuitry
located on a transducer head and configured to synchronize a clock signal,”
as recited in claim 1.
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DECISION
For the above reasons, we affirm the Examiner’s decision to reject
claims 1—23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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