Ex Parte Harper et al

Patent Trial and Appeal Board

Jan 30, 2019

15215501 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/215,501 07/20/2016 David H. F. Harper
50548 7590 02/01/2019
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TUC1Pl96A/TUC920140010US2 3400
EXAMINER
YOUNG, WAYNER
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H.F. HARPER and HUGO E. ROTHUIZEN 1
Appeal2018-004923
Application 15/215,501
Technology Center 2600
Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is International Business
Machines Corporation. See App. Br. 2.
Appeal2018-004923
Application 15/215,501
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § I34(a) from a rejection of claims
1--4, 6-8, 11-14, 16-18, and 20. Claims 5, 9, 15, and 19 are indicated to be
allowable if rewritten in independent form. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse. 2
THE INVENTION
The claims are directed to a tape drive motor having reduced runtime
disturbances. Spec. ,r 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An apparatus, comprising:
a motor having:
a rotor;
a magnet; and
a damping layer positioned between the rotor and the
magnet;
wherein the damping layer is constructed of a material
characterized by converting kinetic energy into heat.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Landin
Saito
Cherubini
US 6,191,510 Bl
US 6,445,096 B 1
US 7,876,521 B2
Feb.20,2001
Sept. 03, 2002
Jan. 25, 2011
2 We refer to the Specification, filed July 20, 2016 ("Spec."); the Final
Office Action, mailed June 27, 2017 ("Final Act."); the Appeal Brief, filed
November 27, 2017 ("App. Br."); and the Examiner's Answer, mailed
February 8, 2018 ("Ans."). The Reply Brief filed April 9, 2018 is noted but
it is not cited herein.
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Application 15/215,501
REJECTIONS
The Examiner made the following rejections3:
Claims 1--4 and 6-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Saito and Landin. Final Act. 6-8.
Claim 10-14, 16-18, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Saito, Landin, and Cherubini. Final Act. 8-12.
APPELLANTS' CONTENTION
Appellants contend the Examiner failed to provide sufficient
reasoning for concluding it would have been obvious to form the unitary
rotor of the prior art instead as two pieces, i.e. a damping layer separate from
a rotor. App. Br. 6-9.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred in rejecting independent claims 1 and
11 under 35 U.S.C. § 103(a). We agree with Appellants' conclusions as to
this rejection of the claims.
The Examiner finds Saito discloses all of the elements of claim 1
including a rotor with a damping layer. Final Act. 6. "However, Saito ...
shows the damping layer to be integral with the rotor itself, and not two
separate pieces as claimed." Id. To address this distinction, the Examiner
concludes
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to choose to form the damping
layer and the rotor of two separate pieces, instead of the integral
3 The rejections of claims 1-14, 16-18, and 20 on grounds of nonstatutory
double patenting have been withdrawn. Ans. 2.
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Appeal2018-004923
Application 15/215,501
piece as shown in Saito et al., since it has been held that
constructing a formerly integral structure in various elements
involves only routine skill in the art.
Final Act. 6 (citing Nerwin v. Erlichman, 168 USPQ 177, 179 (PTO Bd. of
Int. 1969)).
Appellants argue the Examiner's reliance on Nerwin is insufficient as
lacking "persuasive articulated reasoning based on rational underpinning for
modifying the reference as proposed." App. Br. 7. In support of their
position Appellants cite to the decision in Ex parte John C. S. Koo, Appeal
2012-009263, 2014 WL 4925559 (Patent Tr. & App. Bd.) (non-precedential).
Appellants argue that, in that decision, the "Patent Trial and Appeal Board
found that the 'Examiner has not provided any findings that Keen
recognized a problem with the attachment points/fingers 112. Without
persuasive articulated reasoning based on rational underpinning for
modifying the reference as proposed, the Examiner's rejection appears to be
the result of hindsight analysis."' App. Br. 8 ( citing Koo at 5---6). The
Examiner responds, noting Koo is a non-precedential case directed to
different subject matter and a different fact situation. Ans. 4. According to
the Examiner, the necessary motivation for making the modification to the
reference is well and long established in case law and, in contrast,
Appellants have provided no reason prohibiting the modification. Id.
We agree with Appellants the Examiner erred because the record as a
whole does not support the Examiner's conclusion of obviousness. Put
another way, the evidence before us provides a reason for not making the
modification asserted by the Examiner, and we find this evidence more
persuasive than the Examiner's naked assertions based on case precedent but
lacking substantive reasoning. See Saito col 4, 11. 40-42. Although Ex Parte
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Application 15/215,501
Koo is not precedential and therefore not binding, for the reasons explained
below, we agree the Examiner erred by failing to provide a reason for
modifying the prior art in formulating the rejection.
Nerwin is not good legal authority for the proposition relied on by the
Examiner, i.e., that constructing a formerly integral structure in various
elements involves only routine skill in the art. See Ex Parte Kawano, 2013
WL 603839, at *4 (PTAB) (Nerwin does not establish that it is per se
obvious to separate a single component into two components). "The
examiner's reliance on and citation of Nerwin v. Erlichman, 168 USPQ 177,
179 (BPAI 1969), which according to the examiner held that 'constructing a
formerly integral structure in various elements involves only routine skill in
the art,' appears to us to be misplaced. We find no such 'holding' in Nerwin
v. Erlichman" Ex Parte Gruden, 1997 WL 1883962, at *3 (BPAI). 4
Although the predecessor to our reviewing court has found, under
somewhat analogous circumstances, that merely taking something that was
permanently attached and making it separable is obvious and could be
accomplished by anyone having ordinary skill, that case does not establish a
per se rule. In re Dulberg, 289 F.2d 522, 523 (CCPA 1961). In particular,
although Dulberg establishes there are situations in which it would have
been obvious to modify an integral part to be a separable part because to do
so is nothing more than an application of ordinary skill, it is important to
note that a factually supportable reason for making the particular
modification was still required. Id. at 523. In that case, the facts showed
4 See also MPEP § 2144: "When considering obviousness, Office personnel
are cautioned against treating any line of reasoning [ such as making
separable] as a per se rule." That is, such rationales should not be treated as
per se rules, but rather must be explained and shown to apply to the facts at
hand. Id.
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Application 15/215,501
there was a known desire to be able to gain access to the space covered by
the integrally connected cap to allow the remnant of the old lipstick to be
pushed out of the carrier. Id. In other words, even when a modification
simply requires changing an integral part to a separable part, Dulberg still
required a reason with a rational underpinning to explain why a skilled
artisan would have made that particular modification. The Examiner has not
satisfied this requirement.
Although the Examiner states, "it has been held that constructing a
formerly integral structure in various elements involves only routine skill in
the art" (Final Act 6 ( citing Nerwin 168 USPQ at 179), this does not explain
sufficiently why a skilled artisan would have selected and separated the rotor
of Saito into separate rotor and damping layer components and positioned
the damping layer between the separated rotor and magnet. To the contrary,
as argued by Appellants, Saito discloses that "the rotor as shown in FIGS. 1
and 2 (relied upon in the rejection) must be integrally formed in order to
'prevent[] the eccentricity accuracy from deteriorating due to accumulated
parts inaccuracies."' App. Br. 16 (citing Saito col 4, 11. 40-42). Thus, rather
than provide a reason for making the modification, the evidence before us
provides a reason for not making the modification asserted by the Examiner.
For the reason discussed above, the Examiner has not explained
sufficiently why it would have been desirable at the time of the invention to
segment the rotor and damping layer components from Saito' s device and
place the separate components into the claimed physical configuration.
Therefore, we do not sustain the Examiner's rejections of independent claims
1 and 11 or the rejections of dependent claims 2--4, 6-8, 12-14, 16-18, and
20.
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DECISION
We reverse the Examiner's decision to reject claims 1--4, 6-8, 11-14,
16-18, and 20 under 35 U.S.C. § 103(a).
REVERSED
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