Ex Parte Hartog et al

Board of Patent Appeals and Interferences

May 20, 2002

08964686 (B.P.A.I. May. 20, 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not written for publication and is not binding precedent of the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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRENT RAY DEN HARTOG, DENNIS LEONARD FOX,
JAMES ALOYSIUS HAGAN, JOHN CHEN SHEN
AND KANNIIMANGALAM V. VISWANATHAN
__________
Appeal No. 2000-1569
Application 08/964,686
___________
ON BRIEF
___________
Before THOMAS, JERRY SMITH and BLANKENSHIP, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1 and 25-31.
Claims 2-24 had been cancelled. Claims 32-47 stand withdrawn
from consideration as being directed to a nonelected invention.
An amendment after final rejection was filed on October 25, 1999,
and was entered by the examiner. This amendment cancelled claims
27-29. Therefore, this appeal is directed to the rejection of
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Application 08/964,686

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claims 1, 25, 26, 30 and 31.
The disclosed invention pertains to a method for
manufacturing a magnetic disk drive in which the magnetic disks
have improved surface smoothness. More particularly, the
invention is based on the selection of a chemical attacking agent
for softening a portion of the substrate material and the
selection of colloidal particles for removing the softened
portion of the substrate material.
Representative claim 1 is reproduced as follows:
1. A method for manufacturing a magnetic disk drive,
said disk drive having at least one disk, said at least one disk
being comprised of substrate material and magnetic material, said
method comprising the steps of:
attacking said substrate material through the use of a
chemical attacking agent, said chemical attacking agent reacting
with said substrate material to soften a portion of said
substrate material; and
removing said portion of said substrate material by using
colloidal particles such that said substrate material has a
surface roughness of less than 4A, said surface roughness being
calculated using an atomic force microscope.
The examiner relies on the following references:
Rea 4,475,981 Oct. 9, 1984
Kijima et al. (Kijima) 4,833,001 May 23, 1989
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Application 08/964,686

1 This rejection should have been applied against dependent
claims 25 and 26 as well.
3
Claims 1, 30 and 31 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which does not
enable one skilled in the art to make and/or use the invention.1
Claims 1, 25, 26, 30 and 31 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter which appellants regard as
their invention. Finally, claims 1, 25, 26, 30 and 31 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers either Kijima taken alone or Rea taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
obviousness rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner’s
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rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the specification does not provide enablement of the
claimed invention as required by the first paragraph of 35 U.S.C.
§ 112. We are also of the view that the appealed claims comply
with the second paragraph of 35 U.S.C. § 112. Finally, we are of
the view that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth in
claims 1, 25, 26, 30 and 31. Accordingly, we affirm based on the
rejection for lack of enablement.
Appellants have indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 4]. Consistent with this indication
appellants have made no separate arguments with respect to any of
the claims on appeal. Accordingly, all the claims before us will
stand or fall together. Note In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991, 217 USPQ 1, 3 (Fed. Cir. 1983). Therefore, we will consider
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the rejection against independent claim 1 as representative of
all the claims on appeal.
We consider first the rejection of all appealed claims
(see footnote 1) based on the enablement requirement of 35 U.S.C.
§ 112. With respect to representative claim 1, the examiner
finds that the specification does not provide support for the
phrase “a surface roughness of less than 4A[ngstroms].” More
specifically, the examiner finds that the claim covers every
measurement of smoothness between 0 Angstroms and 4 Angstroms,
but the examiner notes that appellants’ specification does not
enable one skilled in the art to make and use a disk having a
surface roughness approaching zero Angstroms [answer, page 3].
Although appellants’ appeal brief recognized that the
question posed was whether the written description was enabling
[brief, page 4], appellants then proceeded to address the
question of whether a person skilled in the art would understand
the claimed invention [id., page 4]. Appellants then simply note
that the artisan would understand that the notation “A” stands
for Angstroms.
The examiner responds that appellants’ argument in the
brief is not germane to the rejection. It is clear from the
examiner’s response that the enablement rejection is primarily
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based on the fact that the scope of the claimed invention
includes embodiments (disks having a surface roughness near zero
Angstroms) which the artisan cannot make based on appellants’
specification [answer, pages 7-8].
We agree with the position argued by the examiner. As we
noted above, the enablement question is primarily concerned with
the scope of the appealed claims including embodiments which have
not been adequately disclosed. The examiner bears the initial
burden of setting forth a reasonable explanation as to why the
scope of protection provided by the claims is thought to be not
adequately enabled by the description of the invention provided
in the specification. If that burden is met by the examiner, the
burden then shifts to the applicant to provide proof that the
specification is indeed enabling. In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Thus, the
question before us is whether claim 1 includes within its scope
subject matter which has not been adequately disclosed.
Appellants note in the background portion of the
specification that the main problem facing manufacturers of
magnetic disk drives is the need to make the disks as smooth as
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possible. Appellants provide an example of prior art techniques
in which an average surface roughness of about 19 Angstroms is
achieved. Appellants note that the proper selection of materials
as disclosed in their specification can achieve an average
surface roughness of about 1.58 Angstroms. Thus, appellants’
specification suggests that their invention has enabled them to
reduce average surface roughness of a disk from 19 Angstroms to
1.58 Angstroms. Since the art is clearly trying to achieve the
theoretical limit of an average surface roughness of zero
Angstroms, one must conclude that this theoretical limit has not
been achieved by appellants or by anyone else. The question is
whether appellants should be given a patent which covers an
average surface roughness of zero Angstroms when there is no
evidence that such an embodiment has been attained by appellants
or anyone else. It seems inappropriate to give appellants a
patent on embodiments which probably have not been attained yet.
In view of the above comments, we find that the examiner
has made a reasonable explanation of why the scope of protection
sought by the claims is not adequately set forth in appellants’
specification. The burden, therefore, shifts to appellants to
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provide proof that the specification is enabling. As noted
above, appellants’ argument in the brief does not even address
the question of enablement as raised by the examiner. Thus,
appellants have failed to meet the burden placed on them to
respond to the examiner’s prima facie case of lack of enablement.
Accordingly, we sustain the examiner’s rejection of the appealed
claims based on lack of enablement.
We now consider the rejection of all appealed claims as
being indefinite under the second paragraph of 35 U.S.C. § 112.
With respect to representative claim 1, the examiner finds that
the phrase “less than 4A” is indefinite because it is not clear
what “4A” is referencing [answer, pages 3-4]. Appellants argue
that the skilled artisan would understand that the notation A is
used as an abbreviation for the unit of measure known as the
Angstrom [brief, pages 5-6]. The examiner responds that whether
a skilled artisan is able to look to the specification for an
understanding of the claimed invention is not germane. The
examiner insists that the letter “A” in the claims is indefinite
[answer, pages 8-9].
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The examiner’s position is contrary to the law. The
general rule is that a claim must set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the disclosure as it would be
by the artisan. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). Acceptability of the claim language depends on
whether one of ordinary skill in the art would understand what is
claimed in light of the specification. Seattle Box Co., v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ
568, 574 (Fed. Cir. 1984). Based on this case law, the artisan
would clearly understand that the letter “A” in claims 1, 30 and
31 is an abbreviation for Angstroms. Therefore, we do not
sustain the examiner’s rejection of the appealed claims based on
indefiniteness.
We now consider the rejection of all the appealed claims
under 35 U.S.C. § 103 based on the teachings of Kijima or Rea.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227
USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
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arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
With respect to representative claim 1, the examiner
finds that Kijima and Rea each teaches a magnetic disk which uses
a chemical attacking agent for softening the substrate material
and colloidal particles for removing the softened substrate
material. The examiner notes that Kijima and Rea are silent as
to calculating the surface roughness of the substrate. The
examiner finds that it would have been obvious to the artisan to
calculate the surface roughness in Kijima or Rea with an atomic
force microscope as taught in the art [answer, pages 4-7].
Appellants argue that the examiner’s rejection fails to
account for the recitation in all claims that the substrate
material has a surface roughness of less than 4, 3, or 2
Angstroms [brief, page 7]. The examiner responds that the
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applied prior art as modified discloses each and every step as
required by the claims [answer, page 10].
The examiner’s rejection fails because the examiner has
ignored certain limitations recited in the claims. The
examiner’s position that the claimed steps are met by the
disclosure of the applied prior art is wrong. The step recited
in claim 1, for example, includes the feature “such that said
substrate material has a surface roughness of less than 4A.”
Thus, it is not enough for prior art purposes to simply find the
step of “removing said portion of said substrate material”
without regard to the size limitation recited in claim 1. Since
the examiner has ignored features of the claimed invention, the
examiner has failed to establish a prima facie case of
obviousness. Therefore, we do not sustain the examiner’s
rejection of claims 1, 25, 26, 30 and 31 under 35 U.S.C. § 103.
In summary, we have sustained the rejection of the
appealed claims under the first paragraph of 35 U.S.C. § 112, but
we have not sustained the rejection under the second paragraph of
35 U.S.C. § 112 or the rejections under 35 U.S.C. § 103.
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Therefore, the decision of the examiner rejecting claims
1, 25, 26, 30 and 31 is affirmed.
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 )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2000-1569
Application 08/964,686

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STEVEN W. ROTH
DEPT 917 IBM CORPORATION
3605 HIGHWAY 52 N
ROCHESTER, MN 55901-7829
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