Ex parte Haruyama

Board of Patent Appeals and Interferences

Mar 13, 2000

08572195 (B.P.A.I. Mar. 13, 2000)

1
Paper No. 39
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HIROYUKI HARUYAMA
______________
Appeal No. 1998-0446
Application 08/572,195
_______________
HEARD: February 24, 2000
_______________
Before KRASS, JERRY SMITH and GROSS, 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 rejection of claims 1 and 3-13, which constitute
all the claims remaining in the application. An amendment after
final rejection was filed on February 11, 1997 and was entered by
the examiner.
Appeal No. 1998-0446
Application 08/572,195
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The disclosed invention pertains to the field of magnetic
disk drives. More particularly, the invention relates to the
placement of a dust filter in a specific location with respect to
the magnetic heads, the arms and the head drive means of the
magnetic disk drive.
Representative claim 1 is reproduced as follows:
1. A magnetic disk drive comprising:
a plurality of magnetic disks mounted on a spindle at
equally spaced locations on an axis of said spindle and driven to
spin by said spindle;
a plurality of magnetic heads each facing a respective
magnetic disk for selectively writing or reading data in or out
of said magnetic disk, said plurality of magnetic heads each
being caused to float a predetermined distance away from said
respective magnetic disk by a stream of air generated by relative
movement of said magnetic head and said magnetic disk;
a plurality of arms each supporting a respective magnetic
head;
a plurality of head drive means including a pivot, each for
driving a respective one of said plurality of arms in a rotary
motion about said pivot, said plurality of magnetic disks each
spinning in a direction such that a stream of air generated at a
side adjoining an end of each magnetic head moves from its
respective magnetic head, past its respective arm, and toward its
respective head drive means, in that order; and
at least one filter disposed proximate to a respective said
magnetic disk on a path along which the stream of air flows after
being directed by said arms and head drive means past the pivot
of said head drive means without being directed around the head
drive means.
The examiner relies on the following references:
Appeal No. 1998-0446
Application 08/572,195
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Edwards et al. (Edwards) 5,270,887 Dec. 14, 1993
(filed Dec. 04, 1991)
Ebihara et al. (Ebihara) 63-157389 June 30, 1988
(Japan)
Yokoyama et al. (Yokoyama) 4-285787 Oct. 09, 1992
(Japan)
Claims 1 and 3-13 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Edwards in view of
Yokoyama and Ebihara.
Rather than repeat the arguments of appellant 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 rejection advanced by the examiner and the evidence of
obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
Appeal No. 1998-0446
Application 08/572,195
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in the art the obviousness of the invention as set forth in
claims 1 and 3-13. Accordingly, we reverse.
Appellant has 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 appellant has 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 the rejection
against independent claim 1 as representative of all the claims
on appeal.
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
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
Appeal No. 1998-0446
Application 08/572,195
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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
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
appellant have been considered in this decision. Arguments which
Appeal No. 1998-0446
Application 08/572,195
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appellant 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, independent claim 1, the
examiner cites Edwards as teaching a magnetic disk drive of the
type disclosed and claimed except that the air flow in Edwards
does not flow as recited in claim 1 and the dust filter in
Edwards is not located in the specific location recited in claim
1 [answer, pages 3-4]. The examiner cites Yokoyama and Ebihara
as teaching magnetic disk drives in which dust filters are
located at different positions from the dust filter of Edwards.
The examiner asserts that it would have been obvious to locate
Edwards’ filter in the manner recited in claim 1 based on the
teachings of Yokoyama and Ebihara [id., page 4].
Appellant argues that it would not have been obvious to
combine the teachings of the applied references because the air
flow path generated in Yokoyama and Ebihara cannot occur in
Edwards so there would be no motivation to locate a dust filter
in Edwards as suggested by either Yokoyama or Ebihara [brief,
pages 4-6]. Appellant also argues that even if it would have
been obvious to combine the teachings of Edwards with Yokoyama
and Ebihara, there would still be no teaching of placing the
filter on a path along which the stream of air flows after being
Appeal No. 1998-0446
Application 08/572,195
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directed by said arms and head drive means past the pivot of the
head drive means as recited in claim 1 [id., pages 6-7]. We
agree with the position argued by appellant.
The magnetic disk drives of Edwards, Yokoyama and Ebihara
have dust filters located where the air flows inside the
respective disk drives. Claim 1 recites a location for the
filter which would not be within the air flow of the Edwards disk
drive. We agree with appellant that there would be no motivation
to modify the location of the filter in Edwards based on Yokoyama
or Ebihara because there would be no expectation of collecting
any dust in the claimed location. The examiner’s position
essentially requires that the disk drive of Edwards be redesigned
to be something different. Edwards specifically discloses,
however, that the “subassemblies of the HDA [head disk assembly]
are maintained in a precise relationship in the compact housing
by precisely machined mounting positions on base 10" [column 6,
lines 57-60]. Thus, Edwards teaches away from moving any of the
HDA components with respect to the housing. Any attempt to
modify the disk drive of Edwards to incorporate teachings of
Yokoyama or Ebihara would have to be based upon an improper
attempt to reconstruct appellant’s invention in hindsight.
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Application 08/572,195
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Since we agree with appellant that there is no motivation to
relocate the Edwards filter based on any teaching or suggestion
of Yokoyama or Ebihara, we do not sustain the examiner’s
rejection of
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Application 08/572,195
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claims 1 and 3-13 under 35 U.S.C. § 103. Therefore, the decision
of the examiner rejecting claims 1 and 3-13 is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
Anita Pellman Gross )
Administrative Patent Judge )
JS/cam
Appeal No. 1998-0446
Application 08/572,195
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