Ex parte Harwood et al.

Board of Patent Appeals and Interferences

Sep 7, 1999

08053174 (B.P.A.I. Sep. 7, 1999)

Application for patent filed April 26, 1993.1
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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD F. HARWOOD,
FERDINAND HENDRIKS and CHRISTOPHER G. KELLER
_____________
Appeal No. 1996-1309
Application 08/053,1741
______________
ON BRIEF
_______________
Before KRASS, FLEMING and HECKER, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1996-1309
Application 08/053,174
2
This is a decision on appeal from the final rejec-
tion of claims 21 through 30, the only claims pending in the
application. Claims 1 through 20 have been cancelled.
The invention relates to direct access type magnetic
storage systems including rigid disk drive systems and contact
type read/record systems (e.g., floppy or diskette systems).
More particularly, the invention relates to apparatus for
increasing fly height between a read head or slider and the
recording media when positioned over a modified zone on the
surface of the recording media.
Independent claim 21 is reproduced as follows:
21. A direct access storage system comprising:
a disk drive having a first annular surface adapted
for rotation;
a transducer head mounted to a slider having an air
bearing surface facing said first annular surface wherein lift
is generated upon relative movement of said slider and said
first annular surface;
a data storage region within said first annular
surface, said data storage region having a substantially
smooth surface wherein a selected amount of lift is generated
upon relative movement of said slider and said data storage
region; and
Appeal No. 1996-1309
Application 08/053,174
3
an idling region within said first annular surface,
said idling region having a plurality of depressions therein
wherein an amount of lift greater than said selected amount of
lift is generated upon relative movement of said slider and
said idling region, resulting in a greater separation between
said transducer head and said first annular surface within
said idling region.
The Examiner relies on the following references:
Ono et al. (Ono) 4,366,993 Jan. 4,
1983
Doerner et al. (Doerner) 5,302,434 Apr. 12,
1994
(filed Aug. 7,
1992)

Kato 1-98118 Apr. 17,
1989
(Japanese Kokai)
Samoto 4-387716 Feb. 7,
1992
(Japanese Kokai)
Claim 21 stands rejected under 35 U.S.C. § 102 as
being anticipated by Kato. Claims 22 through 26 and 28 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Kato
and Samoto. Claim 27 stands rejected under 35 U.S.C. § 103 as
being unpatent-
Appeal No. 1996-1309
Application 08/053,174
Appellants filed an appeal brief on February 24, 1995. 2
Appellants filed a reply brief on July 10, 1995. On August 7,
1995, the Examiner mailed a communication stating that the
reply brief has been entered and considered but no further
response by the Examiner is deemed necessary.
The Examiner filed an Examiner's answer on May 26, 1995. 3
The Examiner filed a supplemental Examiner's answer on
November 17, 1998.
4
able over Kato and Ono. On page 6 of the Examiner's answer,
the Examiner sets forth a new ground of rejection in which
claims 29 and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kato and Doerner.
Rather than repeat the arguments of Appellants or
the Examiner, we make reference to the briefs and answers for2 3
the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claim 21 is properly rejected
under 35 U.S.C. § 102 and that claims 22, 23 and 26 are prop-
erly rejected under 35 U.S.C. § 103. Thus, we will sustain
Appeal No. 1996-1309
Application 08/053,174
5
the rejection of these claims but we will reverse the rejec-
tion of the remaining claims on appeal for the reasons set
forth infra.
Turning first to the rejection of claim 21 under
35 U.S.C. § 102, Appellants point out on page 6 of the brief
that claim 21 expressly sets forth a disk drive which includes
a data storage region having a substantially smooth surface
"when a selected amount of lift is generated upon relative
movement of said slider in said data storage region . . ." and
an idling region having a plurality of depressions therein
"wherein an amount of lift greater than the selected amount of
lift is generated upon relative movement of said slider in
said idling region, resulting in a greater separation between
said transducer head and said first annular surface within
said idling region."
Appellants argue on page 7 that Kato alone does not anticipate
that the amount of lift generated within the data storage
region is less than the amount of lift generated in the idle
region.
Appeal No. 1996-1309
Application 08/053,174
6
It is axiomatic that anticipation of a claim under
§ 102 can be found only if the prior art reference discloses
every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established only when a single prior art reference
discloses, expressly or under principles of inherency, each
and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228
(1994), citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465
U.S. 1026 (1984). The prior art disclosure need not be
expressed in order to anticipate. Standard Havens Prods.,
Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369, 21 USPQ2d
1321, 1328 (Fed. Cir.), cert. denied, 506 U.S. 817 (1992).
We note that Appellants' claim 21 recites a direct
access storage system. On page 3 of the Examiner's answer,
Appeal No. 1996-1309
Application 08/053,174
7
the Examiner has shown that Kato teaches all the structural
limitations recited in Appellants' claim 21. Our reviewing
court states:
[I]t is elementary that the mere recitation
of a newly discovered function or property,
inherently possessed by things in the prior
art, does not cause a claim drawn to those
things to distinguish over the prior art.
Additionally, where the Patent Office has
reason to believe that a functional
limitation asserted to be critical for
establishing novelty in the claimed subject
matter may, in fact, be an inherent
characteristic of the prior art, it
possesses the authority to require the
applicant to prove that the subject matter
shown to be in the prior art does not
possess the characteristic relied on.
In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA
1971),
citing In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,
229
(CCPA 1971).
Appellants' argument that Kato does not expressly
teach that the amount of lift generated within the data
storage region is less than the amount of lift generated
within the idle region is an inherent property possessed by
the structure set forth in Kato. We find that the Examiner
Appeal No. 1996-1309
Application 08/053,174
8
has shown that there are reasons to believe that this
functional limitation asserted in claim 21 is an inherent
characteristic of Kato. Therefore, we find that it is the
burden of the Appellants to come forward with evidence to
prove that the subject matter shown in the prior art does not
possess the characteristic relied on by the Examiner.
Therefore,
we will sustain the Examiner's rejection of claim 21 as being
anticipated by Kato.
Claims 22 through 26 and 28 stand rejected under
35 U.S.C. § 103 as being unpatentable over Kato and Samoto.
We note that Appellants have indicated on page 5 of
the brief that claims 21 through 23 stand or fall together.
We note that Appellants have not argued the claims separately.
37 CFR § 1.192(c)(7) (July 1, 1995) as amended at 60 Fed. Reg.
14518 (March 17, 1995), which was controlling at the time of
Appellants' filing the brief, states:
Appeal No. 1996-1309
Application 08/053,174
9
For each ground of rejection which
appellant contests and which applies to a
group of two or more claims, the Board
shall select a single claim from the group
and shall decide the appeal as to the
ground of rejection on the basis of that
claim alone unless a statement is included
that the claims of the group do not stand
or fall together and, in the argument under
paragraph (c)(8) of this section, appellant
explains why the claims of the group are
believed to be separately patentable.
Merely pointing out differences in what the
claims cover is not an argument as to why
the claims are separately patentable.
Appellants have provided a statement that the claims stand or
fall together. We will, thereby, consider the Appellants'
claims as standing or falling together as a group.
On page 8 of the brief, Appellants argue that
nowhere within Samoto is there the slightest suggestion of the
relation-
ship between lift generated within a data storage region and
the lift generated in the idle region in the manner which is
expressly set forth within claims 21 through 23. We have
shown above that Kato teaches all the structure as recited in
Appeal No. 1996-1309
Application 08/053,174
10
Appellants' claim 21 and that it was reasonable for the
Examiner to believe that the lift generated within the data
storage region is less than the lift generated within the idle
region. Therefore, we will sustain the Examiner's rejection
of claims 22 and 23 as being unpatentable over Kato and
Samoto.
Appellants argue on page 8 of the brief that claim
24 recites the provision of a plurality of channels grouped on
a radially inward portion of the disk wherein each channel has
a selected depth which is greater than the depth of an
adjoining channel which is radially outward from the channel
wherein a transition region is provided between the outer
region and the storage region. Appellants argue that neither
Kato nor Samoto teaches or suggests this above limitation as
set forth within claim 24.
Appellants also argue that claim 25 recites the
provisions of a plurality of channels grouped on a radially
inward portion of the annular surface wherein each channel has
a selected width and wherein the width of a particular channel
Appeal No. 1996-1309
Application 08/053,174
11
is greater than the width of an adjoining channel and is
radially
outward therefrom, providing a transition region between the
idle region and the data storage region. Appellants argue
that neither Kato nor Samoto teaches or suggests the above
limitation as recited in Appellants' claim 25.
On page 5 of the Examiner's answer, the Examiner
states that neither Kato nor Samoto shows the specific
arrangement of grooves becoming either deeper or wider as the
grooves approach the inside of the disk. The Examiner argues
that this feature would be a matter of routine experimentation
and optimization for those skilled in the art.
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
Appeal No. 1996-1309
Application 08/053,174
12
determining obviousness, the claimed invention should be
considered as a whole; there is
no legally recognizable '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, 519
U.S. 822 (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). "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 1087, 37 USPQ2d
at 1239, citing W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ
at 311, 312-313.
We fail to find any teaching or suggestion in either
Kato or Samoto that would have led those skilled in the art to
provide a plurality of channels that are grouped on a radially
inward portion of said annular surface and wherein the
channels have a selected depth which is greater than the depth
of the adjoining channel which is radially outward therefrom
Appeal No. 1996-1309
Application 08/053,174
13
wherein a transition region between the idling region and the
data storage region is provided as recited in Appellants'
claims 24 and 25. Therefore, we will not sustain the
Examiner's rejection of claims 24 and 25 under 35 U.S.C. §
103.
On page 9 of the brief, Appellants argue that
neither Samoto nor Kato shows or suggests the provision of
rails which
generate an increase in pressure as set forth within
Appellants' claim 26. On page 9 of the Examiner's answer, the
Examiner maintains that this feature is shown by Samoto in
Figure 1 as rails 4a. We agree and thereby affirm the
Examiner's decision to reject claim 26 under 35 U.S.C. § 103.

Appellants argue that claim 28 recites the provision
of a plurality of indentations which run substantially
transverse to the direction of rotation of the first annular
surface. Appellants argue that neither Kato nor Samoto
teaches or suggests this limitation.
Appeal No. 1996-1309
Application 08/053,174
14
On page 9 of the answer, the Examiner argues that
Figure 5 of Samoto shows a conventional disk wherein abrasive
tape was used to create a rough surface so that the slider
would not stick to the disk surface. The Examiner argues that
Samoto shows a plurality of indentations caused by the
abrasive tape which would run in any direction based on the
indentation's random placement by the abrasive tape.
We note that claim 28 recites not a random placement
of indentations but a particular geometry of the indentations.
In particular, claim 28 recites said plurality of depressions
comprising a plurality of indentations running substantially
transverse to the direction of rotation of said first annular
surface. We fail to find that the random placement of the
indentations by the abrasive tape as taught by Samoto meets
this limitation.
Claim 27 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Kato and Ono. Appellants argue that
Ono does not suggest Appellants' claimed limitation of a
Appeal No. 1996-1309
Application 08/053,174
15
plurality of depressions comprising a plurality of
indentations arranged in a herringbone pattern as recited in
Appellants' claim 27. In our review of Ono, we find that Ono
teaches a bearing which utilizes pressurized gas applied to a
plurality of annular space ports to support rotation of a
rotary shaft. We agree that Ono teaches the pattern is a
herringbone pattern, however, we fail to find that this
pattern in any way is adjusted to be used in Kato's reference.
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). Therefore, we fail to
find
any reason that is suggested in the prior art to modify Kato
to provide a herringbone pattern as recited in Appellants'
claim 27.
Appeal No. 1996-1309
Application 08/053,174
16
Claims 29 and 30 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kato and Doerner. In the
reply brief, Appellants argue that Doerner's teaching in
column 1, lines 58 through 61, that the disk must be extremely
smooth is a teaching away from combining the teachings of
Doerner with Kato. We agree. We fail to find any reason to
modify Kato with Doerner's teaching when Doerner is expressly
teaching that the disk surfaces must be extremely smooth,
which is counter to Kato's teaching to increase the roughness
of a portion of the disk.
In view of the foregoing, the decision of the
Examiner rejecting claim 21 under 35 U.S.C. § 102 and claims
22, 23 and 26 under 35 U.S.C. § 103 is affirmed; however, the
decision of the Examiner rejecting claims 24, 25 and 27
through 30 under 35 U.S.C. § 103 is reversed.
Appeal No. 1996-1309
Application 08/053,174
17
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
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 1996-1309
Application 08/053,174
18
MRF:psb
Appeal No. 1996-1309
Application 08/053,174
19
Andrew J. Dillon
Felsman, Bradley, Gunter & Dillon LLP
Suite 350
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Austin, TX 78731