Ex Parte Heaton

Board of Patent Appeals and Interferences

Nov 18, 2002

09173497 (B.P.A.I. Nov. 18, 2002)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK W. HEATON
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Appeal No. 2001-2565
Application No. 09/173,497
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HEARD: Oct. 22, 2002
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Before FLEMING, DIXON, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 21-31. The appellant appeals therefrom
under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue concerns a hard disk drive ("HDD"). A HDD uses
magnetically coated platters to store data. Such platters are mounted in a "platter
stack" through a spindle; the platter stack is rotated by a servo motor. (Spec. at 2.) A
space is provided between each platter to allow a read/write head to be positioned on
each side of each platter so that data may be stored and retrieved. Each head is
Appeal No. 2001-2565 Page 2
Application No. 09/173,497
1Although another embodiment of the assembly uses an electromagnetic head
lifter, the claims on appeal specify the electrostatic head lifter.
mounted to an end of a suspension arm so that each it may be positioned as desired.
The opposite end of each suspension arm is coupled together at a voice coil motor.
(Id.)
When the HDD is powered-up, its read/write heads must transition from resting
on surfaces of the platters to "flying" on a cushion of air above the surfaces. (Id.) Upon
such power-up, however, the friction between each head and its corresponding platter
must be overcome. (Id. at 3.) Once the heads are flying, moreover, a drag torque is
created. The drag torque reduces the rotational speed of the platters and, hence, slows
use of the HDD. (Id.)
In contrast, the inventive read/write head assembly includes a read/write head
and an electrostatic head lifter.1 The electrostatic head lifter positions the read/write
head in an upward position, (id., fig. 5), or a downward position. (Id., fig. 6.) In the
upward position, a spring holds the head is above an associated platter. (Id. at 8.)
Because the head does not rest on the platter, no friction therebetween must be
overcome upon power-up. (Id. at 9.) In the downward position, charge plates lower the
head closer to the associated platter for reading or writing, which increases drag torque.
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Application No. 09/173,497
Drag torque is minimized, however, by lowering only "one or a limited number of
read/write heads [of an HDD] . . . at a given time." (Id. at 13.)
A further understanding of the invention can be achieved by reading the following
claim.
21. A read/write head assembly positioned on a suspension arm,
the read/write head assembly comprising:
a read/write head; and
an electrostatic head lifter operable to position the read/write head
with respect to the suspension arm in a first position and a second
position, wherein said head lifter includes a microelectromechanical
system to move said read/write head from said first position to said
second position and a mechanical system to move said read/write head
from said second position to said first position.
Claims 21-31 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S.
Patent No. 5,082,827 ("Barnes") in view of U.S. Patent No. 5,717,630 ("Koshikawa")
further in view of Denny K. Miu and Yu-Chong Tai ("Miu"), Silicon Micromachined
SCALED Technology, IEEE Transactions on Indus. Engineering, June 1995, at 234-39.
OPINION
Rather than reiterate the positions of the examiner or the appellant in toto, we
address the main point of contention therebetween. The examiner asserts, "[o]ne of
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Application No. 09/173,497
ordinary skill in the art . . . would have been motivated to provide the head assembly of
Barnes with charge plates as taught by Koshikawa et al in lieu of the superconductor
taught by Barnes since the charge plates do not require the disk drive to be cooled to
the operating temperature of a superconductor." (Examiner's Answer at 4.) The
appellant argues, "the Examiner has used the instant application as a template and has
employed impermissible hindsight in order to piece together the teachings of the prior
art in order to construct Appellant's invention." (Appeal Br. at 6.)
"[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants." In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). Furthermore, "prior art references . . . must
be read as a whole and consideration must be given where the references diverge and
teach away from the claimed invention." Akzo N.V. v. U.S. Intn'l Trade Comm'n, 808
F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986) (citing W.L. Gore & Assocs. v.
Garlock, 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983)).
Appeal No. 2001-2565 Page 5
Application No. 09/173,497
Here, Barnes' invention is a "superconductor magnetic suspension. . . ." Col. 1,
ll. 11-12. More specifically, "[a]n object of the invention is to provide a method and
apparatus for establishing a controlled flying distance between data transducing head
means and data disk means having a recording surface thereon, wherein the
controlled flying instance is maintained by operation of a superconductor/coil
pair." Col. 3, ll. 22-27 (emphasis added). Consequently the reference "provides a
superconductor/coil pair for each head of [a] disk stack." Id. at ll. 8-9. In summary, a
superconductor magnetic suspension is Barnes' sine qua non.
The examiner's proposal to eliminate Barnes' superconductor magnetic
suspension in favor of charge plates "would require . . . a change in the basic principles
under which," In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959), the
reference "was designed to operate." Id., 123 USPQ at 352. "Such a material
and radical modification of the prior art would be contrary to the teachings of the
primary reference patent . . . and could be made only with the assistance of [the]
appellant[s'] disclosure." In re Irmscher, 262 F.2d 85, ?, 120 USPQ 196, 198 (CCPA
1958).
Because the examiner's proposal to substitute charge plates for Barnes'
superconductor magnetic suspension would have required a change in the basic
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Application No. 09/173,497
principle under which the reference was designed to operate, viz., a superconductor
magnetic suspension, and would have been contrary to the teachings of Barnes, we are
not persuaded that an artisan would have been motivated to combine the references in
the proposed manner despite any desire to eliminate the need for cooling. Therefore,
we reverse the obviousness rejection of claims 21-31.
CONCLUSION
In summary, the rejection of claims 21-31 under § 103(a) is reversed.
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Application No. 09/173,497
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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