Ex Parte Hong

Patent Trial and Appeal Board

Jan 7, 2013

10747122 (P.T.A.B. Jan. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/747,122 12/30/2003 Kyung-ho Hong 1793.1028 4959
21171 7590 01/07/2013
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SNIEZEK, ANDREW L
ART UNIT PAPER NUMBER
2686
MAIL DATE DELIVERY MODE
01/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KYUNG-HO HONG
____________________

Appeal 2010-009509
Application 10/747,122
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
The Examiner finally rejected claims 1, 3-6, 15, 16, 19, 20, and 24
(Final Rej. 1-4; App. Br. 4), and Appellant appeals under 35 U.S.C. § 134(a)
from only the rejections of claims 1, 3-6, 20, and 24 (App. Br. 4). Claims 7-
9, 17, 18, 22, and 23 have been objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims;
and claims 10-16 and 19 have been allowed (Final Rej. 5). Claims 15, 16,
and 19 have neither been appealed nor argued by Appellant (see generally
App. Br. 13-24; Reply 4-9). The Examiner has withdrawn the only rejection
as to claims 15, 16, and 19 (under § 112, second paragraph, see Ans. 3).
Accordingly, we confine our decision to claims 1, 3-6, 20, and 24. See Ex
parte Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential).
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claims
Exemplary independent claims 1 and 24 under appeal, with emphases
added, read as follows:
1. A method of making and updating an optimal unlatch profile
for a hard disk drive (HDD) having a flash ROM (FROM) for storing
and updating an unlatch profile and a buffer for temporarily storing
the unlatch profile, the method comprising:
making an optimal unlatch profile according to the
characteristics of the HDD by measuring a feed back latch force of an
actuator by performing a predetermined test on the HDD and creating
the optimal unlatch profile based on the measured feed back latch
force; and
updating the unlatch profile by downloading the optimal
unlatch profile to the FROM and updating the FROM.

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24. A method of making and updating an optimal unlatch profile
for a hard disk drive (HDD) having a flash ROM (FROM) for storing
and updating an unlatch profile and a buffer for temporarily storing
the unlatch profile, the method comprising:
making an optimal unlatch profile according to the
characteristics of the HDD by measuring a feed back latch force of an
actuator through performing at least one of a function test and a burn-
in test on the HDD and creating the optimal unlatch profile based on
the measured feed back latch force; and
updating the unlatch profile by downloading the optimal
unlatch profile to the FROM and updating the FROM.

Examiner’s Rejections
(1) The Examiner rejected claims 1, 3, 15, 16, 19, 20, and 24 under 35
U.S.C. § 112, second paragraph (Final Rej. 2). Because the Examiner has
withdrawn the § 112 rejection (Ans. 3), we will not further address these
rejections in our Decision.
(2) The Examiner rejected claims 1, 3, 20, and 24 as being
unpatentable under 35 U.S.C. § 103(a) over Appellant’s Admitted Prior Art
found at Figures 1-4 and paragraphs [0003]-[0025] of the Specification,
(hereinafter, “AAPA”), and Moon (U.S. Patent Application Publication No. :
US 2002/0018313 A1). Ans. 4-6.
(3) The Examiner rejected claims 4 and 5 as being unpatentable under
35 U.S.C. § 103(a) over the combination of AAPA, Moon, and Yun (U.S.
Patent No: US 6,175,456 B1). Ans. 6.
(4) The Examiner rejected claims 4 and 6 as being unpatentable under
35 U.S.C. § 103(a) over the combination of AAPA, Moon, and DuLaney
(U.S. Patent No: US 6,775,090 B2). Ans.7.

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Examiner’s Findings
With regard to claim 1, the Examiner determines that the recited
“measuring a feedback latch force of an actuator” (claim1) is met by Moon’s
monitoring the back EMF voltage (Ans. 5 and 8-10 citing ¶¶ [0020]-
[0031]).
With regard to claim 24, the Examiner determines that Moon
performs the recited “measuring a feedback latch force of an actuator” by
monitoring the back EMF voltage (Ans. 5), and explains that movement only
occurs after large enough force to overcome the latch state and measuring
back EMF voltage effectively measures feedback latch force (Ans. 8 citing
¶¶ [0020]-[0031]).
Appellant’s Contentions
(1) Appellant contends (App. Br. 16-22; Reply Br. 4-8) that the
Examiner erred in rejecting claims 1, 3, 20, and 24 under 35 U.S.C. § 103(a)
over the combination of AAPA and Moon because:
(a) with regard to claims 1 and 20, the Examiner failed to
establish that Moon’s back EMF is directly related to the unlatch force
needed to move the voice coil motor (VCM) actuator (App. Br. 19);
(b) the Examiner fails to show where Moon suggests measuring
back EMF using a predetermined test as recited in claim 1, and as
similarly recited in claim 20 (App. Br. 19; Reply Br. 5);
(c) Moon fails to perform any test to determine an optimal
unlatch profile, or to describe such a test (Reply Br. 4);
(e) Moon does not make an optimal unlatch profile (Reply Br.
5-6);
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(e) Moon teaches away from Appellant’s invention and there is
no motivation to combine AAPA and Moon other than impermissible
hindsight (App. Br. 20-22; Reply Br. 6-8);
(f) paragraph [0037] of the Specification fails to describe
measuring a feedback latch force of an actuator, as recited in claim 24
(App. Br. 17-18); and
(g) Moon’s paragraph [0022] monitors back EMF, and not a
feedback latch profile (App. Br. 17-18).
(2) Appellant also contends (App. Br. 22-23; Reply Br.8-9) that the
Examiner erred in rejecting claims 4, 5, and 6 under 35 U.S.C. § 103(a)
because the Examiner has failed to present a prima facie case of
obviousness, or to provide any rationale for combining AAPA, Moon, and
Yun (as to claims 4 and 5), and/or AAPA, Moon, and DuLaney (as to claims
5 and 6).
Issues on Appeal
Based on Appellant’s arguments in the briefs, the following issues are
presented on appeal:
Obviousness Rejection of Claims 1, 3, 20, and 24
(1) Did the Examiner err in rejecting claims 1, 3, 20, and 24 as being
obvious because the combination of AAPA and Moon fails to teach or
suggest the limitations set forth in claims 1 3, 20, and 24?
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Obviousness Rejection of Claims 4 and 5
(2) Did the Examiner err in rejecting claims 4 and 5 over the
combination of AAPA, Moon, and Yun because the Examiner failed to set
forth articulated reasoning with a rational underpinning to support the
determination of obviousness?
Obviousness Rejection of Claims 5 and 6
(3) Did the Examiner err in rejecting claims 5 and 6 over the
combination of AAPA, Moon, and DuLaney because the Examiner failed to
set forth articulated reasoning with a rational underpinning to support the
determination of obviousness?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 15-24) and the Reply Brief (Reply
Br. 4-9) that the Examiner has erred.
We disagree with Appellant’s conclusions. With regard to claims 1,
3-6, 20, and 24 before us on appeal, we adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (see Ans. 4-10). We concur
with the conclusions reached by the Examiner, and highlight and emphasize
certain portions of the Examiner’s findings and Appellant’s arguments as
follows.
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First Issue: Claims 1, 3, 20, and 24
Moon discloses a VCM torque constant Kt which is related to the
amount of force needed to unlatch the VCM (¶ [0004]). Moon also discloses
that the profile or characteristics of Kt may need to be changed as the
operational environment changes (¶ [0004]), and that amplitude and pulse-
width values used in prior unlatch operations are stored and serve to as
initial values (i.e., an unlatch profile) (¶ [0034]). Appellant admits that
“[t]he function test or the burn-in test for making the optimal profile is well
known to those skilled in the art” (Spec. ¶ [0037]).
AAPA discloses a “conventional unlatch algorithm used in the
convention HDD [shown in Figure 1 and described by Appellant at
paragraph [0004] . . . that is applied to the VCM 20 to unlatch the head from
the parking region to the data region” (Spec. ¶ [0024]). The unlatch
operation is performed in accordance with the predetermined unlatch profile,
the profile having been stored in the flash read only memory (FROM) 12
(Spec. ¶ [0024]).
We agree with the Examiner (Ans. 4-6) that it would have been
obvious to combine AAPA’s unlatch profile and update it to obtain an
optimal unlatch profile to take into account operating characteristics of the
disc drive and/or VCM as taught by Moon, “to realize a proper unlatch of
the actuator” in the event of environmental changes (Ans. 5). We also agree
with the Examiner (Ans. 4-10) that the combination of AAPA and Moon
teach or suggest all of the limitations of claims 1, 3, 20, and 24.
Appellant’s arguments (App. Br. 19; Reply Br. 4-6) that Moon fails to
perform any “test” to determine an optimal unlatch profile is not persuasive
in view of (i) Appellant’s admission that such tests are well known (Spec.
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¶ [0037]), (ii) Moon’s disclosure that unlatch profiles be modified from
initial stored values in order to account for environmental changes
(¶¶ [0004] and [0034]), (iii) Moon’s failure to disparage or discourage
making optimal unlatch profiles, and (iv) AAPA’s disclosure that unlatch
profiles are stored in a FROM (¶ [0024]).
Appellant’s arguments (App. Br. 20-22; Reply Br. 6-8) that Moon
teaches away from Appellant’s invention and there is no motivation to
combine AAPA and Moon other than impermissible hindsight are
unpersuasive. Appellant has provided no evidence to support these
assertions apart from mere conclusory statements. It is well settled that mere
lawyer’s arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).
In view of the foregoing, Appellant has not sufficiently shown that the
Examiner erred in rejecting claims 1, 3, 20, and 24 under 35 U.S.C. § 103(a)
over AAPA and Moon. Accordingly, we will sustain the obviousness
rejection of claims 1, 3, 20, and 24, based upon the combined teachings and
suggestions of AAPA and Moon.
Second and Third Issues: Claims 4-6
Appellant’s arguments (App. Br. 19 and 22-23; Reply Br.8-9) that the
Examiner erred in rejecting claims 4, 5, and 6 under 35 U.S.C. § 103(a)
because the Examiner has failed to present a prima facie case of
obviousness, or to provide any rationale for combining AAPA, Moon, and
Yun (as to claims 4 and 5), and/or AAPA, Moon, and DuLaney (as to claims
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5 and 6), are conclusory and therefore unpersuasive. Geisler, 116 F.3d at
1470; De Blauwe, 736 F.2d at 705.
Based on Appellant’s failure to adequately rebut the Examiner’s
prima facie case of obviousness, and for the reasons discussed supra with
respect to claims 1, 3, 20, and 24, Appellant has not sufficiently shown that
the Examiner erred in rejecting claims 4-6.
Summary
Appellant has not sufficiently shown that the Examiner erred in
finding that it would have been obvious to modify AAPA with the teachings
of (i) Moon (as to claims 1, 3, 20, and 24), (ii) Moon and Yun (as to claims 4
and 5), and/or (iii) Moon and DuLaney (as to claims 5 and 6). Accordingly,
we will sustain the obviousness rejections of (i) claims 1, 3, 20, and 24 based
upon the combined teachings and suggestions of AAPA and Moon; (ii)
claims 4 and 5 based upon the combined teachings and suggestions of
AAPA, Moon, and Yun; and (iii) claims 5 and 6 based upon the combined
teachings and suggestions of AAPA, Moon, and DuLaney.

CONCLUSION
The Examiner has not erred in rejecting claims 1, 3-6, 20 and 24 as
being unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1, 3-6, 20, and 24 under 35
U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

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