Ex parte Iwabuchi

Board of Patent Appeals and Interferences

Feb 28, 2000

08311710 (B.P.A.I. Feb. 28, 2000)

An amendment after the final rejection was filed as1
paper no. 18 and was entered in the record for the purposes of
this appeal.
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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journal and (2) is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MASANORI IWABUCHI
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Appeal No. 1996-4190
Application 08/311,710
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HEARD: FEBRUARY 10, 2000
________________
Before KRASS, LALL and GROSS, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 8 to 15. Claims 1 to 7 are1
canceled.
Appeal No. 1996-4190
Application 08/311,710
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The invention relates to a magnetic disk drive which
records and reproduces data onto/from a magnetic medium by
moving a magnetic head mounted on an actuator arm over the
medium. More particularly, the invention is directed to a
mechanism for fixing the head in place when the disk drive is
not operated. A magnetic body is located on the end of the
actuating arm away from the head. As the arm moves, when
operating, the magnetic body defines a planar locus of points.
A magnet is located on a base and is spaced apart from the
magnetic body in a direction perpendicular to said planar
locus of points. The magnetic body, and hence the arm
carrying the head, is held in a fixed place by the magnetic
field of the magnet, without a physical contact between the
body and the magnet. The invention is further illustrated by
the following claim. Representative claim 8 is reproduced as
follows:
8. A structure for fixing a magnetic head which records
or reproduces data in or out of a medium having a recording
area and a parking area, said structure comprising:
a base on which the medium is mounted;
an arm holding the magnetic head over the medium;
movable means for moving said arm;
Appeal No. 1996-4190
Application 08/311,710
A reply brief was filed as paper no. 29 and was entered2
in the record without any further response by the Examiner
[paper no. 31].
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a member mounted on said arm;
a magnetic body mounted on said member and movable
through a planar locus of points as said arm moves;

a magnet fixed to said base for attracting said magnetic
body and spaced apart from said magnetic body in a direction
perpendicular to a plane containing said planar locus of
points, said magnetic body standing closest to said magnet
when the magnetic head is positioned over the parking area of
the medium, said magnet being magnetized perpendicularly to
said plane containing said planar locus of points; and
a yoke mounted on said magnet for absorbing magnetic
lines of force issuing from said magnet.
The Examiner relies on the following reference:
Sun et al. (Sun) 5,003,422 Mar. 26, 1991
Stefansky 5,170,300 Dec. 8, 1992
(filed: Jan. 22, 1991)
Claims 8 to 9 stand rejected under 35 U.S.C. § 102 over
Sun or Stefansky. Claims 10 to 15 stand rejected under 35
U.S.C.
§ 103 over Sun or Stefansky.
Rather than repeat the positions and the arguments of
Appellant or the Examiner, we make reference to the briefs2
and the answer for their respective positions.
Appeal No. 1996-4190
Application 08/311,710
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OPINION
We have considered the rejections advanced by the
Examiner. We have, likewise, reviewed Appellant's arguments
against the rejections as set forth in the briefs.
It is our view, after consideration of the record before
us,
that the rejections under 35 U.S.C. § 102 and under 35 U.S.C.
§ 103 are not proper. Accordingly, we reverse.
Now we analyze the various rejections.
Rejections under 35 U.S.C. § 102
The Examiner has rejected claims 8 and 9 as being
anticipated by Sun or Stefansky.
We note that a prior art reference anticipates the
subject of a claim when the reference discloses every feature
of the claimed invention, either explicitly or inherently (see
Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d
1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984)).
We first take the independent claim 8. The critical issue
Appeal No. 1996-4190
Application 08/311,710
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in determining the propriety of the rejection is the
interpretation given by the Examiner to the phrase “a magnet
fixed to said base for attracting said magnetic body and
spaced apart from said magnetic body in a direction
perpendicular to a plane containing said planar locus of
points ...” (Claim 8). The Examiner contends [answer, pages
10 and 11]:
In marked up figure 4 of Sun et al. [copy
attached to the brief], the plane is shown as a
horizontal line. Following the direction
perpendicular to that line ... reveals the space
defined by the two vertical lines and the magnetic
body and the magnet are spaced apart in this
direction ... . In other words, the magnet and the
magnetic body are not contacting each other in this
direction. There is space between them in this
direction.
Appellant argues [brief, page 6]:
[T]he magnet is fixed to a base and spaced apart
from the magnetic body in a direction
perpendicular to a plane containing the locus of
points through which a [sic, the] magnetic body
moves. This results in the magnetic body being
able to move over the magnet.
We agree with the interpretation given by Appellant for
two reasons. First, the interpretation by the Examiner is not
logical because the term “direction” defines a line, and not a
plane as the Examiner interprets it. Therefore, the phrase
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Application 08/311,710
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“in a direction perpendicular to a plane” means it is along a
line which is perpendicular to the plane of locus of the
movement of the magnetic body, i.e., along a vertical line.
Thus, if the locus plane is horizontal, the claim calls for
the magnet and the magnetic body to be located in two
different horizontal planes which are spaced apart in the
vertical direction. Secondly, the disclosure [figures 2A, 2B
and 5 through 9] clearly shows that the magnet and the
magnetic body are located in two separate horizontal planes,
vertically spaced apart, such that the magnetic body does not
physically come in contact with the magnet as it moves in its
horizontal plane. Looking at the applied prior art, neither
Sun nor Stefansky meets this “spaced apart...” limitation of
claim 8. Therefore, we do not sustain the anticipation
rejection of claim 8, and its dependent claim 9, over Sun or
Stefansky.
Rejections under 35 U.S.C. § 103
Claims 10 to 15 are rejected as being obvious over Sun or
Stefansky.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an Examiner is under a burden
Appeal No. 1996-4190
Application 08/311,710
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to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward 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 In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); 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).
The Examiner has offered [answer, pages 4 to 9] a
detailed explanation of the obviousness rejection over Sun or
Stefansky.
However, we find a fatal flaw in the approach taken by the
Examiner. Each of these claims contains a limitation
corresponding to the limitation we have discussed above, i.e.,
“a magnet fixed to said base for attracting said magnetic body
and spaced apart from said magnetic body in a direction
perpendicular to a plane containing said planar locus of
points ...” We note that our finding above in regard to claim
Appeal No. 1996-4190
Application 08/311,710
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8 equally applies here. Consequently, the obviousness
rejection of claims 10 to 15 over Sun or Stefansky also falls
for the same reasons. In conclusion, we reverse the
Examiner’s final rejection of claims 8 to 9 under 35 U.S.C. §
102 over Sun or Stefansky. Further, we reverse the
obviousness rejection under 35 U.S.C.
§ 103 of claims 10 to 15 over Sun or Stefansky.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
PARSHOTAM S. LALL ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Sughrue, Mion, Zinn, MacPeak & Seas
2100 Pennsylvania Avenue, NW
Washington, DC 20037-3202
Appeal No. 1996-4190
Application 08/311,710
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