Ex parte Koriyama et al.

Board of Patent Appeals and Interferences

Aug 16, 2000

08381306 (B.P.A.I. Aug. 16, 2000)

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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROSHI KORIYAMA, NORIO TAGAWA, KENJI ITOH,
MISA IWAMOTO, and TAKAHIRO SUZUKI
____________
Appeal No. 1998-0453
Application No. 08/381,306
____________
ON BRIEF
____________
Before THOMAS, BARRETT, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 13 and 16,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 1998-0453
Application No. 08/381,306
2
BACKGROUND
The appellants’ invention relates to a magnetic disk drive having means for
reducing disk deformation. An understanding of the invention can be derived from a
reading of exemplary claim 13, which is reproduced below.
13. A clamping structure for clamping n disks, wherein n is greater than 3,
comprising:
a spindle hub for receiving said disks and having a flange at a first
end thereof, said flange having a first protruding portion, said disks being
stacked on said first protruding portion;
n-1 spacers interposed between adjacent ones of said n disks, said
n-1 spacers including an uppermost spacer and a lowermost spacer; and
a clamp ring fixed to a second end of said spindle hub, said clamp
ring having a second protruding portion for biasing said disks toward said
flange of said spindle hub,
wherein only an outer circumference of said uppermost spacer and
an outer circumference [sic: of] said lowermost spacer include an annular
groove.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Brooks et al. (Brooks) 5,006,942 Apr. 09, 1991
Brue et al. (Brue) 5,267,106 Nov. 30, 1993
Appeal No. 1998-0453
Application No. 08/381,306
We note that in the answer, the examiner made a new grounds of rejection over Brooks and1
maintained the prior rejection over Brue.
3
Claims 13 and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Brue or Brooks.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 16, mailed May 5, 1997) and the supplemental examiner's answer1
(Paper No. 20, mailed Oct. 2, 1997) for the examiner's reasoning in support of the
rejections, and to the appellants’ brief (Paper No. 15, filed Jan. 24, 1997), reply brief
(Paper No. 19, filed Jul. 3, 1997), and supplemental reply brief (Paper No. 21, filed Nov.
14, 1997) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
"Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
Appeal No. 1998-0453
Application No. 08/381,306
4
invention." RCA Corp. v. Applied Digital Data Systems. Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984).
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). After the PTO establishes a prima facie
case of anticipation based on inherency, the burden shifts to the appellant to prove that the
subject matter shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). Hence,
appellants’ burden before the PTO is to prove that the applied prior art reference does not
perform the functions defined in the claims. The appellants have not come forward with
any evidence to satisfy that burden. Compare In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-34 (CCPA 1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563,
566-67 (CCPA 1971).
BRUE
Appellants argue that the structure shown in Figures 3 and 4 of Brue is a ring with
indentations and pads but does not disclose a “an annular groove” in only an outer
circumference of said uppermost spacer and an outer circumference said lowermost
Appeal No. 1998-0453
Application No. 08/381,306
5
spacer. (See brief at page 5.) Appellants argue that the claimed annular groove in the
outer circumference defines that the groove is formed in the entire outer circumference of
the spacer. (See brief at page 6.) We agree with appellants. The examiner relies upon
the teaching of Brue with respect to element 32A shown in Fig. 4. (See answer at page 5.)
We disagree with the examiner. The cross section of Figure 2 is shown in Figure 4 and
the specification of Brue, at column 3, describes element 32A as one of three pads.
Appellants argue that the small “L” shaped surface of Brue is not a groove in the
circumference as claimed. (See brief at page 7.) We agree with appellants. In our view of
Brue, if there are three distinct pads then the groove that the examiner relies upon would
not traverse the circumference of the spacer. If there is not a pad at a location, then there
cannot be a groove formed thereby. At most Brue teaches plural slots around the
circumference formed by the pads being recessed from the edge of the spacer. In our
view, using the examiner’s definition for annular as “forming or shaped like a ring,” it is
clear that the distinct indentations or recesses at the pads cannot form a ring which would
connote a continuous circular groove present between the distinct pads of Brue. Since
Brue does not disclose the use of an annular groove, we cannot sustain the rejection of
claim 13 and its dependent claim 16.
Appeal No. 1998-0453
Application No. 08/381,306
6
BROOKS
Appellants argue that Brooks does teach the use of an annular groove in spacers
13, and that Brooks does not teach that the groove is only present on the uppermost and
lowermost spacers. (See reply brief, pages 7 and 8.) We agree with appellants. The
examiner rebuts this argument by referring to specific portions of columns 2 and 3 which
state that more than 3 disks are present and that the grooved spacers overcome the
tendency of the disks at the axial ends of the stack to distort due to the forces. (See
supplemental answer at page 3.) Appellants refer to different portions of Brooks and
conclude that every spacer will have the grooves. We agree with appellants. From
reading the entire disclosure of Brooks, as a whole, and the uniform usage of “spacers”
throughout and further the discussion of the distribution of the load as it moves from the
axial ends to the middle, it is clear that Brooks does not clearly disclose two different
spacers and their use at different locations along the axis. Moreover, claim 1 of Brooks
states that a spacer is between and separates each adjoining pair of disks and each
spacer has an annular groove extending radially inward from the outer cylindrical surface.
(See Brooks at columns 3-4.) In light of the disclosure of Brooks, it would be merely
speculation on our part to say that the spacers
Appeal No. 1998-0453
Application No. 08/381,306
7
with grooves are only at the axial ends. Therefore, we find that the examiner has not set
forth a prima facie case of anticipation, and we cannot sustain the rejection of claims 13
and 16.
CONCLUSION
To summarize, the decision of the examiner to reject claims 13 and 16 under 35
U.S.C. § 102 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
jld/vsh
Appeal No. 1998-0453
Application No. 08/381,306
8
WHITHAM, CURTIS, WHITHAM & MCGINN
RESTON INTERNATIONAL CENTER
11800 SUNRISE VALLEY DRIVE, SUITE 900
RESTON , VA 20191