Ex Parte Lim et al

Patent Trial and Appeal Board

Sep 16, 2013

11749850 (P.T.A.B. Sep. 16, 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.
11/749,850 05/17/2007 JuiJing Lim S01.12-1175/STL 13376 9001
27365 7590 09/16/2013
SEAGATE TECHNOLOGY LLC
C/O WESTMAN, CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3244
EXAMINER
BURCH, MELODY M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
09/16/2013 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 JUIJING LIM, CHENYANG DING,
XIONG LIU, MINGZHONG DING,
KIANKEONG OOI and CHOONKIAT LIM
____________

Appeal 2011-008977
Application 11/749,850
Technology Center 3600
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008977
Application 11/749,850

2
STATEMENT OF THE CASE

JuiJing Lim et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-5, 7, 11-14, 16, 21 and 22. Claims 6,
8-10, 15 and 17-20 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1, 11 and 16 are independent, claim 1 is reproduced below:
1. A shock absorber comprising:
at least one shock absorbing frame member
at least partially surrounding an electronic device
enclosure and having at least a top wall, a bottom
wall, an end wall and two opposing side walls,
wherein each of the top, bottom, end and side
walls includes outer facing surfaces and opposing
inner facing surfaces, the inner facing surfaces
facing the electronic device enclosure;
at least one first recess in communication
with and recessed from the outer facing surfaces of
each of the top, bottom, end and side walls of the
shock absorbing frame, each first recess including
a first recessed surface that is positioned between
the outer facing surface and the opposing inner
facing surface; and
wherein each first recess includes a first
protrusion, each first protrusion extending from
each first recessed surface to a distal end located
outwardly from the outer facing surface.

PRIOR ART
Saruwatari US 6,292,455 B1 Sep. 18, 2001
Nakata US 2002/0043608 A1 Apr. 18, 2002
Cheng US 2006/0261528 A1 Nov. 23, 2006
Appeal 2011-008977
Application 11/749,850

3
GROUNDS OF REJECTION

1. Claims 1-5, 7, 11-13, 16, 21 and 22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Cheng and Saruwatari.
2. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cheng, Saruwatari and Nakata.
OPINION
The Examiner finds that Cheng discloses every limitation of
independent claim 1 except for:
at least one first recess in communication with and
recessed from the outer facing surfaces of each of
the top, bottom, end and side walls of the shock
absorbing frame, each first recess including a first
recessed surface that is positioned between the
outer facing surface and the opposing inner facing
surface; and wherein each first recess includes a
first protrusion, each first protrusion extending
from each first recessed surface to a distal end
located outwardly from the outer facing surface.
Ans. 4-5.
The Examiner further finds that
Saruwatari et al. teach in figures 4 and 6 a shock
absorber comprising at least one first recess in
communication with and recessed from the outer
facing surfaces of a wall of the shock absorbing
frame shown above, the first recess including a
first recessed surface that is positioned between the
outer facing surface and the opposing inner facing
surface as labeled; and wherein the first recess
includes a first protrusion [shaft] 31, the first
protrusion extending from the first recessed
surface to a distal end located outwardly from the
outer facing surface.
Ans. 5.
Appeal 2011-008977
Application 11/749,850

4
Based on these findings the Examiner concludes that
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to
have modified the outer surface of Cheng et al. in
the area of the protrusions from the outer surface
to have included at least one first recess, as taught
by Saruwatari et al., in order to provide a means of
mounting while taking up less space depending on
device real estate requirements.
Ans. 5-6.
Appellants argue “the combination of cited references fails to describe
‘at least one first recess in communication with and recessed from the outer
facing surfaces of each of the top, bottom, end and side walls of the shock
absorbing frame’ as claimed in claim 1.” Br. 9-10. Appellants explain
“[t]he marking of a recess in Saruwatari is in the form of a circular damper
30, which is mounted onto a shaft at a midpoint of the shaft. One of
ordinary skill in the art would at most modify the protrusions in Cheng by
mounting a circular damper 30 to each protrusion.” Br. 10. We agree.
As shown in figure 6, Saruwatari’s frame 4 comprises two frame
members: lower frame member 7 and upper frame member 9. Each frame
member 7, 9 has a cutout 26 and 27, respectively. Damper 30 is secured in
the opposing cutouts 26, 27 via lower and upper grooves: 37 and 38. See
Saruwatari, col. 8, ll. 11-15. Thus, as shown in figure 8 of Saruwatari, ribs
35 of damper 30 are at least as thick, if not thicker than the walls of frame 4.
The Examiner has determined that the claimed first recess
corresponds to one of the spaces formed in damper 30 between the outer
wall of inner ring portion 32, the inner wall of outer ring portion 33, and ribs
35 in Saruwatari. See marked up drawing, Ans. 5. However, as clearly
shown in both figures 4 and 8 of Saruwatari, the portion identified by the
Appeal 2011-008977
Application 11/749,850

5
Examiner as the first recess does not have “a first recessed surface that is
positioned between the outer facing surface and the opposing inner facing
surface” of any wall of a shock absorbing frame, much less the top, bottom,
end and side wall of the shock absorbing frame, as required by claim 1, at
least because the “recess” is formed in the damper 30. Accordingly,
Saruwatari does not cure the deficiencies of Cheng.
For these reasons, we do not sustain the Examiner’s rejection of claim
1 and claims 2-5 and 7 which depend therefrom. Claims 11 and 16 also
contain the same limitation recited in claim 1 requiring each first recess to
include a first recessed surface that is positioned between the outer facing
surface and the opposing inner facing surface of its respective top, bottom,
end and side wall of the shock absorbing frame. Br. 17, 18. Accordingly,
the rejection of claims 11 and 16 and claims 12-13, 21 and 22 which depend
therefrom is not sustained for the same reasons as those discussed for claim
1. Nakata does not cure the deficiencies of Cheng and Saruwatari in regard
to claim 11 discussed supra. Thus, the rejection of claim 14 is also not
sustained.

DECISION

The Examiner’s rejections of claims 1-5, 7, 11-14, 16, 21 and 22 are
REVERSED.

REVERSED

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