Ex parte Macleod

Board of Patent Appeals and Interferences

Jan 4, 2001

08738467 (B.P.A.I. Jan. 4, 2001)

Application for patent filed October 24, 1996,1
entitled "Spindle Motor Assembly For Disc Drives," which is a
continuation of Application 08/316,800, filed October 3, 1994,
now abandoned, which is a continuation of Application
07/745,983, filed August 6, 1991, now U.S. Patent 5,352,947,
issued October 4, 1994.
- 1 -
The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DONALD J. MacLEOD

Appeal No. 1998-1794
Application 08/738,4671

ON BRIEF

Before BARRETT, FLEMING, and BARRY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-1794
Application 08/738,467
- 2 -
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 9-43.
We affirm-in-part.
BACKGROUND
The disclosed invention relates to a spindle motor
assembly for a hard disc drive.
Claim 9 is reproduced below.
9. A spindle motor assembly comprising:
a fixed shaft;
a spindle hub journaled coaxially for rotation
about the fixed shaft, the spindle hub having inner and
outer surfaces, an enlarged thickness flange portion with
a support surface for supporting a disc stack, and a
reduced thickness rotor carrying portion located adjacent
the bearing means rotatably coupling the spindle hub to
the fixed shaft;
magnet means carried by an outer surface of the
rotor carrying portion of the spindle hub, the magnet
means having a plurality of poles, and forming the rotor
portion of the spindle motor; and
stator means having a plurality of fixed
windings for cooperating with the magnet means to rotate
the spindle hub with respect to the shaft.
The Examiner relies on the following prior art:
MaCleod [sic, MacLeod] 4,488,076 December 11,
1984
Yamashita et al. (Yamashita) 4,552,417 November
12, 1985
Appeal No. 1998-1794
Application 08/738,467
- 3 -
Moon et al. (Moon) 4,712,146 December 8,
1987
Hajec 4,734,606 March 29,
1988
Rabe 4,763,053 August
9, 1988
Shirotori 4,818,907 April
4, 1989
Petersen 4,949,000 August 14,
1990
Claims 20-30 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter which applicant regards as his
invention.
The prior art rejections do not address the patentability
of claims 28, 29, 34, and 38 under 35 U.S.C. §§ 102 or 103.
This appears to be a result of carelessness, since the
Examiner has not indicated that the claims are objected to.
We place these claims in the rejection with the claims from
which they depend.
Appeal No. 1998-1794
Application 08/738,467
The statement of the rejection in the Final Rejection2
refers to claims "31-31," which we interpret as a
typographical error that should have read "31-32." This is
confirmed by the statement of the rejection in the Examiner's
Answer.
Claim 34 has not been rejected or indicated to be3
allowable. Because claim 35, which depends on claim 34, has
been rejected, it is certain that claim 34 was intended to be
rejected. We group it with the § 103(a) rejection over Hajec.
Since dependent claims 35-37 have been rejected over Hajec and
Rabe, this should not create a new ground of rejection.
Claim 38 has not been rejected or indicated to be4
allowable. We treat it with the § 103(a) rejection of its
parent claim 35 over Hajec and Rabe.
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Claims 9, 10, 12, 14, 15, 31, 32 , 39, 40, and 42 stand2
rejected under 35 U.S.C. § 102(b) as being anticipated by
Hajec.
Claims 11, 33, and 34 stand rejected under 35 U.S.C.3
§ 103(a) as unpatentable over Hajec and MacLeod.
Claims 13, 17, and 43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hajec and Shirotori.
Claims 16, 20, 21, 25, 27, 35-38 , and 41 stand rejected4
under 35 U.S.C. § 103(a) as unpatentable over Hajec and Rabe.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hajec and Yamashita.
Appeal No. 1998-1794
Application 08/738,467
Claims 28 and 29 have not been rejected or indicated5
to be allowable. We treat them with the § 103(a) rejection of
their parent claim 22 over Hajec, Rabe, and Petersen.
- 5 -
Claims 22-24, 28, and 29 stand rejected under 35 U.S.C.5
§ 103(a) as unpatentable over Hajec, Rabe, and Petersen.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hajec, Rabe, and Yamashita.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hajec, Rabe, Petersen, and Moon.
We refer to the Final Rejection (Paper No. 15) (pages
referred to as "FR__") and the Examiner's Answer (Paper
No. 24) (pages referred to as "EA__") for a statement of the
Examiner's position, and to the Appeal Brief (Paper No. 23)
(pages referred to as "Br__") for Appellant's arguments
thereagainst.
OPINION
Only argued limitations are addressed
We confine our analysis to issues and differences argued
in the brief. Under USPTO rules, an appellant's brief is
required to describe how the claims distinctly claim the
invention and to specify the particular limitations in the
rejected claims which are not described in the prior art or
Appeal No. 1998-1794
Application 08/738,467
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rendered obvious over the prior art. See 37 CFR
§ 1.192(c)(8)(ii), (iii) & (iv). Cf. In re Baxter Travenol
Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir.
1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking
for nonobvious distinctions over the prior art.");
In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247, 254 (CCPA
1967) ("This court has uniformly followed the sound rule that
an issue raised below which is not argued in this court, even
if it has been properly brought here by a reason of appeal, is
regarded as abandoned and will not be considered. It is our
function as a court to decide disputed issues, not to create
them."); In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661
(CCPA 1979) (arguments must first be presented to the Board
before they can be argued on appeal). We are not prescient
and cannot address arguments that have not been made.
35 U.S.C. § 112, second paragraph
The Examiner finds no antecedent basis for "said bearing
means" in claim 20 and rejects claims 20-30 under 35 U.S.C.
§ 112, second paragraph. Appellant's brief does not address
this rejection. We agree with the rejection. The phrase
Appeal No. 1998-1794
Application 08/738,467
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would be corrected by changing "said bearing means" to "said
bearings." The rejection of claim 20, and claims 21-30 which
depend on claim 20, is sustained.
35 U.S.C. § 102(b)
Hajec discloses a spindle motor where the motor lies
inside the hub and clearly does not show Appellant's disclosed
spindle motor assembly configuration. Nevertheless, despite
the differences in structure, it is always possible that the
claim language is so broad that it reads on Hajec in an
unintended manner. This is the case here. For example,
independent claim 9 does not particularly define the spindle
hub to be generally cylindrical with the enlarged thickness
flange portion and the reduced thickness rotor carrying
portion being thicknesses of the cylinder wall and lying along
the length and, so, does not distinguish over the cup-shaped
hub in Hajec.
Claims 9, 10, and 12
The language of claim 9 does not exclude the enlarged
thickness flange portion of the spindle hub from radially
overlying the reduced thickness rotor carrying portion as in
Appeal No. 1998-1794
Application 08/738,467
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Hajec. We consider figure 1 of Hajec. The claimed "spindle
hub" reads on the outer sleeve 20 and the rotatable outer
hub 16 taken together. The assembly of 20 and 16 is
"journaled coaxially for rotation about the fixed shaft."
Claim 9 recites "the spindle hub having inner and outer
surfaces," but does not further refer to these surfaces; the
subsequent limitation of "an outer surface of the rotor
carrying portion of the spindle hub" refers to an outer
surface of the rotor carrying portion, not the outer surface
of the spindle hub. The claimed "enlarged thickness flange
portion with a support surface for supporting a disc stack"
reads on the flange portion (unnumbered) of hub 16 which
supports the disc 12; the thickness (diameter) of the flange
is enlarged compared to the diameter of the hub 16. The
claimed "reduced thickness rotor carrying portion adjacent the
bearing means" reads on the outer sleeve 20; the thickness
(diameter) is reduced compared to the diameter of hub 16. The
"magnet means" reads on magnets 28, which are carried by an
outer surface of the rotor carrying portion, sleeve 20. The
"stator means" reads on stator core 34. Thus, we find claim 9
anticipated by Hajec.
Appeal No. 1998-1794
Application 08/738,467
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We now address Appellant's arguments.
Appellant argues (Br7) that Hajec does not have a
"reduced thickness rotor carrying portion adjacent the bearing
means" as recited in claim 9.
We disagree. Sleeve 20 has a reduced thickness
(diameter) as compared to the thickness (diameter) of the hub
16. Appellant appears to rely on disclosed limitations that
are not claimed.
Appellant argues (Br7) that Hajec does not have "magnet
means carried by an outer surface of the rotor carrying
portion of the spindle hub" (emphasis added) (claim 9),
because magnets 28 in Hajec are carried at an inner surface of
the rotor.
We disagree. Claim 9 recites "magnet means carried by an
outer surface of the rotor carrying portion of the spindle
hub," which refers to an outer surface of the rotor carrying
portion, not an outer surface of the spindle hub. The way
claim 9 is drafted allows the interpretation that the outer
surface of the spindle hub is not the outer surface of the
rotor carrying portion. Sleeve 20 is the rotor carrying
Appeal No. 1998-1794
Application 08/738,467
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portion of the spindle hub and the magnets 28 are carried on
an outer surface of 20.
Appellant argues that "instead of employing bearings as
set forth and claimed in Appellant's invention, Hajec uses a
ferro-fluid lubricant which is held in gap 26 between shaft 18
and sleeve 20" (Br7).
Claim 9 recites "bearing means," not any particular
bearing structure. We find the ferrofluid bearing in Hajec
equivalent to the disclosed ball bearings.
For the reasons stated above, Appellant fails to show
that the anticipation rejection of claim 9 is in error.
Claims 10 and 12 stand or fall together with claim 9. The
rejection of claims 9, 10, and 12 is sustained.
Claims 14 and 15
Appellant argues (Br7), with respect to claim 14, that
Hajec does not have "stator means being located near said base
end of said shaft" (claim 14). The Examiner states that
"near" is a relative term and does not distinguish over Hajec
(EA5).
Appeal No. 1998-1794
Application 08/738,467
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We agree with the Examiner that "near" is relative and
does not define over Hajec. Also, the "base end" can refer to
a region of the shaft, not just the very bottom of the shaft,
which makes the term "near" even less precise. The spindle
hub is more broadly recited in claim 14 than in claim 9 and
the limitations of the hub have not been argued. For these
reasons, we conclude that Appellant has failed to show error
in the anticipation rejection of claim 14. Claim 15 falls
together with claim 14. The rejection of claims 14 and 15 is
sustained.
Claims 31 and 32
Appellant argues (Br8), with respect to claim 31, that
the Examiner has admitted that Hajec does not have a plurality
of poles and the anticipation rejection must be reversed. The
Examiner states that the statement is taken out of context
from an obviousness rejection and that Hajec does teach a
magnet means with a plurality of poles (EA6).
The Examiner's rejection did state that Hajec does not
disclose a magnet with a plurality of poles (FR3). However,
it is clear that what the Examiner meant was that Hajec does
not disclose a magnet with a plurality of poles where each
Appeal No. 1998-1794
Application 08/738,467
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pole generates fields having two separate orientations. One
of ordinary skill in the art would have known that all magnets
have a plurality of poles (i.e., at least north and south
poles). Hajec would not work without at least two poles.
Appellant has not otherwise argued the limitations of claim
31. Claim 32 falls with claim 31. The rejection of claims 31
and 32 is sustained.
Claims 39, 40, and 42
The rejection of claim 39 has not been argued.
Therefore, the rejection of claims 39, 40, and 42 is
sustained. It is noted that the assembly of Hajec is intended
to be placed in a housing (not shown) to keep out dust and
dirt.
35 U.S.C. § 103(a)
Claims 20-30
Appellant argues (Br7-8) that Hajec does not disclose
"said spindle hub also supporting said disc on a flange
extending out from said inner bore above said magnet means and
over a region where stator coils of said motor are located"
(claim 20). The Examiner finds that hub 16 is in the form of
Appeal No. 1998-1794
Application 08/738,467
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a flange which extends from an inner bore defined by the outer
surface of the sleeve 20 and over the stator (EA5).
We disagree with the Examiner's interpretation. Claim 20
requires the flange supporting the disc to extend over a
region where the stator coils are located. The flange of the
hub 16 supporting the disc 12 is outside the motor and does
not extend over the stator coils. The Examiner's apparent
interpretation that the whole hub 16, not just the flange
supporting disc 12, is the claimed flange is not considered
reasonable.
The Examiner has also applied Rabe as showing a housing
having upper and lower casings. Rabe, figure 3, discloses a
motor having an internal rotor which is very similar in
structure to Appellant's disclosed spindle motor except that
the rotor magnets 131 are mounted at a greater diameter on the
spindle hub (rotor body 130) than Appellant's magnets,
probably to achieve greater torque and at the same time to
leave room for the electrical control circuit 123. However,
Rabe does not cure the deficiency of Hajec because the flange
portion supporting the rotating recording media 104, 104' is
radially inward of the stator coils 120. Accordingly, we
Appeal No. 1998-1794
Application 08/738,467
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conclude that the Examiner has failed to establish a prima
facie case of obviousness. The rejection of claims 20, 21,
25, and 27 is reversed.
Petersen has been added to the rejection as to
claims 22-24 (and, presumably, claims 28 and 29 as noted in
footnote 5); Yamashita has been added as to claim 26; and
Petersen and Moon have been added as to the rejection of
claim 30. These references do not overcome the deficiencies
of Hajec and Rabe. The rejections of claims 22-24, 26, and
28-30 are also reversed.
Claims 11, 33, and 34
The Examiner finds that MacLeod discloses that it was
well known to provide a rotor magnet having a multiplicity of
poles with each pole magnetized to generate fields having two
separate orientations and concludes that it would have been
obvious to form the magnet in Hajec as taught by MacLeod
(FR3-4).
Appellant argues that it is not possible to mount
MacLeod's main field magnet on the inner surface of Hajec's
hub 16 due to the presence of the stator core 34 located
Appeal No. 1998-1794
Application 08/738,467
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immediately inwardly adjacent hub 16 as shown in Hajec's
figure 1 (Br12).
We do not agree with Appellant's argument. First, Hajec
itself discloses magnets with two separate orientations which
are integrated to form permanent magnets 108A' (figures 3 and
7; col. 6, lines 29-37). The lower magnets 114 in Hajec help
confine the ferrofluid lubricant and are not for Hall sensors;
however, claims 11 and 33 do not recite any functions for the
different orientations. Second, one of ordinary skill in the
art would have had no problem replacing the cylindrical magnet
28 in Hajec with the cylindrical magnet with two orientations
of MacLeod because the outer shapes are identical. The
rejection of claims 11, 33, and 34 is sustained.
Claims 13, 17, and 43
The Examiner finds that Shirotori discloses that it was
well known to provide a magnetic ring 16 on which the rotor
magnet 17 is mounted to establish a magnetic circuit, and
concludes that it would have been obvious to provide a ferric
ring in Hajec to provide a flux return path (FR4-5). The
Examiner further finds that Shirotori teaches threaded
openings in the hub for a screw 15 to secure a disc clamp 14
Appeal No. 1998-1794
Application 08/738,467
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with a shield to close the inner end of the opening, and
concludes that it would have been obvious to secure the discs
in Hajec by the same structure (FR4-5).
Appellant does not argue the limitations of claims 13
and 17. The rejection of claims 13 and 17 is sustained.
Appellant argues, with respect to claim 43, that the
screw 15 in Shirotori is not positioned for holding a disc
clamp atop a disc and that Shirotori does not disclose a
shield provided at the bottom of the screw holes facing the
stator coils (Br12-13).
We disagree with Appellant's arguments regarding
claim 43. Figure 1 of Shirotori shows a screw 15 into the
spindle hub which holds a disc clamp 14 against a stack of
discs 12. The bottom of the hole for the screw has a shield
(unnumbered). It would have been obvious to apply the disc
mounting structure of Shirotori to Hajec since the motors are
similar in configuration and because Hajec does not disclose
any particular way to mount the discs. The rejection of
claim 43 is sustained.
Claims 16, 35-38, and 41
Appeal No. 1998-1794
Application 08/738,467
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The Examiner finds that Rabe, figure 3, discloses a
housing 102 having upper and lower casing portions and
discloses mounting the motor on a separate base plate 110
making the motor interchangeable with the rest of the housing
(FR5). The Examiner further finds that the base plate has a
well into which the stator coils and rotor magnet extend
(FR5). The Examiner concludes that it would have been obvious
to modify Hajec to provide these features (FR5).
Appellant argues that even if Rabe teaches mounting the
motor on a separate base plate making the motor
interchangeable with the rest of the housing, the invention
has a cylindrical well recess 90 formed in the lower casing
member 9, whereas Rabe comprises a separate unit which is
positioned to fit into a bottom hole of housing 102 (Br13).
Appellant's arguments do not apply to claim 16, which
recites a base plate for mounting the assembly to the drive
housing. Rabe teaches mounting the motor on a separate base
plate making the motor interchangeable with the rest of the
housing. Further, it appears that the base 14 in Hajec is not
part of the housing and is intended to mount the assembly to
the housing. The rejection of claim 16 is sustained.
Appeal No. 1998-1794
Application 08/738,467
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Claims 35 and 41 recite that the magnet means and stator
means are disposed in a well in the lower casing. While the
cup-shaped motor casing 111 in Rabe could be considered part
of the lower portion of housing 102, we do not see how Hajec
could be modified to fit into a well. The motor in Hajec is
inside the hub: if the hub were recessed into a well as in
Rabe it would be impossible to mount the magnetic discs. The
reason the motor in Rabe can fit into a well is because the
motor sits below the flange mounting the discs. While it is
true that the test of obviousness is what the references would
collectively have suggested to one of ordinary skill in the
art, not whether the teachings can be bodily incorporated, the
teachings of recessing the motor in Rabe are inconsistent with
the motor configuration in Hajec. Accordingly, the Examiner
has failed to establish a prima facie case of obviousness with
respect to claim 35 and 41. The rejection of claims 35-38 and
41 is reversed.
Claims 18 and 19
The Examiner finds that Yamashita teaches that it was
well known to utilize screws to attach a fixed shaft to the
Appeal No. 1998-1794
Application 08/738,467
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motor casing and concludes that it would have been obvious to
fasten the shaft of Hajec to the base with a screw (FR6).
Appellant argues that even if it were obvious in view of
Yamashita to use a screw to fasten the shaft to the base of
the Hajec motor, it is not understood how this would render
Appellant's invention obvious (Br13-14).
Appellant has not attempted to point out the error in the
rejection of claims 18 and 19. The rejection of claims 18
and 19 is sustained.
CONCLUSION
The rejection of claims 20-30 under 35 U.S.C. § 112,
second paragraph, is sustained.
The rejection of claims 9, 10, 12, 14, 15, 31, 32, 39,
40, and 42 under § 102(b) is sustained.
The rejections of claims 11, 13, 16-19, 33, 34, 42,
and 43 under § 103(a) are sustained, while the rejections of
claims 20-30, 35-38, and 41 under § 103(a) are reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1998-1794
Application 08/738,467
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LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-1794
Application 08/738,467
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