Ex Parte McGuireDownload PDFPatent Trial and Appeal BoardMay 25, 201613096685 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/096,685 04/28/2011 36032 7590 05/27/2016 THE GRIFFITH LAW FIRM, A P.C. 991C Lomas Santa Fe Drive Suite 450 Solana Beach, CA 92075 FIRST NAMED INVENTOR James E. McGuire JR. 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 ATTORNEY DOCKET NO. CONFIRMATION NO. entrotech 11-0006 5075 EXAMINER GARCIA, CARLOS E ART UNIT PAPER NUMBER 2688 NOTIFICATION DATE DELIVERY MODE 05/27/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): lgriffith@griffithpc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES E. MCGUIRE JR. Appeal2014-009793 1 Application 13/096,685 Technology Center 2600 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and STACY B. MARGOLIES, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-15 and 20-22. 2 Claims 16-19 are withdrawn. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm-in-part. 1 An oral hearing was held May 16, 2016. 2 In the Appeal Brief, Appellant identifies entrotech, inc. as the real party in interest. (App. Br. 3.) Appeal2014-009793 Application 13/096,685 THE INVENTION Appellant's invention is directed to a hermetic hard disk drive containing a filter with an integrally molded filter frame within the moldable material of the housing of the hard disk drive. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A hermetic hard disk drive, comprising: a housing comprising a base and a cover, wherein at least one of the base and the cover comprises a moldable material; at least one disk for storage of data within the housing; an actuator for reading and recording of the data on the at least one disk; and a filter comprising an integrally molded filter frame within the moldable material and extending toward an interior of the housing of the hard disk drive, wherein the hard disk drive is hermetically sealed and wherein at least one of the base and the cover comprises plastic moldable material. REJECTIONS The Examiner rejected claims 1-7, 13-15, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Chan et al. (US 2008/0084631 Al, pub. Apr. 10, 2008) ("Chan") and Oizumi et al. (US 5,898,537, issued Apr. 27, 1999) ("Oizumi"). (Final Act. 2-5.) The Examiner rejected claims 1-7, 13, 15, and 20-22 under 35 U.S.C. § 103(a) as being unpatentable over Kim et al. (US 2005/0041334 Al, pub. Feb. 24, 2005) ("Kim") and Oizumi. (Final Act. 5-9.) 2 Appeal2014-009793 Application 13/096,685 The Examiner rejected claims 8-12 under 35 U.S.C. § 103(a) as being unpatentable over Chan, or alternately Kim, and Oizumi and Gidumal et al. (US 2008/0226534 Al, pub. Sept. 18, 2008) ("Gidumal"). (Final Act. 9-10.) ISSUES ON APPEAL Appellant's arguments in the Appeal Brief present the following issues: 3 Issue One: Whether the combination of Chan and Oizumi teaches or suggests the independent claim 1 limitation, "a filter comprising an integrally molded filter frame within the moldable material and extending toward an interior of the housing of the hard disk drive ... wherein at least one of the base and the cover comprises plastic moldable material." (App. Br. 11-14.) Issue Two: Whether the combination of Kim and Oizumi teaches or suggests the above limitation of claim 1. (App. Br. 21-24.) Issue Three: Whether the combination of Chan and Oizumi teaches or suggests the limitations of claims 13 and 14. (App. Br. 15-20.) Issue Four: Whether the combination of Kim and Oizumi teaches or suggests the limitations of claim 13. (App. Br. 25-29.) Issue Five: Whether the combination of Chan, or alternately Kim, and Oizumi and Gidumal teaches or suggests the limitations of claims 8-12. (App. Br. 30-35.) 3 Rather than reiterate the arguments of Appellant and positions of the Examiner, we refer to the Appeal Brief (filed Apr. 14, 2014); Reply Brief (filed Sept. 9, 2014); Final Office Action (mailed Aug. 16, 2013); and the Examiner's Answer (mailed Aug. 14, 2014) for the respective details. 3 Appeal2014-009793 Application 13/096,685 ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner erred. Other than with respect to claims 13 and 14, we disagree with Appellant's arguments, and we adopt as our own (1) the pertinent findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-10) and (2) the corresponding reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (Ans. 2-5), and we concur with the applicable conclusions reached by the Examiner. We emphasize the following. Issue One In finding Chan and Oizumi teaches or suggests "a filter comprising an integrally molded filter frame within the moldable material and extending toward an interior of the housing of the hard disk drive, wherein ... at least one of the base and the cover comprises plastic moldable material," the Examiner relies on the disclosure in Chan of an integrated filter and bypass channel in a hard disk drive enclosure, in which the filter and bypass channel are manufactured from a single piece that, among other things, may be molded plastic. (Final Act. 2-3; Chan Fig. 2, i-fi-1 31, 3 6-3 7.) The Examiner further relies on the disclosure in Oizumi of a hermetically sealed molded plastic disk drive enclosure. (Final Act. 3; Oizumi col. 2, 1. 42---col. 3, 1. 2.) Appellant argues Chan fails to disclose a hard disk drive with a base or cover made from "plastic moldable material." (App. Br. 12.) This argument is unpersuasive because, as stated above, the Examiner relies on the combination of Chan and Oizumi, and the latter reference discloses enclosures made for plastic moldable material. See In re Keller, 642 F.2d 4 Appeal2014-009793 Application 13/096,685 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We are not persuaded the Examiner's rationale for combining these references is insufficient. (Final Act. 3.) Appellant does not present evidence that the resulting arrangements were "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007)). Appellant further argues the integrated filter and bypass channel disclosed in Chan "is not integral with the base or cover of the hard disk drive housing," and, in addition, Chan teaches away from the claimed limitation. (App. Br. 13.) However, as the Examiner correctly concludes, the broadest reasonable interpretation of the requirement "integrally molded filter frame within the moldable material" does not require the filter frame to be integral with the moldable material of the housing - the claim language encompasses a filter frame "formed inside of the base/ cover not limited to being the same exact singular plastic moldable material of the housing." (Ans. 3.) This is confirmed by the separate use in the claim of "within" that does not entail an integral relationship - "disk for storage of data within the housing." (Id.) In any event, Appellant's narrower interpretation of the claim does not lead to a different result: the disclosure of Chan teaches or at least suggests the integrated filter and bypass channel is inf act integral with the base or cover of the hard disk drive housing. The outer bypass channel wall of the bypass channel 150 is shown in Figure 2 to be part of the base 113 of the 5 Appeal2014-009793 Application 13/096,685 hard disk drive housing, and Chan specifically states the "bypass channel 150 [is] formed in the housing 113." (Chan i-f 24; see also Chan Fig. 2, i-f 12.) This, together with the disclosure in Chan that the filter and bypass channel are integrally molded, supports the Examiner's findings under Appellant's interpretation of the claim. (Ans. 3.) Nor does Chan teach away from the subject matter of the claims. Appellant relies on the statements in Chan regarding the pressure differential between the bypass channel and the disk drive casing, and the statement, "One advantage of the present invention is that airflow is effectively directed into the bypass channel 150 without additional interruptions of a disk shroud (not shown), which could compromise airflow characteristics." (App. Br. 13; Chan i-fi-133-34.) As discussed above, given the broadest reasonable interpretation of the claim language, Appellant's teaching away argument is inapplicable. Moreover, the statements in Chan on which Appellant relies do not pertain to the above-discussed portion of the base 113 of the hard disk drive housing that is integrally molded with the bypass channel and filter. Issue Two In finding Kim and Oizumi teaches or suggests "a filter comprising an integrally molded filter frame within the moldable material and extending toward an interior of the housing of the hard disk drive, ... wherein at least one of the base and the cover comprises plastic moldable material," the Examiner relies on the disclosure in Kim of a hard disk drive that includes a filter mounted on a flexible printed circuit (FPC) bracket "formable by incorporating the filter holder 172 and the FPC bracket 160 in a plastic injection molding method." (Final Act. 6; Kim Fig. 5, i-fi-1 42-53.) The 6 Appeal2014-009793 Application 13/096,685 Examiner further relies on the disclosure in Oizumi discussed above. (Final Act. 6-7; Oizumi col. 2, 1. 42---col. 3, 1. 2.). Appellant's arguments parallel those made with respect to the combination of Chan and Oizumi discussed above. (App. Br. 21-24.) Although we agree with Appellant's argument that Kim, in contrast to Chan, does not disclose the filter holder and FPC bracket "integrally formed in the housing" (see App. Br. 22), this argument is unpersuasive because, as discussed above, the claim does not require that. Likewise, Appellant's arguments directed to Oizumi are unpersuasive for the reasons discussed above. Issues Three and Four With respect to dependent claims 13 and 14, Appellant repeats the above arguments directed to the limitations of claim 1, which are unpersuasive as discussed above. (App. Br. 15-18, 25-28.) Appellant further argues Chan and Oizumi fail to teach or suggest "at least one side of the filter frame extending toward an interior of the housing is contiguous with a side of the housing" (per claim 13), or "two sides of the filter frame extending toward an interior of the housing are contiguous with adjacent sides of the housing" (per claim 14). (App. Br. 19-20.) Appellant makes similar arguments with respect to the rejection of claim 13 over Kim and Oizumi. (App. Br. 28-29.) Appellant's arguments as to the specific additional limitations of dependent claims 13 and 14 are persuasive. As Appellant points out, the Examiner has found that both the combination of Chan and Oizumi, and the combination of Kim and Oizumi, teach or suggest the limitation of 7 Appeal2014-009793 Application 13/096,685 dependent claim 15, "each side of the filter frame extending toward an interior of the housing is detached from sides of the housing." (Final Act. 5, 8.) We agree that this finding, of a teaching or suggestion of filter frame sides "detached" from the housing sides, is inconsistent with the findings concerning the claim 13 and claim 14 requirements of filter frame sides "contiguous" with the housing sides. The Examiner has not cited any portion of Chan, Kim or Oizumi that teaches or suggests the limitations of claims 13 and 14 at issue, nor does the Examiner otherwise soundly articulate a basis for the rejections. Therefore, on the record before us, we are constrained to find the Examiner errs in rejecting dependent claims 13 and 14. Issue Five With respect to dependent claims 8-12, Appellant repeats the above arguments directed to the limitations of claim 1, which are unpersuasive as discussed above. (App. Br. 30-34.) Appellant further argues Gidumal, which the Examiner relies on for the additional filter-related limitations of these dependent claims, does not teach or suggest "that such filters can be used in a hard disk drive or that they comprise an integrally molded filter frame within the moldable material of the housing of a hermetic hard disk drive as recited in claim 1." (App. Br. 35.) However, Gidumal is directed to an improved filter "for disk drives." (Gidumal Abstract.) Moreover, we are not persuaded the Examiner errs in relying on the combination of Chan or Kim, together with Oizumi and Gidumal, as teaching or suggesting the limitations at issue. Nor are we 8 Appeal2014-009793 Application 13/096,685 persuaded the Examiner's rationale for combining these references is insufficient. (Final Act. 10.) CONCLUSIONS For the reasons discussed above, we do not sustain the obviousness rejection of claims 13 and 14 over Chan and Oizumi, or of claim 13 over Kim and Oizumi. Also for the reasons discussed above, we sustain the obviousness rejection of claim 1 over Chan and Oizumi, and also over Kim and Oizumi, and we sustain the obviousness rejections of claims 8-12 over Chan, or alternately Kim, and Oizumi and Gidumal. We also sustain the rejections of claims 2-7, 15, and 20 over Chan and Oizumi, and of claims 2-7, 15, and 20-22 over Kim and Oizumi, which rejections are not argued separately with particularity. (App. Br. 14, 24.) DECISION We affirm the Examiner's rejections of claims 1-12, 15, and 20-22. We reverse the Examiner's rejections of claims 13 and 14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation