Ex Parte McGuire

Patent Trial and Appeal Board

May 31, 2016

13096662 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/096,662 04/28/2011
36032 7590 06/02/2016
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 11-0005 5016
EXAMINER
GARCIA, CARLOS E
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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.
Appeal2014-006043
Application 13/096,662
Technology Center 2600
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
STACY B. MARGOLIES, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL 1
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Appeuam~ appeals unaer j) u.~.L. s U4~aJ rrom me bxammer s
Final Rejection of claims 1-7 and 21-30. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 An oral hearing was held May 16, 2016.
2 Appellant identifies entrotech, inc. as the real party in interest (Br. 3).
3 Claim 19 has been canceled and claims 8-18 and 20 have been withdrawn
from consideration.
Appeal2014-006043
Application 13/096,662
STATEivIENT OF THE CASE
Appellant's Invention
Appellant's invention relates to hard disk drives encapsulated with
polymeric coatings (Spec. i-f 2). Claim 1 is illustrative of the invention and
reads as follows:
1. A hard disk drive comprising:
a housing comprising a base component and a cover
component;
disk drive components enclosed within the housing for
facilitating reading and recording of data at a desired location
on at least one disk contained within the housing; and
at least one continuous polymeric coating encapsulating
the exterior surface of the enclosed housing comprising the base
component and the cover component.
The Examiner's Rejections
The Examiner rejected claims 1-3, 6, 7, and 21-29 under 35 U.S.C.
§ 103(a) as unpatentable over Butler (US 6,693,767 Bl; Feb. 17, 2004) and
Kamezawa (US 6,469 ,864 B2; Oct. 22, 2002) (see Final Act. 4--11 ).
The Examiner further relied on Hofland (US 7,206,164 B2; Apr. 17,
2007) to reject claims 4 and 5 and on Applicant Admitted Prior Art (AAPA,
Spec. ,-r 6) to reject claim 30 under 35 U.S.C. § 103(a) (see Final Act. 11-
13).
ANALYSIS
With respect to all the 35 U.S.C. § 103 rejections, we are not
persuaded by Appellant's arguments. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner's
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Appeal2014-006043
Application 13/096,662
Answer (Ans. 3-6) in response to Appellant's Appeal Brief. We concur
with the conclusion reached by the Examiner.
Claim 1
In rejecting claim 1, the Examiner finds Butler discloses a hard disk
drive housing comprising base and cover components for enclosing the disk
drive components and further relies on Kamezawa as teaching the recited "at
least one continuous polymeric coating encapsulating the exterior surface of
the enclosed housing comprising the base component and the cover
component" (Final Act. 4---6). The Examiner finds it would have been
obvious to one of ordinary skill in the art to combine the teachings of Butler
with Kamezawa in order to provide a disk drive cover having
electromagnetic shielding and reduced noise (Final Act. 6).
Appellant argues the proposed combination results in a structure that
differs from the claimed encapsulated hard disk drive in that "[ w ]hen a hard
disk drive is encapsulated as recited in claim 1, there is no exposed seam at
the point where the base component and the cover component of the
enclosed housing meet, which seam would otherwise necessarily be present
in the absence of such encapsulation" (Br. 12). Appellant, however, adds "it
is not critical that the 'entire outer surface of the enclosure be
completely/wholly covered with the plastic coating'" and "while the entire
exterior surface of an enclosed hard disk drive housing could be
encapsulated by at least one continuous polymeric coating, claim 1 is not
limited to such an embodiment" (Br. 13).
The portion of the housing that the recited continuous polymeric
coating covers is nowhere defined or limited in Appellant's Specification
(see e.g., Spec. i-fi-142, 44). "During prosecution ... the PTO gives claims
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Appeal2014-006043
Application 13/096,662
their 'broadest reasonable interpretation."' In re Bigio, 381F.3d1320, 1324
(Fed. Cir. 2004) (quoting In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)).
Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted). Neither the claims nor the Specification
defines the area covered by the recited "continuous polymeric coating" as
the entire exterior surface of the housing. Additionally, contrary to
Appellant's contention (Br. 15), the claim does not preclude a polymeric
coating that is continuous over most of the housing surface, but is
discontinuous where the base and the cover meet. Therefore, as
acknowledged by Appellant (see Br. 13), it is not necessary to cover the
entire exterior surface of an enclosed hard disk drive housing.
Appellant contends the proposed combination is improper because
Butler's base and cover do not include a continuous coating on an exterior
surface of an enclosed housing (Br. 14). In particular, Appellant argues,
even if Butler's enclosure is considered the polymeric coating, the surface of
enclosure would not be continuous where the base and the cover meet (Br.
15). Alternatively, if Butler is modified to include a continuous polymeric
coating, Appellant argues that the integrated hinge mechanism would not be
useful for opening and closing due to encapsulation (id.). With respect to
Kamezawa, Appellant contends the molded resin of Kamezawa existed
before assembling the base and the cover, which results in the absence of a
continuous polymeric coating due to exposing the sheet metal at its outer
peripheral portion (Br. 17).
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Appeal2014-006043
Application 13/096,662
Appellant's arguments are not persuasive. With respect to Butler, we
agree with the Examiner's finding that the housing disclosed in Butler
includes a base 202, a cover 206, and a hinge portion 204, which are all
formed of similar material such as plastic (Ans. 3). As further explained by
the Examiner, Kamezawa discloses applying a plastic coating to the exterior
of a disk drive housing, which is applicable to Butler's one piece housing in
order to form a housing having a continuous polymeric coating on the
housing exterior surface (see Ans. 5 (citing Kamezawa Figs. 5, 6)). Based
on the broadest reasonable interpretation of the claim term "a continuous
polymeric coating" as a coating that is not required to encapsulate the entire
exterior surface of an enclosed hard disk drive housing, we agree with the
Examiner's finding that modifying Butler with Kamezawa would have
taught or suggested the recited housing having "at least one continuous
polymeric coating."
Next, Appellant argues the combination of Butler with Kamezawa is
improper because the references do not teach or suggest each and every
element of claim 1 and therefore no prima facie case of obviousness has
been made (Br. 17-18). We are not persuaded of Examiner error. As
explained by the Examiner (Final Act. 6), combining the polymeric coating
over a sheet metal arrangement of Kamezawa with the Butler's housing that
is formed entirely of a plastic material would have been obvious in order to
include the benefits of electromagnetic shielding and noise reduction in a
disk drive housing. Furthermore, Appellant's argument that the claimed "at
least one continuous polymeric coating" is not met by the polymeric coating
based on Butler and Kamezawa teachings is not persuasive for the reasons
stated above in our analysis of the claim interpretation. Therefore,
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Appeal2014-006043
Application 13/096,662
consistent with the guidelines stated in KSR Int 'l Co. v. Telej?ex Inc., 550
U.S. 398 (2007), the Examiner has identified improvements made by the
combination to the disk drive housing of Butler for reducing electromagnetic
interference and noise.
Claim 3
In addition to the arguments made for claim 1, Appellant contends the
combination of Butler and Kamezawa does not teach or suggest "at least one
of the base component and the cover component of the housing comprises at
least one metal coating" recited in claim 3 (Br. 19-27). Appellant further
contends Butler's non-plastic filler and the metal sheet of Kamezawa are not
the same as the recited "one metal coating" (Br. 26). We are not persuaded
because, as found by the Examiner (Final Act. 5 (citing Kamezawa col. 3, 11.
1-28)), the disclosed embedded or laminated metal sheet results in a final
structure that is not distinguishable from a metal layer or coating. The
patentability of a product does not depend on its method of production.
Here, the claim is to a product, and not to its method of production.
Claims 4 and 5
Regarding claims 4 and 5, Appellant relies on the same argument
made for claim 1 and further contends Hofland does not overcome the
deficiencies of the combination of Butler and Kamezawa (Br. 28).
Regarding the teachings of Hofland, we agree with the Examiner's findings
that the reference suggests using "a label or graphic placed on a plastic
cover" (see Ans. 6; Final Act. 12 (citing Hofland col. 3, 11. 28-55)).
Claim 30
Appellant argues the patentability of claim 30 by relying on
arguments that are similar to those raised with respect to claim 1, which are
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Appeal2014-006043
Application 13/096,662
addressed above (see Br. 36-43). For the same reasons stated for claim 1,
Appellant's contentions do not persuade us of Examiner error.
CONCLUSION
For the foregoing reasons, Appellant's arguments have not persuaded
us that the Examiner erred in finding the teachings of Butler and Kamezawa
alone or in further combination with Hofland or AAP A teaches or suggests
the disputed limitations of claims 1, 3-5, and 30. Accordingly, we sustain
the 35 U.S.C. § 103(a) rejections of claims 1, 3-5, and 30, as well as the
remaining claims which are not argued separately.
DECISION
The decision of the Examiner rejecting claims 1-7 and 21-30 is
affirmed.
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
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