Ex parte Meyer

Board of Patent Appeals and Interferences

Aug 13, 1997

08245518 (B.P.A.I. Aug. 13, 1997)

Application for patent filed May 18, 1994. According to1
appellant, the application is a continuation of Application
07/998,103, filed December 29, 1992, now abandoned.
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DALLAS W. MEYER
_____________
Appeal No. 96-2747
Application 08/245,5181
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and LEE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2747
Application 08/245,518
2
This is an appeal from the decision of the examiner finally
rejecting claims 2 through 5, 7 and 8, which constitute all of
the claims remaining of record in the application.
The appellant's invention is directed to an improved slider
for an information storage system. The subject matter before us
on appeal is illustrated by reference to claim 2.
2. An improved slider for an information storage system
having an information storage medium including an exposed surface
at least partly covered with an incompressible fluid, the
improved slider comprising:
a face region which is exposed to the incompressible fluid
located on the exposed surface of the information storage medium
during operation of the information storage system, the face
region having a length, a width, a pair of opposing sides
extending across the length of the face region, two opposite ends
which extend across the width of the face region and
perpendicular to the opposing sides;
at least one of the opposite ends having a partially
controlled, textured surface with a patterned roughness extending
lengthwise across the width of the face region; and
at least one bearing pad having a length and a width and
located at least partially within at least one end and having at
least a partially controlled, textured surface with a patterned
roughness comprising a plurality of triangle shaped grooves
extending lengthwise across substantially the entire width of the
bearing pad each of said triangle shaped grooves having a vertex
extending into said bearing pad.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Aronoff et al. (Aronoff) 5,079,657 Jan. 7, 1992
Appeal No. 96-2747
Application 08/245,518
3
Albrecht et al. (Albrecht) 5,200,867 Apr. 6, 1993
THE REJECTION
Claims 2 through 5, 7 and 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Albrecht in view of Aronoff.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
According to the appellant, in a disk drive or direct access
storage device, a transducer reads the information from, or
writes information on the various tracks of the disk. The
transducer is attached to a slider which is suspended from an
arm. The slider is carried on the surface of the disks either by
a cushion of compressed gas, or by a layer of incompressible
fluid. In the latter system, the slider "skis" on the thin layer
of incompressible fluid, causing some fluid to be displaced,
which eventually results in a diminishment of the fluid thickness
over the tracks, an undesirable situation. Specification, pages
1 through 3.
As manifested in independent claims 2 and 7, the appellant's
invention solves this problem by providing on at least a portion
of the face of the slider a "textured surface with a patterned
Appeal No. 96-2747
Application 08/245,518
4
roughness extending lengthwise across the width," and at least
one bearing pad on this portion of the face having a textured
roughness on its face "comprising a plurality of triangle shaped
grooves extending lengthwise . . . having a vertex extending into
said bearing pad."
The claims have been rejected on the basis of the combined
teachings of Albrecht and Aronoff. It is the examiner's position
that Albrecht teaches everything in the independent claims except
the triangle shaped grooves on the pads, which is taught by
Aronoff, and that it would have been obvious to one of ordinary
skill in the art to modify the Albrecht device in such a manner
as to meet the terms of the appellant's claims. We disagree.
Albrecht teaches etching the flat surface of a slider in
order to produce a plurality of bearing pads the faces of which,
in the absence of evidence to the contrary, must be presumed also
to be flat (column 5, lines 14 through 31). Even if one were to
embrace the examiner's position that it would have been obvious
to texture these faces in view of the showing of Aronoff (Answer,
page 4), we agree with the appellant that the result would not
have been the required triangle shaped grooves having a vertex
extending into the bearing pad. In this regard, the extent of
Appeal No. 96-2747
Application 08/245,518
5
Aronoff's teaching in Figure 3, to which the examiner referred,
is a pattern of "repetitions of non-circular curves" whose
function is to form a path to facilitate fluid communication
across the surface of the slider (column 5, lines 25 through 31).
At best, therefore, Aronoff would have suggested this pattern to
one of ordinary skill in the art. Moreover, in Aronoff the
texturing is used on the face of the slider itself, there being
no showing of bearing pads at all, much less a teaching that
texturing is useful on them.
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness,
it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior
art reference or to combine reference teachings to arrive at the
claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI
1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill
Appeal No. 96-2747
Application 08/245,518
6
in the art and not from the appellant's disclosure. See, for
example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
In the present case, we fail to perceive any teaching,
suggestion or incentive in either reference which would have led
one of ordinary skill in the art to modify Albrecht in the manner
proposed by the examiner. From our perspective, the only
suggestion for doing so is found via the luxury of the hindsight
accorded one who first viewed the appellant's specification.
That, of course, is impermissible.
The rejection is not sustained,
The decision of the examiner is reversed.
REVERSED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Appeal No. 96-2747
Application 08/245,518
7
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
Andrew J. Dillon
Felsman, Bradley, Gunter & Dillon
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