Ex Parte Min et al

Board of Patent Appeals and Interferences

May 6, 2008

10406440 (B.P.A.I. May. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONG-KI MIN and HYUN-JUNG SHIN
____________

Appeal 2007-4389
Application 10/406,440
Technology Center 2600
____________

Decided: May 6, 2008
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and JOHN A. JEFFERY, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 6-13, 16, and 17. Claims 2, 5, 14, and 20 have been canceled
and claims 3, 15, 18, 19, and 21-28 have been indicated as containing
allowable subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-4389
Application 10/406,440

Appellants’ invention relates to a data storage apparatus including a
cantilever array for recording data to and reproducing data from a recording
medium (Spec. 2-3). According to Appellants, a reference capacitor is
shared among the cantilevers in the array, which eliminates the nominal
capacitance formed by each cantilever capacitance (Spec. 3-5, 9, 11).
Claim 1, which is representative of the claims on appeal, reads as
follows:
1. A data storage apparatus comprising:

a recording medium for storing data;

a cantilever array of a plurality of cantilevers for recording data
to and reproducing data from the recording medium in a data
detecting sequence;

a stage for supporting the recording medium;

a scanner for driving the stage;

a controller for applying a scanner driving signal to the scanner
and applying a voltage signal for data recording or a voltage
modulation signal for data reproduction to the plurality of cantilevers,
in order to detect data; and

a reference capacitor for providing a reference voltage signal
that is shared by the cantilevers via time division multiplexing to
eliminate the effect of a nominal capacitance formed by each of the
cantilevers.

The prior art applied in rejecting the claims on appeal is:
Chang US 5,182,521 Jan. 26, 1993
Sakai US 5,329,122 Jul. 12, 1994
Binnig US 5,835,477 Nov. 10, 1998

2
Appeal 2007-4389
Application 10/406,440

The Examiner rejected claims 1, 4, 6-9, 12, 13, and 16 under
35 U.S.C. § 103(a) based upon the teachings of Sakai and Chang and claims
10, 11, and 17 under 35 U.S.C. § 103(a) based upon the teachings of Sakai,
Chang and Binnig.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.
We affirm.

ISSUE
Appellants argue that replacing the dummy capacitors associated with
each probe electrode in Sakai with a multiplexed capacitor would have
diminished the speed of operation (App. Br. 7-8). Therefore, the issue is
whether under 35 U.S.C § 103(a), the ordinarily skilled artisan would have
found it obvious to modify Sakai with Chang and use a multiplexed
reference capacitor that is shared by the probes.

PRINCIPLES OF LAW
To reach a conclusion of obviousness under section 103, the Examiner
bears the burden of producing factual basis supported by teaching in a prior
art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed.
Cir. 1984).
3
Appeal 2007-4389
Application 10/406,440

Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA
1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739-40). “One of the ways in which a
patent’s subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” KSR, 127 S. Ct. at 1742.

ANALYSIS
1. The claim rejection over Sakai and Chang
Appellants do not dispute the teachings of Sakai with respect to the
claimed cantilever array of probes or cantilevers and their operation for
recording data to and reproducing data from a recording medium. However,
Appellants’ contentions focus on whether the combination of Sakai and
4
Appeal 2007-4389
Application 10/406,440

Chang teaches replacing the corresponding dummy capacitors associated
with each probe with a shared multiplexed capacitor, as taught by Chang
(App. Br. 7-9).
Appellants specifically contend that Sakai purposely associates a
different dummy capacitor with each probe in order to eliminate the
influence of irregularity of capacitance or the switching and cross-talk noise
in the array (App. Br. 7). Appellants assert that changing the capacitor
arrangement of Sakai would not be possible without diminishing the speed
of the device since the dummy capacitors disclosed in Sakai need to be
recharged for the accumulated charge, which takes more time if a shared
capacitor is used (id.).
The Examiner responds (Ans. 10) that even if the benefit of
eliminating some switching noise in Sakai would be lost by using the shared
capacitor of Chang, other benefits, such as an overall circuit noise reduction,
make up for the lost benefit. The Examiner further argues that Appellants
have pointed to no factual basis in support of their assertion with respect to
an alleged reduced operating speed in Sakai if a shared capacitor is used
(Ans. 10-11). The Examiner concludes that Chang’s shared capacitor
provides a solution to one of ordinary skill in the art with respect to noise
reduction in the circuit and compensates for any increased switching noise
due to recharging the shared dummy capacitor (Ans. 13).
We agree with the Examiner’s line of reasoning and find that Chang
clearly provides the advantage of simplified layout and improved noise
reduction by sharing a multiplexed capacitor in an array of capacitors. In
fact, contrary to Appellants’ argument (Reply Br. 5-6), matching a dummy
5
Appeal 2007-4389
Application 10/406,440

capacitor to each probe electrode in Sakai not only increases accuracy and
speed, but also causes added circuit complexity and overall noise. Similarly,
although charging and recharging the shared capacitor may potentially slow
down the system operation, we find that using the shared capacitor of Chang
provides other benefits such as savings in chip area in an integrated
implementation (Abstract) and simplicity of the circuit layout (col. 3, ll. 57-
59).
Therefore, one of ordinary skill in the art, when faced with situations
that require simplified layout and savings in chip area, but are less concerned
with speed or accuracy, would have used the shared capacitor arrangement
of Chang. We also disagree with Appellants that multiplexing a central
capacitor in Sakai prevents achieving the benefits of eliminating “the
influence of the irregularity of capacitance on the probe electrodes or the
crossed talk by the matrix wiring and the influence of the switching noise”
(App. Br. 7). In fact, the main objective of Sakai by relying on a potential
difference between the electrostatic capacitance connected to the probe and
the dummy capacitance is achieved in the proposed combination since the
principle of operation in using the difference between the probe capacitance
and the dummy capacitance remains unchanged even if a shared dummy
capacitor is used.
For all of the previously discussed reasons, we simply find no error in
the Examiner’s position that multiplexing a shared dummy capacitor, as
taught by Chang, would be recognized by the skilled artisan as an obvious
enhancement to the individual dummy capacitors in relation with each probe
capacitor in the data processing array of Sakai. According to Leapfrog,
6
Appeal 2007-4389
Application 10/406,440

when combination of familiar elements according to methods known to the
skilled artisan, achieves a predictable result, such as using a shared capacitor
to achieve simplified circuit layout and reduced chip size, it is likely to be
obvious.
Appellants further argue that the limitations related to the driving
signal recited in claims 8, 9, and 13 are not taught or rendered obviousness
in view of the prior art teachings (App. Br. 10). The Examiner reiterates the
teachings in Sakai and Chang and the rationale used for combining the prior
art references and specifically points to the fact that the scanner in Sakai is
not moving while the signal is applied, which requires a driving signal that
opens and closes all of the switches during transmission or voltage
modulation (Ans. 6, 15-16). We find the Examiner’s analysis of the driving
signals in Sakai to be reasonably based on the factual findings outlined in the
Answer, which remain unrebutted by Appellants in the Reply Brief.
Therefore, we find that the Examiner has set forth a prima facie case
of obviousness with respect to claims 1, 8, 9, and 13, as well as claims 4, 6,
7, 12, and 16 which are not separately argued.

2. The claim rejection over Sakai and Chang in view of Binnig
Appellants argue that the portions of Binnig relied on by the Examiner
for teaching a uniform scanning speed merely relates to a continuous speed
which is different from the uniform speed recited in claim 10 (App. Br. 9-
10). The Examiner responds by pointing to the different scanning schemes
disclosed by Binnig in column 5, lines 50-55 and concludes that the use of
7
Appeal 2007-4389
Application 10/406,440

“continuous scanning” in contrast with one with “varying speeds” indicates
using a uniform speed in the disclosed continuous scanning (Ans. 15).
We agree with the Examiner that the suggestion of using other
schemes, such as varying speeds, implies that the disclosed schemes are
provided as alternative schemes to the uniform speed scanning. Therefore,
we find no error in the Examiner’s reliance on Binnig for teaching the
limitation of moving the scanner at “a uniform speed” and sustain the
rejection of claim 10, as well as claims 11 and 17 which are argued based on
the same assertion made with respect to claims 9 and 10 (App. Br. 10-11).

CONCLUSION OF LAW
Because Appellants have failed to point to any error in the Examiner’s
position, we sustain the 35 U.S.C. § 103 rejection of claims 1, 4, 6-9, 12, 13,
and 16 over Sakai and Chang and of claims 10, 11, and 17 over Sakai,
Chang and Binnig.

DECISION
The decision of the Examiner rejecting claims 1, 4, 6-13, 16, and 17 is
affirmed.

8
Appeal 2007-4389
Application 10/406,440

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 1.136(a)(1)(iv).

AFFIRMED

\

tdl/gw

BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
9