Ex Parte Morris et al

Board of Patent Appeals and Interferences

Feb 12, 2004

09481422 (B.P.A.I. Feb. 12, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN CHRISTOPHER MORRIS,
BRIAN ROBERT POLLOCK
and
TIMOTHY FRANCIS ELLIS
__________
Appeal No. 2002-1300
Application 09/481,422
__________
ON BRIEF
__________
Before JERRY SMITH, BARRETT, and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claim 17, which constitutes the
only claim remaining in the application.
Appeal No. 2002-1300
Application 09/481,422
2
The disclosed invention pertains to a disc drive having a
servo loop which includes a head and a servo controller. The
servo loop is coupled to a compensation means which compensates
the disc drive for repeatable run-out.
Sole claim 17 is reproduced as follows:
17. A disc drive comprising:
a servo loop including a head and a servo controller
capable of controlling the location of the head;
and
compensation means coupled to the servo loop for
compensating for repeatable run-out.
The examiner relies on the following reference:
Witt et al. (Witt) 5,535,072 July 9, 1996
Claim 17 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by the disclosure of Witt.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
Appeal No. 2002-1300
Application 09/481,422
3
of anticipation relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the disclosure of Witt does not fully meet the invention
as set forth in claim 17. Accordingly, we reverse.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he finds the claimed
invention to be fully met by the disclosure of Witt [answer,
Appeal No. 2002-1300
Application 09/481,422
4
page 3]. Appellants argue that the compensation means of
claim 17 is recited in means-plus-function form. They argue that
the disclosed structure corresponding to the compensation means
is limited to compensation values that are defined by the servo
loop’s transfer function. Appellants argue that Witt does not
determine the transfer function of his servo loop and does not
use the servo loop’s transfer function to generate the
compensation values. According to appellants, Witt does not
disclose the claimed compensation means nor an equivalent to the
claimed compensation means [brief, pages 4-7]. The examiner
responds that the compensation means of Witt performs the same
function as the claimed compensation means and the artisan would
instantly recognize that the claimed compensation means and the
prior art compensation means are equivalent for the function of
compensating for repeatable run-out [answer, pages 3-6].
Appellants respond that in order for the examiner to find an
equivalent, the examiner must find that the prior art element
performs the specific function in the claim in substantially the
same way and produces substantially the same result. Appellants
argue that the compensation means of Witt does not perform
Appeal No. 2002-1300
Application 09/481,422
5
compensation in the same way as the disclosed and claimed
compensation means [reply brief].
As noted from the arguments above, the issue in this
appeal is whether the structure disclosed by Witt can be said to
anticipate under 35 U.S.C. § 102 the compensation means of claim
17 when the compensation means is interpreted to mean the
corresponding structure disclosed in appellants’ specification
and its equivalents. Although the only corresponding “structure”
disclosed in appellants’ specification is a box labeled
“COMPENSATION CIRCUIT” in Figure 4, the compensation circuit
performs the process shown in Figures 5 or 6. Appellants’
argument is essentially that the prior art compensation means
must perform the function of the claimed compensation means in
substantially the same way to produce substantially the same
result.
We agree that appellants’ argument constitutes at least
one way in which an examiner can demonstrate equivalence between
the prior art and the claimed means. Four factors are pointed
out at MPEP § 2183 to demonstrate equivalence. Each of these
factors requires a factual analysis to support the ultimate
Appeal No. 2002-1300
Application 09/481,422
6
finding of equivalence. We agree with appellants that the
examiner has failed to provide any evidence, other than his mere
opinion, that the structure disclosed by Witt is an equivalent to
the claimed compensation means. The structure disclosed in Witt
clearly performs the claimed function in a different way from the
corresponding structure disclosed in appellants’ specification,
and the Witt structure is not clearly interchangeable with the
appellants’ disclosed structure. Since we find that appellants
have demonstrated non-equivalence, and since the rejection is
under 35 U.S.C. § 102, we do not sustain the examiner’s rejection
of claim 17.
Although we have found that Witt does not disclose an
equivalent structure under 35 U.S.C. § 102, MPEP § 2183 also
notes that the examiner should also consider whether the prior
art supports a rejection under 35 U.S.C. § 103. We have made no
findings as to whether the claimed compensation means would have
been obvious to the artisan within the meaning of 35 U.S.C.
§ 103. We leave it to the examiner to determine in the first
Appeal No. 2002-1300
Application 09/481,422
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instance whether a rejection under 35 U.S.C. § 103 is appropriate
based on Witt or on any other prior art.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS:psb
Appeal No. 2002-1300
Application 09/481,422
8
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