Ex Parte Motonishi

Patent Trial and Appeal Board

Sep 25, 2013

11388619 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/388,619 03/23/2006 Michiharu Motonishi 13652-0009 7736
757 7590 09/25/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
WATKO, JULIE ANNE
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHIHARU MOTONISHI
____________

Appeal 2011-005612
Application 11/388,619
Technology Center 2600
____________

Before JOHN A. JEFFERY, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3, 5, 7-10, 12-15, 20-25, 27, 28, 30-32, 34, 36, and 37, which
constitute all the claims pending in the application. Claims 2, 4, 6, 11, 16-
19, 26, 29, 33, 35, and 38 have been canceled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
1

We reverse.

1
Appellant’s representative waived attending an oral hearing scheduled for
this appeal on September 5, 2013.
Appeal 2011-005612
Application 11/388,619

2
STATEMENT OF THE CASE
Appellant’s invention relates to a magnetic head assembly that
includes an oscillatable load beam, a flexure, and a slider. See generally
Abstract; Spec. 3:22-27, Fig. 1. Claim 1 is illustrative and reads as follows,
with key limitations emphasized:
1. A magnetic head assembly comprising:
a flexure coupled to a leading end of an oscillatable load beam, the
leading end extending to a space above a recording medium, the flexure
comprising:
a fixing portion fixed to the load beam;
an attachment portion extending from the fixing portion, the
attachment portion comprising:
a pair of outriggers extending from opposite ends of the
fixing portion toward the leading end of the load beam;
a connector connecting leading ends of the pair of
outriggers; and
a blade spring extending, in a space flanked by the pair of
outriggers, from a center portion of the connector toward the
fixing portion;
a displacing part elastically displaceable and connected to a
trailing end of the blade spring;
a slider fixed to a surface of the displacing part opposite to the
recording medium; and,
at least two slits, the at least two slits dividing the attachment
portion into a plurality of portions elastically supporting the displacing
part;
wherein a first slit of the at least two slits is positioned in an
approximate center of the blade spring and extends in a longitudinal
direction of the load beam, extends to a boundary between the blade spring
and the displacing part, and is not formed in the displacing part, and a
second slit of the at least two slits extends in a direction that is transverse to
the first slit.
The Rejection
The Examiner rejected claims 1, 3, 5, 7-10, 12-15, 20-25, 27, 28, 30-
32, 34, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over Frater
Appeal 2011-005612
Application 11/388,619

3
(US 5,353,181; issued Oct. 4, 1994), Harrison (US 5,452,158; issued Sept.
19, 1995), Yao (US 2006/0082917 Al; published Apr. 20, 2006; filed Oct.
18, 2004), and Ohdaira (US 4,792,875; issued Dec. 20, 1988). Ans. 3-7.
ANALYSIS
Claims 1, 3, 5, 7-10, 12-15, and 20-22
Regarding illustrative claim 1, the Examiner finds that Frater teaches
all the recited elements, except the recited arrangement of the two slits. Ans.
3-4. The Examiner relies on Frater’s description of a flexure 104 with two
leg sections 140, each having a groove or recess 200 which runs along the
center portion of the respective leg section 140 in a longitudinal direction
(citing Frater, col. 4, ll. 21-23) as disclosing the recited two slits dividing the
attachment portion into portions elastically supporting the displacing part.
See Ans. 4 (citing Frater’s groove or recess 200 as a recited slit, Frater’s two
leg portions 140 as the recited pair of outriggers 140, and Frater’s flexure
104 as the recited flexure).
The Examiner acknowledges that Frater is silent regarding the
claimed positions of the slits. Ans. 4. Relying on various positions of slits
shown in three references—namely, Harrison’s Figure 3, Yao’s Figure 4,
and Ohdaira’s Figure 3, the Examiner finds that a wide variety of positions
are within the level of an ordinarily skilled artisan. Ans. 4. The Examiner
concludes it would have been obvious to an ordinarily skilled artisan “to
arrive at the claimed positions of slits in the course of routine design
choice . . . because the functioning of the device is not changed by the
position.” Ans. 4 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)).
Appeal 2011-005612
Application 11/388,619

4
Appellant asserts that the Examiner erred because the recited
arrangement of the slits is not a design choice because the location of the
slits affects the function of the device. Reply Br. 2-3; App. Br. 8-11; see
also App. Br. 6-8; Reply Br. 3-4. In response, the Examiner maintains that
Appellant’s Specification discloses multiple slit positions and indicates “the
position of slits is non-critical.” Ans. 7 (citing Spec. 18-19). In particular,
the Examiner indicates:
In terms of the width, length, and position of the vertical slits
and the horizontal slits, embodiments of the present invention
are not limited to the first to fourth embodiments illustrated
in the drawings .... Therefore, the width, length, and position of
the vertical slits and the horizontal slits may not be
symmetrical with respect to the longitudinal line 0 of the load
beam 10.
Id.
Contrary to the Examiner’s finding that the position of the slits does
not change the functioning of the device, Appellant’s Specification indicates
that the function of the magnetic head assembly is affected by the slit
position—namely, “an oscillation characteristic of the tongue-shaped piece
25 [corresponding to the recited displacing part] may be easily changed or
adjusted by arranging the pattern and shape of the slits . . . .” (Spec. 18:15-
19). See also Spec. 18:9-11 (indicating “the bending stiffness and twisting
stiffness of the flexure 20 can be reduced by the slits more than in a typical
flexure”); Spec. 5:18-20 (indicating a displacing part corresponds to tongue-
shaped piece 25).
Appellant discloses four embodiments in the Specification, each of
which shows a different slit pattern. See Spec. 8:16-20, 11:26-27, 13:27-28,
15:20-21; Figs. 1, 5-7. Twelve of thirteen claims depending from claim 1
Appeal 2011-005612
Application 11/388,619

5
recite an additional limitation related to the arrangement of slits in the
magnetic head assembly. See claims 3, 5, 7-10, 12-15, 20, and 21.
Therefore, we do not agree with the Examiner (Ans. 4-5) that the
recited arrangement of the slits is a design choice that does not affect the
functioning of the magnetic head assembly. Accordingly, we do not sustain
the rejection of independent claim 1 and its dependent claims 3, 5, 7-10, 12-
15, and 20-22.
Claims 23-25, 27, 28, 30-32, 34, 36, and 37
Independent claim 23 recites similar limitations concerning two slits,
except that claim 23 recites a first slit “is positioned in an approximate
center of the attachment portion,” whereas claim 1 recites a first slit “is
positioned in an approximate center of the blade spring” (emphasis added).
In rejecting claim 23, the Examiner relies on the same rationale used in
rejecting claim 1 for the recited positioning of the slits. Ans. 6-7.
We reach a similar result here as we did regarding claim 1 because we
are persuaded of Examiner error for the same reason noted above with
regard to claim 1. Therefore, we do not sustain the rejection of independent
claim 23 and its dependent claims 24, 25, 27, 28, 30-32, 34, 36, and 37.

CONCLUSION
The Examiner erred in rejecting claims 1, 3, 5, 7-10, 12-15, 20-25, 27,
28, 30-32, 34, 36, and 37 under § 103.

Appeal 2011-005612
Application 11/388,619

6
ORDER
The Examiner’s decision rejecting claims 1, 3, 5, 7-10, 12-15, 20-25,
27, 28, 30-32, 34, 36, and 37 is reversed.

REVERSED

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