Ex parte Naito et al.

Board of Patent Appeals and Interferences

Apr 23, 1998

08131332 (B.P.A.I. Apr. 23, 1998)

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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TAKASHI NAITO and TAMOTSU MAEDA
_______________
Appeal No. 96-0496
Application 08/131,3321
_______________
ON BRIEF
_______________
Before KRASS, SMITH, JERRY and BARRETT, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 6, 10, 17 and 18 and 5, 9, 11, 12 and 16, the latter five
having been amended by appellants in an amendment and reply
brief, filed October 5, 1995 (Paper No. 15), which amendment and
reply brief have been entered by the examiner. Also, in that
amendment, claims 1 through 4, 7, 8, 13 through 15 and 19 have

1 Application for patent filed October 4, 1993.
Appeal No. 96-0496
Application No. 08/131,332
2
been canceled. Thus, the claims on appeal before us are claims
5, 6, 9 through 12 and 16 through 18, all the claims pending in
the application.
The invention is directed to a disk cartridge best
illustrated by reference to representative independent claim 5,
reproduced as follows:
5. A disk cartridge, comprising:
a cartridge casing;
an overwrite type magneto-optical disk rotably mounted
in the cartridge casing; and
magnetic initializing means, including a yoke and
magnetic means disposed within the cartridge casing proximate to
a radial portion of the overwrite type magneto-optical disk so as
to generate a magnetic field sufficient for effecting overwrite
operation of the overwrite type magneto-optical disk;
wherein the yoke of the magnetic initializing means
comprises an upper arm and a lower arm arranged such that a
radial portion of the overwrite type magneto-optical disk passes
between the upper and lower arms of the magnetic initializing
means according to rotation thereof; and
wherein the magnetic means comprises a pair of upper
initializing magnets disposed in parallel on the inner surface of
the upper arm of the yoke and a pair of lower initializing
magnets disposed in parallel on the inner surface of the lower
arm of the yoke both of the upper and lower pairs of the
initializing magnets being arranged in parallel to a radial
direction of the disk such that a radial portion of the overwrite
type magneto-optical disk passes between the initializing magnets
during rotation thereof.
The examiner relies on the following references:
Nemoto et al. 4,750,064 Jun. 7, 1988
(Nemoto)
Appeal No. 96-0496
Application No. 08/131,332
3
Tadokoro et al. 4,908,809 Mar. 13, 1990
(Tadokoro)
Kato et al. 4,970,618 Nov. 13, 1990
(Kato)
Ishii 5,206,844 Apr. 27, 1993
Claims 5, 6, 9 through 12 and 16 through 18 stand rejected
under 35 U.S.C. ' 103. As evidence of obviousness, the examiner
cites Tadokoro with regard to claims 5 and 6, adding Nemoto with
regard to claims 9 through 12 and applying Tadokoro together with
Kato with regard to claims 16 through 18.
Reference is made to the briefs and answers for the
respective positions of appellants and the examiner.
OPINION
We reverse.
We agree with the examiner that Tadokoro clearly teaches a
disk cartridge with a cartridge casing, an overwrite type
magneto-optical disk and a magnetic initializing means, as set
forth in independent claims 5, 9, 11, 12 and 16, as well as the
yoke comprising an upper arm and a lower arm arranged as recited
in independent claims 5, 9, 11 and 12.
However, the subject matter of each of the independent
claims differs from that taught by Tadokoro in that which is
recited in the last paragraph in each claim. The examiner
recognizes these differences but contends that the claimed
Appeal No. 96-0496
Application No. 08/131,332
4
subject matter as a whole would have been obvious, within the
meaning of 35 U.S.C. ' 103. For the following reasons, we
disagree.
INDEPENDENT CLAIM 5
While Tadokoro discloses a “magnetic means” (8 in Figure 3;
8a and 8b in Figure 4), claim 5 requires “a pair of upper
initializing magnets disposed in parallel on the inner surface of
the upper arm of the yoke and a pair of lower initializing
magnets disposed in parallel on the inner surface of the lower
arm of the yoke…” [emphasis ours].
In order to provide for a pair of magnets in Tadokoro, the
examiner urges us to incorporate the bias magnet 9 disclosed
therein with the initializing magnet 8. However, not only has
the examiner failed to provide us with a cogent reason for doing
so (the rationale of “to increase and stabilize the effect of the
magnetic field of the initializing magnets” on page 4 of the
supplemental answer is not persuasive), but Tadokoro actually
teaches away from making such a combination. The bias magnet 9
is taught by Tadokoro as being part of the prior art to him and
Tadokoro’s disclosed invention “eliminates the need for an
external bias magnet 9 as in the prior art” [column 6, lines 14-
15]. Further, at column 6, lines 20-24, Tadokoro states that
…since the initializing magnet 8 is built into the
housing 11 of the information-carrying medium…there is
Appeal No. 96-0496
Application No. 08/131,332
5
no need to mount an initializing magnet inside the
optical reading and writing apparatus.
Clearly then, it is not reasonable for the examiner to
incorporate magnets 8 and 9 of Tadokoro in any manner to result
in the pairs of magnets recited in independent claim 5.
In response to appellants’ arguments, the examiner then
explains that it would have been obvious to replace the upper and
lower initializing magnets 8a and 8b of Tadokoro with pairs of
magnets because “mere duplication of the essential working parts
of a device involves only routine skill in the art” [page 10-
supplemental answer]. We disagree. The use of pairs of magnets,
as claimed, results in different magnetic fields and the use of
such pairs of magnets is functionally different from the use of a
single magnet on each arm of the yoke. Appellants’ modification
of the prior art through the use of pairs of magnets is more than
a “mere duplication ofYparts.” The examiner has not shown, to
our satisfaction, why it would have been obvious to replace each
single magnet on each arm of the yoke, as disclosed by Tadokoro,
with a pair of magnets, as set forth in independent claim 5.
Accordingly, we will not sustain the rejection of claims 5
and 6 under 35 U.S.C. ' 103.
INDEPENDENT CLAIM 9
This claim requires that the upper and lower arms of the
yoke be “respectively attached to indentations formed in the
Appeal No. 96-0496
Application No. 08/131,332
6
material of the cartridge casing at facing upper and lower sides
thereof.” See Figure 3(a) of the instant disclosure.
Recognizing this deficiency in Tadokoro, the examiner cites
Nemoto, noting the disclosure therein of a yoke 7 and a core
member 6 having indentations in which the yoke is attached. The
examiner contends that it would have been obvious to apply this
teaching of Nemoto to Tadokoro in order to provide for attachment
of the upper and lower arms of the yoke in Tadokoro to
indentations formed in the material of the cartridge. The
examiner’s rationale is that this would
(1) secure the yoke with the cartridge housing, (2)
support the casing of the disk cartridge to provide a
stronger disk cartridge in order to protect the inner
parts of the cartridge and (3) to reduce the thickness
and the material of the cartridge housing [page 6-
supplemental answer].
The examiner’s rationale appears to be based more on
hindsight gleaned from appellants’ disclosure than from any
teaching or suggestion from the applied references. The yoke 7
is not attached to any indentations “formed in the material of
the cartridge casing,” as required by claim 9. The indentations
in Nemoto are in the core member 6 which appears to rotate with
the spindle 4. The core member 6 is not the cartridge casing.
Accordingly, we will not sustain the rejection of claim 9 or 10
under 35 U.S.C. ' 103.
Appeal No. 96-0496
Application No. 08/131,332
7
INDEPENDENT CLAIMS 11 AND 12
Independent claim 11 requires that the upper and lower arms
of the yoke be “respectively provided with openings therein for
attachment to facing upper and lower sides respectively of the
cartridge casing via ultrasonic welding.” See instant Figure
3(b).
Independent claim 12 requires that the upper and lower arms
of the yoke be “respectively affixed to facing upper and lower
sides of the cartridge casing via an outsert molding process such
that the upper and lower arms are embedded in a material of which
the cartridge casing is formed.” See instant Figure 3(c).
The examiner contends that it would have been obvious to
attach the upper and lower arms of the yoke of Tadokoro, as
modified by Nemoto, “by an adhesive[,] or by an ultrasonic
welding with openings or by an outsert molding process” [page 7-
supplemental answer] because these are “well known means to
rigidly secure two components.” We disagree.
The rejection of claims 11 and 12 must fall because the
examiner’s premise, i.e. that Tadokoro is properly modified by
the teaching of Nemoto, is flawed for reasons supra. There is
clearly no teaching or suggestion by either Tadokoro or Nemoto,
or a combination thereof, of affixing the arms of the yoke in
Tadokoro either by ultrasonic welding, by providing the arms with
openings, or by an outsert molding process, as claimed.
Appeal No. 96-0496
Application No. 08/131,332
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Accordingly, we will not sustain the rejection of either
independent claim 11 or independent claim 12 under 35 U.S.C.
' 103.
INDEPENDENT CLAIM 16
Independent claim 16 requires a support portion “wherein a
support portion for supporting a peripheral edge of the overwrite
type magneto-optical disk is projected from at least one of
facing upper and lower sides of the cartridge casing.”
The examiner relies on Kato’s teaching of the
interconnection of bosses 15 and cylindrical portions 16 for
concluding that it would have been obvious to provide the
cartridge of Tadokoro with corner support portions, the rationale
being “to make the housing stronger” [page 8-supplemental
answer]. We disagree.
The bosses and cylindrical portions of Kato provide for the
interconnection of disk cartridge casings. However, there is no
indication, teaching or suggestion by Kato that these “support
portions” act, in any manner, to support “a peripheral edge of
the overwrite type magneto-optical disk,” as claimed.
Accordingly, we will not sustain the rejection of claims 16
through 18 under 35 U.S.C. ' 103.
CONCLUSION
We have not sustained the rejection of claims 5, 6, 9
through 12 and 16 through 18 under 35 U.S.C. ' 103.
Appeal No. 96-0496
Application No. 08/131,332
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Accordingly, the examiner’s decision is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lee E. Barrett )
Administrative Patent Judge )
Appeal No. 96-0496
Application No. 08/131,332
10
Philip M. Shaw, Jr.
Limbach & Limbach
2001 Ferry Building
San Francisco, CA 94111-4262