Ex parte Okamura

Board of Patent Appeals and Interferences

May 25, 1999

08011682 (B.P.A.I. May. 25, 1999)

Application for patent filed February 1, 1993,1
entitled "Positioning Control System," which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of
Japanese Application 4-016774, filed January 31, 1992.
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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journal and (2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte EIJI OKAMURA

Appeal No. 96-1895
Application 08/011,6821

HEARD: May 7, 1999

Before HAIRSTON, BARRETT, and LALL, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1895
Application 08/011,682
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 4, and 6-14.
We reverse.
BACKGROUND
The disclosed invention is directed to a positioning
control system for positioning a device which has mechanical
resonance characteristics, such as a magnetic head of a
magnetic disk drive. The control system has an arithmetic
control means for generating a drive signal based on a
position signal from a position detecting means, which
includes a low pass filter for suppressing the resonance
frequencies of the device. In the past, as shown in
appellant's figure 3, filters have used a notch filter group
comprising a number of notch filters connected in cascade to
eliminate many mechanical resonances simultaneously
(specification, page 8). Appellant's invention, as shown in
figure 6, has an arithmetic control means 3 with a low pass
filter 7 comprising a notch filter 5 and an elliptic
function filter 6 "which replace the notch filter group of
the prior art" (specification, page 13, lines 21-22, as
amended). Appellant also uses a switch, as shown in
Appeal No. 96-1895
Application 08/011,682
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figure 13, to turn the low pass filter OFF during a seek
operation and ON during a settling operation.
Claim 1 is reproduced below.
1. A positioning control system comprising:
a controlled device which has resonance
characteristics, including resonance frequencies, and
is positionable at a designated position;
position detecting means for detecting a moved
position of the controlled device;
arithmetic control means for generating a drive
signal based on a position detection signal from the
position detecting means and based on said designated
position; and
drive means for moving the controlled device in
accordance with said drive signal from said arithmetic
control means,
said arithmetic control means includes a low pass
filter which has an abrupt slope and a discontinuous
pole in the gain-frequency characteristics thereof, so
that said resonance frequencies of said controlled
device can be suppressed by means of said low pass
filter, said arithmetic control means further
comprising switch means for selectively turning said
low pass filter off and on
wherein said switch means selectively turns said
low pass filter off during a seek operation of said
controlled device and on during a settling operation of
said controlled device and wherein said lowpass [sic]
filter comprises a notch filter having said abrupt
slope for suppressing a lowest resonance frequency and
an elliptical function filter having said pole for
suppressing a second lowest, or higher, resonance
frequency.
Appeal No. 96-1895
Application 08/011,682
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The examiner relies on appellant's admission "that the
species of magnetic head, optical head and print head
positioning system are not believed to be patentably
distinct" (page 4 of the Amended Brief received
September 15, 1995, Paper No. 21) and the following prior
art:
Abed 4,949,201 August 14,
1990
Kanda et al. (Kanda) 5,168,398 December 1,
1992
(filed July 25,
1990)
B.P. Lathi, Modern Digital and Analog Communication
Systems, (2d ed., Holt, Rinehart and Winston, Inc.,
1989), pages 88-82.
The examiner has withdrawn the objection to the
specification under 35 U.S.C. § 112, first paragraph, for
failing to provide an adequate written description of the
invention and the best mode. The examiner had not rejected
any claims based on these grounds.
The examiner has also withdrawn the withdrawal of
claims 7 and 8 under 37 CFR § 1.142(b) as being directed to
non-elected species and has entered a new ground of
rejection as to these claims in the Examiner's Answer.
Appeal No. 96-1895
Application 08/011,682
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Claims 1, 6/1, 9, and 11-14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Abed and Kanda.
Claims 4, 6/4, and 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Abed and Kanda, further in
view of Lathi.
Claims 7/1 and 8/1 stand rejected under 35 U.S.C. § 103
as being unpatentable over Abed and Kanda, further in view
of appellant's admission. This is a new ground of rejection
added in the Examiner's Answer.
Claims 7/4 and 8/4 stand rejected under 35 U.S.C. § 103
as being unpatentable over Abed, Kanda, and Lathi, further
in view of appellant's admission. This is a new ground of
rejection added in the Examiner's Answer.
We refer to the Final Rejection (Paper No. 12) (pages
referred to as "FR__") and the Examiner's Answer (Paper
No. 22) (pages referred to as "EA__") for a statement of the
examiner's position and to the Amended Appeal Brief (Paper
No. 21) (pages referred to as "Br__") and the Reply Brief
(Paper No. 23) (pages referred to as "RBr__") for a
statement of appellant's arguments thereagainst.
OPINION
Appeal No. 96-1895
Application 08/011,682
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Appellant argues that Abed and Kanda do not disclose
the following features of the independent claims: (1) "a
configuration of a positioning control system, in which a
low pass filter is constituted by an adequate combination of
a notch filter and an elliptical function filter (Br12); and
(2) "turning ON the low pass filter by a switching operation
when a seek operation proceeds to a track following
operation" (Br12).
(1) Low pass filter comprising notch filter
and elliptical function filter
Claim 1 recites a positioning control system having a
"low pass filter which has an abrupt slope and a
discontinuous pole in the gain-frequency characteristics
thereof . . . wherein said lowpass [sic] filter comprises a
notch filter having said abrupt slope for suppressing a
lowest resonance frequency and an elliptical function filter
having said pole for suppressing a second lowest, or higher,
resonance frequency." Claim 9 recites a positioning control
system having a "low pass filter which has an abrupt slope
and a discontinuous pole in the gain-frequency
characteristics thereof . . . wherein said low pass filter
Appeal No. 96-1895
Application 08/011,682
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comprises a notch filter having said abrupt slope and an
elliptical function filter having said pole, so that all the
resonance frequencies occurring in said resonance
characteristics can be suppressed." Claim 14 recites a
positioning control system having a "low pass filter which
has an abrupt slope and a discontinuous pole in the
gain-frequency characteristics thereof . . . wherein said
low pass filter is constituted by a combination of a notch
filter having said abrupt slope and an elliptical function
filter having said pole, so that all resonance frequencies
occurring in said resonance characteristics can be
suppressed." Therefore, the independent claims require a
low pass filter having both a notch filter and an elliptical
function filter.
The examiner finds that "Abed, see Fig. 3 at 149,
col. 8, lines 3-9, Fig. 11, and col. 13, lines 51-68 (the
analog filter of Abed is considered to be a part of Abed's
'arithmetic control means'), discloses the invention as
claimed except for switching his filter on and off and
setting an initial condition when the filter is off" (FR4;
EA4). Element 149 in figure 3 is a resonant filter. Abed
Appeal No. 96-1895
Application 08/011,682
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states (col. 8, lines 6-8): "In the preferred embodiment,
applicant utilities [sic] an elliptic filter having a
combined low pass and notch response . . . ." Figure 11
shows a schematic diagram of the resonant filter 149 of
figure 3. Abed describes that the components are
"configured to provide an elliptical filter having the
following combined low pass and notch transfer function
T(S)" (col. 13, lines 55-57).
Appellant responds that "[a]s discussed on page 7 of
Amendment B [sic, Amendment C received March 13, 1995, Paper
No. 14], the disclosure cited by the Examiner contains no
description of a low pass filter comprising an adequate
combination of a notch filter and an elliptical function
filter" (Br13). We note that the brief should be
self-contained and not refer back to other papers.
Arguments not in the brief may be refused consideration.
Compare 37 CFR § 1.192(a) (1994) ("Any arguments or
authorities not included in the brief may be refused
consideration by the Board of Patent Appeals and
Interferences." [Emphasis added.]) with § 1.192(a) (1995)
("Any arguments or authorities not included in the brief
Appeal No. 96-1895
Application 08/011,682
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will be refused consideration by the Board of patent [sic]
Appeals and Interferences, unless good cause is shown."
[Emphasis added.]). Nevertheless, we have examined the
arguments at page 7 of Amendment C and find no argument why
the cited portions of Abed do not describe a low pass filter
comprising a notch filter and an elliptical function filter;
appellant merely states that they do not.
Notwithstanding the lack of argument or explanation by
appellant in the brief, it is evident that the resonant
filter 149 in Abed does not meet the express claim
limitations of a "low pass filter" having both a "notch
filter" and an "elliptical function filter." Abed has only
an "elliptical function filter." This point was brought out
at the oral hearing. The notch filter and elliptical
function filter are disclosed to be separate elements as
shown, for example, in figure 6, and are claimed as separate
elements. Abed discloses an "elliptic filter having a
combined low pass and notch response" (col. 8, lines 7-8).
As evident from appellant's figure 7, an elliptical filter
Appeal No. 96-1895
Application 08/011,682
Figure 7 was amended by the amendment filed2
September 16, 1994, (Paper No. 11) to change the label on the
dashed line (representing a conventional low pass filter) from
"(I)" to "(II)" and the label on the solid line (representing
an elliptic function filter) from "(II)" to "(I)" per the
examiner's Office action entered March 10, 1994, (Paper
No. 7).
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has a low pass region and a notch. The fact that the2
elliptical function filter has a notch does not meet the
requirement for a notch filter in addition to the elliptical
function filter, i.e., an elliptical function filter with a
notch is not the same thing as a notch filter in addition to
an elliptical function filter. For this reason, the
rejections of claims 1, 4, and 6-14 are reversed.
(2) Turning the low pass filter OFF and ON
Although we have reversed the rejections based on the
limitations to a notch filter and an elliptical function
filter, we address the arguments regarding turning the low
pass filter ON and OFF for completeness.
Claims 1 and 14 recite "switch means for selectively
turning said low pass filter off and on wherein said switch
Appeal No. 96-1895
Application 08/011,682
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means selectively turns said low pass filter off during a
seek operation of said controlled device and on during a
settling operation of said controlled device." Claim 9
contains a similar limitation, but refers to a "magnetic
head" instead of the "controlled device."
The examiner relies on Kanda, column 7, lines 32-39,
and the switching circuits 32, 35, integrator 30, and
arithmetic control means 31 (FR4; EA4-5). We look at the
teachings of Kanda as a whole.
Kanda discloses (col. 1, lines 18-21): "The seek
control operation of the servo system includes a speed
control operation, transient control operation (stop control
operation) and positioning control/operation (track
following operation)." So, Kanda discloses a speed control
operation, corresponding to appellant's "seek operation," a
transient control operation, and a track following (position
control) operation. Kanda also discloses (col. 1,
lines 28-31): "The transient control operation settles the
state of the head when a shift is made from the speed
control operation to the track following operation"
(emphasis added). Thus, the transient control operation and
Appeal No. 96-1895
Application 08/011,682
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track following (position control) operations in Kanda
correspond to the claimed "settling operation." Kanda has a
phase compensation circuit (PCC) 31, the purpose of which is
described as follows (col. 2, lines 25-30): "The phase
compensation circuit is composed of a filter, such as a
notch filter and lead lag filter, and adapted to suppress a
resonance point in a mechanical system, such as a carriage
and to prevent an oscillation phenomenon resulting from a
phase delay." Thus, PCC 31 serves the same purpose as
appellant's low pass filter.
The question is whether the PCC 31 in Kanda is turned
OFF and ON as recited in the claims. Kanda discloses
(col. 4, lines 54-66):
A fifth switching circuit 36 is turned ON at a time of
track following operation and delivers the position
signal PS from the position signal generator 20 to the
integrating circuit 30. An integrating circuit 30
integrates the position signal PS from the position
signal generator 20 to deliver a result of integration
to a PCC (phase compensation circuit) 31. PCC31 [sic]
is composed of a filter, such as a notch filter and a
lead lag filter. A third switching circuit 32 is
turned ON at a time of track following operation to
supply a compensated replica of the position signal
coming from PCC31 [sic] to the motor driving circuit
27.
Appeal No. 96-1895
Application 08/011,682
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The switching circuit 32 is turned OFF at the time of the
seek operation (col. 8, lines 43-46) and at the time of the
transient control operation (col. 9, lines 19-20) and ON
upon a shift from the transient control operation to the
track following control operation (col. 6, line 67, to
col. 7, line 3). The switching circuit 32 effectively
performs the function of switching PCC 31 ON and OFF.
Therefore, Kanda teaches a position control system, as
recited in the independent claims, where "switch means
selectively turns said low pass filter off during a seek
operation of said controlled device [or magnetic head in the
case of claim 9] and on during a settling operation of said
controlled device [or magnetic head in the case of
claim 9]."
Appellant argues that "[a]s described in Amendment B
[sic, C], Kanda et al. likewise fail to disclose that the
low pass filter (i.e., the PCC 31 of Kanda et al.) is turned
ON by a switching operation when a seek operation proceeds
to a track following operation" (Br15). Again, although
arguments belong in the brief, we have considered the
arguments in Amendment C (Paper No. 14). Appellant argues
Appeal No. 96-1895
Application 08/011,682
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(Paper No. 14, page 7): "The PCC 31 follows the integrator
30 in FIG. 1 of Kanda et al. The PCC 31 is composed of a
filter, such as a notch filter and a lead lag filter. Kanda
et al. never switch the PCC 31 ON/OFF since the response
time of the PCC 31 is not in issue." We disagree, since
Kanda effectively turns PCC 31 ON and OFF using the
switching circuit 32. Appellant argues that "[t]he section
of Kanda et al. cited by the Examiner (column 7,
lines 32-49) only describes how the integrator circuit 30 is
switched ON/OFF, and does not mention the PCC 31 being
switched ON/OFF" (Br15). Appellant fails to consider Kanda
as a whole, which does teach turning PCC 31 ON and OFF.
Kanda does not disclose why the filter PCC 31 is switched ON
and OFF; however, no function for the switch is recited in
the claim. Appellant has not argued in the brief that the
combination of Abed and Kanda is improper. Accordingly, we
are not persuaded that the combination of Abed and Kanda is
improper as to the limitation of switching a resonance
filter ON and OFF.
CONCLUSION
The rejections of claims 1, 4, and 6-14 are reversed.
Appeal No. 96-1895
Application 08/011,682
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REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM LALL )
Administrative Patent Judge )
Appeal No. 96-1895
Application 08/011,682
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Patrick G. Burns
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