Ex parte Pace et al.

Board of Patent Appeals and Interferences

Nov 14, 2000

08541656 (B.P.A.I. Nov. 14, 2000)

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not written for publication and is not binding precedent of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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID R. PACE, KEN L. CHANG, ALI HOSSEINZADEH
and MAZIAR AMIRKIAI
__________
Appeal No. 1998-0819
Application 08/541,656
___________
ON BRIEF
___________
Before BARRETT, FLEMING, and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 2 through 9 and 14 through 17, all of the claims
pending in the application. Claims 1 and 10 through 13 are
canceled.
The invention relates to head suspension assemblies for
Appeal No. 1998-0819
Application 08/541,656
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miniature fixed disk drives. In particular, the invention is
directed to low profile head suspension assemblies.
Independent claim 2 is reproduced as follows:
2. A rotary voice coil actuator assembly for a high
capacity disk drive comprising:
an E-block, said E-block comprising at least one short
tine;
at least two rigid and substantially flat elongated tine
extenders having a height less than substantially 0.300
millimeters fastened at one end to said at least one short
tine in a first attachment region;
at least two peg-leg load beams attached to said at least
two tine extenders in a second attachment region of said at
least two rigid elongated tine extenders, each of said at
least two peg-leg load beams having a height substantially
less than said at least two elongated tine extenders, said
peg-leg load beams having at least two tabs formed integrally
thereon and each peg-leg load beam being defined by a
curvilinear portion extending from one end of each peg-leg
load beam, said curvilinear portion being further defined by a
curved edge and a substantially straight edge and includes at
least two marginal tabs defined along said substantially
straight edge;
at least two data transducer head sliders affixed to a
head extension formed on the other end of each of said at
least two peg-leg load beams, opposite the curvilinear
portion, and including plural electrical connections to a data
transducer head located thereon; and
at least two head conductor wires, each of said at least
two head conductor wires connected to said plural electrical
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Application 08/541,656
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connections, said at least two head conductor wires dressed
along one of said reverse flange peripheral edge portions and
bonded by a bonding agent to each of said at least two
marginal tabs.
The references relied on by the Examiner are as follows:
Foote 4,994,931 Feb. 19,
1991
Hinlein 5,003,420 Mar. 26,
1991
Jurgenson 5,172,286 Dec.
15, 1992
Aikawa 3-192513 Aug. 22, 1991
(Japanese)
Claims 2 through 8, 14 and 17 stand rejected under 35
U.S.C. § 103 as being unpatentable over Foote, Aikawa and
Hinlein. Claims 9, 15 and 16 stand rejected under 35 U.S.C. §
103 as being unpatentable over Foote, Jurgenson, Hinlein and
Aikawa.
OPINION
After careful review of the evidence before us, we agree
with the Examiner that claims 2 through 8, and 14 through 17
are properly rejected under 35 U.S.C. § 103. Thus, we will
sustain the rejection of these claims but we will reverse the
rejection of the remaining claims on appeal for the reasons
set forth.
Appeal No. 1998-0819
Application 08/541,656
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At the outset, we note the Appellants’ statement on page
4 of the brief that claims 2 through 8, 14 and 17 are to be
considered as a single group, group I, and claims 9, 15 and 16
are to be considered as a single group, group II ,. We note
that Appellants argue the claims based upon these above
groupings in the brief. 37 CFR § 1.192 (c)(7) (July 1, 1996)
as amended at 60 Fed. Reg. 14518 (March 17, 1995), which was
controlling at the time of Appellants’ filing the brief,
states:
For each ground of rejection which appellant contests and
which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall
decide the appeal as to the ground of rejection on the
basis of that claim alone unless a statement is included
that the claims of the group do not stand or fall
together and, in the argument under paragraph (c)(8) of
this section, appellants explain why the claims of the
group are believed to be separately patentable. Merely
pointing out differences in what the claims cover is not
an argument as to why the claims are separately
patentable.
We will, thereby, consider the Appellants’ claims 2 through 8,
14 and 17, group I, as standing or falling together and we
will treat claim 2 as a representative claim of that group.
In addition, we will consider the Appellants’ claims 9, 15 and
16, group II, as standing or falling together and we will
Appeal No. 1998-0819
Application 08/541,656
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treat claim 9 as a representative claim of that group.
On page 6 of the Brief, Appellants quote the Examiner’s
statement as item (1) that Foote shows a rotary actuator
assembly in figures 1 through 4 that includes: storage disks
1a; E-block 5 with an offset ear (Figure 4) with an indented
mirror-arm opening between the ear; short tines 5c attach by
bolts 5e; heads and gimbals; elongated tine extenders 3d to
which load beams 3b are attached.” Appellants state that they
agree in part but disagree as to the gimbals. The Examiner’s
response on page 6 of the answer stating that to use a gimbal
in Foote would have been inherent. The Examiner points to the
background section of Foote, column 1, lines 46 through 50,
for the basis of finding inherency stating that “thin,
lightweight spring material
providing flexible mobility of the magnetic head,” actually
describe the structure in use of a gimbal. Appellants do not
respond to this argument.
We note that claim 2 scope does not require gimbals.
Because the claims stand or fall together and claim 2 is the
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representative claim, we fail to find that this limitation is
before us for our consideration. In any event, we agree with
the Examiner that the Foote structure inherently includes
gimbals.
On page 6 of the brief, Appellants disagree with the
Examiner’s statement that Hinlein shows a peg-leg low beam
with a curvilinear portion. On page 7 of the Examiner’s
answer, the Examiner argues that Hinlein shows a peg-leg low
beam in figure 1 with a curved portion generally shown as
element 28 and linear portions generally shown as element 24
with tabs 50 mounted on the linear edge of the curvilinear
portion. We note that the Appellants have not responded to
this argument.
Upon our careful review of Hinlein figure 1, we find that
Hinlein does show a peg-leg low beam being defined by a
curvilinear portion extending from one end of the peg-leg low
beam, the curvilinear portion being further defined by a
curved edge and substantially straight edge and includes at
least two marginal tabs defined along said substantially
straight edge as recited in Appellants claim 2. We agree with
Appeal No. 1998-0819
Application 08/541,656
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the Examiner’s findings that Hinlein shows in figure 1 a
curved portion, element 28, in a linear portion, element 24,
and tabs, element 50, mounted on the linear edge of the
curvilinear portion.
On page 6 of the brief item (6), and in the argument
section pages 7 and 8 of the brief, Appellants argue that
while the Appellants conceded that the elements claimed
individually are old, Appellants maintain that the combination
is not suggested by the prior art. Appellants argue that it’s
only the Appellants’ specification that provides the
motivation to rebuild Foote’s head suspension assemblies as
what was done in the Examiner’s final rejection and thus is
improper use of hindsight.
The Federal Circuit states that “[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification.” In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-
84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
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Application 08/541,656
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established that “[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to
possible solutions to that problem.” Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1630 (Fed. Cir. 1996), citing In re Rinehart, 531 F.2d
1048, 1054, 189 USPQ 143, 149 (CCPA 1976) (considering the
problem to be solved in a determination of obviousness). The
Federal Circuit reasons in Para-Ordnance Mfg. Inc. v. SGS
Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237,
1239-40 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996),
that for the determination of obviousness, the court must
answer whether one of ordinary skill in the art who sets out
to solve the problem and who had before him in his workshop
the prior art, would have been reasonably expected to use the
solution that is claimed by the Appellants. However,
“[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention.” Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
Appeal No. 1998-0819
Application 08/541,656
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USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13. In
addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50
USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
We note that the Appellants have not argued that the
Examiner’s reasons to combine the prior art are in error. In
particular we note that on pages 4 and 5 of the Examiner’s
answer, the Examiner provides specific findings as to the
suggestions to combine the prior art references. In
particular, the Examiner finds that one of ordinary skill
would have been motivated to use a peg-leg low beam because
the extended legs allow for the wires to be mounted further
down the load beam then conventional load beam, thereby
providing more accurate and secure placement of the wires.
The Examiner further finds that one of ordinary skill in the
art would have been further motivated to make the modification
because the reduced thickness of the Hinlein load beam allows
Appeal No. 1998-0819
Application 08/541,656
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for a reduction in the height of the disk drive. We further
buttress the Examiner’s findings by pointing out that in
column 1, lines 50 through 64, Hinlein states that the object
of the invention is to reduce the height of the arm while
maintaining the same degree of thickness, thereby allowing
disks and multiple disk drive to be spaced closer together.
Hinlein further states that the size of the disk drive is
reduced or, alternately, more disks can be placed in the disk
drive of a predetermined size. Therefore, we find
that the Appellants have not pointed to any error on the part
of the Examiner for combining these prior art references.
We note that Appellants have chosen not to argue any of
the other specific limitations of claims 2 as a basis for
patentability. As stated by our reviewing court in In re
Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991), “[i]t is not the function of this court to
examine the claims in greater detail that argued by an
appellant, looking for nonobvious distinctions over the prior
art.” 37 CFR § 1.192(a) (July 1, 1996) as amended at
Appeal No. 1998-0819
Application 08/541,656
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60 Fed. Reg. 14518 (March 17, 1995), which was controlling at
the time of Appellants filing the brief, states as follows:
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to maintain
the appeal. Any arguments or authorities not included in
the brief may be refused consideration by the Board of
Patent Appeals and Interferences, unless good cause is
shown.
Also, 37 CFR § 1.192(c)(8)(iv) states:
For each rejection under 35 U.S.C. § 103, the argument
shall specify the errors in the rejection and, if
appropriate, the specific limitations in the rejected
claims which are not described in the prior art relied on
in the rejection, and shall explain how such limitations
render the claimed subject matter unobvious over the
prior art. If the rejection is based upon a combination
of references, the argument shall explain why the
references, taken as a whole, do not suggest the claimed
subject matter, and shall
include, as may be appropriated, an explanation of why
features disclosed in one reference may not properly be
combined with features disclosed in another reference. A
general argument that all the limitations are not
described in a single reference does not satisfy the
requirements of this paragraph.
Thus, 37 CFR § 1.192 provides that this board is not
under any greater burden than the court which is not under any
burden to raise and/or consider such issues. Therefore, we
are not required to raise and/or consider such issues and we
Appeal No. 1998-0819
Application 08/541,656
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will thereby sustain the Examiner’s rejection of claims 2
through 8, 14 and 17 under 35 U.S.C. § 103.
In regards to the rejection of group II claims,
Appellants argue on page 7 that Jurgenson does not show or
teach swaging outside of the locus or periphery of the data
storage disk. We note that Appellants’ claim 9 does require
“at least one head suspension assembly attached to at least
one short tine by swaging of a swaging boss thereof into an
opening define on the planar surface of the short tine and
support a data transducer head assembly in flying proximity to
a data storage surface of the rotating data storage disk, the
data transducer head assembly being affixed to a head gimbal
portion of the head suspension
assembly at a distal end thereof and facing away from the head
suspension assembly in the same direction as the swage boss.”
We note that the Examiner has not found any specific
evidence as to a teaching of this limitation or why one of
ordinary skill in the art would be motivated to make such a
Appeal No. 1998-0819
Application 08/541,656
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modification. Therefore, we will not sustain the rejection of
claims 9, 15 and 16.
In view of the foregoing, the decision of the Examiner
rejecting claims 2 through 8, 14 and 17 under 35 U.S.C. § 103
is affirmed; however, the decision of the Examiner rejecting
claims 9, 15 and 16 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1998-0819
Application 08/541,656
14
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:pgg
David B. Harrison
Quantum Corporation
500 McCarthy Boulevard
Appeal No. 1998-0819
Application 08/541,656
15
Milpitas, CA 95035