Ex parte Palmer

Board of Patent Appeals and Interferences

Oct 25, 2000

08548938 (B.P.A.I. Oct. 25, 2000)

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The opinion in support of the decision being entered
today was not written for publication and is not
precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DARRELL D. PALMER
________________
Appeal No. 1998-2515
Application 08/548,938
________________
ON BRIEF
________________
Before JERRY SMITH, FLEMING and BLANKENSHIP, 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 claims 29-48. Claims 1-28
have been canceled, and claims 49-52 stand withdrawn from
consideration as being directed to a nonelected invention. An
amendment after final rejection was filed on June 30, 1997 and
was entered by the examiner.
Appeal No. 1998-2515
Application 08/548,938
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The disclosed invention pertains to a slider
suspension assembly for a data-recording disk file, and more
particularly, to an improved slider suspension assembly and to
a method for mechanically and electrically attaching the
slider to the suspension.
Representative claim 29 is reproduced as follows:
29. A head gimbal assembly comprising:
a load beam;
a flexure coupled to said load beam;
an integrated cable formed at least partially within said
load beam along the length thereof, said integrated cable
having a dielectric layer and a plurality of conductors
disposed upon said dielectric layer;
a slider mounted to said flexure having a plurality of
conductive pads disposed along a selected edge thereof;
a loop within said integrated cable of a radius
sufficient to cause said integrated cable to overlie said
selected edge of said slider; and
at least one aperture within said dielectric layer within
said loop of said integrated cable overlying said plurality of
conductive pads such that said plurality of conductors are in
electrical contact with said plurality of conductive pads.
Appeal No. 1998-2515
Application 08/548,938
This reference is referred to as Hutchinson Technology1
in the examiner’s answer.
Since Oberg ’094 and Oberg ’833 disclose essentially2
the same subject matter, we will simply refer to Oberg as
designating Oberg ’094 or Oberg ’833.
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The examiner relies on the following references:
Oberg (Oberg ’094) 4,819,094 Apr. 04, 1989
Oberg (Oberg ’833) 2,193,833 Feb. 17, 19881
(UK application)
Claims 29, 33, 39 and 43 stand rejected under 35
U.S.C.
§ 102(b) as being anticipated by the disclosure of Oberg ’094
or Oberg ’833 . Claims 30-32, 34-38, 40-42 and 44-48 stand2
rejected under 35 U.S.C. § 103. As evidence of obviousness
the examiner offers Oberg.
Rather than repeat the arguments of appellant 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 rejections advanced by the examiner and the
Appeal No. 1998-2515
Application 08/548,938
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evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, the appellant’s arguments set forth in the briefs
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that Oberg does not support the rejection of any of
claims 29-48. Accordingly, we reverse.
Appellant has indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 3]. Consistent with this indication
appellant has made no separate arguments with respect to any
of the claims on appeal. Since there are two different
rejections before us, appellant’s grouping will be accepted as
a representation that all the claims within each rejection
will stand or fall together. Note In re King, 801 F.2d 1324,
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702
F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly,
we will only consider the rejections against a single claim
Appeal No. 1998-2515
Application 08/548,938
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from each separate rejection as representative of all the
claims on appeal.
We consider first the rejection of claims 29, 33, 39
and 43 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of Oberg. 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).
With respect to representative, independent claim 29,
the examiner indicates how he reads the claim on the
disclosure of Oberg [answer, pages 3-4]. Appellant argues
that there is no disclosure in Oberg of conductive pads
disposed along a selected edge of the slider and an aperture
within a dielectric layer which is overlying said plurality of
conductive pads and connected as recited in claim 29. The
Appeal No. 1998-2515
Application 08/548,938
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examiner responds that conductive pads are notoriously well
known and are necessarily included on the slider for
connection to the two conductors [answer, pages 5-6]. The
examiner also responds that the point where the conductors
exit the insulation is an aperture in the dielectric layer as
recited in the claim [id., pages 6-7].
The examiner has failed to establish a prima facie
case of anticipation because the examiner has ignored certain
language of the claim. Specifically, claim 29 recites that a
plurality of conductive pads are disposed along a selected
edge of the slider. Although we agree with the examiner that
electrical connection between the conductors and the slider in
Oberg must be present, there is no requirement in Oberg or any
disclosure that the electrical connection is along a selected
edge of the slider. In fact, the drawings of Oberg appear to
show the conductors and the dielectric entering the interior
of the slider assembly. We agree with appellant that the
conductors of Oberg may “traverse a substantial portion of the
body of slider 202 before being electrically coupled to a
plurality of conductive pads” [reply brief]. Thus, the
examiner has failed to demonstrate the presence of conductive
Appeal No. 1998-2515
Application 08/548,938
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pads in Oberg located as recited in the claimed invention.
Since the conductive pads of the claimed invention are
not disclosed by Oberg, the claimed location of the aperture
in the dielectric is also not disclosed by Oberg regardless of
whether the examiner’s definition of aperture makes any sense.
Since all the limitations of claims 29, 33, 39 and 43 are not
present within the disclosure of Oberg, the anticipation
rejection of these claims is not sustained.
We now consider the rejection of claims 30-32, 34-38,
40-42 and 44-48 under 35 U.S.C. § 103. This rejection is
based on the examiner’s erroneous finding of anticipation as
discussed above. Therefore, the examiner has also failed to
establish a prima facie case of obviousness. Accordingly, we
also do not sustain the obviousness rejection of these claims.
In summary, we have not sustained any of the
examiner’s prior art rejections based on Oberg. Therefore,
the decision of the examiner rejecting claims 29-48 is
reversed.
REVERSED
Appeal No. 1998-2515
Application 08/548,938
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JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1998-2515
Application 08/548,938
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Andrew J. Dillon
Felsman, Bradley, Gunter
& Dillion, LLP
Suite 350 Lakewood on the Park
7600B North Capital of Texas Highway
Austin, TX 78731