Ex parte PENG

Board of Patent Appeals and Interferences

Mar 19, 2001

08611657 (B.P.A.I. Mar. 19, 2001)

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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JIH-PING PENG
____________
Appeal No. 1999-0037
Application No. 08/611,657
____________
ON BRIEF
____________
Before HAIRSTON, BARRY, and BLANKENSHIP, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claim 15. We reverse.
BACKGROUND
The invention at issue in this appeal relates to disc
drives. A disc drive includes rigid discs mounted on a
spindle motor that causes the discs to spin and the surfaces
of the discs to pass under respective head gimbal assemblies
Appeal No. 1999-0037 Page 2
Application No. 08/611,657
(HGAs). HGAs carry transducers that write data to and read
data from the
surfaces of the discs. An HGA includes a hydrodynamic (e.g.,
air) bearing slider and a gimbal. The gimbal provides a
resilient connection that allows the slider to pitch and roll
while following the topography of the disc.
A conventional "catamaran" slider includes a pair of
raised side rails that face the surface of the disc and form
air bearing surfaces. As the disc rotates, the disc drags air
under the slider along the air bearing surfaces. As the air
passes beneath the side rails, skin friction on the air
bearing surfaces causes the air pressure between the disc and
the air bearing surfaces to increase which creates a
hydrodynamic lifting force that causes the slider to lift and
fly above the surface of the disc.
The appellant's slider features a slider body with a
leading edge, a trailing edge, and a length measured from the
leading edge to the trailing edge. First and second
longitudinal bearing surfaces are positioned on the slider
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Application No. 08/611,657
body and feature a leading portion, a trailing portion, and a
waist portion. The waist portion of at least one bearing
surface is wider than the leading and trailing portions and
has a maximum width at a position that is between 1/3 and 2/3
the length of the slider body.
Claim 15 follows:
15. A disc drive comprising:
a housing;
a rigid disc mounted in the housing for rotation
about a central axis, the disc having a recording
surface;
a rotary track accessing arm supported over the
recording surface; and
a slider carried by the track accessing arm for
communication with the recording surface, the slider
comprising:
a slider body having a leading edge, a
trailing edge and a length measured from the
leading edge to the trailing edge;
first and second longitudinal bearing
surfaces positioned on the slider body which
have a shape that concentrates positive
pressure, which is developed between the bearing
surfaces and the recording surface as the
recording surface rotates about the central
axis, between 1/3 to 2/3 the length of the
slider body;
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Application No. 08/611,657
a shallow recessed area positioned between
the first and second bearing surfaces; and
a third longitudinal bearing surface
positioned within the shallow recessed area
between the first and second longitudinal
bearing surfaces and extending between the
leading and trailing edges.
The reference relied on in rejecting the claims follows:
Read-Rite, European Patent Application 0600348A2,
June 8, 1994.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as obvious
over Read-Rite. Rather than repeat the arguments of the
appellant or examiner in toto, we refer the reader to the
brief and answer for the respective details thereof.
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejection advanced by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellant and examiner. After considering the record, we
are persuaded that the examiner erred in rejecting claim 15.
Accordingly, we reverse.
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Application No. 08/611,657
We begin by noting the following principles from
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
With these principles in mind, we consider the examiner's
rejection and the appellants' argument.
Admitting, "Read-Rite Corporation does not specify an
exact location for the waist portions (shown in Figures 4 and
5, for example)," (Examiner's Answer at 6), the examiner
asserts, "[b]ecause of this, a routineer in the art would have
located the waist at a position resulting from routine
optimization and experimentation within the teachings of Read-
Rite Corporation." (Id.) The appellants argue, "routine
optimization and experimentation would not result in a slider
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Application No. 08/611,657
having the structure recited in claim ... 15." (Appeal Br. at
8-9.)
“Claims are not interpreted in a vacuum, but are part of
and are read in light of the specification.” Slimfold Mfg.
Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1 USPQ2d
1563, 1566 (Fed. Cir. 1987) (citing Hybritech Inc. v.
Monoclonal Anti-bodies, Inc., 802 F.2d 1367, 1385, 231 USPQ
81, 94-95 (Fed. Cir. 1986); In re Mattison, 509 F.2d 563, 565,
184 USPQ 484, 486 (CCPA 1975)). Here, claim 15 specifies in
pertinent part the following limitations: "first and second
longitudinal bearing surfaces positioned on the slider body
which have a shape that concentrates positive pressure, which
is developed between the bearing surfaces and the recording
surface as the recording surface rotates about the central
axis, between 1/3 to 2/3 the length of the slider body ...."

The specification defines the limitations as follows.
Side rails 38 and 40 form longitudinal bearing
surfaces 62 and 64, respectively. Bearing surfaces
62 and 64 have a leading portion 66, a waist portion
68 and a trailing portion 70. Leading portion 66
includes a leading taper 72. Leading portion 66 and
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Application No. 08/611,657
trailing portion 70 have widths 74 and 76,
respectively. Widths 74 and 76 may be equal to one
another or different from one another. Waist
portion 68 widens from leading portion 66 to a
maximum width 78 and then narrows from maximum width
78 to trailing portion 70. Maximum width 78 is
greater than widths 74 and 76 and is positioned at a
distance 80 from leading edge 50.
...
Distance 80 is preferably between about 1/4 to
3/4, more preferably between about 1/3 to 3/4, and
most preferably between about 1/3 to 1/2 the length
58 of slider 36. In these ranges, maximum width 78
is positioned about or slightly forward of the
slider midpoint. Air is pressurized by leading
taper 72 and then enters the wide area in waist
portion 68. Most of the high pressure developed on
waist portion 68 leaks along inside edge 82 before
entering the narrow trailing portion 70. Therefore,
more air with high pressure concentrates at the
slider midpoint and does not contribute to pitch
stiffness. Thus, the hydrodynamic features of
slider 36 provide a very compliant air bearing which
is particularly useful for proximity recording.
(Spec. at 8-9.)
Reading the claims in light of the specification, the
limitations recite that the respective waists of two
longitudinal bearing surfaces are wider than the leading and
trailing portions of the surfaces and have a maximum width at
a position between 1/3 and 2/3 the length of the associated
slider body.
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Application No. 08/611,657
The examiner fails to show a suggestion of the
limitations in the prior art. The U.S. Court of Customs and
Patent Appeals (CCPA) established the rule that the discovery
of an optimum value of a variable in a known process is
normally obvious.
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As with many rules, there are exceptions to the CCPA’s rule.
One exception is the case where a parameter being optimized
was not recognized to be a “result-effective variable.” In re
Yates, 663 F.2d 1054, 1057, 211 USPQ 1149, 1151 (CCPA 1981);
In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 9 (CCPA 1977).
This exception applies here.
In determining whether the invention as a whole would
have been obvious under § 103, we must first delineate the
invention as a whole. In delineating the invention as a
whole, we look to the subject matter recited in the claim and
to those properties of the subject matter disclosed in the
specification. Antonie, 559 F.2d at 619, 195 USPQ at 8.
Here, the invention as a whole is that the respective waists
of two longitudinal bearing surfaces are wider than the
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Application No. 08/611,657
leading and trailing portions of the surfaces and have a
maximum width at a position between 1/3 and 2/3 the length of
the associated slider body. The property is that more air
with high pressure concentrates at the slider's midpoint and
does not contribute to pitch stiffness. (Spec. at 9.)
The controlling question is simply whether the
differences between the prior art and the appellant’s
invention as a whole viz., the positioning of the waists of
the longitudinal bearing surfaces and its property, are such
that the invention would have been obvious. The answer is no.
The examiner has not shown that the prior art as a whole
recognized that pitch stiffness depends on the positioning of
the waists of longitudinal bearing surfaces. Recognition of
this dependence is essential to the obviousness of conducting
experiments to decide the positioning of the longitudinal
bearing surfaces that will offer an acceptable pitch
stiffness. The examiner gives no basis for the obviousness of
the necessary experiments apart from the appellant’s
disclosure thereof.
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For these reasons, we are not persuaded that teachings
from the applied prior art would appear to have suggested the
limitations of "first and second longitudinal bearing surfaces
positioned on the slider body which have a shape that
concentrates positive pressure, which is developed between the
bearing surfaces and the recording surface as the recording
surface rotates about the central axis, between 1/3 to 2/3 the
length of the slider body ...." The examiner fails to
establish a prima facie case of obviousness. Therefore, we
reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
obvious over Read-Rite.
CONCLUSION
In summary, the rejection of claim 15 under 35 U.S.C.
§ 103(a) is reversed.
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Application No. 08/611,657
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
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LLB/kis
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Application No. 08/611,657
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