Ex Parte Pollard

Board of Patent Appeals and Interferences

Jul 26, 2001

08456762 (B.P.A.I. Jul. 26, 2001)

1 The obvious double patenting rejection on these claims has
been obviated by Appellant's offer to file a terminal disclaimer,
see brief at page 2.
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publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTOPHER A. POLLARD
____________
Appeal No. 1999-1543
Application No. 08/456,762
____________
ON BRIEF
____________
Before BARRETT, LALL, and DIXON, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection1 of claims 1, 2, 7 to 9, 13, 14,
19 to 21, 25 and 26. Claims 3 to 6, 10 to 12, 15 to 18 and 22 to
24 have been canceled.
The disclosed invention relates to a cartridge engagement
system for use in an optical disk storage and retrieval system.
The cartridge engagement system uses gripping means to retrieve a
Appeal No. 1999-1543
Application No. 08/456,762
2
selected cartridge within the optical disk storage and retrieval
system from a storage slot, transfer the cartridge to a disk
reader, and to subsequently return the cartridge to its slot when
instructed to do so. The gripping means normally grips the
cartridge by engaging with the notches located on the side of the
cartridge. Biasing springs are connected to the gripping arms so
as to bias the gripping arms in one of two different biasing
conditions. In the first biasing condition, the gripping arms
are biased towards each other so that when advanced against a
cartridge they will deflect into engagement with the notches.
In the second biasing condition, the gripping arms are biased
outwardly and are thus unable to engage with the cartridge.
Further understanding of the invention can be achieved by
the following claim.
1. An apparatus for retrieving and maneuvering a
cartridge, the apparatus comprising:
a carriage slidable along a longitudinal path;
a pair of gripping arms movably mounted to the carriage and
extending from it, each gripping arm having engaging means for
engaging the cartridge;
biasing means for subjecting the gripping arms to:
a first biasing condition in which the gripping arms
are resiliently biased in a first direction for engaging the
cartridge with the engaging means, and
Appeal No. 1999-1543
Application No. 08/456,762
2 A copy of the English translation is enclosed with this
decision.
3
a second biasing condition in which the gripping arms
are resiliently biased in a second direction for releasing the
cartridge; and
setting means for selectively setting the biasing condition
of the biasing means for gripping or releasing the cartridge.

The Examiner relies on the following references:
Wanger et al. (Wanger) 5,014,255 May 7, 1991
Hug et al. (Hug) 5,128,912 July 7, 1992
Belo Urban Des Tech. (Belo)2 1,298,176 Mar. 23, 1987
(Russian)
Claims 1, 13, 25 and 26 stand rejected under 35 U.S.C. § 103
over Wanger in view of Belo, while claims 2, 7 to 9, 14 and 19 to
21 stand rejected over Wanger in view of Belo and Hug.
Rather than repeat the arguments of Appellant and the
Examiner, we make reference to the brief and the answer for their
respective details thereof.
OPINION
We have considered the rejections advanced by the Examiner
and the supporting arguments. We have, likewise, reviewed the
Appellant's arguments set forth in the brief.
We reverse.
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Application No. 08/456,762
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In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103, an
examiner is under a burden to make out a prima facie case of
obviousness. If that burden is met, the burden of going forward
then shifts to the applicant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). We are further guided by the precedent of our
reviewing court that the limitations from the disclosure are not
to be imported into the claims. In re Lundberg, 244 F.2d 543,
113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d 461, 230 USPQ
438 (Fed. Cir. 1986). We also note that the arguments not made
separately for any individual claim or claims are considered
waived. See 37 CFR § 1.192(a) and (c). In re Baxter Travenol
Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
(“It is not the function of that court to examine the claims
Appeal No. 1999-1543
Application No. 08/456,762
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in greater detail than argued by an appellant, looking for
nonobviousness distinctions over the prior art.”); In re
Wiechert, 370 F.2d 927, 936, 152 USPQ 247, 254 (CCPA 1967)(“This
court has uniformly followed the sound rule that an issue raised
below which is not argued in that court, even if it has been
properly brought here by reason of appeal is regarded as
abandoned and will not be considered. It is our function as a
court to decide disputed issues, not to create them.”).
At the outset, we note that Appellant elects, brief at
page 4, that claims do not stand or fall together. However, in
the body of the brief all claims are not individually discussed;
see, for example, page 11 of the brief where claim 8 is said to
be grouped with claim 1. Nevertheless, we discuss the claims as
argued by Appellant in the body of the brief.
Rejection over Wanger and Belo
Claims 1, 13, 25 and 26 are rejected under this combination.
The Examiner gives a lucid explanation of the rejection of these
claims on pages 3 to 6 of the final rejection. The Examiner
admits, id. at page 5, that Wanger does not show the gripping
arms as "biased 'resiliently' in the second direction in the
second biasing condition." However, the Examiner concludes, id.
at page 6, that "it would have been obvious ... to modify the
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springs in the apparatus of Wanger et al so as to resiliently
bias the gripping arms in a second, opposite direction during
release, such as shown in Belo Urban Des Tech." Appellant
argues, brief at page 7, that "when the cylinder is in the upper
position, as shown in Fig. 2 [of Belo], the springs 6 are not
operative and provide no bias to the hinged seizing arms 13."
Appellant further concludes, brief at page 8, that "[t]herefore,
the Belo Urban grab has one, and only one, biasing condition."
After a careful review of the Belo reference, we find that
it does not provide the second biasing position as asserted by
the Examiner. Belo at page 3 to 4 states that "[a]t this time
[while releasing] springs 11 slightly open by the amount of gaps

, the force of springs 11 close on rods 6 between nuts 10 and
limiting stops 16 and do not affect the arms and slide block 2,
because the force of springs 11 ... does not affect the gripping
arms 13 and slide block 2, ...."
The Examiner contends, answer at page 6, that "[s]uch a
resilient means ensures that the gripping arms are positively
moved to the desired locations when changing from the first bias
condition to the second and vice versa. Spring like the one
shown in Belo Urban Des Tech have [sic] long been used in robotic
gripping assemblies to guarantee precise movement from
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Application No. 08/456,762
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one position to the other as well as to grip items with a
predetermined amount of force, thus reducing the chance of
mishandling." We note that this is a conclusory statement and
the Examiner offers no evidence to support such an assertion.
We do not find this contention being supported by the Belo
reference. Therefore, we do not sustain the rejection of these
claims over Wanger in view of Belo.
Rejection over Wanger in view of Belo and Hug
Claims 2, 7 to 9, 14, 19 to 21 are rejected under this
combination on pages 6 to 8 of the final rejection. However, we
note that Hug does not cure the deficiency noted above in the
combination of Wanger and Belo. Therefore, we cannot sustain the
obviousness rejection of the these claims over Wanger, Belo and
Hug.
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In conclusion, we reverse the decision of the Examiner
rejecting claims 1 to 2, 7 to 9, 13, 14, 19 to 21, 25 and 26
under 35 U.S.C. § 103.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
jg
Appeal No. 1999-1543
Application No. 08/456,762
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