Ex Parte Rugg et al

Board of Patent Appeals and Interferences

Nov 12, 2008

10602791 (B.P.A.I. Nov. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM LEON RUGG
and TODD WARREN KUBE
____________________

Appeal 2007-3183
Application 10/602,7911
Technology Center 2600
____________________

Decided: November 12, 2008
____________________

Before KENNETH W. HAIRSTON, SCOTT R. BOALICK,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-6, 8-13, 16, and 20.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed June 24, 2003. The real party in interest is Seagate
Technology LLC.
Appeal 2007-3183
Application 10/602,791

2
We affirm-in-part.
Appellants’ invention relates to a disc drive having all of its actuator
servo-controls and signal processing electronics circuitry incorporated onto a
flexible printed circuit assembly positioned on a top surface of a base plate.
The top cover of the drive avoids the power, actuator servo-controls and
signal processing electronics components mounted on the flexible printed
circuit board, so that these components may be cooled by ambient air
circulation (Spec. 2).
Claims 1 and 12 are exemplary:
1. A data storage device comprising:

a base plate having a top surface;

a spindle motor positioned on the top surface of the base supporting
one or more data storage discs for rotation on the spindle motor;

an actuator assembly positioned on the top surface of the base plate
adjacent the data storage disc; and

a flex printed circuit board assembly on the top surface of the base
plate having actuator and motor electronic control components thereon on
the top surface of the base.

12. A flexible printed circuit assembly for use in a data storage
device having an actuator assembly adjacent a spindle motor rotating one or
more data storage disc, the assembly comprising:

a flexible printed circuit having a pigtail lead for connection to the
actuator assembly of the data storage device and a pigtail lead for
connection to the spindle motor of the data storage device;

2 Claims 7, 14, 15, and 17-19 stand objected to as dependent upon a rejected
base claim.
Appeal 2007-3183
Application 10/602,791

3
actuator control and signal processing electronics components
mounted on, and electrically connected to, the flexible printed circuit; and

a stiffener plate coextensive with a portion of the flexible printed
circuit forming a ground plane for the components on the flexible printed
circuit.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Koo US 6,243,262 B1 Jun. 5, 2001
Bernett US 6,388,834 B1 May 14, 2002
Crane US 6,797,882 B1 Sep. 28, 2004
(filed Oct. 18, 2001)

Sega EP 0 760 510 A1 Mar. 5, 1997

Claims 1, 2, 4, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sega in view of Crane.
Claims 3 and 9-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sega in view of Crane and Koo.
Claims 6, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sega in view of Crane and Bernett.
Claims 16 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bernett in view of Crane.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed January 29, 2007) and the Answer
(mailed February 12, 2007) for their respective details.

Appeal 2007-3183
Application 10/602,791

4
ISSUE
There are two principal issues in the appeal before us.
The first issue is whether the Examiner erred in finding that Sega in
combination with Crane teaches a data storage device having a flex printed
circuit board assembly, with actuator and motor electronic control
components thereon on the top surface of the base.
The second issue is whether the Examiner erred in finding that Sega in
combination with Crane and Bernett teaches a stiffener plate forming a
ground plane for the components, or connected to the components, on a
flexible printed circuit.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention relates to a disc drive
having all of its actuator servo-controls and signal processing electronics
circuitry incorporated onto a flexible printed circuit assembly positioned on
a top surface of a base plate (Spec. 2).
2. The top cover of the drive avoids the power, actuator servo-
controls and signal processing electronics components mounted on the
flexible printed circuit board, so that these components may be cooled by
ambient air circulation (Spec. 2).
Appeal 2007-3183
Application 10/602,791

5
Sega
3. Sega teaches a magnetic disk device capable of achieving a
large capacity with a small and thin structure, and having a good seal for the
magnetic disk portion, thereby ensuring a high reliability of the device (col.
3, ll. 30-35).
Crane
4. Crane teaches an economical die package for connecting to a
substrate, such as a printed circuit board or a flexible printed circuit (col. 2,
ll. 33-35).
5. Crane teaches replacing a printed circuit board with a flexible
circuit board and a stiffener (col. 9, ll. 53-58).
Koo
6. Koo teaches providing a sound muffling and heat-discharging
case for a computer storage apparatus capable of effectively processing
noise and heat occurring from a hard disk drive (col. 2, ll. 46-49).
7. Koo teaches that non-enclosed circuit parts advantageously
discharge heat when externally exposed (col. 4, ll. 1-8).
8. Koo explicitly shows that heat-generating circuit elements 300a
are disposed outside a cutout region of a cover for a hard disk drive, such
that excess heat may be discharged (Koo Figs. 3, 4).
Bernett
9. Bernett teaches an apparatus and method for reducing the
transmission of electromagnetic interference (EMI) noise originating within
a disc drive (col. 2, ll. 28-31).
Appeal 2007-3183
Application 10/602,791

6
10. Bernett teaches that bracket 166 provides an alternative
pathway for EMI noise between cover 104 and base 102 (col. 5, ll. 11-13)
and “reduces the transmission of EMI noise to the flex circuit 132” (col. 5, l.
43).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John
Appeal 2007-3183
Application 10/602,791

7
Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
When a work is available in one form of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is what the
combined teachings would have suggested to those of ordinary skill in the
art. Id. at 425.

ANALYSIS
Claims 1, 2, 4, 5, and 8
We select claim 1 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that the combination of Sega and Crane, asserted by
the Examiner, cannot render obvious the claimed subject matter because: (a)
Appeal 2007-3183
Application 10/602,791

8
the references do not disclose the elimination of a printed circuit board in a
disc drive (Br. 9); (b) Sega teaches electronic components mounted on both
sides of its printed circuit board, which would be a functional impossibility
if Sega were modified to use a flex circuit with a stiffener (Br. 9); and (c) the
Examiner allegedly failed to produce evidence to support her rationale that
the proposed modification would simplify assembly by eliminating a
connection step (Br. 10).
We are not persuaded by Appellants’ arguments. We concur in the
Examiner’s findings that Sega teaches all the features of the claimed
invention, save for replacing a conventional printed circuit board with a
combination of a flexible circuit board and a stiffener (Ans. 3-4), and that
Crane teaches replacing a printed circuit board with a flexible circuit board
and a stiffener (FF 5). We agree with the Examiner’s conclusion, supported
by her cited evidence in Crane and Greenside (Ans. 10-11), that such a
modification would be advantageous in order to eliminate a potentially
deleterious connection step (Ans. 10).
The proposed “elimination of a printed circuit board within a disc
drive,” which Appellants allege to be absent from the Examiner’s rejection,
is in fact precisely what the Examiner’s asserted combination of references
is intended to accomplish. The Examiner need not supply a single reference
containing that precise teaching, provided that the Examiner proposes a
legally proper combination of references under § 103. Similarly, the alleged
impossibility of mounting components on both sides of the circuit board is
not germane to the claimed invention, because the claims do not require
components to be mounted on both sides. We further agree with the
Appeal 2007-3183
Application 10/602,791

9
Examiner’s position that Sega does not teach away from the proposed
modification (Ans. 13).
Because we find that Sega in combination with Crane teaches every
element of the claimed invention, we do not find error in the Examiner’s
rejection of claims 1, 2, 4, 5, and 8 under 35 U.S.C. § 103(a).
Claims 3 and 9-11
We select claim 3 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that the Examiner’s rejection is erroneous because
Koo does not remedy the asserted deficiencies of Sega and Crane with
respect to the provision of a flex printed circuit board (Br. 12). As explained
supra, we find that the combination of Sega and Crane does teach a flex
printed circuit board having a stiffener.
Appellants further argue that the Examiner’s rejection is in error
because Koo fails to teach that “the actuator and motor electronic control
components on the flex printed circuit board assembly are outside the
enclosed space,” as required by claim 3, and that it is “difficult to imagine
why Koo would then proceed to place heat-generating components outside
the cutout” (Br. 11-12). We find Appellants’ argument unpersuasive
because the Examiner has established that Koo teaches that non-enclosed
circuit parts advantageously discharge heat when externally exposed (Ans.
19; FF 7), and that Koo explicitly shows that heat-generating circuit
elements 300a are disposed outside a cutout region of a cover for a hard disk
drive, such that excess heat may be discharged (FF 8). We concur in the
Examiner’s rationale that it would have been obvious to locate the actuator
Appeal 2007-3183
Application 10/602,791

10
and motor control components outside the enclosed space, in order to
discharge heat, as Koo teaches (Ans. 6).
Because the Examiner has established that Sega in combination with
Crane and Koo fully meets the claimed invention, we do not find error in
the rejections of claims 3 and 9-11.
Claims 6, 12, and 13
Appellants allege error in the Examiner’s rejection of these claims
because the grounding apparatus of Bernett does not correspond to “a
ground plane for the components on the flexible printed circuit,” as claim 12
requires, nor does Benett disclose a stiffener that “forms a ground plane for
the circuitry on the flexible printed circuit,” as claim 6 requires (Br. 12-13).
In the Examiner’s view, Bernett’s grounding flex circuit support bracket 166
(Figs. 6-8; hereinafter, “bracket 166”), which establishes grounding contact
between a disc drive’s base and cover, forms a ground plane “insofar as the
stiffener grounds the base and the cover,” and the stiffener is “‘for the
components’” “insofar as the stiffener … protects the circuitry from EMI
noise” (Ans. 20).
We are not in agreement with the Examiner’s position. The Examiner
concedes that Sega [and Crane] are silent regarding whether the stiffener is
metal and forms a ground plane for the circuitry on the flexible printed
circuit, as claim 6 requires (Ans. 6). For bracket 166 to serve as a ground
plane for the circuitry on the flexible printed circuit (132), it must provide an
electrically conductive path to ground for that circuitry. We have reviewed
Bernett and can find no teaching that such an electrical path is provided.
Bernett teaches only that bracket 166 provides an alternative pathway for
Appeal 2007-3183
Application 10/602,791

11
EMI noise between cover 104 and base 102 and “reduces the transmission of
EMI noise to the flex circuit 132” (FF 10).
Similarly, we can find no teaching that Bernett’s bracket 166 forms a
ground plane for the components on the flexible printed circuit, as claim 12
requires.
We therefore find error in the Examiner’s rejection of claims 6 and
12, as well as claim 13 dependent upon claim 12, under 35 U.S.C. § 103(a).
Claims 16 and 20
Claim 16 requires “a stiffener plate coextensive with a portion of the
flexible printed circuit forming a ground plane connected to the one or more
components.” As discussed with respect to claims 6 and 12, supra, Bernett’s
bracket 166 does not teach the formation of a ground plane, i.e., an electrical
path to ground, for the components on the flexible printed circuit. We
therefore find error in the Examiner’s rejection of claim 16, and claim 20
dependent therefrom, under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 2, 4, 5, and 8. Claims 1, 2, 4, 5, and 8 are not
patentable.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 3 and 9-11. Claims 3 and 9-11 are not patentable.
We further conclude that Appellants have shown that the Examiner
erred in rejecting claims 6, 12, 13, 16, and 20. On the record before us,
claims 6, 12, 13, 16, and 20 have not been shown to be unpatentable.
Appeal 2007-3183
Application 10/602,791

12
DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 5, and 8 is affirmed.
The Examiner’s decision rejecting claims 3 and 9-11 is affirmed. The
Examiner’s decision rejecting claims 6, 12, 13, 16, and 20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

DAVID K. LUCENTE; SEAGATE TECHNOLOGY, L.L.C.
INTELLECTUAL PROPERTY DEPT. - COL2LGL
389 DISC DRIVE
LONGMONT, CO 80503