Ex parte RYOO et al.

Board of Patent Appeals and Interferences

Jul 25, 2001

08661733 (B.P.A.I. Jul. 25, 2001)

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written for publication and is not binding precedent of the Board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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BYUNG-RYUL RYOO
and DAE-HWAN KIM
__________
Appeal No. 1999-1538
Application 08/661,733
__________
ON BRIEF
__________
Before THOMAS, LALL, and BARRY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s final rejection of
claims 5-10.
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Application 08/661,733
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Representative claim 5 is reproduced below:
5. An object-lens driving device for an optical pickup, comprising: a driving portion
body having an object lens mounted thereon; an electromagnetic circuit attached to said
driving portion body, including a fine pattern coil having a tracking coil and a focusing coil
formed on a common plane; a supporting mechanism which supports said driving portion
body; and a holder for mounting said supporting mechanism;
wherein said supporting mechanism includes a plurality of plate spring members,
one end portion of each of said plate spring members being mounted to said holder, and
an opposite end portion of each of said plate spring members being fixed to said driving
portion body, for being elastically deformed either vertically or horizontally, and
further wherein said holder includes a plurality of protrusions which protrude
vertically from said holder, and wherein each of said plate spring members includes a
combining hole formed therein for receiving a corresponding one of said protrusions.
The following references are relied on by the examiner:
Narumi 4,927,235 May 22, 1990
Ikegame et al. (Ikegame) 5,579,176 Nov. 26, 1996
(filing date Apr. 29, 1994)
Beginning at page 7 of appellants’ principal brief on appeal, they complain that the
examiner has improperly relied upon Ikegame in the final rejection in that it has not been
utilized in the statement of the rejection. The examiner reopened prosecution in a paper
dated April 17, 1998, in which he formally relied upon the combined teachings of Narumi
and Ikegame to assert unpatentability within 35 U.S.C. § 103 as to claims 5-10 on appeal.
Appellants filed a supplemental appeal brief on July 16, 1998. The answer responds to
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Application 08/661,733
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arguments appellants presented in the brief and supplemental brief as to the examiner’s
reliance upon Narumi and Ikegame as evidence of unpatentability within 35 U.S.C. § 103
of claims 5-10.
Rather than repeat the positions of the appellants and the examiner, reference is
made to the briefs and the answer for the respective details thereof.
OPINION
We sustain the rejection of claims 5-7 but reverse the rejection of claims 8-10 under
35 U.S.C. § 103.
As to independent claim 5, we agree with the examiner’s views that Narumi
essentially teaches the substance of the subject matter of independent claim 5 on appeal
except for the particular details of the attaching means of the end portions 41 of the plate
spring members 7 in Narumi, further relying upon the examiner-noted teachings and
showings in Ikegame.
The focus of the arguments as to claim 5 relies upon the feature of the holder
including a plurality of protrusions which protrude vertically from the holder and the
additional feature where each of the plate spring members includes a combining hole
formed therein for receiving a corresponding one of the protrusions.
Appeal No. 1999-1538
Application 08/661,733
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In affirming the rejection of independent claim 5, we do not agree with appellants’
assessment of the teachings and showings in Narumi. Figure 1 of this reference shows
fixed member 8, which the examiner correlates to the claimed holder. There is no
corresponding showing of this element 8 in Figure 9, which the examiner relies upon
specifically. What is most telling in Figure 9 is the unidentified illustration within the pad
portion 41 of the supporting member 7 of a circular hole-like structure. These are
obviously used to attach the entire supporting portion 6 to the supporting member 7 as well
as to its corresponding non-illustrated fixed member 8 in Figure 9. These unillustrated hole
portions are not illustrated in the remaining figures in this reference. It is thus apparent
from Figure 9 that these unillustrated hole portions are utilized by Narumi for attaching the
supporting member 7 to the respective members 6 and 8. The examiner is therefore
correct that Narumi is silent as to the particular means of doing this.
On the other hand, the examiner’s reliance upon prior art Figure 15 of Ikegame is
not misplaced since it does illustrate hole portions 204, 205 of the plate spring 201, thus
suggesting an attachment means by means of projections or the like for attaching the
entire plate spring 201 to what may be considered corresponding lens holder 102 and lens
substrate 105 of prior art Figures 13 and 14, for example. The examiner’s reliance on
Figures 11 and 12 is also persuasive because they do show the protruding fixing pads 8b
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Application 08/661,733
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and 4b for attaching the spring member 39 to the respective fixing member 8 and lens
holder member 4. Notwithstanding appellants’ correct argument in the supplemental brief
that the protrusions 8b and 4b do not protrude vertically from the holder, the combined
teachings and showings of the two references relied upon by the examiner would have
clearly suggested this feature anyway since the examiner relies upon the base reference of
Narumi as to that feature. Moreover, in accordance with the contribution of Ikegame set
forth in the initial Figures 1-4, the showing at Figure 5 clearly illustrates what appears to be
a vertical boss 14 projecting upwardly or vertically from the fixing member 8 in this figure,
thus illustrating the vertical projection of a protrusion from the holder in accordance with
claim 5 on appeal. In the context of Narumi, the claimed combining hole obviously would
mate with these various protrusions or bosses in the illustrated but unlabeled pads 41 in
Figure 9 of Narumi. Therefore, we are unpersuaded of appellants’ arguments with respect
to the rejection of claim 5 on appeal. Since appellants have presented no arguments with
respect to dependent claims 6 and 7 in addition to the statement that these claims fall with
their respective independent claim 5 on appeal at page 6 of the principal brief on appeal,
claims 6 and 7 fall with our consideration of independent claim 5 on appeal.
On the other hand, we reach an opposite conclusion with respect to the rejection of
claim 8 on appeal. This claim requires that the plurality of protrusions protrude horizontally
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from the holder in contrast to the vertical protrusion requirement of claim 5 on appeal.
Additionally, the claim requires that an edge portion of the plate spring members include a
groove for receiving a corresponding one of the horizontal protrusions from the holder.
Again, in the context of the combined teachings and showings of the references
relied upon by the examiner, the examiner relies upon Ikegame as to these noted
requirements of claim 8 on appeal. As to this claim, the examiner relies upon
Figures 16-18 (to which we would add Figure 19) as evidence showing that a spring
member 330 in this embodiment in these figures would include a grooved portion which
would attach to a holder including projections. Our study of all figures of Ikegame leads us
to conclude that there is no teaching or showing of any claimed horizontal protrusion from a
holder to which an edge portion of a corresponding plate spring member, such as element
330 in Figures 16-19, would include a groove for receiving a correspond one of the
horizontal projections. Figures 16-19 do not appear to show on the lens holder member
320 regions 320e the claimed horizontal protrusions; the same is true of the fixing member
340 in its region 341a. Similarly, either end of spring member 330, that is, end 330a and
330b, do not also correspondingly have grooves which mate with or receive corresponding
protrusions as claimed. There are indented portions or notches within the plate regions
330a and 330b of the spring member 330 but they do not appear to us to be in the form of
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a groove or narrow channel. We are thus unpersuaded by the examiner’s reasoning at the
bottom of page 6 of the answer " that the numerous attachment configurations shown in
Ikegame et al, would have led a skilled artisan to have modified the one disclosed in
Narumi" to have effectively arrived at the disputed claimed features of claim 8 on appeal.
Since we reverse the rejection of independent claim 8, the rejection of its
dependent claims 9 and 10 must also fall.
In summary, we have sustained the rejection of claims 5-7 but have reversed the
rejection of claims 8-10 under 35 U.S.C. § 103. Accordingly, the decision of the examiner
rejecting claims 5-10 under 35 U.S.C. § 103 is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1999-1538
Application 08/661,733
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James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Parshotam S. Lall )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lance Leonard Barry )
Administrative Patent Judge )
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