Ex parte SATO

Board of Patent Appeals and Interferences

Nov 29, 2001

08772068 (B.P.A.I. Nov. 29, 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for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKINOBU SATO
____________
Appeal No. 1999-2703
Application No. 08/772,068
____________
HEARD: October 23, 2001
____________
Before KRASS, FLEMING, and GROSS, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-8, all of the pending claims.
The invention is directed to a contact-type magnetic disk
drive. The mass of the sliding contact and the length and
rigidity of the cantilever spring supporting the sliding
contact will determine how well the sliding contact tracks and
how much it skips and jumps. The smaller the weight of the
Appeal No. 1999-2703
Application No. 08/772,068
2
load bearing upon the surface of the disk, the smaller the
frictional wear on both the sliding contact and the disk. If
the rigidity of the spring is increased, vibration is reduced
but if the weight of the load or the rigidity is increased,
there is more friction and greater wear on both the slider
head and the disk. Thus, there are various parameters to take
into account when designing a sliding contact-type magnetic
disk. The instant invention is said to achieve better results
than conventional devices by limiting the spring length to
less than 5mm and, preferably, to 1-3mm range, keeping the
magnetic head slider mass greater than 2mg, and urging the
head slider against the magnetic disk by a load of less than
1g inclusive.
Representative independent claim 1 is reproduced as
follows:
1. A contact type magnetic disk drive comprising:
a contact pad carrying an electromagnetic transducer for
recording and reproduction on an end thereof, and capable of
sliding in contact with a magnetic disk medium;
a magnetic head slider on which said contact pad is
mounted;
a suspension spring supporting said magnetic head slider;
and
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3
a spring support mechanism supporting said suspension
spring;
wherein said suspension spring has a length in the range
of approximately 1-3 mm inclusive.
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Application No. 08/772,068
4
The examiner relies on the following references:
Yamaguchi et al. (Yamaguchi) 5,243,482 Sep.
07, 1993
Hamilton et al. (Hamilton) 5,483,025 Jan. 09,
1996
(Filed May 15, 1995)
Hamaguchi et al. (Hamaguchi) 5,530,605 Jun.
25, 1996 (Filed Jun. 07,
1994)
Claims 1, 3, 5 and 7 stand rejected under 35 U.S.C. §
102(e) as anticipated by Hamaguchi.
Claims 2, 4, 6 and 8 stand rejected under 35 U.S.C. §
103. As evidence of obviousness, the examiner offers
Hamaguchi and Yamaguchi with regard to claims 2 and 6; and
Hamaguchi and Hamilton with regard to claims 4 and 8.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
We turn, first, to the rejection under 35 U.S.C. §
102(b).
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5
In applying Hamaguchi against the claims, the examiner
identifies the corresponding components of Hamaguchi as:
electromagnetic transducer (4), magnetic disk medium (3),
magnetic head slider (2), suspension spring (1) and spring
support mechanism (6). With regard to the suspension spring
having “a length in the range of approximately 1-3 mm
inclusive,” the examiner cites column 5, lines 61-62, of
Hamaguchi. The cited section of Hamaguchi states that the
overall length of the support mechanism “can be reduced to 3-9
mm.”
Appellant argues that this disclosed range of Hamaguchi
is not the range claimed and, since 3 mm is the shortest
spring that Hamaguchi has, there is nothing in the reference
to support the claimed range of “1-3 mm.” We disagree.
The claimed range is “approximately 1-3 mm inclusive.”
Hamaguchi discloses a range of “3-9 mm.” Accordingly, a
length of 3mm overlaps the claimed range as well as the range
disclosed by Hamaguchi. Since Hamaguchi does, indeed,
disclose a value of spring length within the range of the
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instant claimed invention, Hamaguchi anticipates the instant
claimed subject matter.
Appellant argues the advantages of the instant invention
and refers to the many examples in the specification and to
the tables at pages 14-15 of the specification in order to
show the differences between the instant invention and the
prior art. However, such arguments and objective evidence are
irrelevant to a rejection under 35 U.S.C. § 102. No matter
what advantages are achieved by the instant disclosed
invention, the language of the instant claimed invention is
met, and hence anticipated, by the disclosure of Hamaguchi.
Accordingly, the rejection of claims 1 and 3 under 35
U.S.C. § 102(e) is sustained.
We will not, however, sustain the rejection of claim 5
under 35 U.S.C. § 102(e) because that claim specifically calls
for “a gimbal spring.” The examiner identifies spring 12 in
Hamaguchi as such a spring. However, the spring in Hamaguchi,
identified by the reference as a “flexible beam,” is not a
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7
“gimbal” spring, as shown as element 7 in Figure 4 of the
instant application and as argued by appellant at page 5 of
the reply brief. In the reply brief, appellant points out
that the gimbal “is important because [the] slider head moves
not only along the recorded track, but also in a seek . . .
direction. Who knows how the slider head will move if the
Hamagushi [sic, Hamaguchi]. . . zig-zag or swastika spring is
substituted for applicant’s spring?” The examiner does not
respond. Accordingly, the examiner has not presented a prima
facie case of anticipation since a “gimbal spring,” as
claimed, has not been persuasively shown as being taught by
Hamaguchi.
Since we have not sustained the rejection of claim 5
under 35 U.S.C. § 102(e), we also will not sustain the
rejection of claim 7, dependent thereon, under 35 U.S.C. §
102(e). Likewise, we will not sustain the rejection of claims
6 and 8, dependent upon claim 7, under 35 U.S.C. § 103 as
neither Yamaguchi nor Hamilton cures the deficiency noted
above.
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8
Turning to the other rejections under 35 U.S.C. § 103,
with regard to claim 2, the examiner recognizes that Hamaguchi
is silent with regard to the mass of the slider, e.g., the
mass being “greater than 2 mg inclusive.” The examiner takes
“Official notice” that magnetic head sliders having the
claimed mass “are notoriously old and well known in the art”
[answer-page 5] but points to U.S. Patent No. 5,243,482 to
Yamaguchi, specifically column 2, line 59, as evidence of the
allegation. Yamaguchi discloses a slider mass of 57 mg, which
is “greater than 2mg inclusive,” as claimed.
Appellant does not deny that Yamaguchi shows such a
slider mass but argues that the tables of the instant
specification show “that not just any weight can be put on the
end of just any suspension spring” [principal brief-page 9].
Appellant argues that Yamaguchi shows a “very complex and
expensive support system,” while appellant has a “simple and
relatively low cost leaf spring” [principal brief-page 10].
However, appellant points to no claim language on which he
relies with regard to such arguments.
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9
Appellant points out that “all of these spring
geometrics” have a bearing on the “moments and reactions of
all parameters” [principal brief-page 10]. However, while it
is true that many parameters must be taken into account by the
artisan when designing a contact type magnetic disk drive,
appellant has pointed to nothing to persuade us that the
design of such parameters would entail anything more than
ordinary skill in the art or that, based on the evidence
provided by the applied references, the claimed values would
be anything more than optimization of result effective
variables.
We find nothing in appellant’s arguments to convince us
of any error in the examiner’s explanation that it would have
been obvious to provide the mass of the slider in Hamaguchi as
being greater than 2 mg, as taught by Yamaguchi, “in order to
provide slider stabilization during recording/reproducing by
increasing its inertia in a manner well known, established and
appreciated in the art, and as exemplified by Yamaguchi . . .
wherein it is illustrated via an equation between lines 45 and
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50 of COL. 2, that an increase in slider mass (m ) results in2
a corresponding decrease in ∫ , which represents a twist angle2
of the slider during operation” [answer-page 8]. As the
examiner further explains, at page 9 of the answer, the
“formulaic relationship is merely indicative of the intuitive
nature as it pertains to the benefits of increasing the slider
mass . . . ”
At page 5 of the reply brief, in arguing for
noncombinability, appellant points out that the drawings in
both reference patents show support springs which are
“completely different.” We are unpersuaded. Combining the
teachings of the references relied upon by the examiner does
not involve an ability to combine their specific structures.
In re Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA
1973).
The examiner’s reasoning appears sound to us as to why
the skilled artisan would have been led to employ a slider
mass of 57 mg (taught by Yamaguchi) in the device of
Hamaguchi, which does not specify the mass of the slider.
Appeal No. 1999-2703
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11
While appellant may have achieved advantageous results
employing the parameters claimed, we do not find persuasive
any of appellant’s arguments as to why, in view of the
examiner’s explanation, the instant claimed subject matter
would not have been obvious, within the meaning of 35 U.S.C. §
103.
While claim 2 requires both a head slider with a mass of
greater than 2 mg and an urging load of less than 1 g, and
perhaps this combination might distinguish over the applied
references, appellant appears to argue only the limitation
directed to the mass of the slider. We find no argument
directed to the combination of these masses. Arguments not
made are waived. In re Kroekel, 803 F.2d 705, 709, 231 USPQ
640, 642-43 (Fed. Cir. 1986).
With regard to claim 4, adding the limitation of
sequentially reducing the thickness of the suspension spring
from a side adjoining the spring support mechanism toward the
magnetic head slider, the examiner relies on Figure 1 of
Hamilton for this teaching, contending that it would have been
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12
obvious to provide the load beam spring of Hamaguchi with a
thickness sequentially reduced as claimed “in order to
stabilize lateral movement of the spring suspension in a
manner well known, established and appreciated in the art, and
to further ensure that ‘flexure topography can be controlled
with infinite variety,’ ‘mass reducing,’ ‘resonance
characteristics,’ while ‘closely controlling fine-tuning of
mechanical performance specifications’” [answer-page 7].
Appellant argues [principal brief-page 10] that the
combination of Hamaguchi and Hamilton would destroy
Hamaguchi’s structure 14 if Hamilton’s structure 20 were to be
adopted in Hamaguchi. Again, combining the teachings of the
references does not involve an ability to combine their
specific structures. Hamaguchi appears to show a suspension
spring with a rectangular thickness wherein Hamilton teaches
[column 4, lines 37-47] that by employing a trapezoidal
flexure, many advantages are achieved as compared to a
rectangular shaped flexure. Accordingly, this would have
prima facie suggested to the artisan to employ a trapezoidal
shaped suspension spring in Hamaguchi.
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13
We have sustained the rejection of claims 1 and 3 under
35 U.S.C. § 102(e) but not the rejection of claims 5 and 7
under 35 U.S.C. § 102(e). We have sustained the rejection of
claims 2 and 4 under 35 U.S.C. § 103 but not the rejection of
claims 6 and 8 under 35 U.S.C. § 103.
The examiner’s decision is affirmed-in-part.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
MICHEAL R. FLEMING )
Administrative Patent Judge )

Appeal No. 1999-2703
Application No. 08/772,068
14
GROSS, Administrative Patent Judge, dissenting-in-part:
I would not affirm the examiner's rejection of claims 1 and
3 under 35 U.S.C. § 102.
The presently claimed invention is directed to a contact-
type magnetic disk drive in which a suspension spring having a
length less than 5 millimeters, and preferably ranging from 1 to
3 millimeters, supports the magnetic head slider. Appellant
discloses on pages 16-18 of the specification that the length of
the suspension spring along with the slider mass and the load
urging the slider affect jump and wear thickness. Hamaguchi,
relied on by the examiner in rejecting the appealed claims under
both 35 U.S.C. § 102 and 35 U.S.C. § 103, discloses a similar
structure with a suspension spring having a length which "can be
reduced to 3-9 mm" (see column 5, lines 61-62).
The appealed claims define a structure including a
suspension spring having a range of lengths which overlaps to a
small extent the range disclosed by Hamaguchi. In my opinion,
such facts support a prima facie case of obviousness under 35
U.S.C. § 103, but do not rise to the level of anticipation under
35 U.S.C. § 102. Anticipation requires the disclosure, in a
single prior art reference, of each element of the claim under
consideration. W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d
1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984). In order to arrive at the presently
Appeal No. 1999-2703
Application No. 08/772,068
Although no alternative rejection has been set forth under 35 U.S.C.1
§ 103 for the claims presently rejected under 35 U.S.C. § 102, in my opinion
the evidence of record would not overcome an obviousness rejection of those
claims, as appellant has failed to show the required nexis between the results
and the length of the suspension spring. Instead the data appears to require
particular values for both the suspension spring length and also the slider
mass and load urging the slider, simultaneously, to obtain beneficial results.
16
claimed invention one must select a range which differs from
that explicitly disclosed by the reference. Such selection
suggests a prima facie case of obviousness rather than an
anticipation. Further, a prima facie case of obviousness can be
rebutted by objective evidence demonstrating that the narrowly
claimed invention exhibits unexpected properties which differ
from the disclosed invention.1
Background
The rejection in the present case was made solely under
35 U.S.C. § 102 for claims 1, 3, 5, and 7. The majority affirms
the rejection of claims 1 and 3 based on an endpoint of the
disclosed range falling within the claimed range. In my
opinion, this outcome is incorrect. I agree with the reasoning
expressed by the dissent of Ex parte Lee, 31 USPQ2d 1105, 1111
(Bd. Pat. App. & Int. 1993), that:
[I]n cases involving an overlap of a claimed invention
and applied prior art, anticipation under 35 U.S.C.
102 can arise even though an applied reference does
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17
not exemplify a species falling within the overlap.
Anticipation under 35 U.S.C. 102 in such cases would
appear to depend upon the extent of overlap which
determines the amount of picking and choosing
necessary to arrive at the claimed invention. In
situations involving virtually little or no
selectivity, a reference may be considered to describe
the overlapping portion of a claimed invention within
the meaning of 35 U.S.C. 102. In re Sivaramakrishnan,
673 F.2d 1383, 213 USPQ 441 (CCPA 1982); In re
Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978); In re
Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
However, where a prior art disclosure is extremely
broad, a prima facie case of obviousness under 35
U.S.C. 103 may not even arise. In re Jones, 958 F.2d
347, 21 USPQ2d 1941 (Fed. Cir. 1992). Between these
extremes, as in the situation before us, the overlap
would have rendered the claimed invention prima facie
obvious under 35 U.S.C. 103. Merck & Co., Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 10 USPQ2d
1843 (Fed. Cir. 1989); In re Malagari, [499 F.2d
1297, 182 USPQ 549 (CCPA 1974)]; In re Susi, [440 F.2d
442, 169 USPQ 423 (CCPA 1971)]. Thus, patentability
under 35 U.S.C. 102 and 35 U.S.C. 103 must be resolved
on a case-by-case basis, not by a litmus test
determined by an end point . . . or any overlap
whatsoever.
Rejection under 35 U.S.C. § 102
As in Lee, 31 USPQ2d at 1111, the patentee, Hamaguchi, does
not recognize the problem solved by appellant nor disclose any
particular device satisfying the requirements of the appealed
claims. In other words, Hamaguchi's disclosure "does not
describe the claimed invention within the meaning of 35 U.S.C.
[§] 102 because it does not identically disclose a ... [device]
Appeal No. 1999-2703
Application No. 08/772,068
18
satisfying each and every element of the claimed invention"
(footnote omitted). Lee, 31 USPQ2d at 1111. Instead, Hamaguchi
discloses a range of thicknesses from which a skilled artisan
may select a value. Hamaguchi does not disclose any more
significance for one value, such as the lower boundary, than for
any other value. In other words, one of ordinary skill in the
art would believe all of the values to be of equal consequence.
As such, I find no basis for the majority's interpretation that
Hamaguchi's disclosed range is a specific disclosure for a
particular value (i.e., 3 mm) in the absence of any examples,
embodiments, or description that would lead the skilled artisan
to that value.
I would agree that a disclosed example or "single
embodiment of broadly claimed subject matter constitutes" an
anticipation. In re Lukach, 442 F.2d 967, 970, 169 USPQ 795,
797 (CCPA 1971). Further, I would agree that "the disclosure in
the prior art of any value within a claimed range is an
anticipation of the claimed range." In re Wertheim, 541 F.2d
257, 267, 191 USPQ 90, 100 (CCPA 1976). See also Titanium
Metals Corp. of America v. Banner, 778 F.2d 775, 782, 227 USPQ
773, 779 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d at
Appeal No. 1999-2703
Application No. 08/772,068
19
682, 133 USPQ at 280). However, I cannot agree with the
majority that a disclosure of a range in Hamaguchi, with no
specific examples or embodiments, constitutes a disclosure of
one or more discrete points or values and, therefore,
anticipates a range different from that disclosed.
The majority's opinion in the present case is inconsistent
with the established policy that objective evidence may be
introduced to overcome rejections based on overlapping ranges.
See, e.g., In re Wertheim, 541 F.2d at 267, 191 USPQ at 100,
wherein the court stated:
We appreciate the arguments made in In re Malagari,
499 F.2d 1297, 182 USPQ 549 (CCPA 1974), and the
discussion in In re Orfeo, 58 CCPA 1123, 440 F.2d 439,
169 USPQ 487 (1971), to the effect that ranges which
overlap or lie inside ranges disclosed by the prior
art may be patentable if the applicant can show
criticality in the claimed range by evidence of
unexpected results. [Emphasis added.]
Even though the presently claimed range overlaps the ranges
disclosed by the prior art, the majority opinion, by affirming
the rejection of claims 1 and 3 under 35 U.S.C. § 102, leaves no
room for a showing of criticality for those claims. In fact, my
colleagues explicitly preclude such a showing for the claims
rejected under 35 U.S.C. § 102 (on pages 4-5) by stating that
Appeal No. 1999-2703
Application No. 08/772,068
See also, In re Russell, 439 F.2d 1228, 1231, 169 USPQ 426, 428 (CCPA2
1971) wherein the court held "if appellant can establish that his relatively
narrow ranges yield unexpectedly superior results as against the broad Wei
20
unexpected results are relevant only to an obviousness rejection
and, therefore, cannot be used to overcome the anticipation
rejection.
In In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-7 (Fed. Cir. 1990) the court explains:
The law is replete with cases in which the difference
between the claimed invention and the prior art is
some range or other variable within the claims. See,
e.g., Gardner v. TEC SYS., Inc., 725 F.2d 1338, 220
USPQ 777 (Fed. Cir.), cert. denied, 469 U.S. 830 [225
USPQ 232] (1984); In re Boesch, 617 F.2d 272, 205 USPQ
215 (CCPA 1980); In re Ornitz, 351 F.2d 1013, 147 USPQ
283 (CCPA 1965); In re Aller, 220 F.2d 454, 105 USPQ
233 (CCPA 1955). These cases have consistently held
that in such a situation, the applicant must show that
the particular range is critical, generally by showing
that the claimed range achieves unexpected results
relative to the prior art range. Gardner, 725 F.2d at
1349, 220 USPQ at 786 . . . Boesch, 617 F.2d at 276,
205 USPQ at 219; Ornitz, 351 F.2d at 1016-17, 147 USPQ
at 286; Aller, 220 F.2d at 456, 105 USPQ at 235.
The court in Woodruff states that appellant must show
criticality. Thus, appellant must have the opportunity to do
so. Accordingly, the majority's basis for affirming the
anticipation rejection of claims 1 and 3 directly contradicts
both Wertheim and Woodruff, id. Further, the court reaffirms2
Appeal No. 1999-2703
Application No. 08/772,068
ranges as a whole, appellant will have established unobviousness of the
claimed invention." Since anticipation is the "epitome of obviousness,"
In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982), it
logically follows that a showing of criticality also establishes a lack of
anticipation of the claimed invention.
21
that a prima facie case of obviousness in a situation of
overlapping ranges can be rebutted by a showing that the claimed
range has unexpected properties over the disclosed range in In
re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997) and In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684,
1687 (Fed. Cir. 1995), thereby implying that such situations
call for rejections under 35 U.S.C. § 103 rather than under 35
U.S.C. § 102.
Lastly, a range is analogous to a genus, with each point or
smaller range within the range being equivalent to a species.
It is well established that a genus may render a species obvious
but does not anticipate the species. See, e.g., In re Petering,
301 F.2d at 681-83, 133 USPQ at 279-81, wherein the species was
held not to be anticipated by the genus where the genus included
a large number of species, and unexpected results were
considered in determining the obviousness of the species over
Appeal No. 1999-2703
Application No. 08/772,068
Compare In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 Fed. Cir.3
1994) and In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943, in which the
court held that a species may not necessarily be obvious over a genus where
the genus includes a large number of species.
22
the genus. Consequently, evidence can be presented to show3
that the species is patentable over the genus. See, e.g.,
Petering, 301 F.2d at 681-83, 133 USPQ at 279-81. Thus,
completing the analogy, I find that a range that overlaps
another range at only a single point renders the first range
obvious, and that it is then necessary to consider evidence of
unexpected results to determine the patentability of the first
range.
In conclusion, the overlap of the ranges of Hamaguchi and
the claimed invention is insufficient to constitute anticipation
of the claims. Therefore, I would reverse the rejection of
claims 1 and 3 under 35 U.S.C. § 102(e). I agree with the
majority's reversal of the rejection of claims 5 and 7 under 35
U.S.C. § 102(e) and claims 6 and 8 under 35 U.S.C. § 103 both
for the reasons set forth by the majority and also for the
reasons discussed supra with respect to claims 1 and 3. I also
agree with the majority's affirmance of the rejection of claims
2 and 4 under 35 U.S.C. § 103, since the overlapping ranges
Appeal No. 1999-2703
Application No. 08/772,068
23
along with the reasons discussed by the majority suggest a prima
facie case of obviousness.
DISSENTING-IN-PART
ANITA PELLMAN GROSS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
ECK/sld
Appeal No. 1999-2703
Application No. 08/772,068
24
LAFF, WHITESEL, CONTE & SARET
401 NORTH MICHIGAN AVENUE
CHICAGO, IL 60611
SHEREECE DAVIS
Appeal No. 1999-2703
Application No. 08/772,068
APJ KRASS
APJ
APJ KEYBOARD()
DECISION: AFFIRMEND-IN-PART
Prepared: August 16, 2002