Ex Parte Scherf-Smith et al

Patent Trial and Appeal Board

May 17, 2016

12600877 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/600,877 11/19/2009
112792 7590 05/19/2016
Haynes and Boone, LLP (47415)
Attn: IPDocketing
2323 Victory A venue, Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Tanja Scherf-Smith
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
47415.224 2972
EXAMINER
WU, JAMES
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
05/19/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TANJA SCHERF-SMITH and ETHAN WEBER
Appeal2014-007638
Application 12/600,877 1
Technology Center 2800
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
MCMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-17. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is NetApp, Inc. (App. Br.
3).
Appeal 2014-007 63 8
Application 12/600,877
REJECTIONS ON APPEAL
Claims 1, 5, and 9-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McAlister (US 2005/0157464 Al, published July
21, 2005), Lee (US 2005/0168933 Al, published Aug. 4, 2005), Masterson
et al. (US 2005/0206058 Al, published Sept. 22, 2005) ("Masterson"),
Driscoll et al. (US 2002/0158103 Al, published Oct. 31, 2002), and Kao et
al. (US 2005/0135000 Al, published June 23, 2005).
Claims 2--4 and 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McAlister in view of Lee, Masterson, Driscoll, Kao, and
Hus et al. (US 2002/0195910 Al, published Dec. 26, 2002).
THE CLAIMED INVENTION
The present invention generally relates to customer replaceable units,
and more specifically to isolating a disk drive from a customer replaceable
unit to improve input and output operations of the disk drive. Spec. i-fi-f l-2.
Independent claims 1 and 15 are directed to methods; and independent
claims 5 and 9 are directed to customer replaceable units. App. Br. 18-21.
Claim 1 recites:
1. A method of isolating a disk drive from a customer
replaceable unit to improve input and output operations of said disk
drive comprising:
providing a customer replaceable unit frame having at least two
support arms;
forming openings in said at least two support arms to support
said disk drive on said at least two support arms with connectors that
pass through said openings and connect to said disk drive;
overmolding an elastomeric material, that is capable of
absorbing vibrations, on said at least two support arms in locations
between said disk drive and said at least two support arms, and around
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Appeal 2014-007 63 8
Application 12/600,877
surfaces of said at least two support arms surrounding said openings,
and portions of said at least two support arms that are in contact with
said connectors when said connectors are placed in said openings and
are connected to said disk drive, so as to isolate said disk drive from
said customer replaceable unit frame with said elastomeric material,
wherein the elastomeric material on a first one of the support arms
includes a first single unitary structure that surrounds at least two of
the openings, further wherein the elastomeric material on a second
one of the support arms includes a second single unitary structure that
surrounds at least two of the openings, and further wherein each
support arm includes an area not covered by the elastomeric material
and extending along a length dimension of the support arm.
ANALYSIS
\Ve have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. \Ve are not persuaded that Appellants
identify reversible en-or. Upon consideration of the arguments presented in
the Appeal Brief and Reply Brief, we agree with the Examiner that a11 the
pending claims are unpatentable over the cited combination of references.
We adopt as our own the findings and reasons set forth in the rejection from
\vhich this appeal is taken and in the Examiner's Answer. \Ve provide the
following explanation to highlight and address specific arguments and
findings primarily for emphasis.
Appellants contend the "reasoning provided by the rejection to
combine the cited references fails to provide any reason at all, and the
rejection does not establish a primafacie case of obviousness." App. Br. 10.
Specifically, Appellants disagree with the Examiner's reason for combining
the teachings of Lee and Masterson, as set forth on page 4 of the Final
Office Action mailed November 5, 2013, which reads, in pertinent part:
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Appeal 2014-007 63 8
Application 12/600,877
l\tkA1ister in view of Lee does not teach elastomeric material on
portions of said at least two suppmi arts that are in contact with
said connectors. However, l\tlasterson teaches an elastomeric
material (32, Fig. 5) on a portion of said at least two support
arms (34; Fig. 5; [0024]: elastomeric material 32 may be
bonded with or co-molded to the support structure 34) that is in
contact with connectors ( 40, Fig. 5) and is connected to a disk
drive (38, Fig. 5). It would have been obvious to one of
ordinary skin in the art at the time of the invention to have
elastomeric material on portions of said at least two support
arms that are in contact with said connectors in J\1cAlister in
view of Lee, as taught by l\l1asterson, in order to absorb
vibration ene1gyfrmn the connectm~-. that could cause damage
to the disk drive.
Final Act 4 (Emphasis added); see App. Br. 11-13. Appellants argue "Lee
would not benefit from elastomeric material within portions that are in
contact with the connectors because Lee already eliminates the metal-to-
metal contact that would transmit vibrational energy." /\pp. Br. 13; see Rep.
Br. 2, 4---5.
T i ~.1 TIJ""lino T , _t1 ,:--~ •71 J f"} T !"'!"'.ft. TT ri ~rt. ....... A 1 {') in accoraance wnn A.Jl"C mr t co. v. 1 ete]tex, me., JJU u.i'.'.".I. SJC'i, "+us
(2007), the Examiner identified "a reason that would have prompted a
person of ordinary skin in the relevant field to combine the elements in the
way the claimed invention does.'' The Examiner finds; in Lee, '"a need to
further prevent vibrational energy," and that ''combining the teaching of
Yviasterson with Lee" provides such prevention of "vibration energy from the
disk drive to the connector." Ans. 4. We agree with the Examiner.
Lee is directed towards "a damping device for hard disk drive that
includes reinforcing members enabling the damping device to effectively
reduce the vibration and noises produced by an operating hard disk drive."
Lee i; 8. ?vfasterson is directed towards ''an elastorneric pin isolator used as a
shock and vibration isolation device. Elastomer isolators may generally be
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Appeal 2014-007 63 8
Application 12/600,877
used to provide shock and vibration isolation between a mass and its
surround structure." I\1asterson ~~ 2-3. In other words, as identified by the
Examiner, both Lee and l\1asterson are directed towards the reduction of
vibration, to provide isolation for a mass or disk drive. As such, both Lee
and J\1asterson benefit from fmiher reducing vibration . ..._,
\Ve find that isolatino- a disk drive from vibration bv eliminatino-o c,/ 0
metal-to-metal contact between a disk drive and vibration source, as taught
by Lee; using the elastomeric pin isolation of I\1asterson, does no more than
yield the predictable result of improved absorption and reduction of
vibration between a disk drive and customer replaceable unit We see no
error in the Examiner's conclusion that the teachings of Lee and J\1asterson ..._,
may be combined for the reasons set forth in the Final Office Action.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the rejection of dependent claim 17, not
separately argued. App. Br. 14-15.
\Vith regard to independent dairns 5, 9, and 15, Appellants argue that
these claims are patentable for the same reasons as claim 1. App. Br. 13----15.
Accordingly, we sustain the rejection of claims 5, 9, and 15, as well as the
rejections of dependent claims 2----4, 6----8, 10----14, and 16, not separately
argued. Id.
'-'
DECISION
The rejections of claims 1-17 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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