Ex parte Shigemoto

Board of Patent Appeals and Interferences

Sep 25, 1997

07814693 (B.P.A.I. Sep. 25, 1997)

Application for patent filed December 30, 1991. According1
to appellant, this application is a division of Application
07/525,607, filed May 21, 1990, now U.S. Patent No. 5,166,846,
issued November 24, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TATSUHIKO SHIGEMOTO
__________
Appeal No. 95-2911
Application 07/814,6931
__________
ON BRIEF
__________
Before KRASS, FLEMING and LEE, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
Appeal No. 95-2911
Application 07/814,693
2
claims 5 and 8 through 10, all of the claims pending in the
present application. Claims 1 through 4, 6, 7 and 11 have been
canceled.
The invention relates to a carriage for a floppy disk drive
for carrying the magnetic head. In particular, Appellant
discloses on pages 11 and 12 of the specification and illustrates
in Figures 3a and 3b a floppy disk drive assembly having a
magnetic head 7 and a carriage 21 for carrying the magnetic head.
Appellant discloses that the carriage includes a narrow bracket
portion 24 extending therefrom and having an integrally formed,
upraised, wedge-shaped element 25 having flat sides tapering to a
thin edge for engagement with a thread groove of a feed screw 43
and being formed of press-worked sheet metal, the sheet-metal
being the same sheet-metal forming the carriage 21 so as to form
a unitary structure.
The independent claim 5 is reproduced as follows:
5. A floppy disk drive assembly having a magnetic head for
recording information on and/or reproducing information from a
floppy disk comprising: a carriage formed of sheet metal for
carrying the magnetic head; and drive means for driving the
carriage so as to enable the magnetic head to scan a track formed
on a side of the floppy disk, in which the drive means includes a
feed screw and a motor for driving the feed screw and in which
the sheet metal forming the carriage includes a narrow bracket
portion extending therefrom and having an integrally formed,
Appeal No. 95-2911
Application 07/814,693
3
upraised, wedge-shaped element having flat sides tapering to a
thin edge for engagement with a thread groove of the feed screw
and being formed of press-worked sheet metal, the sheet-metal
being the same sheet-metal forming the carriage so as to form a
unitary structure, whereby a torque of the motor is transmitted
to the carriage through the feed screw and the wedge-shaped
element of the carriage.
The Examiner relies on the following references:
Tanaka 4,422,112 Dec. 20, 1983
Inoue 4,809,106 Feb. 28, 1989
Kato et al. (Kato) 4,881,142 Nov. 14, 1989
(filed Sep. 30, 1988)
Aruga et al. (Aruga) 5,032,941 Jul. 16, 1991
(filed Jan. 24, 1989)
Maeda et al. (Maeda) 5,189,570 Feb. 23, 1993
(filed Aug. 15, 1991)
Claims 5 and 8 through 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Maeda and Kato. Claims 5 and 8
through 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kato, Aruga, Tanaka and Inoue.
Appeal No. 95-2911
Application 07/814,693
Appellant filed an appeal brief on July 18, 1994. We will2
refer to this appeal brief as simply the brief. Appellant filed
a response to the new ground of rejection on December 30, 1994.
We will refer to this response as the reply brief.
The Examiner responded to the brief with an Examiner's3
answer, dated October 14, 1994. We will refer to the Examiner's
answer as simply the answer. We note that the answer contains a
new ground of rejection rejecting claims 5 and 8 through 10 under
35 U.S.C. § 103 as being unpatentable over Kato, Aruga, Tanaka
and Inoue. The Examiner responded to the reply brief with a
supplemental Examiner's answer dated April 24, 1996. We will
refer to the Supplemental Examiner's answer as simply the
supplemental answer.
4
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the briefs and answer for the2 3
respective details thereof.
OPINION
We will not sustain the rejection of claims 5 and 8 through
10 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
Appeal No. 95-2911
Application 07/814,693
5
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
In regard to the rejection of claims 5 and 8 through 10
under 35 U.S.C. § 103 as being unpatentable over Maeda and Kato,
Appellant argues on pages 6 and 7 of the brief that Maeda and
Kato, together or individually, fail to teach or suggest a sheet
metal head carriage having a sheet metal upraised wedge-shape
element having flat sides tapering to a thin edge. We note that
Appellant’s claim 5 recites a
floppy disk drive assembly having a magnetic head . . .
comprising: a carriage formed of sheet metal for
carrying the magnetic head; . . . in which the sheet
metal forming the carriage includes a narrow bracket
portion extending therefrom and having an integrally
formed, upraised, wedge-shaped element having flat
sides tapering to a thin edge for engagement with a
thread groove of the feed screw and being formed of
press-worked sheet metal, the sheet-metal being the
same sheet-metal forming the carriage so as to form a
unitary structure.
The Examiner argues on pages 4 and 5 of the answer that it
would have been obvious to those skilled in the art to modify the
carriage of Maeda in view of the Kato teaching of using sheet
Appeal No. 95-2911
Application 07/814,693
6
metal to obtain Appellant’s invention as recited in claim 5.
The Examiner further states on pages 4 and 5 of the answer that
[i]t was well known in the art to make use of this
advantage [the advantage of sheet metal to be stamped
into desired shapes] to form structures (which are not
expected or designed to undergo movement relative to
each other) as a unitary body so as to simplify the
assembly thereof and to better ensure that such
structures do not move relative to each other.
Upon a careful review of Maeda and Kato, we find that
neither reference teaches
a carriage formed of sheet metal for carrying the
magnetic head; . . . in which the sheet metal forming
the carriage includes a narrow bracket portion
extending therefrom and having an integrally formed,
upraised, wedge-shaped element having flat sides
tapering to a thin edge for engagement with a thread
groove of a feed screw and being formed of press-worked
sheet metal, the sheet-metal being the same sheet-metal
forming the carriage so as to form a unitary structure
as recited in Appellant’s claim 5. In Figure 1, Maeda shows the
carriage 10 and a part separate from the carriage, a needle 22
for engagement with a thread groove 21 of the feed screw. In
addition, the Examiner agrees that Maeda does not meet the above
limitations recited in Appellant’s claim 5. In particular, the
Examiner states on page 3 of the answer that Maeda does not teach
“the carriage and the engagement piece being formed as a unitary
body from the same sheet metal.”
Kato teaches in Figure 7 a carriage 38 and a part separate
from the carriage, a needle 39c for engagement with a thread
Appeal No. 95-2911
Application 07/814,693
7
groove 21 of the feed screw. Thus, Kato does not teach the above
limitations recited in Appellant’s claim 5. Furthermore, the
Examiner agrees that Kato does not meet the above limitations
recited in Appellant’s claim 5. In particular, the Examiner
states on page 6 of the answer that Kato does not teach the
following:
A...a thread groove engaging member as being wedge
shaped with flat sides, B...that the carriage and the
thread groove engaging member are formed as a unitary
member C...that the carriage and the thread groove
engaging member are formed press-worked sheet metal.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference, common knowledge or capable of unquestion-
able demonstration. Our reviewing court requires this evidence
in order to establish a prima facie case. In re Knapp-Monarch
Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer,
354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966). Therefore,
we will not sustain the rejection of claims 5 and 8 through 10
under 35 U.S.C. § 103 as being unpatentable over Maeda and Kato.
Claims 5 and 8 through 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kato, Aruga, Tanaka and Inoue.
Appellant argues on pages 6 and 7 of the brief and the reply
brief that Kato, Aruga, Tanaka and Inoue, together or individ-
Appeal No. 95-2911
Application 07/814,693
8
ually, fail to teach or suggest a lead screw follower formed as
an upraised wedge-shape element having flat sides that engage the
thread groove of the feed crew, and in which this wedge-shape
element is formed of the very same press-worked sheet metal as
the head carriage itself. For emphasis, we note that Appellant’s
claim 5 recites a
floppy disk drive assembly having a magnetic head . . .
comprising: a carriage formed of sheet metal for
carrying the magnetic head; . . . in which the sheet
metal forming the carriage includes a narrow bracket
portion extending therefrom and having an integrally
formed, upraised, wedge-shaped element having flat
sides tapering to a thin edge for engagement with a
thread groove of the feed screw and being formed of
press-worked sheet metal, the sheet-metal being the
same sheet-metal forming the carriage so as to form a
unitary structure.
Upon a careful review of Kato, Aruga, Tanaka and Inoue, we
find that none of these references teach a carriage formed of
sheet metal
in which the sheet metal forming the carriage includes
a narrow bracket portion extending therefrom and having
an integrally formed, upraised, wedge-shaped element
having flat sides tapering to a thin edge for
engagement with a thread groove of the feed screw and
being formed of press-worked sheet metal, the sheet-
metal being the same sheet-metal forming the carriage
so as to form a unitary structure
as recited in Appellant’s claim 5.
Appeal No. 95-2911
Application 07/814,693
9
Kato teaches in Figure 7 a carriage 38 and a part separate
from the carriage, a needle 39c for engagement with a thread
groove 21 of the feed screw. Thus, Kato does not teach the above
limitations recited in Appellant’s claim 5. Furthermore, we note
that the Examiner has stated in the answer and the supplemental
answer that Kato fails to teach these limitations.
In column 3, line 50, through column 4, line 11, and
illustrated in Figures 2A and 2B, Tanaka teaches a carriage 16
and a part separate from the carriage, an inclined blade 212, for
engagement with a thread groove of the threaded shaft 210. Thus,
Tanaka does not teach the above limitations recited in
Appellant’s claim 5.
In column 3, line 66, through column 4, line 39, and
illustrated in Figures 1 and 2, Inoue teaches a carriage 18 and
a part separate from the carriage, a pin 49, for engagement with
the lead screw 44. In the answer and in the supplemental answer,
the Examiner points to column 1, lines 27-31, for the teaching
that the carriage and the pin may be formed as a unitary member.
Inoue states in column 1, lines 25-31,
Appeal No. 95-2911
Application 07/814,693
10
[w]hile a variety of motion translating mechanisms have
been suggested and used, perhaps the most widely
accepted in the art is a lead screw which is coupled
directly to the stepper motor and which is matingly
engaged with the head carriage either directly or via
suitable means mounted to the carriage.
Inoue does not provide any further disclosure as to what was
meant by having the lead screw matingly engaged with the head
carriage directly. While we could accept the Examiner’s
invitation for us to speculate, we will not do so for this
appeal. Thus, we find that Inoue does not teach a carriage
formed of sheet metal
in which the sheet metal forming the carriage includes
a narrow bracket portion extending therefrom and having
an integrally formed, upraised, wedge-shaped element
having flat sides tapering to a thin edge for
engagement with a thread groove of the feed screw and
being formed of press-worked sheet metal, the sheet-
metal being the same sheet-metal forming the carriage
so as to form a unitary structure
as recited in Appellant’s claim 5.
Turning to Aruga, we agree that Aruga teaches in column 6,
lines 5-61, and illustrated in Figure 7, a pinion 4 which engages
in a rack 3a of a carriage 3. However, Aruga does not teach
the carriage includes a narrow bracket portion
extending therefrom and having an integrally formed,
upraised, wedge-shaped element having flat sides
tapering to a thin edge for engagement with a thread
groove of the feed screw and being formed of press-
worked sheet metal, the sheet-metal being the same
Appeal No. 95-2911
Application 07/814,693
11
sheet-metal forming the carriage so as to form a
unitary structure
as recited in Appellant’s claim 5.
Furthermore, we fail to find any suggestion of modifying
Kato to provide a carriage as recited in Appellant’s claim 5.
The Federal Circuit states that "[t]he mere fact that the prior
art may be modified in the manner suggested by the Examiner does
not make the modification obvious unless the prior art suggested
the desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). "Obviousness may not be established using hindsight
or in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing
` W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311,
312-13.
We have not sustained the rejection of claims 5 and 8
through 10 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
Appeal No. 95-2911
Application 07/814,693
12
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-2911
Application 07/814,693
13
Jay H. Maioli, Esq.
Cooper & Dunham
1185 Avenue of the Americas
New York, NY 10036