Ex Parte Slezak

Board of Patent Appeals and Interferences

Aug 28, 2009

09981556 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARNOLD G. SLEZAK
____________

Appeal 2009-000747
Application 09/981,556
Technology Center 3700
____________

Decided: August 28, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Arnold G. Slezak (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 3, 5-9, and 21. Claims 22-24 were objected
to as being dependent on a rejected base claim. We have jurisdiction under
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35 U.S.C. § 6(b) (2002). An oral hearing with Appellant’s counsel occurred
on June 25, 2009.
The Invention
The disclosed invention is to method for assembling prewritten discs
in a disc stack that minimizes servo pattern runout. Spec. 3:6-7.
When servo information is written onto a disc, three radial lines are
made on both the upper and lower surfaces. The middle line is an alignment
mark. Spec. 5:11-13.
The assembly process of the disc stack starts by placing a prewritten
disc about the spindle motor hub of a disc drive. A detector scans the
prewritten disc to locate the alignment mark. The prewritten disc is then
rotated and aligned with the assistance of a biasing force that is applied to
the outside edge of the disc toward its center. The position of the prewritten
disc is then secured to the spindle by a disc clamp. The process continues by
placing the next prewritten disc about the spindle and the additional step of
balancing the disc stack by applying the biasing force at opposite directions
for even numbered disc stack assemblies or at even intervals for odd
numbered disc stack assemblies. Spec. 6:16 to 7:30.
Illustrative Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
placing prewritten discs, each characterized by servo
tracks that are offset in relation to a common angular
reference axis of each disc, around a motor hub, the
prewritten discs placed with respect to each other
disposing the angular reference axes symmetrically
around the motor hub; and
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biasing each disc in a direction of the respective angular
reference axis to concentrically align the servo tracks
of a first disc of the prewritten discs with the servo
tracks of a second disc of the prewritten discs.

SUMMARY OF DECISION
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

ANALYSIS
For the reasons set forth subsequently in this opinion, the existing
prior art rejections are reversed, pro forma, because they necessarily are
based upon speculative assumptions as to the meaning of the claims. See In
re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be understood,
however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter and does not reflect the adequacy or
inadequacy of the prior art evidence supplied in support of the rejections of
record.

NEW REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 1, 3, 5-9, and 21-24 are rejected under the second paragraph of
35 U.S.C. § 112 as being vague and indefinite and essentially failing to set
forth the subject matter which Appellant regards as his invention.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The claims are directed to a process of placing prewritten discs having
servo tracks that are “offset in relation to a common angular reference axis
of each disc” around a motor hub. The prewritten discs are placed with
respect to each other “disposing the angular reference axes around the motor
hub” and biasing each disc in a direction of the respective angular reference
axis to concentrically align the servo tracks of the prewritten discs.
The Specification describes a process placing a prewritten disc about
the spindle motor hub of a disc drive. A detector scans the prewritten disc to
locate the alignment mark. The prewritten disc is then rotated and aligned
with the assistance of a biasing force that is applied to the outside edge of
the disc toward its center. The position of the prewritten disc is then secured
to the spindle by a disc clamp. The process continues by placing the next
prewritten disc about the spindle and balancing the disc stack by applying
the biasing forces in other directions that are dependent on the number of
discs which will form the assembly.
A person having ordinary skill in the art would not understand what is
claimed when claims are read in light of the Specification. The claims recite
the prewritten discs have servo tracks that are “are offset in relation to a
common angular reference axis of each disc” and the discs are placed
“disposing the angular reference axes symmetrically around” the motor hub.
The Specification describes a process of locating an alignment mark on a
prewritten disc and rotating and aligning the prewritten disc with a biasing
force in a direction toward the center of the disc. The Specification does not
describe the Appellant’s invention in terms of a “common angular reference
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axis,” and a person of ordinary skill in the art would not understand what
axis is being referred to. For example, “common angular reference axis”
could refer to a common cylindrical axis (viewing Figure 2, an axis radiating
through the page), a polar axis (viewing Figure 2, an axis that rotates around
the disc like a hand of a clock) or a common rectangular axis lying in the
plane of the page on which Figure 2 appears, and the Specification does not
provide adequate guidance to as the proper coordinate system to use to place
this claimed phrase in context. As such, a person of ordinary skill in the art
would not understand the scope of the claims in light of the Specification
because the claims terms are not sufficiently described in the Specification.
Accordingly, the scope of meaning of the claims is undeterminable,
subject to plural interpretations, and therefore indefinite. Furthermore, the
notice requirement of 35 U.S.C. § 112, second paragraph, appears not to
have been met to permit the public to reasonably avoid potential
infringement of any claim that may be issued. Moreover, the claims, as
drafted, fail to provide a clear measure of what Appellant regards as the
invention so that it can be determined whether the claimed invention meets
all the criteria for patentability and whether the Specification meets the
criteria of 35 U.S.C. § 112, first paragraph, with respect to the claimed
invention.

SUMMARY
In view of the foregoing, we have pro forma reversed the Examiner’s
prior art rejections of all claims on appeal. We have entered a new ground
of rejection of claims 1, 3, 5-9, and 21-24 under 35 U.S.C. § 112, second
paragraph.
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DECISION
The Examiner’s decision to reject the claims on appeal under 35
U.S.C. §§ 102(b) and 103(a) is pro forma reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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) (2007).
REVERSED; 37 C.F.R. § 41.50(b)

Appeal 2009-000747
Application 09/981,556

7

LV

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