Ex Parte Tabor et al

Board of Patent Appeals and Interferences

Jun 22, 2012

10544579 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUNTER TABOR, REINER BAAS and ROLF DUPPER
____________

Appeal 2009-015259
Application 10/544,579
Technology Center 2100
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE and
MICHAEL J. STRAUSS, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-015259
Application 10/544,579

2
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-6. We AFFIRM.
BACKGROUND
Appellants’ disclosed invention relates to a board for a drive for
optical storage media. A part of the board is shaped like a spring and is used
as an elastic stop for the optical scanner. Abs.; see Spec. p. 2, ll. 5-17.
Independent claim 1 is illustrative and is reproduced below:
A board for a drive for optical storage media on which a
turntable is fitted, having a spring-like element which is used as
a stop for an optical scanner for damping the optical scanner,
wherein the spring-like element is formed by a part of the
board.
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Chen (U.S. 2003/0235142) and Osada (JP 2002-050137A).
ISSUE
Did the Examiner err in determining that the combination of Chen and
Osada renders obvious the invention recited in claim 1?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action. We disagree with Appellants’ conclusions and highlight and address
specific findings and arguments for emphasis as follows.
The Examiner finds, referring to Chen’s Figure 2 reproduced below,
that Chen describes a board 10 including a fixer 13, but does not show the
detailed structure of fixer 13. Ans. 3.
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Appeal 2009-015259
Application 10/544,579

4
fixing piece presses in the diameter direction of the guide rod 12. Br. 4
(citing Osada translation ¶¶ 0034). Appellants also argue that Osada’s fixing
piece 21, 22, 23 when combined with Chen’s structure would not act as a
spring-like element for damping an optical scanner. Br. 5-6. Appellants’
arguments focus on the statements of intended use recited in claim 1, rather
than the claimed structure. Claim 1 only requires the following structure: a
board having a spring-like element which is formed by a part of the board.
When the structural limitations are all found in the prior art, the absence of a
disclosure in the prior art relating to function does not defeat the finding of
anticipation or determination of obviousness. “It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (“structure will be used to dispense popcorn does not have patentable
weight if the structure is already known, regardless of whether it has ever
been used in any way in connection with popcorn”).
We are also unpersuaded by Appellants’ arguments that: (1) Osada’s
elastic mounting of the guide rod would lead to a loosening and an axial play
of the guide rod 12, which is not acceptable in a playback device (Br. 4-5,
citing Osada translation ¶¶ 0036); (2) based on Chen’s teaching that one end
of the guide rod 12 is fitted in the fixing mount 13, Chen’s fixing mount 13
needs to prevent any displacement of the guide rod along its axis (Br. 5,
citing Chen ¶ 0027); and (3) the combination of the teachings of Chen and
Osada do not result in the solution of claim 1 because Osada’s fixing piece
which replaces Chen’s fixing mount 13 would also need to prevent axial
displacement of the guide rod and must not be elastic in the direction of the
axis of the guide rod (Br. 5). Appellants’ arguments are unsupported by
Appeal 2009-015259
Application 10/544,579

5
objective evidence, such as testimony by one with ordinary skill in the art, to
demonstrate that: (1) displacement of a guide rod along its axis must be
prevented; and (2) loosening and axial play of a guide rod is unacceptable.
Argument of counsel cannot take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977) see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
For all these reasons, we sustain the rejection of claims 1-6 as obvious
over Chen and Osada.
DECISION
We AFFIRM the rejection of claims 1-6 under 35 U.S.C. § 103(a) as
unpatentable over Chen and Osada.
TIME PERIOD
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).
AFFIRMED

TJ