Ex Parte Tangren

Board of Patent Appeals and Interferences

Jul 29, 2002

08828297 (B.P.A.I. Jul. 29, 2002)

1
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not written for publication and is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN H. TANGREN
__________
Appeal No. 2000-1890
Application 08/828,297
___________
ON BRIEF
___________
Before JERRY SMITH, GROSS and BLANKENSHIP, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-19 and 21-24, which
constitute all the claims remaining in the application. First
and second amendments after final rejection were filed on
September 15, 1999 and October 27, 1999. Both amendments were
entered by the examiner.
The disclosed invention pertains to a disk drive
suspension which is adjusted for enhanced resonance performance.
Appeal No. 2000-1890
Application 08/828,297
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More particularly, the drive suspension has a load beam with one
or more mass balancing structures placed thereon in a first
configuration. The mass balancing structures are adjusted to a
second configuration responsive to a measurement representative
of a resonance characteristic of the suspension.
Representative claims 1 and 16 are reproduced as follows:
1. A disk drive suspension adjusted for enhanced
resonance performance including a load beam having a distal end,
an actuator arm mounting region on a proximal end, a rigid
region, a spring region between the rigid region and actuator arm
mounting region, and a head mounting region on a distal end of
the load beam for receiving a transducer head, the load beam
having one or more mass balancing structures in a first
configuration between the actuator arm mounting region and the
head mounting region, the disk drive suspension comprising:
the one or more mass balancing structures being adjusted
to a second configuration in response to a measurement
representative of a resonance characteristic of the suspension to
controllably adjust the mass distribution of the load beam and
the resonance characteristic to a desired value.
16. A method for adjusting one or more resonance
characteristics of disk drive suspensions of the type including a
load beam having proximal and distal ends, an actuator arm
mounting region on the proximal end and a transducer mounting
region on a distal end, the method including:
forming a disk drive suspension with one or more mass
balancing structures positioned in a first configuration at
adjust locations on the load beam, the adjust locations being
where a resonance characteristic to be adjusted is sensitive to
changes in mass;
measuring the resonance characteristic of the suspension;
and
Appeal No. 2000-1890
Application 08/828,297
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adjusting one or more of the mass balancing structures to
a second configuration to adjust the mass distribution of the
load beams as a function of the measured resonance
characteristic.
The examiner relies on the following references:
Hinlein 5,003,420 Mar. 26, 1991
Budde SIR H1573 Aug. 06, 1996
Claim 10 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Claims 1-8, 10 and 12-15 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Hinlein. Claims 9, 11, 16-19 and 21-24 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers Hinlein taken alone with respect to claims 16, 19
and 21-24, and Hinlein in view of Budde with respect to claims 9,
11, 17 and 18.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the prior art rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appeal No. 2000-1890
Application 08/828,297
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the appellant’s arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that claim 10 satisfies the requirements of 35 U.S.C. § 112.
We are also of the view that the evidence relied upon supports
the rejection of claims 1-12. We reach the opposite conclusion
with respect to claims 13-19 and 21-24. Accordingly, we affirm-
in-part.
With respect to the rejection of claim 10 under the
second paragraph of 35 U.S.C. § 112, the examiner states that
“[t]he phrase ‘wherein one or more added mass sections’ lacks
proper antecedent basis, since claim 1 does not recite any ‘added
mass sections’” [answer, page 4]. Appellant argues that claim 10
clearly recites that the one or more added mass sections are in
addition to the structures recited in claim 1 [brief, page 4].
The examiner simply repeats the assertion of indefiniteness
[answer, page 6].
Although we are of the view that claim 10 could be
drafted in better form, we agree with appellant that there is no
lack of antecedent basis in claim 10 because the claimed “one or
more added mass sections” should be interpreted as being present
Appeal No. 2000-1890
Application 08/828,297
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on the drive suspension of claim 1 in addition to the mass
balancing structures previously recited in claim 1. Therefore,
no antecedent basis is required for the added mass sections of
claim 10. Accordingly, we do not sustain this rejection of claim
10.
We now consider the rejection of claims 1-8, 10 and 12-15
under 35 U.S.C. § 102(b) as being anticipated by the disclosure
of Hinlein. Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner indicates how he reads the claimed invention
on the disclosure of Hinlein [answer, page 4]. With respect to
claims 1-8, 10 and 12 which stand or fall together [brief, page
4], appellant argues that the tabs of Hinlein cannot be used for
both mass balancing and retaining electrical leads. Appellant
also argues that even if the bent tabs of Hinlein constituted a
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Application 08/828,297
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first configuration, these tabs could not be moved from their
bent configuration because that would release the electrical
leads. Finally, appellant argues that Hinlein cannot anticipate
these claims because Hinlein is silent as to measuring the
resonance characteristics of the load beam [brief, pages 5-6].
With respect to separately argued claims 13-15, appellant
additionally argues that there is no disclosure in Hinlein to
locate the tabs in relation to the second torsion node location
[id., page 6].
The examiner responds that the tabs of Hinlein can be
considered to be mass balancing structures as recited in claim 1.
The examiner also responds that the first and second
configurations can be read on an intermediate form of the product
and the final form of the product respectively. The examiner
finds that the foldable tabs of Hinlein meet the claimed first
and second configurations. The examiner notes that the claimed
recitation “in response to a measurement representative of a
resonance characteristic of the suspension to controllably adjust
the mass distribution of the load beam and the resonance
characteristic to a desired value” is not pertinent to the
rejection because the claimed invention is directed to the
product and not to a method performed on the product [answer,
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Application 08/828,297
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pages 6-7]. With respect to claims 13-15, the examiner responds
that the broadly recited locations are met by Hinlein [id., pages
7-8].
With respect to claims 1-8, 10 and 12, we agree with the
position argued by the examiner. Since the various tabs in
Hinlein clearly have some mass, and since the tabs are designed
to be movable, we agree with the examiner that these tabs
constitute “mass balancing structures” as that term is broadly
defined. We also note that appellant’s own disclosure describes
that such tabs can be used as mass balancing structures. Thus,
any movement of the tabs in Hinlein will have the effect of
changing the mass balance of the suspension. We also agree with
the examiner that the fact that Hinlein has no mention of mass
balancing or resonance measurements is not relevant to the
product recited in claim 1. Claim 1 is directed to a drive
suspension having configurable mass balancing structures. More
precisely, claim 1 attempts to define a product which has two
different states at two different times. Claim 1 also attempts
to define this product by the manner in which the product is
changed from its first state to its second state. We do not
think that the particular product of claim 1 can properly be
claimed by the manner in which the product attains one of its
Appeal No. 2000-1890
Application 08/828,297
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states. We agree with the examiner that such a product claim can
be read on the second state of the product and the manner in
which the second state was attained has no patentable relevance
to the product itself. Therefore, the claimed reasons why the
mass balancing structures are reconfigured are not relevant to
the configurable product recited in claim 1. The final product
recited in claim 1 does not require that any measurements
actually be made to define the product. Claim 1 only requires
that a disk drive suspension have one or more mass balancing
structures (tabs) which have been moved from a first
configuration (unbent) to a second configuration (bent). This
product as broadly recited in claim 1 is fully met by Hinlein.
Therefore, we sustain the examiner’s rejection of claims 1-8, 10
and 12.
We reach the opposite result with respect to claims 13-
15. Claims 13-15 recite a specific location of the mass
balancing structures with respect to the second torsion node
location of the structure. Appellant and the examiner agree that
Hinlein has no mention of a second torsion node location. The
examiner relies on the fact that the suspension in Hinlein
inherently has the first and second torsion nodes and the claims
do not recite where the second torsion node is located. The
Appeal No. 2000-1890
Application 08/828,297
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location of the second torsion node, however, can be determined
for a given suspension. Claims 13-15 require that the mass
balancing structures (tabs) be placed at a specific point on the
suspension related to the determined location of the second
torsion node. This is a structural requirement which the
examiner dismisses based on pure speculation. There is no
evidence within Hinlein that the tabs can be structurally located
as recited in claims 13-15. A rejection based on anticipation
cannot be established based upon conjecture and speculation.
Therefore, we do not sustain the rejection of claims 13-15.
We now consider the rejections of the claims under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
Appeal No. 2000-1890
Application 08/828,297
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or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
Appeal No. 2000-1890
Application 08/828,297
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With respect to the rejection of claims 16, 19 and 21-24
based on Hinlein taken alone, the examiner acknowledges that
Hinlein is silent as to the step of measuring the resonance
characteristic of the load beam and subsequently adjusting one or
more of the mass balancing structures. The examiner finds,
however, that it would have been obvious to the artisan to have
adjusted the characteristics of the load beam after measuring
them initially in order to obtain the desired effects [answer,
pages 4-5].
Appellant argues that Hinlein does not establish a prima
facie case of obviousness because there is no teaching or
suggestion in Hinlein that the tabs are adjusted to modify the
resonance characteristics of the suspension. Appellant also
argues that the examiner has admitted that Hinlein does not teach
the steps of the claimed invention but asserts obviousness anyway
[brief, pages 7-9]. The examiner responds that the step of
measuring resonance characteristics would have been obvious to a
skilled artisan [answer, page 8].
We agree with appellant that the examiner has failed to
establish a prima facie case of the obviousness of independent
claim 16 based on Hinlein taken alone. Claim 16 recites specific
steps of measuring the resonance characteristic of the suspension
Appeal No. 2000-1890
Application 08/828,297
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and adjusting a mass balancing structure based on this
measurement. Since Hinlein has no teaching whatsoever related to
measuring the resonance characteristic of the suspension, we fail
to see how Hinlein can be said to teach the claimed measuring and
adjusting steps. The examiner simply dismisses the claim
limitations as being obvious to the artisan without any evidence
on this record to support that position. The examiner’s mere
opinion cannot substitute for evidence which is lacking in the
record. Therefore, we do not sustain the examiner’s rejection of
claims 16, 19 and 21-24 based on Hinlein taken alone.
We now consider the rejection of claims 9, 11, 17 and 18
based on the teachings of Hinlein and Budde. Budde is cited to
meet the perforated punch-out structures of claim 9, the adhesive
of claim 11, and the steps of adding and removing mass as recited
in claims 17 and 18. Appellant argues that Budde does not
contain any teaching or suggestion of adjusting the mass
balancing structures to a second configuration in response to a
measurement representative of the resonance characteristic of the
suspension [brief, page 10]. The examiner responds that it would
have been obvious to the artisan to make appropriate changes in
Appeal No. 2000-1890
Application 08/828,297
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mass to the suspension of Hinlein based on Budde and in view of
the common knowledge of the artisan [answer, pages 9-10].
With respect to claims 17 and 18, since these claims
depend from improperly rejected claim 16, and since Budde does
not overcome the fundamental deficiencies of Hinlein noted above,
we do not sustain this rejection of claims 17 and 18. With
respect to claims 9 and 11, these claims depend from claims whose
rejection was sustained above. As noted above, the measurement
step is not relevant to the product recited in claim 1. The
question is whether it would have been obvious to the artisan to
apply the teachings of reduced mass areas using perforated punch-
outs as taught by Budde with the suspension of Hinlein. We agree
with the examiner that the broad recitation of punch-out areas in
a suspension would have been obvious to the artisan based on the
additional teachings of Budde. Therefore, we sustain this
rejection of claims 9 and 11.
In summary, we have not sustained the rejection of claim
10 under the second paragraph of 35 U.S.C. § 112. The rejection
of claims 1-8, 10 and 12-15 under 35 U.S.C. § 102 is sustained
with respect to claims 1-8, 10 and 12, but is not sustained with
Appeal No. 2000-1890
Application 08/828,297
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respect to claims 13-15. The rejection of claims 9, 11, 16-19
and 21-14 under 35 U.S.C. § 103 is sustained with respect to
claims 9 and 11, but is not sustained with respect to claims 16-
19 and 21-24. Therefore, the decision of the examiner rejecting
claims 1-19 and 21-24 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2000-1890
Application 08/828,297
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