Ex parte Vollmann

Board of Patent Appeals and Interferences

Mar 30, 1999

08224213 (B.P.A.I. Mar. 30, 1999)

Application for patent filed April 7, 1994.1
There was an amendment after the final, filed on August2
25, 1995, and was entered in the record.
-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journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte NORBERT C. VOLLMANN
________________
Appeal No. 96-2686
Application 08/224,2131
________________
ON BRIEF
________________
Before HAIRSTON, JERRY SMITH and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of
claims 1 through 5, all the outstanding claims in the case .2
Appeal No. 96-2686
Application 08/224,213
-2-
The disclosed invention relates to an arrangement of a
magnetic head and the printed circuit cable in a cassette
recorder. The cable is coiled in cylindrical form around the
pivot axis of the head. The head has a translational motion
along the pivot axis, and also can pivot about the pivot axis
as the head is engaged with, and disengaged from the tape.
The arrangement of the invention facilitates for a shorter
cable and the ease of assembly of the components of the
recorder to provide for both the pivotal and the translational
movement of the head.
Representative claim 1 is reproduced as follows:
1. A magnetic cassette recorder comprising a magnetic
head which can be translated between an operating position, in
which the head cooperates with a magnetic tape in an inserted
cassette, and a withdrawn position, in which the head is clear
of an inserted cassette, and which is, moreover, pivotable
about a pivot axis between a first angular position and a
second angular position, which head is electrically connected
to stationary parts of the recorder by means of a flat
flexible multiple electrical conductor, such as a foil
carrying printed electrical conductor tracks or a flat cable,
characterized in that the conductor is arranged as a
cylindrical spiral about the pivotal axis and its end which is
remote from the head is connected directly to the stationary
parts of the recorder, so that translations of the head in the
axial direction result in the spiral being extended/compressed
and pivotal movements of the head result in the spiral being
coiled/uncoiled.
The references relied on by the examiner are:
Appeal No. 96-2686
Application 08/224,213
-3-
Herleth et al.(Herleth) 3,949,421 Apr. 6, 1976
Oguchi et al.(Oguchi) 4,945,437 Jul. 31, 1990
Claims 1 through 5 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness, the examiner offers Herleth and
Oguchi [answer, page 2].
Reference is made to Appellant's brief, reply brief, and
the examiner's answer for their respective positions.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection of claims 1
through 5.
With respect to independent claim 1, the Examiner takes
the position that Oguchi discloses the claimed arrangement
except that Oguchi does not show a translational movement of
the magnetic head 10. The Examiner uses Herleth to show the
translational movement of a magnetic head, item 5 in figure 2.
The Examiner asserts that it would have been obvious, to one
of ordinary skill in the art at the time of the invention, to
arrange the [magnetic] head of Oguchi to be moveable along the
pivot axis, as it was well known to do so, for the purposes of
Appeal No. 96-2686
Application 08/224,213
-4-
controlling the contact with the tape and for loading and
unloading the cassette, as evidenced by Herleth [answer, page
3].
Appellant first argued that Oguchi did not show a cable
wound around a pivot axis in cylindrical form [brief, page 5],
but later yielded to the Examiner's argument on this point
[reply brief, page 1]. Still remaining is the argument by
Appellant that there is no translational movement of the head
in Oguchi. Further, he asserts that Herleth shows the to and
from movement of the slide 6, carrying the head 5, in relation
to the tape, but does not show the pivoting motion of the head
and that Herleth does not at all disclose the printed cable or
other electrical connections. Appellant concludes that
clearly there is nothing in the teachings of Oguchi or Herleth
that would lead one of ordinary skill in the art to combine
the pivotal and translatory movements of the magnetic heads of
these two patents. Also, for the same reason, he asserts that
such a combination would not yield an electrical connection
between a magnetic head and a stationary part of the recorder
by a flat flexible electrical conductor [cable] arranged as a
cylindrical spiral around a transitory [translatory] axis
Appeal No. 96-2686
Application 08/224,213
-5-
[brief, pages 5 to 6].
The examiner responds that it was extremely well known in
the art to enable the head to translate between an operable
position and a withdrawn position so as to control contact
between the magnetic head and the magnetic tape contained in
the cassette. The Examiner contends that Herleth was cited as
evidence of such notoriety [answer, pages 5 to 6].
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
(CCPA 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 or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
Appeal No. 96-2686
Application 08/224,213
-6-
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).
As indicated by the cases just cited, the examiner has at
least two responsibilities in setting forth a rejection under
35 U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art.
In our view, the examiner has properly addressed his
first responsibility, but has not met his second
responsibility.
We agree with Appellant that the Examiner's suggested
combination of Oguchi and Herleth is not justified.
Appeal No. 96-2686
Application 08/224,213
-7-
The structure of Oguchi which controls the movement of the
magnetic head 10 is very different from the slide 6 carrying
head 5 in Herleth. If one were to incorporate translatory
movement of Herleth into Oguchi's mechanism having head 10,
one would have to destroy the disclosed operation of Oguchi's
mechanism and redesign same to meet the invention of claim 1.
This would be tantamount to a reconstruction of a prior art
device using the teachings of the claimed invention. That is
not the test of obviousness. Therefore, the Examiner has not
established a prima facie case of obviousness in his
rejection.
Thus the collective teachings of Oguchi and Herleth do
not support the rejection proposed by the examiner to reject
claim 1. Since claims 2 through 5 depend on claim 1, and also
grouped together with claim 1 in the brief [page 4], the above
evidence does not support the Examiner's rejection as to them.
DECISION
The decision of the examiner rejecting claims 1 through 5
under 35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 96-2686
Application 08/224,213
-8-
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 96-2686
Application 08/224,213
-9-
Algy Tamoshunas
Corporate Patent Counsel
U.S. Philips Corp.
580 White Plains Rd.
Tarrytown, NY 10591