Ex Parte Waugh et al

Board of Patent Appeals and Interferences

Oct 28, 2002

09070580 (B.P.A.I. Oct. 28, 2002)

1 Application for patent filed April 30, 1998, which claims the filing
priority benefit under 35 U.S.C. § 119 of the provisional Application No.
60/071,160, filed January 13, 1998.
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for publication and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID CHARLES WAUGH
and LEALON RAY MCKENZIE
____________
Appeal No. 2001-1211
Application No. 09/070,5801
____________
HEARD: OCTOBER 8, 2002
____________
Before HAIRSTON, JERRY SMITH, and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claim 8. Claims 1-7 have been allowed. The
Examiner has objected to claims 9 and 10 and has indicated their
allowability if rewritten in independent form including all of
the limitations of the base claim and any intervening claims.
We reverse.
Appeal No. 2001-1211
Application No. 09/070,580
2
BACKGROUND
Appellants’ invention is directed to a disc drive for disc
storage devices provided with improved seek function by using
adaptive servo gain adjustment. The disc drive includes a head
and a servo circuit which controllably positions the head
adjacent tracks defined on the rotatable disc (specification,
page 3). The servo circuit, as depicted in Fig. 2, includes
demodulator 146 for conditioning the servo information for use by
digital signal processor 148 which, in turn, generates a current
command signal to a coil driver for positioning the head
(specification, page 8).
Independent claim 8 is reproduced as follows:
8. A disc drive, comprising:
a head adjacent a rotatable disc on which a plurality of
tracks are defined; and
position means, operably coupled to the head, for
positioning the head adjacent the tracks of the disc.
The following reference is relied on by the Examiner:
Hashimoto 4,965,501 Oct. 23, 1990
Claim 8 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Hashimoto.
Appeal No. 2001-1211
Application No. 09/070,580
3
Rather than reiterate the viewpoints of the Examiner and
Appellants regarding the above-noted rejection, we make reference
to the answer (Paper No. 18, mailed January 4, 2001) for the
Examiner’s complete reasoning in support of the rejection, the
brief (Paper No. 17, filed November 21, 2000) and the reply brief
(Paper No. 19, filed March 5, 2001) for Appellants’ arguments
thereagainst.
OPINION
Appellants argue that Hashimoto cannot anticipate the
subject matter of claim 8 as the reference does not disclose all
of the elements for performing the claimed function.
Additionally, Appellants argue that the Examiner did not make the
necessary findings related to the functions and means specified
in claim 8, i.e., “position means ... for positioning the head
adjacent the tracks of the disc” (brief, page 10 and reply brief,
page 8). Appellants further point out that the position means of
claim 8 corresponds to the entire disclosed servo circuit
including digital signal processor 148 and memory 150 which
stores programming for deceleration of the head to a specific
track as depicted in figures 3, 8 and 11 (brief, page 10 and
reply brief, page 6). Appellants further assert that Hashimoto’s
system for
Appeal No. 2001-1211
Application No. 09/070,580
4
smooth and efficient acceleration of the head is not the same or
an equivalent to the “position means” described in the
specification (brief, pages 10-12 and reply brief, page 9).
In response to Appellants’ arguments, the Examiner asserts
that even if the sixth paragraph of 35 U.S.C. § 112 is invoked,
claim 8 does not specifically call for the servo functions but
rather, is limited to the disclosed coil driver 152 and coil 113
as the head driving elements (answer, pages 5 & 6). The Examiner
concludes that voice coil 111 in Hashimoto provides a structure
identical to Appellants’ disclosed structure that corresponds to
the claimed “position means” and therefore, anticipates claim 8
(answer, page 8).
Before addressing the Examiner’s rejection based on prior
art, it is essential that we understand the claimed subject
matter and determine its scope. Accordingly, as required by our
reviewing court, we will initially direct our attention to
Appellants’ claim 8 in order to determine its scope. “[T]he name
of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Claims will be
given their broadest reasonable interpretation consistent with
the specification, and limitations appearing in the specification
Appeal No. 2001-1211
Application No. 09/070,580
5
are not to be read into the claims. In re Etter, 756 F.2d 852,
858, 225 USPQ 1, 5 (Fed. Cir. 1985).
Appellants’ claim 8 requires “position means, operably
coupled to the head, for positioning the head adjacent the tracks
of the disc.” We note that the “position means” limitation is in
means-plus-function format that creates a presumption that a
section 112, ¶ 6 interpretation is called for. In construing a
means-plus-function limitation, as explained in In re Donaldson
Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir.
1994), we must identify both the claimed function and the
corresponding structure(s) in the written description for
performing that function.
Appellants direct us to digital signal processor 148 and
memory 150 as the elements included in the structure of the servo
circuit in their specification which corresponds to the claimed
“position means” (oral hearing and brief, page 10). After
reviewing the specification, we find that, as noted by Appellants
(id.), servo circuit 144 controls the position of each head and
is described to include demodulator 146, digital signal processor
148 and memory 150. In order to position a head, the processor
uses the servo information conditioned by the demodulator and
provides a current command signal according to the associated
Appeal No. 2001-1211
Application No. 09/070,580
6
programming in the memory to coil 113 via coil driver 152
(specification, page 8). By using the stored programming, the
gain of the servo circuit is continuously adapted to the changing
conditions of the disc driver and stable operation of the servo
system is insured (specification, page 16). Therefore, the
specification clearly corresponds the “position means” to the
entire servo circuit which controls the position of the head
according to the current output generated by the processor and
the related programming in the memory.
According to 35 U.S.C. § 112, ¶ 6, as construed by our
reviewing court, the means clauses are limited to the disclosed
structures and their equivalent structures. Donaldson, 16 F.3d
at 1197, 29 USPQ2d at 1850. A structure is an “equivalent” if it
differs from the disclosed structure by an insubstantial change
which adds nothing of significance. Valmont Indus. Inc. v.
Reinke Mfg. Co. Inc., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1455
(Fed. Cir. 1993).
Based on these principles that means claims are limited to
the structures disclosed by the specification and equivalents,
Donaldson, id., the Examiner must compare the structures
disclosed in the specification with the structures taught by
Hashimoto. However, based on a review of the record before us,
Appeal No. 2001-1211
Application No. 09/070,580
7
we find that the Examiner conducts an incomplete analysis for
determining the disclosed structure corresponding to the claimed
“position means.” Therefore, we do not agree with the Examiner’s
position that claim 8 does not require the entire servo circuit
and is limited only to coil driver 152 and coil 113 and
therefore, reads on the structure disclosed by Hashimoto (answer,
page 6). In fact, the Examiner appears to have overlooked the
complete disclosed structure necessary for positioning the head
by selecting only some of the elements to construct the
corresponding structure.
A rejection for anticipation under section 102 requires that
each and every limitation of the claimed invention be disclosed
in a single prior art reference. See Atlas Powder Co. v. Ireco
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999);
In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). 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 Sys. Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984).
Appeal No. 2001-1211
Application No. 09/070,580
8
Upon a review of Hashimoto, we agree with Appellants that
the reference fails to teach either the position means that
includes a demodulator, a digital signal processor and a memory
in addition to a coil and a coil driver or a structure that
differs only insubstantially from Appellants’ structure. The
servo system of Hashimoto accelerates the head by adjusting the
gain according to the values in a gain setting table (col. 5,
line 59 through col. 6, line 2) to provide the detection gains
suitable for the difference between a specified track position
and the current track position (col. 8, lines 27-46). This
arrangement differs substantially from the structure in
Appellants’ disclosure that corresponds to the claimed “position
means” for positioning the head. As discussed above, Appellants’
servo circuit uses the programming in memory 150 to obtain a
continuously updated servo gain that adapts to incurring changes.
The subject matter of claim 8 would not, therefore, have been
prima facie anticipated by Hashimoto. Accordingly, we do not
sustain the rejection of claim 8.

Appeal No. 2001-1211
Application No. 09/070,580
9
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claim 8 under 35 U.S.C. § 102 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/kis
Appeal No. 2001-1211
Application No. 09/070,580
10
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