Ex parte Woods

Board of Patent Appeals and Interferences

Aug 5, 1999

08192638 (B.P.A.I. Aug. 5, 1999)

Application for patent filed February 7, 1994.1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PHILIP R. WOODS

_____________
Appeal No. 96-3901
Application 08/192,6381
______________
ON BRIEF
_______________
Before HAIRSTON, FLEMING and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 96-3901
Application 08/192,638
2
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1 through 15, all of the claims pending in the
present application.
The invention relates to a method of measuring the
read-to-write offset by incrementally measuring the amplitude
of a test pattern across the width of a track.
The independent claim 1 is reproduced as fol-
lows:
1. In a disc drive system having a transducer with
a read element that reads information from a track to produce
a read signal and a write element that writes information to
the track, a method of measuring a radial read-to-write offset
between the read and write elements at a track on a disc
surface of a disc in the disc drive system comprising:
writing a test signal to the track at a predeter-
mined actuator offset;
incrementally moving the read element across a width
of the track to measure a maximum amplitude in the read sig-
nal;
incrementally moving the read element across the
width of the track to find first and second actuator offsets
Appeal No. 96-3901
Application 08/192,638
3
where the read signal has an amplitude approximately equal to
a predeter- mined percentage of the maximum amplitude;
calculating a midpoint between the first and second
actuator offsets; and
setting the radial read-to-write offset equal to a
difference between the midpoint and the predetermined actuator
offset.
The Examiner relies on the following references:
Bremmer 4,485,418 Nov. 27, 1984
Miwa et al. (Miwa) 4,644,421 Feb. 17, 1987
Volz et al. (Volz) 4,969,059 Nov. 6, 1990
Ishida 2,079,666 Apr. 24, 1993
(Canadian patent)
Claims 1 through 3, 6 through 8, 10, 12, 13 and 15
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Ishida in view of Bremmer. Claims 4, 5 and 11 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Ishida in view of Bremmer further in view of Miwa. Claims 9
and 14 stand rejected under 35 U.S.C. § 103 as being unpatent-
able over Ishida in view of Bremmer and Miwa, and further in
Appeal No. 96-3901
Application 08/192,638
Appellant filed an appeal brief on November 24, 1995. 2
We will refer to this appeal brief as simply the brief.
Appellant filed a reply appeal brief on May 13, 1996. We will
refer to this reply appeal brief as the reply brief. The
Examiner responded to the reply brief with a supplemental
Examiner's answer and thereby the reply brief has been entered
and considered.
The Examiner responded to the brief with an Examiner's3
answer, mailed March 11, 1996. We will refer to the Exam-
iner's answer as simply the answer. The Examiner responded to
the reply brief with a supplemental Examiner's answer mailed
June 5, 1996. We will refer to the supplemental Examiner's
answer as simply the supplemental answer.
4
view of Volz. Rather than reiterate the arguments of
Appellant
and the Examiner, reference is made to the briefs and 2
answers for the respective details thereof.3
OPINION
We will not sustain the rejection of claims 1
through 15 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
Appeal No. 96-3901
Application 08/192,638
5
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when determin-
ing obviousness, the claimed invention should be considered as
a whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appellant argues on pages 7 through 10 of the brief
and in the reply brief that Bremmer, Miwa, Volz and Ishida,
together or individually, fail to teach or suggest determining
a radial read-to-write offset between the read and write
elements at a
track on a disc surface of a disc drive system by
incrementally moving the element across a width of the track
to measure a maximum amplitude in the read signal and
incrementally moving the read element across the width of the
track to find first and second actuator offsets where the read
Appeal No. 96-3901
Application 08/192,638
6
signal has an amplitude approximately equal to a predetermined
percentage of the maximum amplitude. We note that on pages 7
and 8 of the brief Appellant quotes the claim language of each
of the independent claims 1, 6, 10 and 15, which recites the
above limitations.
The Examiner states on page 5 of the answer that
Bremmer discloses measuring a maximum read amplitude to define
a reference voltage. The Examiner then responds to
Appellant's arguments on page 8 of the answer that Bremmer
teaches in column 4, lines 17-20, that "[t]he reference
level 20 is selected to have a value more or less midway
between the maximum and minimum track signal amplitude." The
Examiner argues that from the above teachings, those skilled
in the art would have no other way to determine a maximum
track sign amplitude than selecting the largest amplitude of
the reproduced signals.
In the reply brief, Appellant responds by pointing
out that Figure 3 of Bremmer, reference level 20, which the
Examiner presumes is a maximum track signal amplitude, is not
shown
Appeal No. 96-3901
Application 08/192,638
7
connected to the disc 16. Rather, it is an independent
reference level which is sent to offset measuring system 28
via line 40. Appellant further points to Figure 4 which does
not show the reference voltage 20 connected to the recording
head 43, but rather, the reference voltage 20 is connected to
a comparator 42 via line 40.
Upon a careful review of the references, we find
that
none of the references teaches or suggests determining a
radial read-to-write offset between the read and write
elements at a track on a disc surface of a disc drive system
by incrementally moving the element across a width of the
track to measure a maximum amplitude in the read signal and
incrementally moving the read element across the width of the
track to find first and second actuator offsets where the read
signal has an amplitude approximately equal to a predetermined
percentage of the maximum amplitude as recited in each of the
independent claims 1, 6, 10 and 15. We find that Bremmer
teaches in column 2, lines 25-40, that the reference voltage
20 is a predetermined voltage which is typically within the
Appeal No. 96-3901
Application 08/192,638
8
range of one half of the peak to valley amplitude. Bremmer
does not teach measuring the maximum amplitude in the read
signal for each disc drive system.
We appreciate the Examiner's argument that Bremmer
teaches that the reference level is based on a maximum and
minimum track signal amplitude which, as the Examiner reasons,
requires the measurement of the track maximum amplitude.
However, "[t]o establish inherency, the extrinsic evidence
'must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference,
and that it would be so recognized by persons of ordinary
skill.'" In re Robertson, 169 F3d 743, 745, 49 USPQ2d 1949,
1950-51 (Fed. Cir. 1999) citing Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991). "Inherency, how- ever, may not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient." Id. citing Continental, 948 F.2d at 1269, 20
USPQ2d at 1749. From reading Bremmer as a whole, we find that
Appeal No. 96-3901
Application 08/192,638
9
Bremmer does not teach measuring the maximum amplitude in the
read signal for the track but simply provides a predetermined
reference voltage which Bremmer hopes to be close enough to
the actual maximum amplitude.
We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge, or is
capable of unquestionable demonstration. Our reviewing court
requires this evidence in order to establish a prima facie
case. In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6,
8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268,
271-72 (CCPA 1966). Therefore, we will not sustain the
rejection of claims 1 through 15 under 35 U.S.C. § 103.
We have not sustained the rejection of claims 1
through 15 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Appeal No. 96-3901
Application 08/192,638
10
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOSEPH RUGGIERO )
Administrative Patent Judge )
psb
Appeal No. 96-3901
Application 08/192,638
11
Kinney & Lange, P.A.
The Kinney & Lange Building
312 South Third Street
Minneapolis, MN 55415-1002