Ex Parte Yeakley et al

Patent Trial and Appeal Board

Dec 22, 2016

13800026 (P.T.A.B. Dec. 22, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/800,026 03/13/2013 Darryl Wayne Yeakley ORA130271-US-NP 8166
51344 7590 12/27/2016
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
SNIEZEK, ANDREW L
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
12/27/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRYL WAYNE YEAKLEY, WILLIAM J.
VANDERHEYDEN, and STEVEN GREGORY TRABERT
Appeal 2016-004882
Application 13/800,026
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11—16, 19, and 20. Claims 1—10, 17, and 18 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-004882
Application 13/800,026
The Invention
Appellants’ disclosed and claimed invention relates to positioning
read/write heads for magnetic tape drives. (Spec. 11.)
Representative Claim
Claim 11 is representative of the subject matter on appeal:
11. A device for recording and/or reading data to and/or from
a magnetic tape, the device comprising a read/write head
including
a first device set including a first plurality of magnetic
data write elements and a first plurality of magnetic data read
elements;
a second device set including a second plurality of
magnetic data write elements and a second plurality of
magnetic data read elements wherein the first device set is
positioned downstream of the second device set relative to
motion of the magnetic tape or the second device set is
positioned downstream of the first device set relative to the
motion of the magnetic tape;
[L] a lateral positioning actuator for laterally positioning
the read/write head such that during write operations-the first
plurality of magnetic data write elements continuously align
laterally to a first plurality of recordable data tracks on the
magnetic tape and that during read operations the first
plurality of magnetic data read elements continuously align
laterally to a first plurality of readable data tracks on the
magnetic tape; and
an azimuth actuator for rotating the read/write head about
an azimuthal angle such that during write operations the second
plurality of magnetic data write elements aligns laterally to a
second plurality of recordable data tracks on the magnetic tape
and that during read operations the second plurality of magnetic
data read elements aligns laterally to a second plurality of
readable data tracks on the magnetic tape, the azimuthal angle
being an angle of rotation about an axis perpendicular to the
magnetic tape.
(Contested limitation lettered “L” emphasized.)
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Appeal 2016-004882
Application 13/800,026
Rejections on Appeal
Rl. Claims 11—14, 16, 19, and 20 are rejected under 35 U.S.C.
§ 102(b), as being anticipated by Peterson (US 2002/0163752 Al; pub. Nov. 7,
2002).
R2. Claim 15 is rejected under 35 U.S.C. § 103(a), as being obvious
over the combination of Peterson and Bui et al. (US 8,054,576 B2, issued
Nov. 8, 2011).
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of anticipation
rejection Rl, of claims 11—14, 16, 19, and 20, on the basis of representative
independent claim 11. We address §103 rejection R2 of dependent claim 15,
not separately argued, infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants’ arguments (Ans. 2—3). However, we
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection Rl of Independent Claim 11 under 35 U.S.C. § 102(b)
Issue: Under § 102(b), did the Examiner err in finding Peterson
expressly or inherently discloses contested limitation L:
a lateral positioning actuator for laterally positioning the
read/write head such that during write operations-the first
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Application 13/800,026
plurality of magnetic data write elements continuously align
laterally to a first plurality of recordable data tracks on the
magnetic tape and that during read operations the first plurality
of magnetic data read elements continuously align laterally
to a first plurality of readable data tracks on the magnetic tape[,]
within the meaning of representative claim 11? 1 (Emphasis added.)
Appellants contend, inter alia:
In general, Peterson only discloses adjusting the azimuth angle
to improve alignment along the along the width of the magnetic
tape without a continuous lateral alignment of an upstream or
downstream set of read/write elements across the width of a
magnetic tape.
(App. Br. 4.)
Appellants further contend:
Adjustment of the azimuthal angle just along the width of the
tape is well known in the prior art. One purpose of the present
invention is to provide an improvement over the prior art
methods by maintaining a continuous upstream lateral
alignment in one set of read/write elements while the azimuth is
adjusted to bring another set of upstream or downstream
elements into alignment.
(App. Br. 5.)
Appellants additionally contend:
[Peterson] is completely different to the present invention
where read/write elements are continuously aligned “laterally”
to a first plurality of data tracks on the magnetic tape. This
requirement clearly means that the alignment is across the
width of the magnetic tape and with respect to many data tracks
across this width.
(App. Br. 6.)
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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Appeal 2016-004882
Application 13/800,026
Claim Construction
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See Morris, 111 F.3d at
1054.2 As an initial matter of claim construction, we note claim 11 is
directed to an apparatus (see preamble: “A device for recording and/or
reading data to and/or from a magnetic tape, the device comprising a
read/write head . . . .”). To show anticipation of an apparatus, the Examiner
must provide an express or inherent showing of the corresponding structure,
as found in the reference, arranged as claimed. See n.5, infra.
Here, Appellants attempt to distinguish the “lateral positioning
actuator” of claim 11 over Peterson, not in terms of its structure, but rather
in terms of its intended function (“continuously align laterally”).
We note the contested “lateral positioning actuator for [performing
continuous lateral alignment function]” (emphasis added) is an “actuator”
element described in terms of the function it is intended to perform, but is
not claimed as a literal “means” under pre-AIA 35 U.S.C. § 112, sixth
paragraph. Appellants have not invoked §112, sixth paragraph, in the Briefs.
Nor does the contested “lateral positioning actuator” limitation recite
additional limitations such as “configured to” or “adapted to” that might
2 Cf Spec. 129 (“While embodiments of the invention have been illustrated
and described, it is not intended that these embodiments illustrate and
describe all possible forms of the invention. Rather, the words used in the
specification are words of description rather than limitation, and it is
understood that various changes may be made without departing from the
spirit and scope of the invention.”) (Emphasis added.) Accord Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) (“This court
has repeatedly ‘cautioned against limiting the claimed invention to preferred
embodiments or specific examples in the specification.’”) (Quoting Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)).
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Application 13/800,026
impose a structural limitation, such that the structural components of the
“lateral positioning actuator ” must be “capable of’ performing the contested
functions.3
In reviewing the record, we are not persuaded the Examiner's claim
interpretation is overly broad or unreasonable, because Appellants do not
point to any limiting definition, in the claim, or in the Specification, for the
“lateral positioning actuator” of claim 11 that would preclude the Examiner's
reading on Peterson’s head position servo 26 (Fig. I).4 (Final Act. 2—3.)
Moreover, Appellants do not address the Examiner’s specific findings
and mapping of the contested lateral positioning actuator (claim 11) to
Peterson’s head position servo 26 (Fig. 1; Final Act. 2). Instead, Appellants
present arguments regarding the elements and features in Peterson that
adjust azimuth. We note the “azimuth actuator” limitation of claim 11 does
not require the disputed “continuously align laterally” limitation. (Emphasis
added).
Regarding the contested “lateral positioning actuator” recited in
claim 11, the Examiner (Final Act. 2) reads this limitation on a
corresponding lateral positioning component found in Peterson (Fig. 1,
element 26), and not on an azimuth actuator, for disclosing a structure
3 See In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed.
Cir. 2016) (“We have noted that the phrase ‘adapted to’ generally means
‘made to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more
broadly to mean ‘capable of’ or ‘suitable for.’”) (Internal citations omitted).
4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal 2016-004882
Application 13/800,026
capable of continuously performing lateral position alignment, as claimed.
The Examiner finds Peterson’s head position servo 26 (Fig. 1), that positions
head assembly 22 transversely across tape 24, discloses “a lateral positioning
actuator for laterally positioning the read/write head.” (Final Act. 2 (citing
Peterson 133).) Because Peterson’s head position servo 26 and head
control 54 are depicted arranged in a feedback control loop (Fig. 1), we find
Peterson discloses corresponding structures capable of performing the
contested function of continuous lateral alignment, within the meaning of
independent claim 11. (See Final Act. 3 (citing Peterson 132).)
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred in finding Peterson
anticipates the contested features of apparatus claim 11,5 Accordingly, we
sustain the anticipation rejection R1 of representative claim 11, and the
grouped claims which fall therewith. See Claim Grouping, supra.
Rejection R2 of Dependent Claim 15 under 35 U.S.C. § 103(a)
Regarding claim 15, Appellants contend “Bui fails to correct the
deficiencies of Peterson with respect [to] the alignment of upstream and
downstream sets of read/write elements.” (App. Br. 7.) However, we find no
5 Claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477—78 (Fed. Cir. 1997). “[AJpparatus claims cover what a device is, not
what a device does.” Hewlett-Packard Co. v. Bausch &Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990); see also Catalina Marketing Int’l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009).
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Application 13/800,026
deficiencies with Peterson for the reasons discussed above regarding the
anticipation rejection of claim 11. Therefore, we sustain the Examiner's
rejection R2 under § 103 of dependent claim 15.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s decision rejecting claims 11—14, 16, 19,
and 20 under 35 U.S.C. § 102(b).
We affirm the Examiner’s decision rejecting claim 15 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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