Ex Parte Huha et alDownload PDFPatent Trial and Appeal BoardJul 29, 201311644042 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARSHA A. HUHA and MUICHONG CHAI ____________________ Appeal 2011-000244 Application 11/644,042 Technology Center 2600 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000244 Application 11/644,042 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants disclose a lift tab (24 in Figure 1) for a transducing system (10) of a hard disk drive (HDD). The lift tab has a radius of curvature of less than 0.013 inches (see claims 1 and 6) that serves to reduce the amount of friction created between the lift tab and a load/unload ramp of the HDD during loading and unloading of the transducer (12). Spec. 1: 26-30 and 3:3- 17; Abs.; Fig. 1. Exemplary Claim Exemplary independent claim 1 under appeal, with emphasis added to disputed portions of the claim, reads as follows: 1. A transducing system comprising: a support assembly for supporting a transducer; and a lift tab extending from the support assembly, the lift tab having a surface configured to lift the support assembly carrying the transducer up a load/unload ramp, the surface having a radius of curvature of less than 0.013 inches. The Examiner’s Rejection The Examiner rejected claims 1-9 as being unpatentable under 35 U.S.C. § 103(a) over Morehouse (US 5,579,189) and Yong (US 2007/0091507 A1). Ans. 3-4. Appeal 2011-000244 Application 11/644,042 3 Appellants’ Contentions Appellants contend (Br. 3-7) that the Examiner erred in rejecting claims 1-9 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Morehouse and Yong because: (1) neither Morehouse nor Yong, individually or in combination, teaches or suggests a lift tab having a surface with a radius of curvature of less than 0.013 inches (Br. 4), as recited in independent claim 1 (and similarly recited in remaining independent claim 6); (2) Yong’s teachings would not have led to the specifically claimed radius of curvature for the lift tab and would not have reduced friction (Br. 5); and (3) Appellants’ invention, with the radius of curvature recited in claim 1, “unexpectedly achieved reduced friction” because the relationship between lift tab radius of curvature and friction is not linear or predictable as demonstrated by Table 1 found on page 4 of Appellants’ Specification (Br. 5-6). With regard to the rejection of claims 2-5 (depending from claim 1) and 7-9 (depending from claim 6 which contains similar recitations as claim 1 regarding the lift tab surface having a radius of curvature of less than 0.013 inches), Appellants rely on the arguments made with respect to independent claim 1 (Br. 3-7). In view of the foregoing, we select claim 1 as representative of the group of claims 1-9, and our analysis will only address the merits of representative claim 1. Examiner’s Answer The Examiner responded to Appellants’ contentions in the Answer (Ans. 4-6), as follows. Appeal 2011-000244 Application 11/644,042 4 Regarding Appellants’ Contention (1) supra, the Examiner finds that (i) Morehouse (col. 57, l. 38) teaches using a lift tab radius of curvature of 0.018 inches (Ans. 5), (ii) Yong teaches reducing the surface contact area of the lift tab contacting the ramp to reduce friction (paragraphs [0015]- [0017]), and reasons that one or ordinary skill in the art (of HDD’s using lift tabs and loading/unloading ramps) would understand that changing physical parameters of the lift tab such as surface contact area, shape, and/or radius of curvature will change the interactive forces (i.e., reduce friction, as taught by Yong) (Ans. 5-6). The Examiner determines that it would have been obvious to perform routine experiments to optimize the friction between the lift tab and the ramp by reducing the radius of curvature because Yong teaches that reducing lift tab surface area (e.g., by reducing the radius of curvature of the lift tab surface) reduces tangential frictional forces (Ans. 6). Regarding Appellants’ Contention (2) supra, the Examiner responds that Yong specifically teaches that reduction of surface area reduces frictional forces (Ans. 6), and cites Yong’s paragraphs [0015]-[0017] to support this finding (see Ans. 5). Regarding Appellants’ Contention (3) supra, the Examiner finds that Yong teaches that reducing surface area reduces tangential frictional forces (paragraphs [0015]-[0017]), and the Examiner reasons that one of ordinary skill in the art would optimize the lift tab radius curvature through design and engineering so as to reduce friction between the lift tab surface and the loading/unloading ramp by reducing the lift tab surface radius of curvature as taught by Yong (Ans. 6). The Examiner responds to Appellants’ assertion of unexpected results based on the non-linearity of the relationship between lift tab curvature radii and maximum friction force by explaining that Appeal 2011-000244 Application 11/644,042 5 Appellants’ Table 1 shows that reducing the curvature radius of the lift tab reduces the surface area of the lift tab contacting the ramp and thus reduces friction (Ans. 6). Reply Brief No Reply Brief has been presented. Therefore, Appellants have not disputed the Examiner’s fact findings regarding Morehouse (col. 57, ll. 36- 38) and Yong (paragraphs [0015]-[0017]) found at page 5 of the Answer. Issue on Appeal Based on Appellants’ arguments in the Brief, the following principal issue is presented on appeal: Did the Examiner err in rejecting independent claims 1-9 as being obvious over the combination of Morehouse and Yong because Morehouse and Yong combined with the knowledge of a person having ordinary skill in the art of HDDs at the time of Appellants’ invention fail to teach or suggest reducing the radius of curvature of the lift tab to less than 0.013 inches (thus reducing the surface contact area of the lift tab) as recited in representative claim 1 in order to optimize/reduce friction between the lift tab and the ramp? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ contentions in the Appeal Brief (Br. 3-7) that the Examiner has erred. We disagree with Appellants’ conclusion. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 3-4), and (2) the reasons set forth by the Appeal 2011-000244 Application 11/644,042 6 Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 4-6). We concur with the conclusion reached by the Examiner. We agree with the Examiner’s findings and determinations regarding independent and representative claim 1 (Ans. 3-6). We also agree with the Examiner (Ans. 6) that Appellants’ Table 1 found at page 4 of the Specification shows that the maximum friction force decreases from 0.21 grams to 0.10 grams when the radius of curvature is reduced from 0.018 inches to 0.009 inches; and thus Table 1 agrees with Yong’s teaching that reducing surface contact area (e.g., by reducing the radius of curvature) of the lift tab reduces friction. Notably, Table 1 does not contain data regarding the friction force for a radius of curvature of about 0.013 inches. Further, the radius of curvature of Morehouse of 0.018 inches corresponds to a friction force of 0.21 grams in Table 1, and lowering the radius of curvature to less than 0.013 inches (e.g., 0.009 inches which corresponds to a reduced friction force of 0.10 grams as shown in Table 1) would reasonably lead a person of ordinary skill in the art of HDDs to believe that the friction force would also show a reduction. Yong’s teachings at paragraphs [0015]-[0017] also support this same correspondence between a reduction of surface contact area (e.g., radius of curvature) of a lift tab and a reduction of force created between the lift tab and the ramp. In view of the foregoing, Appellants have not demonstrated that the relationship between force and radius of curvature is non-linear, unpredictable, and/or unexpected. It is well established that Appellants bear the burden of showing that the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA Appeal 2011-000244 Application 11/644,042 7 1972). Such burden requires Appellants to provide a showing that is actually unexpected and is reasonably commensurate with the scope of protection sought by the claims on appeal. See In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. Here, as correctly found by the Examiner at page 6 of the Answer, Appellants have not demonstrated that the claimed subject matter of representative claim 1 of using a radius of curvature for the surface of a lift tab of less than 0.013 inches imparts unexpected results with regard to friction forces created between the lift tab and the ramp. Indeed, Appellants’ Table 1 (Spec. 4) discloses that reducing the radius of curvature from 0.018 (the radius taught by Morehouse) to 0.009 inches (which is less than 0.013 inches and meets the scope of representative claim 1, “less than 0.013 inches”) results in a reduced friction force (e.g., from 0.21 grams down to 0.10 grams as shown in Table 1). This expected result agrees with the disclosure of Yong (paragraphs [0015]-[0017]), which teaches that reducing surface contact area (as a result of reducing the radius of curvature) causes the expected result of reducing tangential friction forces between the lift tab and the ramp. Because 0.013 is between the data points in Table 1 for radii of curvature of 0.018 and 0.009 inches, and representative claim 1 recites a lift tab with a radius of curvature of less than 0.013 inches (which can be an amount from 0.009 inches to just under 0.013 inches, the Examiner’s interpretation of Table 1 (see Ans. 6) is reasonable. The Examiner’s determination (Ans. 6) that Table 1 stands for the same proposition as Yong (regarding the relationship between (i) the reduction of surface contact area Appeal 2011-000244 Application 11/644,042 8 or radius of curvature of the lift tab, and (ii) the reduction in friction forces between the lift tab and the ramp) is also reasonable based on the force decreasing from 0.21 grams at a radius of curvature of 0.018 inches to 0.10 grams at a radius of curvature of 0.009 (Spec. 4; Table 1). Appellants’ argument (Br. 6) that a person of ordinary skill in the art upon reading Table 1 (see Spec. 4) would realize that values between 0.009 and 0.013 would produce unexpected results is not persuasive. Table 1 lists standard deviations that are more than 20-30% of the other variables listed – therefore it would be difficult for a person of ordinary skill in the art to draw any solid conclusions, unexpected or otherwise, from the results listed in Table 1. This is especially true in view of only three data points being listed in Table 1, and the fact that the standard deviation is so large. In view of the foregoing, Appellants’ arguments on page 6 of the Brief are not persuasive because Table 1 fails to demonstrate any unexpected results. We therefore agree with the Examiner’s findings that one of ordinary skill in the art of HDDs at the time of Appellants’ invention, in view of the combined teachings and suggestions of Morehouse and Yong, would have been motivated to perform routine experimentation to find the optimum/workable ranges for lift tab radius of curvature that correspond to reductions in friction force “in order to reduce friction and wear” (Ans. 3). Accordingly, we sustain the Examiner’s obviousness rejection of representative claim 1, and claims 2-9 grouped therewith. CONCLUSION The Examiner has not erred in rejecting claims 1-9 as being obvious over the combination of Morehouse and Yong because Morehouse and Yong Appeal 2011-000244 Application 11/644,042 9 combined with the knowledge of a person having ordinary skill in the art of HDDs at the time of Appellants’ invention teach or suggest optimizing/reducing the friction force between the lift tab and the ramp by reducing the radius of curvature of the lift tab from 0.018 inches as taught by Morehouse to less than 0.013 inches (thus reducing the surface contact area of the lift tab) as recited in representative claim 1, in order to reduce friction as taught by Yong. DECISION The Examiner’s rejection of claims 1-9 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation