Ex Parte Sekii et alDownload PDFPatent Trial and Appeal BoardJul 28, 201613564934 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/564,934 08/02/2012 60408 7590 08/01/2016 NIDEC CORPORATION c/o KEATING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 FIRST NAMED INVENTOR Y oichi SEKII 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 10202.344 4963 EXAMINER DRA VININKAS, ADAM B ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): JKEATING@KBIPLA W.COM uspto@kbiplaw.com epreston@kbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte YOICHI SEKII, TAKEHITO TAMAOKA, KAZUHIRO SATO, KAZUHIKO FUKUSHIMA, and HIROYUKI ABE Appeal2015-001290 Application 13/564,934 Technology Center 2800 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-001290 Application 13/564,934 STATEivIENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-11, 14--24, and 29-33 (App. Br. 11): 2 Claims 1, 2, 4, 5, 8, 16, 30, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gomyo (US 2002/0117909 Al; pub. Aug. 29, 2002) and Ichizaki (US 2007/0247010 Al; pub. Oct. 25, 2007). Ans. 2-5. Claims 3 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gomyo, Ichizaki, and Watanabe (US 7,012,191 Bl; issued Mar. 14, 2006). Ans. 5-6. Claims 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gomyo, Ichizaki, and Ito (US 2006/0138886 Al; published June 29, 2006). Ans. 6-7. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gomyo, Ichizaki, Ito, and Watanabe. Ans. 7-8. Claims 14 and 17-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gomyo, Ichizaki, and Tamaoka (US 2006/0285247 Al; pub. Dec. 21, 2006). Ans. 8-11. 1 Throughout this opinion, we refer to (1) the Final Rejection mailed April 24, 2014 ("Final Act."); (2) the Advisory Action mailed July 9, 2014 ("Adv. Act."); (3) the Appeal Brief filed July 23, 2014 ("App. Br."); (4) the Examiner's Answer mailed September 2, 2014 ("Ans."); and (5) the Reply Brief filed October 31, 2014 ("Reply Br."). 2 Appellants have withdrawn claims 25-28 from consideration in response to the Examiner's restriction requirement. Final Act. 2. The Examiner objected to claims 12 and 13 as depending from a rejected claim, but the Examiner indicates that these claims would be allowable if rewritten in independent form. Id. at 14. 2 Appeal2015-001290 Application 13/564,934 Claims 29 and 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gomyo, Ichizaki, and Kanatani (US 200710194641 A 1; pub. Aug. 23, 2007). Ans. 11-12. We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We affirm-in-part. SUMMARY OF THE INVENTION Appellants' invention is a disk drive with a motor. Spec. i-f 1. Appellants' disk drive is configured have a reduced-height profile. Id. i-f 9. As part of this configuration, a soldered portion of the stator coil is positioned in a hole in the disk drive's base. Id. i-f 7. Independent claim 1, reproduced below with our emphasis, is illustrative: 1. A motor, comprising: a stationary unit; a rotary unit including a rotor magnet; and a bearing mechanism arranged to support the rotary unit so as to rotate with respect to the stationary unit about a center axis extending in an up-down direction; wherein the stationary unit includes a stator positioned radially inward of the rotor magnet, a base portion positioned below the stator, the base portion including at least one hole extending through both of an upper surface and a lower surface of the base portion, and a flexible wiring substrate arranged to supply electric power to the stator, the flexible wiring substrate reaching a position higher than the lower surface of the base portion through the at least one hole; 3 Appeal2015-001290 Application 13/564,934 the flexible w1nng suostrate includes a lead portion arranged on the lower surface of the base portion and a connection portion arranged higher than the lower surface of the base portion and connected to the stator; the connection portion includes a solder portion arranged on a lower surface thereof to cover a portion of a lead wire extending from a coil of the stator; and at least a portion of the solder portion is positioned within the at least one hole. THE OBVIOUSNESS REJECTION OVER GOMYO AND ICHIZAKI Contentions The Examiner finds Gomyo teaches every limitation of claim 1 except for the connection portion including a solder portion positioned in the recited hole. Ans. 2-3. The Examiner, however, cites Ichizaki for this feature in concluding that claim 1 would have been obvious. Id. at 3--4. According to the Examiner, incorporating Ichizaki's structure in Gomyo would have reduced the motor's axial thickness. Id. at 4. The Examiner further reasons that the proposed modification would have made Gomyo' s disk drive lighter (id. at 12), distributed crimping force evenly (id.), and resulted in a "low cost disk drive" (id. at 14). Appellants present several arguments against the Examiner's rationale for combining Gomyo and Ichizaki. App. Br. 4--17; Reply Br. 2-10. For example, Appellants argue that the Examiner's proposed modification of Gomyo would increase, not decrease, the disk drive' s axial thickness. App. Br. 7-9, 12. According to Appellants, the leads with solder portions are positioned within a cavity in a way that does not contribute to the axial thickness. Id. at 8-9 (citing Gomyo Fig. 1 ). 4 Appeal2015-001290 Application 13/564,934 Appellants further contend that the Examiner has not provided any evidence that the disk drive would be made lighter by the proposed modification. Reply. Br. 8. Appellants further argue that the Examiner's crimping-force rationale is irrelevant to the base reference, Gomyo. App. Br. 9-11. Appellants argue that Ichizaki affixes bush 88 by crimping. Id. at 10. According to Appellants, Ichizaki' s arranges the openings in the base to distribute the crimping force. Id. But Appellants contend that this arrangement is irrelevant to Gomyo because Gomyo' s drive is a single monolithic member that lacks Ichizaki's bush or openings. Reply Br. 8-9; see also App. Br. 10. Appellants argue that modifying Gomyo in view of Ichizaki would require additional manufacturing costs of forming holes, providing sealing members, and unnecessarily rearranging parts. Reply Br. 10. According to Appellants, the Examiner has not shown that the motor would have been low cost. App. Br. 16-17. Lastly, in Appellants' view, modifying Gomyo would not have provided any benefit, and, in fact, Gomyo teaches away from the claimed invention. App. Br. 12-16. According to Appellants, the proposed modification would have removed Gomyo' s key features and rendered the drive inoperative and unsatisfactory for its intended purpose. See, e.g., id.; Reply Br. 5---6. Furthermore, Appellants argue that modifying Gomyo with Ichizaki would have weakened the base plate without providing a benefit. App. Br. 12-15. 5 Appeal2015-001290 Application 13/564,934 Issue Is the Examiner's proposed combination supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? Analysis I We agree with Appellants that the Examiner has not articulated reasoning with some rational underpinning to justify the obviousness conclusion. In particular, the Examiner has not shown that incorporating Ichizaki' s structure in Gomyo would have reduced the motor's axial thickness. See Ans. 4. As pointed out by Appellants (see App. Br. 8-9), Gomyo's leads (16d), having the solder portions, are positioned within a space between the stator cores 14. See Gomyo i-f 45. Because the flexible leads (16d) are positioned beside the cores (Gomyo i-f 45}-not above or below the cores-we agree that they do not contribute to the axial thickness. App. Br. 8-9. On this record, the Examiner has not established that moving Gomyo' s solder portion from beside the stator core 14 to a hole in the base 11 would decrease axial thickness. Accordingly, the Examiner's articulated reasoning here (Ans. 4) does not support the obviousness conclusion. The Examiner also has not explained why the proposed modification would have made Gomyo's disk drive lighter. Ans. 12. The Examiner's conclusion is not only unsupported (accord Reply Br. 8), but also dubious in view of the proposal to add material---e.g., Ichizaki's sealing member 84 as shown in Figure 1-to the construction (see Ans. 13). Furthermore, the Examiner's findings regarding cost (id. at 14) are similarly unsupported. In fact, the additional manufacturing processing 6 Appeal2015-001290 Application 13/564,934 identified by the Examiner (id.) weighs against the Examiner's obviousness conclusion. Accord Reply Br. 10. Regardless, the Examiner has provided insufficient evidence about the relative cost of these manufacturing processes. See Ans. 14. On this record, the Examiner's obviousness conclusion (id. at 4) is not supported by any objective evidence of cost savmgs. We also agree with Appellants' argument that reducing crimping force is irrelevant to Gomyo. See App. Br. 10-11. So even if Ichizaki's openings are arranged to distribute a crimping force, the Examiner has not explained how this advantage applies to Gomyo. See Ans. 12. Ichizaki's bush 88 extends through the base. See Ichizaki Fig. 1, item 88. But Gomyo' s base does not contain any similar opening. See Gomyo Fig. 1. Thus, the Examiner's reasoning requires further explanation because Ichizaki' s crimping force is applied to attach a part-bush 88- with no clear analog in Gomyo. Ichizaki i-f 29 (describing attaching bush 88). In this way, the Examiner's rationale (Ans. 12) is disconnected from the proposed modification to Gomyo. Therefore, we are constrained by this record to conclude that the Examiner has not articulated reasoning with some rational underpinning to justify the obviousness conclusion. II These conclusions do not end our inquiry, though. Rather, we further conclude that claim 1 would have been obvious in view of Gomyo and Ichizaki because the combination involves no more than the substitution of one known element for another, yielding predictable results to one of 7 Appeal2015-001290 Application 13/564,934 ordinary skill in the art. See KSR Int 'l Co. v. Telej?ex, Inc., 550 U.S. 398, 416 (2007). Our reasoning follows. Gomyo' s motor differs from the claimed device only by the substitution of Ichizaki's connection portion. Specifically, the Examiner's reliance on Gomyo to show every limitation of claim 1 except for the connection portion, including a solder portion positioned in the recited hole (Ans. 2--4), is undisputed. See App. Br. 4--17; Reply Br. 2-10. Likewise, Appellants have not shown that the Examiner has erred in finding that Ichizaki discloses a connection portion including the recited solder portion, missing from Gomyo. See App. Br. 4--17; Reply Br. 2-10. Accordingly, we adopt the Examiner's findings regarding these references' teachings (see Ans. 2--4 ), but we present a different rationale for combining these teachings. One of ordinary skill in the art readily could have substituted Ichizaki' s connection portion in Gomyo, and the results of that substitution would have been predictable. In fact, Gomyo acknowledges that putting a connection portion including a solder portion in a base frame's opening was a known and operable solution for disk drive motors. See Gomyo i-f 7; see also Gomyo, Fig. 18, item 6. Moreover, using Ichizaki' s connection portion performs the same function in the combination as it does separately-i.e., the function of electrically connecting a circuit board to a stator coil. Ichizaki i-f 39. In this way, the proposed substitution uses prior art elements according to known methods to yield predictable results-an obvious combination. See KSR, 550 U.S at 416. 8 Appeal2015-001290 Application 13/564,934 Although Gomyo characterizes this arrangement as "inadequate," that characterization does not undermine our conclusion. See Gomyo ,-r 7. An obvious combination of known elements does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance." Id. Here, Gomyo also teaches that putting a soldered portion in a base frame's opening is usable and has been used for Gomyo' s purpose. Gomyo ,-r 7. This working example of a motor with an opening (id.) weighs against Appellants' argument that Gomyo believed such a motor to be inoperable (see App. Br. 14). Accordingly, Appellants' teaching-away arguments (id. at 12-14; Reply Br. 3-5) are unpersuasive. Furthermore, even assuming that Gomyo' s comments can be interpreted as teaching away from the claimed opening, we disagree that Gomyo' s characterization applies to "providing any cutouts or openings in the base frame." Reply Br. 5 (emphasis added). Rather, Gomyo only focuses on those base-frame openings that lack rigidity. See Gomyo i-f 7. But unlike the prior art discussed by Gomyo (id.), Ichizaki's arrangement contains a sealing member 84 over the opening. Compare Ichizaki Fig. 2 (showing sealing member 84 covering the base's opening that includes solder portion 68) with Gomyo Fig. 18 (showing only a solder portion 6 in base 2's opening). And here, Appellants have not shown Gomyo' s characterization of bases with openings as deficient applies to bases with covered openings, as 9 Appeal2015-001290 Application 13/564,934 taught by Ichizaki. See, e.g., Reply Br. 5. Nor have Appellants shown that Gomyo considered the particular arrangement of parts disclosed by Ichizaki. See id. Rather, Appellants conclude, without support, that Ichizaki's thin- resin material will not compensate for the structural weakening caused by the opening. Id. That is, Appellants offer unsupported arguments of counsel alone in support of this position. See id. But it is well-settled that counsel's arguments cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). For these additional reasons, we find that Appellants' teaching-away arguments (App. Br. 12-14; Reply Br. 3-5) are unpersuasive. Likewise, we find Appellants' arguments regarding the manufacturing costs also lacking factually supported objective evidence. See App. Br. 15- 17; Reply Br. 9-10. Even if Gomyo' s solder portions are elastically pressed into the base frame 11, Appellants point to no evidence regarding the relative costs of this arrangement as compared with Ichizaki' s. See id. That is, Appellants' arguments (App. Br. 16-17; Reply Br. 9-10) are just as unsupported by objective evidence of manufacturing costs as is the Examiner's reasoning (Ans. 14), and therefore, are unpersuasive. Lastly, Appellants' argument that adding Ichizaki to Gomyo would have removed all key beneficial features rendering it unsatisfactory for its intended purpose (App. Br. 14--16; Reply Br. 5-6) is unpersuasive. To the extent that this argument is based on low manufacturing costs (see App. Br. 16), this argument is unpersuasive for the above-discussed reasons. Moreover, the present modification is not one where adding Ichizaki would have rendered Gomyo inoperable or unsuitable for its intended 10 Appeal2015-001290 Application 13/564,934 purpose. Gomyo' s purpose is to drive a detachable disk drive unit. See Gomyo i-f 2. The addition of Ichizaki's teachings merely provides another way to electrically connect a circuit board to a stator coil. Ichizaki i-f 39. That is, Ichizaki would perform the same function as Gomyo' s existing electrical connection. See Gomyo i-fi-15, 42. Accordingly, we are unpersuaded by Appellants' argument regarding operability and intended purpose (App. Br. 14--16; Reply Br. 5---6). We, therefore, affirm the Examiner's obviousness rejection of claim 1 under § 103 as unpatentable over Ichizaki and Gomyo. But we designate this affirmance a new ground of rejection. We likewise affirm the rejection of dependent claims 2, 4, 5, 8, 16, 30, 31, and 33 because Appellants do not provide separate, particular arguments for their patentability. See App. Br. 18; Reply Br. 10. CLAIM 15 Appellants appeal the rejection of claim 15. App. Br. 1; see also Notice of Appeal filed July 23, 2014. In the Final Rejection, the Examiner indicates that claim 15 is rejected. See Final Act., Office Action Summary, item 7 ("Claim(s) 1-11, 14--24 and 29-33 is/are rejected."). Likewise, in the Advisory Action, the Examiner reiterates that claim 15 is rejected. See Adv. Act., item 15 (indicating that the claims "1-11, 14--24, and 29-33" are rejected). But these Office Actions lack any substantive discussion of claim 15. See Final Act. 2-13. The Examiner's Answer, apart from explaining that every ground in the Final Action is maintained, also lacks any analysis for claim 15. See Ans. 2-12. 11 Appeal2015-001290 Application 13/564,934 On this record, the Examiner's basis for rejecting claim 15 is so uninformative that it prevents Appellants from recognizing that basis and presenting an argument for patentability. See Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Accordingly, we do not sustain the Examiner's rejection of claim 15. THE OTHER OBVIOUSNESS REJECTIONS We, however, sustain the Examiner's obviousness rejections of claims 3, 6, 7, 9, 10, 11, 14, 17-24, 29, and 32 over Gomyo, Ichizaki, and at least one of the additional references of Watanabe, Ito, Tamaoka, and Kanatani. Appellants have not pointed out particular errors in the Examiner's reasoning, but merely rely on the same arguments about the Gomyo-Ichizaki combination. See App. Br. 18; Reply Br. 10. Because we are not persuaded by these arguments for the reasons discussed previously, we sustain the Examiner's rejection and designate our rationale a new ground of rejection. CONCLUSIONS Claims 1-11, 14, 16-24, and 29-33 are obvious under 35 U.S.C. § 103. Because the Examiner's rejections are not supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusions, we designate the obviousness rejections as new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). The Examiner erred in rejecting claim 15. 12 Appeal2015-001290 Application 13/564,934 DECISION The Examiner's decision rejecting claims 1-11, 14, 16-24, and 29-33 is affirmed. The Examiner's decision rejecting claim 15 is reversed. 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). See 37 C.F.R. § 1.136(a)(l )(iv). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state 13 Appeal2015-001290 Application 13/564,934 with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 14 Copy with citationCopy as parenthetical citation