Ex Parte Anderson et al

Patent Trial and Appeal Board

Nov 12, 2014

12362432 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIM ANDERSON and JEFF MCALISTER
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Appeal 2012-010348
Application 12/362,432
Technology Center 2600
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Before: JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to data transfer apparatus. Claim 1,
reproduced below, is illustrative of the claimed subject matter on appeal:
1. Data transfer apparatus comprising:

drive apparatus to move a received tape along a path in a
longitudinal direction of the tape;
Appeal 2012-010348
Application 12/362,432
2

a transducer head to transfer data to and/or from the tape;

a tape lifter to contact the tape; and

control apparatus operable, in response to a tape speed
related condition or event, to cause relative movement between
the tape lifter and the tape into mutual contact such that the
tape lifter moves the tape, thereby biasing the tape away from
surface to surface contact with the transducer head.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Greiner US 4,665,824 May 19, 1987
King US 6,856,488 B2 Feb. 15, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1–16, 19, and 20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by King.
Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over King in view of Greiner.

ANALYSIS
Anticipation
Appellants contend that the King reference moves the head element
away from surface to surface contact with the tape in figures 3A and 3B and
4A and 4B, but the King reference "does not bias the tape away from the
head elements, as required by the claim." (App. Br. 6, see also Reply Br.
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Application 12/362,432
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25)) (emphasis omitted). Appellants further contend that the claimed
invention expressly requires that "the tape lifter moves the tape." (App. Br.
7; see also Reply Br. 3) (emphasis omitted). The Examiner responds that
Appellants are not correct and generally concludes that figures 3 and 4 show
that the tape is biased away from the head element. (Ans. 7–8). From our
review of the disclosure of the King reference, we disagree with the
Examiner. The King reference in column 7 discloses that the head is moved
out of contact with the tape during the search mode rather than into surface
to surface contact. "Upon locating a required tape portion reverting to the
data mode comprises translational movement in a direction indicated by
arrow 406 to return the read/write head assembly into a first read/write
position illustrated in FIG. 4A in the data mode." (King , col. 7, ll. 16–20).
While the Examiner is correct that King biases the head away from surface
to surface contact with the tape, in that it moves the head away from the
tape, the Examiner merely addresses the claimed "biasing" rather than
considering claim 1 as a whole which requires:
control apparatus operable, in response to a tape speed
related condition or event, to cause relative movement between
the tape lifter and the tape into mutual contact such that the tape
lifter moves the tape, thereby biasing the tape away from
surface to surface contact with the transducer head.
The Examiner interprets the claimed invention in a way that is
actually the opposite of the expressly recited language of independent claim
1. The Examiner maintains that the tape is biased away from the head
elements and the head is the tape lifter rather than a separate element. (Ans.
8). We find this interpretation to be flawed since the relative motion is
opposite of the claimed movement. The claim actually requires that the tape
be biased away from the head (not the head to be biased away from the tape)
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Application 12/362,432
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and that the lifter moves the tape (not that the head moves). Therefore, we
find Appellants have shown error in the Examiner's finding of anticipation
based upon the King reference, and we do not sustain the rejection of
independent claim 1. Independent claims 10 and 12 contain similar
limitations which the Examiner has not shown to be disclosed by the King
reference. Since the dependent claims contain all the limitations of claims 1,
10, and 12, we do not sustain the rejection of dependent claims 2–9, 11, 13–
16, 19, and 20 based upon anticipation.
Obviousness
With respect to dependent claims 17 and 18, the Examiner does not
rely upon the Greiner reference to remedy the noted deficiency in the king
reference. (Ans. 7). Therefore, we do not sustain the obviousness rejection
for the same reason as noted above with respect to independent claim 1.

CONCLUSIONS
The Examiner erred in rejecting claims 1–16, 19, and 20 based upon
anticipation and the Examiner erred in rejecting claims 17 and 18 based
upon obviousness.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–16, 19,
and 20 is reversed, and the Examiner's rejection of claims 17 and 18 based
upon obviousness is reversed.

REVERSED
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