Ex parte ANDERSON et al.

Board of Patent Appeals and Interferences

Mar 20, 1998

08084337 (B.P.A.I. Mar. 20, 1998)

Application for patent filed June 28, 1993. According1
to the appellants, this application is a continuation of
Application 07/786,475, filed November 1, 1991, now abandoned.
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not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CLARK A. ANDERSON, TODD B. ANDERSON
GERALD L. CADLONI, EARL A. CUNNINGHAM, MICHAEL S. HICKEN,
DANIEL D. RENO and JOHN J. STEPHENSON
_____________
Appeal No. 95-2910
Application 08/084,3371
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 95-2910
Application 08/084,337
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1, 3-12, 14-21 and 26-
47, which constitute all the claims remaining in the
application. An amendment after final rejection was filed on
June 15, 1994 but was denied entry by the examiner. A second
amendment after final rejection was filed on June 29, 1994 and
was entered by the examiner.
The invention pertains to a method and apparatus for
reducing track-switch latency between data transfer operations
on a present track and a new track in a disk drive system.
Specifically, the time it will take to begin movement of the
active head, or leadoff time, is compared to the time it will
take to finish the current read or write operation on the
active track. Based upon this comparison, it is determined
whether preprocessing operations for moving the head should be
implemented.
Representative claim 1 is reproduced as follows:
1. Method for reducing track-switch latency between
data transfer operations on a present track and a new track in
a disk drive when said present track and said new track are
operated on by a currently active head for said present track
and a next selected head for a new track, said active and next
Appeal No. 95-2910
Application 08/084,337
3
heads being mounted on a single head arm actuator, said method
comprising the steps of:
determining time remaining for said active head to
reach end of track at said present track;
determining a leadoff interval necessary to complete a
pre track-switch processing step and a head arm actuator
energizing step;
detecting when said leadoff interval is greater than
said time remaining to said end of track;
performing pre track-switch processing in response to
said detecting step; and
energizing said head arm actuator in response to said
detecting step to build energy in said head arm actuator
during said leadoff interval whereby said currently active
head completes data transfer at said present track prior to
movement of said active head off said present track.

The examiner relies on no references.
Claims 1, 3-12, 14-21 and 26-47 stand rejected under
35 U.S.C. § 112, first paragraph, as being inadequately
disclosed. Specifically, the rejection is based on the
position that the originally filed specification does not
support the invention now being claimed.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
Appeal No. 95-2910
Application 08/084,337
4
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the reasons
relied upon by the examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellants’ arguments set forth in
the brief along with the examiner's rationale in support of
the rejection and arguments in rebuttal set forth in the
examiner's answer.
It is our view, after consideration of the record
before us and the level of skill in the particular art, that
the reasons advanced by the examiner are insufficient to
support the rejection of the claims under 35 U.S.C. § 112,
first paragraph, and we will not sustain the rejection.
The relevant facts in this case are not in dispute.
The invention relates to the implementation of preprocessing
operations in moving a magnetic head from a currently active
track to a new track. The preprocessing operations are based
on a relationship between a leadoff time to move the head and
the time necessary to complete processing on the current
track. The originally filed application indicated that
preprocessing was done when the leadoff time was less than the
Appeal No. 95-2910
Application 08/084,337
5
processing time [FIG. 8A, elements 56, 58 and 60, and page 13,
lines 9-12]. Appellants subsequently amended the drawing and
the specification to change the “less than” relationship to
read “equal to or greater than” which is the exact opposite of
the original recitation. The claims were also amended to
recite this relationship. The examiner made a new matter
objection to this change and also asserted that there was no
support for what to do when the compared values were equal.
To eliminate this latter point of contention, appellants
amended the phrase “equal to or greater than” to simply read
“greater than.” The examiner still objected to this phrase as
not being supported by the original application, and
therefore, directed to new matter. This appeal followed.
A rejection under the first paragraph of 35 U.S.C. §
112 based on the insertion of “new matter” into the
application is a rejection based on the written description
requirement of Section 112. The purpose of the written
description requirement is to ensure that the applicants
convey with reasonable clarity to those skilled in the art
that they were in possession of the invention as of the filing
date of the application. For the purposes of the written
Appeal No. 95-2910
Application 08/084,337
6
description requirement, the invention is "whatever is now
claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). The examiner has the
initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims. Once the
examiner points out that the claimed embodiment is outside the
scope of the specification description, the examiner has
satisfied his burden of proof. Then the burden of proof
shifts to the applicant to show that the claimed invention is
part of the description. In re Wertheim, 541 F.2d 257, 265,
191 USPQ 90, 98 (CCPA 1976).
The examiner has taken a position that the originally
filed application supports an invention which is separate and
apart from the invention now being claimed. In other words,
although the examiner admits that the amendments made by
appellants support an invention, the examiner is of the view
that the originally filed application supported a completely
different invention and not the currently claimed one.
Appellants argue that the originally filed application
supports their position that the “less than” recitation in the
Appeal No. 95-2910
Application 08/084,337
7
original application was inadvertently reversed from what was
intended, and the skilled artisan would have recognized this
error.
Although the examiner has attempted to demonstrate
that the original application can reasonably be interpreted to
support a different invention, it is clear to us that the
examiner’s interpretation is contrary to much of what is
described in the disclosure. The examiner’s interpretation
would have the magnetic head move to another track before
operations on the current track have been completed although
the original specification says many times that processing on
the current track is to be completed before the head is moved
to a new track [see, for example, the paragraphs bridging
pages 11 and 12 and pages 13-14]. Thus, the examiner’s
interpretation is contrary to one of the main functions that
the disclosed invention is designed to carry out.
Additionally, we agree with appellants that original
claim 1 clearly supports the amendments made to the disclosure
and claims in this application. The original claim 1 recited
the step of “anticipating completion of data transfer at the
present track and defining a leadoff interval sufficient for
Appeal No. 95-2910
Application 08/084,337
8
such data transfer to complete.” This recitation is
equivalent to stating that the leadoff interval must be
greater than the time for the data transfer to complete. The
next step of original claim 1 recited that preprocessing
occurred during the leadoff interval. Since the leadoff
interval had to be greater than the time to complete
processing, original claim 1 recited that preprocessing
occurred only when the leadoff interval was greater than the
time to complete processing. The amendments to FIG. 8A and
the specification are in accord with the operation of the
invention as recited in original claim 1.
Since the originally filed claims are part of the
original application, and since we find that the objected to
amendments are supported by the originally filed claims, the
examiner’s rejection of the claims as being unsupported by the
original application is in error. Appellants have
demonstrated that the invention now being claimed is supported
by the originally filed application. Therefore, we do not
sustain the rejection of the claims under the first paragraph
of Section 112.
Appeal No. 95-2910
Application 08/084,337
9
The decision of the examiner rejecting claims 1, 3-12,
14-21 and 26-47 is reversed.
REVERSED

)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-2910
Application 08/084,337
10
HOLLAND & HART
P. O. Box 8749
Denver, CO 80201-8749