Ex Parte Banshak et alDownload PDFPatent Trial and Appeal BoardFeb 15, 201713273437 (P.T.A.B. Feb. 15, 2017) Copy Citation 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. 13/273,437 10/14/2011 WALTER G. BANSHAK JR. T5572 8171 35219 7590 02/17/2017 WESTERN DIGITAL CORPORATION TANYA JOSEPHS/SANDRA JACKSON -IP LAW DEPARTMENT 3355 MICHELSON DRIVE, SUITE 100 IRVINE, CA 92612 EXAMINER KIM, PAUL D ART UNIT PAPER NUMBER 3729 NOTIFICATION DATE DELIVERY MODE 02/17/2017 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): IPDocket @ wdc. com Tanya.Josephs@wdc.com Sandra.Jackson@wdc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WALTER G. BANSHAK, JR., MARK S. SEYMOUR, MITCHELL D. DOUGHERTY, and GEOFFREY A. HALES Appeal 2015-0039141 Application 13/273,4372 Technology Center 3700 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1—3 and 11—13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants’ Specification (“Spec.,” filed Oct. 14, 2011), Appeal Brief (“Appeal Br.,” filed Sept. 16, 2014), and Reply Brief (“Reply Br.,” filed Feb. 5, 2015), as well as the Examiner’s Answer (“Answer,” mailed Dec. 11, 2014). 2 According to Appellants, “[t]he real party in interest... is Western Digital Technologies, Inc.” Appeal Br. 1. Appeal 2015-003914 Application 13/273,437 According to Appellants, the Specification describes “[a] transfer tool... for clamping a disk drive suspension to an actuator arm.” Spec., Abstract. Claims 1 and 11 are the only independent claims. See Appeal Br., Claims App. We reproduce claim 1, below, in the Analysis section of this Decision, as representative of the appealed claims. REJECTION AND PRIOR ART The Examiner rejects claims 1—3 and 11—13 under 35 U.S.C. § 102(b) as anticipated by Seigneur (US 5,143,131, iss. Sept. 1, 1992). Answer 2. ANALYSIS Independent claim 1, from which claims 2 and 3 depend, recites the following: 1. A transfer tool for clamping a disk drive suspension to an actuator arm, the transfer tool comprising: a first actuator operable to actuate at least one push pin to compress a spring of a suspension clamp; and a second actuator operable to actuate a driving pin, wherein the driving pin for rotating a latching member of the suspension clamp about a pivot. Appeal Br., Claims App. The Examiner and Appellants disagree as to what extent the claim recitation of “a second actuator operable to actuate a driving pin, wherein the driving pin for rotating a latching member of the suspension clamp about a pivot” must be disclosed by Seigneur for Seigneur to anticipate claim 1. More specifically, the Examiner finds that Seigneur’s disclosure of “driving pin (344)” (Answer 2) is sufficient, because even though Seigneur is directed to “[a] fluid spraying saw bar, and a chain sawing apparatus . . . 2 Appeal 2015-003914 Application 13/273,437 having such a saw bar” (Seigneur, Abstract), the statement in claim 1 of “wherein the driving pin for rotating a latching member of the suspension clamp about a pivot” (Appeal Br., Claims App.) relates to “the intended use or intended function of the [claimed] transfer tool” (Answer 3). Thus, according to the Examiner, with respect to the above-discussed recitation of claim 1, Seigneur is required to teach only “a second actuator operable to actuate a driving pin.” Answer 3^4. Conversely, Appellants argue that claim 1 ’s recitation of “the driving pin for rotating a latching member of the suspension clamp about a pivot” must be given patentable weight. Appeal Br. 3^4; Reply Br. 3. Based on our review of the record, we agree with Appellants. Claim 1 requires, in relevant part, “a second actuator operable to actuate a driving pin ... for rotating a latching member of the suspension clamp about a pivot.” Appeal Br., Claims App. For Seigneur’s pin 344 to teach the claimed driving pin for rotating a suspension clamp latching member, Seigneur’s pin 344 at least must be capable of rotating such a latching member. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)) (the prior art must disclose structure capable of performing the claimed function). The Examiner does not find that pin 344 is capable of rotating a suspension clamp latching member. Further, inasmuch as Seigneur is directed to a mechanism for a chain saw spray bar, it does not appear to us that Seigneur’s pin 344 is capable of rotating such a suspension clamp latching member as set forth in the claim. Thus, based on the foregoing, we do not sustain the rejection of claims 1—3. Further, because independent claim 11 and its dependent 3 Appeal 2015-003914 Application 13/273,437 claims 12 and 13 each recite a similar recitation to that discussed above, we also do not sustain the rejection of claims 11—13. DECISION We REVERSE the Examiner’s anticipation rejection of claims 1—3 and 11—13. REVERSED 4 Copy with citationCopy as parenthetical citation