Ex parte Elsing et al.

Board of Patent Appeals and Interferences

Jun 30, 1998

08146311 (B.P.A.I. Jun. 30, 1998)

Application for patent filed November 2, 1993. 1
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN W. ELSING, KENT J. FORBORD
and BLAINE T. PETERSON
____________
Appeal No. 95-4789
Application 08/146,3111
____________
ON BRIEF
____________
Before KRASS, TORCZON and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
34, which constitute all the claims remaining in the application.
Claim 1 reads as follows:
1. A data storage apparatus, including:
Appeal No. 95-4789
Application 08/146,311
2
a disk drive housing having first and second opposed
housing walls, and an elongate spindle shaft having first and
second opposite shaft ends and supporting at least one data
storage disk for rotation relative to the spindle about a spindle
axis;
a substantially rigid but elastically deformable
fastener inserted axially into the spindle shaft via the first
shaft end, and having an enlarged head;
a substantially rigid but elastically deformable
alignment means surrounding the fastener and having: a frusto-
conical first inner guide surface converging in an axially inward
direction toward the spindle shaft and engaged with the enlarged
head; a frusto-conical second inner guide surface diverging in
the axially inward direction and engaged with the first shaft
end; and a radially outward edge surrounded by a rim of the first
wall;
wherein the fastener is so inserted to a predetermined
axial location beyond a point at which the first and second inner
guide surfaces engage the head and the first shaft end,
respectively, to cause a residual axial tensile force in said
fastener while urging the radially outward edge into a firm
contact engagement with the rim, thereby radially aligning and
integrally securing the first shaft end with respect to the first
wall; and
a means for mounting the second shaft end integrally
with respect to the second wall whereby the spindle shaft spans
the distance between the first and second walls and supports the
at least one disk for rotation inside the housing.
The Examiner’s Answer cites no prior art.
OPINION
The claims stand rejected under 35 U.S.C. § 112, first
and second paragraphs, as allegedly non-enabled and indefinite.
We reverse for the reasons given by appellants and for the
following additional reasons as well.
Appeal No. 95-4789
Application 08/146,311
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The examiner admits that the application has adequately
disclosed two embodiments, but says that the disclosure does not
enable practice of the invention as broadly as the claims recite.
The examiner apparently agrees that the broadest claims are
generic to both embodiments. Examiner’s Answer at 4.
If an invention pertains to an art where the results
are predictable, e.g., mechanical as opposed to chemical arts, a
broad claim can be enabled by disclosure of a single embodiment.
Spectra-Physics Inc. v. Coherent Inc., 827 F.2d 1524, 3 USPQ2d
1737 (Fed. Cir. 1987). Cf. In re Corkill, 771 F.2d 1496, 1501,
226 USPQ 1005, 1009 (Fed. Cir. 1985) (chemical arts).
The present invention pertains to a predictable art,
and the examiner does not contend otherwise. We are at a loss to
find any basis in the law for the examiner’s rejections. The
rejections appear to be inappropriate “undue breadth” rejections.
See In re Chupp, 816 F.2d 643, 647, 2 USPQ2d 1437, 1440 (Fed.
Cir. 1987).
Appeal No. 95-4789
Application 08/146,311
4
CONCLUSION
The rejections of claims 1-34 are not sustained.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
RICHARD L. TORCZON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-4789
Application 08/146,311
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