Ex parte FUNCHES et al.

Board of Patent Appeals and Interferences

Apr 29, 1998

08215192 (B.P.A.I. Apr. 29, 1998)

Application for patent filed March 21, 1994. According1
to appellants, the application is a continuation of Application
07/738,793, filed July 31, 1991, now U.S. Patent No. 5,305,160,
issued April 19, 1994.
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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journal and (2) is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte OTIS L. FUNCHES, RANDALL D. HAMPSHIRE
and VLADIMIR KOVNER
________________
Appeal No. 95-3570
Application 08/215,1921
________________
ON BRIEF
________________
Before MEISTER, ABRAMS and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 5, 6 and
9. Claims 7, 8 and 10, the only other claims pending in the
application, stand allowed.
Appeal No. 95-3570
Application 08/215,192
-2-
The invention relates to “a method for compensating for
variations in the torque constant of a voice coil driven actuator
for moving the read/write heads in a hard disc drive data storage
device” (specification, page 1). Claim 5 is illustrative and
reads as follows:
5. A method for compensating for variations in
acceleration and deceleration capability of a voice coil actuator
motor, having a nominal torque capability, in a disc drive in
which discs are rotated for data transfer at track locations
thereon responsive to positioning of read/write heads supported
by the voice coil actuator motor, the method comprising the steps
of:
dividing the discs radially into a plurality of zones;
determining the actual torque capability of the voice coil
actuator motor in each zone;
determining a zone compensation factor for each zone from
the actual torque capability of the voice coil actuator motor and
the nominal torque capability for the voice coil actuator motor;
and
thereafter, during track following operations in a selected
zone, driving the voice coil actuator motor in proportion to the
zone compensation factor for the selected zone.
Appeal No. 95-3570
Application 08/215,192
-3-
The reference relied upon by the examiner as evidence of
anticipation is:
Albert 5,150,266 Sept. 22, 1992
(filed on Apr. 30, 1990)
Claims 5, 6 and 9 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Albert.
Reference is made to the appellants’ brief (Paper No. 7) and
to the examiner’s answer (Paper No. 8) for the respective
positions of the appellants and the examiner with regard to the
merits of this rejection.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference
disclosure as viewed by a person of ordinary skill in the field
of the invention. Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Under principles of inherency, when a reference is silent about
an asserted inherent characteristic, it must be clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by
Appeal No. 95-3570
Application 08/215,192
-4-
persons of ordinary skill. Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
In the present case, Albert discloses a “method for
maximizing throughput of a hard disk drive by adaptively seeking
to a data track at which data is to be stored and adaptively
commencing the reading or writing of data in accordance with the
movement of the read/write head in the proximity of the data
track” (Abstract). As summarized by Albert,
[i]n one aspect of the present invention,
throughput is increased by adaptively varying the delay
time between passage of the “on track” threshold and
commencement of reading and writing to select, for each
seek, a minimum delay time, consistent with the
velocity with which the head approaches the destination
track, that will not result in a write fault. In a
second aspect of the invention, terminal portions of
the velocity demand profile are adjusted adaptively to
cause the read/write heads to enter the fine control
regions about the tracks with velocities that will
cause rapid settlement of the heads on a selected
destination track [column 3, lines 6 through 17].
A more detailed summary of Albert’s invention, which is
relied upon by the examiner to support the rejection on appeal,
appears in the reference at column 3, line 18 through column 4,
line 11 (see pages 2 and 3 in the answer).
Appeal No. 95-3570
Application 08/215,192
-5-
Each of the claims on appeal recites a method for
compensating for variations in the acceleration and deceleration
capability of a disc drive voice coil actuator motor having a
nominal torque capability. In general, the claimed methods
require the steps of determining the actual torque capability of
the voice coil actuator motor, determining a compensation factor
from the actual and nominal torque capabilities, and driving the
motor in proportion to the compensation factor.
Although the disk drive disclosed by Albert includes a voice
coil actuator motor (see column 5, line 57 through column 6, line
3), Albert makes no mention of determining the actual torque
capability of this motor or of using this parameter in
conjunction with the motor’s nominal torque capability to
determine a compensation factor for driving the motor.
Nonetheless, the examiner states that “Column 3, lines 18 and 19,
of Albert clearly discusses measuring the approach time for each
seek. In addition, Col. 3, lines 50-53, clearly discusses
measuring the velocity demand. Both of these operations would
seen [sic, seem] to be determining the torque” (answer, page 4).
Appeal No. 95-3570
Application 08/215,192
-6-
The examiner’s position here is not well founded. Arguably,
the approach time measurements and velocity demand profiles
utilized by Albert to control the voice coil actuator motor are
functions of the torque capability of the motor. Be this as it
may, it is not evident that persons of ordinary skill in the art
would recognize Albert’s use of the approach time measurements
and/or velocity demand profiles as necessarily meeting the
particular limitations in the appealed claims requiring the steps
of determining the actual torque capability of the motor,
determining a compensation factor from the actual and nominal
torque capabilities and driving the motor in proportion to the
compensation factor. The examiner’s finding to the contrary
lacks a sound factual basis, and is at best unduly speculative.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(e) rejection of claims 5, 6 and 9 as being anticipated by
Albert.
As a final matter, we note the substantial similarities
between the inventions defined by the claims in the instant
voluntarily filed continuation application and by the claims in
parent Application 07/738,793 which has matured into U.S. Patent
No. 5,305,160. Presumably, both the examiner and the appellants
have given due consideration to the double patenting issues
Appeal No. 95-3570
Application 08/215,192
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raised by this circumstance.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-3570
Application 08/215,192
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Bill D. McCarthy
McCarthy & Associates, Inc.
101 Park Avenue
Suite 250
Oklahoma City, OK 73102