Ex Parte Kamigama et al

Patent Trial and Appeal Board

Sep 16, 2013

11394205 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TAKEHIRO KAMIGAMA, MASAHIKO FUJIOKA,
YIUSING HO, and HIROSHI FUKAYA
____________________

Appeal 2011-002625
Application 11/394,205
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. Claims 15-19 have been withdrawn as a result of the restriction
requirement mailed February 9, 2009. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Exemplary Claims
Independent claims 1 and 9 contain similar features, and both recite a
head stack assembly for a disk drive that has a first connection between a
drive arm and a fantail spacer during testing, and a second connection post-
testing wherein the first connection is a temporary connection, and the
second connection is a substantially permanent connection.
Exemplary independent claim 1 under appeal, with emphases added,
read as follows:
1. A head stack assembly for a disk drive unit,
comprising:
at least one drive arms, each of which has a mounting
hole formed therein;
at least one head gimbal assemblies, each of which
connecting with one of the at least one drive arms;
a fantail spacer having a mounting hole formed therein;
and
a bearing assembly; wherein
the bearing assembly respectively extends through the
mounting holes of the at least one drive arms and the fantail
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spacer and fastens them together; wherein each of the drive
arms has at least one first positioning elements, and the fantail
spacer has at least one second positioning elements each of
which engaging with one of the first positioning elements, and
[A] the first and second positioning elements are
arranged so as to form a first connection between the at least
one drive arm and the fantail spacer during testing, and also
are arranged so as to form a second connection post-testing,
the first connection being a temporary connection, and the
second connection being a substantially permanent connection.
Examiner’s Rejection
The Examiner rejected claims 1-14 as being unpatentable under
35 U.S.C. § 103(a) over Appellants’ Admitted Prior Art (Figs. 1-2b; ¶¶
[0002]-[0006]) and Tsuchiya (US 2005/0264943 A1).1 Ans. 3-9.
Principal Issue on Appeal
Based on Appellants’ arguments (Br.12-17), the following principal
issue is presented:
Did the Examiner err in rejecting claims 1-14 as being obvious
because the combination of AAPA and Tsuchiya is not properly combinable
to teach or suggest limitation [A] (including a head stack assembly having

1 Separate patentability is not argued for dependent claims 2-8 and 10-14,
and Appellants argue these claims on the same basis as provided for
independent claims 1 and 9 from which each of these dependent claims
ultimately and respectively depend (see Br. 16-17). Claims 1 and 9 recite
the same subject matter, namely the last clause of each claim which recites
“the first and second positioning elements are arranged . . . .” (claims 1 and
9). We select independent claim 1 as representative of the group of claims
rejected under § 103(a) (claims 1-14), pursuant to our authority under 37
C.F.R. § 41.37(c)(1)(vii) (2010). Accordingly, our analysis herein will only
address representative claim 1.

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first and second positioning elements arranged as to form a first temporary
connection during testing and a second substantially permanent connection
post-testing), as set forth in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions in the Appeal Brief (Br.12-17) that the Examiner has erred. We
disagree with Appellants’ conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 3-9), and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans.
10-13). We concur with the conclusions reached by the Examiner.
Notably, Appellants admit that it “may arguably be true in some
abstracted sense” that Tsuchiya has both a temporary connection and a
substantially permanent connection (Br. 12). We agree with the Examiner
(Ans. 13) that Tsuchiya meets the structural limitations of a head stack
assembly having first and second positioning elements arranged as to form a
first temporary connection during testing and a second substantially
permanent connection post-testing, as set forth in representative claim 1.
We also agree with the Examiner (Ans. 12) that the meaning of the term
“substantially permanent” is not patentably distinguishable from the term
“temporary,” other than to specify that the substantially permanent
connection is of a longer temporal duration than the temporary connection.
Appellants’ arguments that (i) the claims do not recite the ability to
change a product (Br. 12), and (ii) when and how the structures are formed
are structural aspects of a particular product (Br. 14-15), are not persuasive
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inasmuch as these arguments are not commensurate in scope with the
language of claims 1 and 9, which are both apparatus claims and not method
claims. We agree with the Examiner (Ans. 13) that claims 1 and 9 are
product claims and that the structure of those claims is met by AAPA
modified with Tsuchiya’s first (132) and second (128) positioning elements.
The Examiner has provided a factual basis and articulated reasoning
with a rational underpinning to support the conclusion of obviousness with
regard to claim 1 (see Ans. 4-6 and 10-13). See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner that it would
have been obvious to modify AAPA with Tsuchiya’s first and second
positioning elements “in order to ‘provide a carriage plate capable of easily
effecting highly accurate positioning of a plurality of carriage plates, high in
rigidity, capable of reduction of thickness, and capable of sufficiently
increasing the bearing attaching strength.’ See the abstract of Tsuchiya . . . ”
(Ans. 11). Accordingly, we disagree with Appellants’ assertion (Br. 13) that
there is no motivation to combine AAPA and Tsuchiya other than
impermissible hindsight.
In view of the foregoing, Appellants have not sufficiently shown that
the Examiner erred in rejecting independent claims 1 and 9, or their
respective dependent claims 2-8 and 10-14, under 35 U.S.C. § 103(a) and we
sustain the rejection before us.

CONCLUSION
The Examiner has not erred in determining that the combination of
AAPA and Tsuchiya teaches or suggests a head stack assembly having first
and second positioning elements arranged as to form a first temporary
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connection during testing and a second substantially permanent connection
post-testing, as set forth in representative claim 1.

DECISION
The Examiner’s rejection of claims 1-14 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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