Ex parte KIKUCHI et al.

Board of Patent Appeals and Interferences

Sep 23, 1998

08083372 - (D) (B.P.A.I. Sep. 23, 1998)

Application for patent filed June 29, 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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KIYOJI KIKUCHI and TOSHIO FUJIMOTO

_____________
Appeal No. 96-1837
Application No. 08/083,3721
______________
ON BRIEF
_______________
Before KRASS, FLEMING and CARMICHAEL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection
of claims 1, 2, 4, 5, 7, 11 and 13, all of the claims remaining
in the application.
Appeal No. 96-1837
Application No. 08/083,372
2
The invention is directed to a disk drive apparatus and
method which prevents vibrations in the disks produced by changes
in environmental temperature. More particularly, a buffer member
is placed between two adjacent members wherein the buffer member
has a thermal expansion coefficient which is substantially an
intermediate value between thermal expansion coefficients of the
two adjacent members. Further, the difference between the
thermal expansion coefficients of the two adjacent members is
larger than about 10 x 10 (1/°C).-6
Representative independent claim 1 is reproduced as follows:
1. A disk drive apparatus comprising:
a rotating member having an engagement portion;
a disk-like recording medium;
a clamp for urging the recording medium against the
engagement portion of the rotating member with a predetermined
fixing force to fix the recording medium to the rotating member;
and
a metal buffer member provided in at least one of a position
between the recording medium and the engagement portion and a
position between the recording medium and the clamp, the buffer
member having a thermal expansion coefficient which is
substantially an intermediate value between thermal expansion
coefficients of the two members located on two sides of the
buffer member, wherein the difference between the thermal
expansion coefficients of the two members located on the two
sides of the buffer member is larger than about 10 x 10 (1/°C).-6
Appeal No. 96-1837
Application No. 08/083,372
Our understanding of these references is based on English2
translations thereof which have been prepared by the United
States Patent and Trademark Office. Copies of the translations
are attached hereto.
3
The examiner relies on the following references:
Matsudaira et al. (Matsudaira) 4,945,432 Jul. 31, 1990
Rajac, IBM Technical Disclosure Bulletin, Vol. 25, No. 3A (August
1982) pp. 1097-98.
Japanese kokai patent (Kabashi) 61-210573 Sep. 18, 19862
Japanese kokai patent (Ishikawa) 2-105377 Apr. 17, 19902
Claims 1, 2, 4, 5, 7, 11 and 13 stand rejected under 35
U.S.C. 103 as unpatentable over Matsudaira in view of Rajac or,
alternatively, offered in a new ground of rejection by the
examiner in the principal answer, over Ishikawa in view of
Kobashi. A prior rejection based on the first paragraph of 35
U.S.C. 112 has been withdrawn and is not before us on appeal.
Reference is made to the briefs and answers for the
respective positions of appellants and the examiner.
OPINION
Turning first to the rejection of the claims under 35 U.S.C.
103 over Matsudaira in view of Rajac, we will not sustain this
rejection as the examiner has not established a prima facie case
of obviousness.
Appeal No. 96-1837
Application No. 08/083,372
4
Viewing the examiner’s rejection and rationale therefor in
the most favorable light, it is the examiner’s position that
Matsudaira discloses the claimed subject matter but for the
buffer having a thermal expansion coefficient substantially
intermediate the thermal expansion coefficients of the two
adjacent members and for the fixing force recited in claims 4 and
7. In order to compensate for these deficiencies, the examiner
cites Rajac for a teaching of a buffer having a similar thermal
expansion coefficient as the adjacent members and contends that
the claimed force range would have been obvious since this
amounts to only “routine experimentation and optimization”
[principal answer-page 5].
First, with regard to the claimed force range, the range
recited requires a particular relationship between the fixing
force, the mass of the recording medium, the acceleration acting
on the medium and a minimum friction coefficient. The examiner
cannot explain such a specific limitation away by merely labeling
the requirement “routine experimentation and optimization.”
In any event, we never reach the limitations of the
dependent claims because, in our view, the examiner’s reasoning
with regard to the rejection of the independent claims is flawed.
While Rajac teaches the use of a buffer having a similar thermal
Appeal No. 96-1837
Application No. 08/083,372
5
expansion coefficient as the adjacent members, the claims call
for the buffer member to have a thermal expansion coefficient
which is “substantially an intermediate value between thermal
expansion coefficients of the two members located on two sides of
the buffer member.” Neither applied reference teaches or
suggests the claimed “intermediate value” since the examiner
admits that Matsudaira lacks this teaching and it is clear that a
thermal expansion coefficient that is “similar,” as taught by
Rajac, is not a thermal expansion coefficient which is
“intermediate,” as required.
We now turn to the rejection of the claims under 35 U.S.C.
103 over Ishikawa in view of Kobashi.
While we are of the view that the examiner makes a stronger
case for obviousness with these references, upon careful
consideration of the applied references and the arguments of both
appellants and the examiner, we find ourselves in agreement with
the appellant.
Kobashi clearly teaches the idea of using a buffer which has
a thermal expansion coefficient which is intermediate the thermal
expansion coefficients of two members located on the two sides of
the buffer and, thus, it appears tempting to want to apply this
teaching to Ishikawa which teaches a spacer between a hub and a
Appeal No. 96-1837
Application No. 08/083,372
6
disk, adjacent elements similar to the adjacent elements of the
instant claims, substituting a spacer which has an “intermediate”
thermal expansion coefficient, as claimed. At first blush, the
examiner appears to state a reasonable position.
However, on closer consideration, it is our view that the
artisan would not have applied Kobashi’s teaching to the spacer
of Ishikawa. Ishikawa’s spacer is made of a rubber material and
conforms to the adjacent members as their displacement changes
due to temperature changes. Therefore, the question presents
itself as to why the skilled artisan, faced with this teaching,
would look to Kobashi. It appears that Ishikawa’s device works
very well without any reason for seeking an improvement whereby
the rubber spacer is changed to a metal spacer, or buffer, with a
thermal expansion coefficient value intermediate the coefficient
values of the adjacent members in Ishikawa. Moreover, Kobashi is
concerned with eliminating deformation at the arms of a disk
driver. Without appellants’ disclosure before him/her, it is
doubtful that the artisan would have had any reason to apply the
teaching of an “intermediate” thermal expansion coefficient value
of a buffer to the elements of the disk drive that appellants do.
There is a general teaching at page 2 of the translation of
Kobashi about eliminating deformations arising from differences
Appeal No. 96-1837
Application No. 08/083,372
7
in thermal expansion coefficients when fastening components, in
general. However, we do not view this general teaching as
clearly suggesting the instant claimed subject matter. We are
unconvinced that the skilled artisan having the Ishikawa and
Kobashi teachings before him/her, and without the benefit of
hindsight gleaned from appellants’ disclosure, would have
employed a buffer member having a thermal expansion coefficient
which is substantially an intermediate value between the thermal
expansion coefficients of the two adjacent members (i.e.,
recording medium/engagement portion; recording medium/clamp;
spacer/recording medium) required by the instant claims wherein
the difference between the thermal expansion coefficients of the
two adjacent members is larger than the value recited in the
instant claims.
Appeal No. 96-1837
Application No. 08/083,372
8
The examiner’s decision rejecting claims 1, 2, 4, 5, 7, 11
and 13 under 35 U.S.C. 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-1837
Application No. 08/083,372
9
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