Ex Parte Kim et al

Patent Trial and Appeal Board

Mar 28, 2013

11038028 (P.T.A.B. Mar. 28, 2013)

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.
11/038,028 01/21/2005 Chung-ung Kim 1793.1534 8050
21171 7590 03/29/2013
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
GIESY, ADAM
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
03/29/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHUNG-UNG KIM, PIL-JE CHO, YOUNG-SUN JUNG,
KYU-HYEONG LEE, SUNG-HUN LEE,
and YOUNG-WOO HUH
__________

Appeal 2010-009423
Application 11/038,028
Technology Center 2600
___________

Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-4 and 6-17. Claim 5 was cancelled. The real party in interest is
Samsung Electronics Co. Ltd. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
The Applied Prior Art
Yamashita US 5,063,548 Nov. 5, 1991
Ikegame US 5,875,166 Feb. 23, 1999

Takeshi JP 06-259895 Sept. 16, 1994

Admitted Prior Art Spec. ¶¶ [0002]-[0007], Fig. 1

The Rejections on Appeal
Claims 1-4, 6-13, and 15 were rejected under 35 U.S.C. § 112, ¶ 1, as
failing to comply with the written description requirement.
Claims 1-4, 6-9, 11, and 12 were rejected under 35 U.S.C.
§ 103(a) as unpatentable over Applicant Admitted Prior Art (“AAPA”),
Yamashita, and Takeshi.
Claims 10 and 14-17 were rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA, Yamashita, Takeshi, and Ikegame.

The Invention
The claimed invention is directed to optical pickup moving
mechanisms to move an optical pickup that operate on a disk. Spec.
¶ [0011]. The claimed invention provides an insulator to insulate an
electrical impact and vibration received from the stepping motor to prevent
transmission of the electrical impact and the vibration to the optical pickup.
Id. Claim 1 is illustrative and is reproduced below, with certain limitations
emphasized:
1. An optical pickup moving mechanism to move an
optical pickup which operates on a disk comprising:
a stepping motor;
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a lead screw rotatably connected to the stepping motor
and moving the optical pickup in a radial direction of the disk;
and
a plurality of guide shafts installed in parallel with the
lead screw and to guide the movement of the optical pickup in
the radial direction of the disk, each of the guide shafts
comprising a first portion having a first diameter and a second
portion having a second diameter smaller than the first
diameter and an insulator to insulate an electrical impact and
vibration received from the stepping motor to prevent
transmission of the electrical impact and the vibration to the
optical pickup, the insulator being over the second portion so
that an outer surface of the insulator is even with an outer
surface of the first portion.

DISCUSSION
A. Lack of Written Description Rejection of Claims 1-4, 6-13, and 15

The Examiner determined that claims 1-4, 6-13, and 15 fail to comply
with the written description requirement because the claims contain subject
matter which was not described in the Specification in such a way as to
reasonably convey to one skilled in the art that the inventors had possession
of the claimed invention at the time that the application was filed. Ans. 3.
Independent claims 1, 6, 13, and 15 require that the insulator be “even” with
an outer surface of the first portion of the guide shaft. See Claims 1, 6, 13,
and 15. The Examiner finds that, although Appellants’ Figure 6 appears to
show the insulators are similar in diameter to the guide shaft, Appellants’
Specification fails to provide any measurements, dimensions, or details to
support the insulator being “even” with the outer surface of the guide shaft.
Ans. 3.
Appellants argue that even without illustrating the specific dimensions
recited in the claims in Figure 6, one of ordinary skill in the art would have
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interpreted the continuous lines shown in Figure 6 as defining even surfaces.
Br. 12. Figure 6 of Appellants’ Specification, reproduced below, depicts
insulator 260 and guide shaft 246 (247).

Figure 6 depicts an embodiment of Appellants’ insulator 260.

Appellants argue that one of ordinary skill in the art would interpret the
“continuous lines defining the top and bottom of Fig. 6” as defining “even”
surfaces. Br. 12. Nevertheless, it is unclear which “continuous lines”
Appellants are referencing in Figure 6, and there is no indication that Figure
6 is drawn to scale. When the specification does not disclose that the
drawings are to scale and is silent as to dimensions, arguments based on
measurement of the drawing features are of little value. Hockerson-
Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000). Thus, we are not persuaded by Appellants’ arguments regarding
what particular dimensions one of ordinary skill in the art would interpret
from Figure 6.
Additionally, Appellants’ Specification fails to provide any
description of the measurements or dimensions of insulator 260 and guide
shafts 246 and 247. See Spec. ¶¶ [0022]-[0024]. In fact, Appellants’
Specification implies that the insulator is not “even” with the guide shaft.
See Spec. ¶¶ [0022], [0024]. Specifically, Appellants’ Specification
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discloses that insulator 260 “is formed by molding or coating on both ends
of each of the guide shafts 246 and 247.” Spec. ¶ [0022] (emphasis added).
Furthermore, with respect to insulator 270 shown in Figure 7, the
Specification states that “[t]he insulator 270 may also be formed by coating
an outer surface of each of the guide shafts 246 and 247.” Spec. ¶ [0024]
(emphasis added). Based on these statements in the Specification that
insulators 260 and 270 are molded or coated to the outer surface of guide
shafts 246 and 247, it seems reasonable that one of ordinary skill in the art
would conclude that the insulators are raised with respect to the guide shaft
and not “even.” In the least, this ambiguity in the Specification contradicts
Appellants’ argument that an “even” insulator is inherent in the
Specification.
Appellants also argue that an “even” insulator is inherent because the
Specification implies that in order to facilitate smooth movement ofpickup
243 across guide shaft 246, the insulator must be “even” with the guide
shaft. Br. 12-13; see Spec. Fig. 2. Contrary to Appellants’ arguments,
however, the Examiner finds that Figures 4 and 5 of Appellants’
Specification appear to show that the structure of insulator 250 fits fully
within the confines of support member 248 between the step created by base
chassis 240 and projection 2481; thus, insulator 250 would not impede the
movement of pickup 243. Ans. 16. Therefore, the Examiner concludes that
there is no basis for Appellants’ argument that the insulators need to be
“even” so as not to impede the movement of the pickup. Ans. 16. We
agree. Accordingly, we are not persuaded of error in the Examiner’s finding
and sustain the written description rejection of independent claims 1, 6, 13,
and 15, and claims 2-4 and 7-12 which dependent therefrom.

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B. Obviousness Rejection of Claims
1-4, 6-9, 11, and 12 over AAPA, Yamashita, and Takeshi

The Examiner determined that AAPA in combination with Yamashita
discloses the claimed invention, including an insulator to insulate an
electrical impact and vibration on the optical pickup, except that AAPA and
Yamashita do not specifically disclose that the guide shaft is comprised of
two different diameters or that the insulator is “even” with the first diameter.
Ans. 3-4. The Examiner cites Takeshi to teach these features. Ans. 4.
Appellants disagree and argue that Takeshi fails to remedy the deficiencies
of AAPA and Yamashita.
First, Appellants argue that Takeshi does not disclose an insulator that
is “even” with the guide shaft. Br. 16. Contrary to the Appellants’
arguments, the Examiner finds that Takeshi teaches an insulator 8 that is
“approximately even” with an outer surface of guide shaft 7a. Ans. 4 (citing
Takeshi, Drawing 1). Drawing 1 of Takeshi, reproduced below, shows an
elastic support member 8 surrounding a narrow diameter portion 7b of a
guide shaft 7.

Takeshi Drawing 1 depicts an insulator 8 and guide shaft 7.

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Appellants’ argue that Takeshi’s Drawing 1, shown above, illustrates that
insulator 8 and major diameter 7a of guide shaft 7 are not “even.” Br. 16.
Yet again, Appellants argue precise dimensions of a drawing that is not
represented as being to scale. See Hockerson-Halberstadt, Inc. v. Avia
Group Int’l, Inc., 222 F.3d at 956 (if a drawing is not to scale, arguments
based on measurement of the drawing features are of little value.) We are
not persuaded of error in the Examiner’s findings that Takeshi’s insulator 8
is “approximately even” with an outer surface of guide shaft 7.
Second, Appellants argue that modifying Takeshi to make the surfaces
even would render Takeshi’s device unsatisfactory for its intended purpose.
Br. 16. More particularly, Appellants argue that, if guide shaft 7 were to
have the same diameter as supporting member 8, guide shaft 7 would be in
contact with substrate 4 and vibrations would be transmitted to guide shaft 7
at the point of contact. Br. 16.
The Examiner finds that the Appellants’ arguments regarding the
failure of Takeshi to teach an operable guide shaft, which is mechanically
and electrically insulated from the body/chassis of the optical head, are
misplaced because the Examiner does not rely upon Takeshi for this
teaching. Ans. 17. Instead, the Examiner relies upon Yamashita for its
teaching regarding insulating the guide shaft with respect to the optical
pickup. Ans. 17 (citing, Yamashita, col. 3, ll. 4-9; col. 4, ll. 12-17).
Accordingly, we are not persuaded by Appellants’ arguments regarding the
alleged inoperability of Takeshi. Therefore, we sustain the Examiners’
rejection of independent claims 1 and 6, and claims 2-4, 7-9, 11, and 12
which depend therefrom, as obvious over AAPA, Yamashita, and Takeshi.

Appeal 2010-009423
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C. Obviousness Rejection of Claim 14 over AAPA, Yamashita, Takeshi,
and Ikegame

Appellants separately argue that the rejection of claim 14 is improper
because the Examiner interprets claim 14 too broadly. See Br. 17. Namely,
Appellants argue that the Examiner incorrectly finds that it would have been
obvious to apply an insulating resin to the entire guide shaft, a limitation that
Appellants argue is not required by claim 14. Id.
In rejecting claim 14, the Examiner cites to Ikegame as teaching the
placement of a fluorine-contained resin coating, an insulator, around the
guide shaft to provide a smooth guide for the optical head. Ans. 12 (citing
Ikegame, col. 6, ll. 21-30). The Examiner relies upon that portion of
Ikegame to teach the following limitations from claim 14: (1) “second
portion is provided at a middle portion,” and (2) “insulator is over the
second portion.” Ans. 12.
Appellants argue that claim 14 recites first and second portions of the
guide shafts and that the insulator is over the second portion, not over the
entire length of the guide shaft. Br. 17. Appellants’ arguments, however,are
not commensurate with the scope of claim 14 because, as the Examiner
finds, claim 14 does not prohibit the insulator from being over both the
second portion and the first portion of the guide shaft. Claim 14 recites only
that the insulator be over at least the second portion, but does not prohibit
the insulator from also being over the first portion. Therefore, the Examiner
correctly relies upon Ikegame to teach an insulator over at least the second
portion. We are not persuaded of error in the Examiner’s finding and sustain
the rejection of claim 14.

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D. Obviousness Rejections of Claims 10, 13, and 15-17

Appellants separately argue that the rejections of claims 10, 13, and
15-17 are improper for the reasons raised with respect to claim 1. See Br.
17-18. We have already addressed Appellants’ arguments with respect to
claim 1, and we found them unpersuasive. We, therefore, sustain the
rejections of claims 10, 13, and 15-17 for the same reasons as those
discussed above for claim 1.

ORDER
The Examiner’s decision rejecting claims 1-4 and 6-17 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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