Ex Parte Le et al

Patent Trial and Appeal Board

Dec 19, 2016

13194796 (P.T.A.B. Dec. 19, 2016)

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.
10-3333-20 1627
EXAMINER
KELLEHER, WILLIAM J
ART UNIT PAPER NUMBER
3658
MAIL DATE DELIVERY MODE
13/194,796 07/29/2011
105639 7590 12/19/2016
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
Lynn Bich-Quy Le
12/19/2016 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 LYNN BICH-QUY LE and ALAN LYNDON GRANTZ
Appeal 2014-006808
Application 13/194,796
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 21—41 under 35 U.S.C. § 103(a) as unpatentable over
Polch (US 5,533,811; iss. July 9, 1996), Tanaka (US 2001/0022869 Al; pub. Sept.
20, 2001), and Grantz (US 5,980,113; iss. Nov. 9, 1999).2 We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellants identify the real party of interest as Seagate Technology LLC.
Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated September 5, 2013 (“Final
Act.”), as supplemented by the Advisory Action dated November 15, 2013.
Appeal 2014-006808
Application 13/194,796
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 21, 28, 35, and 41 are the independent claims on appeal. Claim 21,
reproduced below, is illustrative of the claimed subject matter on appeal.
21. An apparatus comprising:
an inner component;
an outer component, wherein
said inner component and said outer component define a
journal bearing,
said inner component and said outer component are
positioned for relative rotational motion,
said inner component and said outer component define a
portion of a stationary component and a rotatable component, and
said stationary component includes a shield;
a means for creating an asymmetric pressure gradient
within a fluid recirculation passageway configured to circulate fluid
and to purge air in said fluid, wherein
said means for creating said asymmetric pressure
gradient circulates said fluid about a portion of said journal bearing, a
first fluid passageway, and a second fluid passageway, and
said means for creating said asymmetric pressure
gradient comprises spiral grooves defined on at least on of a radial
member or said outer component to generate pumping pressure to
drive fluid recirculation and to pump said fluid from said second fluid
passageway toward said inner component and into said journal
bearing, wherein said inner component and said outer component are
in relative rotational motion and where said radial member ad said
shield are configured to establish a pump seal.
Appeal 2014-006808
Application 13/194,796
ANALYSIS
Independent Claim 21
The Examiner finds, inter alia, that Polch’s shaft 82 corresponds to the
claimed inner component and Polch’s bushing 80 corresponds to the claimed outer
component, and that shaft 82 and bushing 80 define bearing journals 110, 112.
Final Act. 2. The Examiner also finds that Polch discloses a stationary component,
a portion of which is defined by shaft 82 or bushing 80, wherein the stationary
component includes a shield. Id. According to the Examiner’s annotated Figure 8
of Polch (see id. at 4), the Examiner identifies the shield as Polch’s thrust plate 86.
The Examiner further finds that Polch’s thrust plates 84, 86 correspond to the
claimed radial member. Id. at 3; see also id. at 4 (Examiner’s annotated Figure 8
of Polch); Ans. 9. The Examiner determines that “Pol[]ch discloses a radial
member and a shield (as show in [the Examiner’s annotated Figure 8]), with a seal
104 formed therebetween.” Ans. 9. The Examiner finds “Polch discloses [that]
the purpose of the seal 104 is for increasing tilt stiffness of the bearing.” Ans. 9
(citing Polch 6:45).
The Examiner determines that “Polch does not disclose the radial member
and the shield being configured to establish a pump seal” (id. at 3) and relies on
Grantz for teaching “the use of a pump seal between a radial member and a shield
for the purpose of providing a high stiffness seal.” Final Act. 3^4; see also Final
Act. 3 (citing Grantz 5:18—20, 30—35). The Examiner also determines that “Grantz
teaches a bearing having a radial member 628 and a shield 670 [(or more correctly,
668)] with a diverging centrifugal capillary seal, structurally similar to the seal
disclosed in Polch.”3 Ans. 9 (citing Grantz 7:7—11). The Examiner further finds
3 We agree with Appellants’ clarification in their Reply Brief that the Examiner
must have intended to identify Grantz’ shield seal 668 as corresponding to a shield,
Appeal 2014-006808
Application 13/194,796
that Grantz “discusses that ‘a further alternative, which provides an even stiffer
system, [] would substitute a grooved pumping seal for each of the centrifugal
capillary seals.’” Id. (citing Grantz 9:59, 62). The Examiner reasons that it would
have been obvious “to modify Polch to include a pump providing a high stiffness
seal as taught by Grantz,” and that “[i]t is within the level of ordinary skill in the
art to replace a known seal structure, with another known seal structure, and the
combination would have yielded predictable results.” Id. at 4.
First, Appellants argue that “nowhere does Grantz, as cited by the Examiner,
disclose or suggest conical bearings 502 and 504 and a shield establish a pump seal
in the claimed fashion,” but rather, that “Grantz discloses ‘a fixed shaft 500 [that]
supports spherical or conical bearings 502, 504 near the opposite ends of the
shaft.’” Appeal Br. 14. Appellants submit that “the shield seal of Grantz serves a
distinctly different function and configuration than the shield recited in the
independent claims,” in that “[t]he shield, as recited in the [Specification, is in
contact with a hub and defines a radial displacement limit of the hub.” Reply Br. 4
(citing Spec. 131, Fig. 3, element 282). Because “the shield seal of Grantz is
separated from the hub 516 by bearing seat 506,” Appellants conclude that “Grantz
fails to teach or suggest a shield” or that “said radial member and said shield are
configured to establish a pump seal,” as required by claim 21. Id. at 4—5.
We do not agree with Appellants that the Specification defines a shield as a
structure that must contact, and provide a radial displacement limit of, a hub.
Instead, the Specification uses such limitations to define a structural relationship
between a shield and a hub, and therefore, Appellants are arguing limitations that
are not recited in claim 21. Grantz discloses that “[t]he seal is formed between a
wall 661 of the shield seal 668 which rotates with and is supported from (or even
and not pressure gradient 670. Reply Br. 3; see also Grantz 7:26—27.
Appeal 2014-006808
Application 13/194,796
integrated with) bearing seat 506 and hub 516, and wall 663 of seal cone 628
which is supported from the shaft.” Grantz 7:14—18. Thus, a preponderance of the
evidence supports the Examiner’s determination that Grantz discloses a seal
between shield seal 668 (or a shield) and seal cone 628 (or a radial member), and
Appellants do not otherwise apprise us of error in the Examiner’s finding.
Similarly, Appellants argue that “the Examiner is mischaracterizing the
elements that form seal 104 of Polch,” in that “seal 104 of Polch is formed by a
tapered gap between a thrust plate and a sleeve,” and “[therefore, Polch fails to
teach or suggest a shield or any seal formed by a radial member and a shield as
asserted by the Examiner.” Reply Br. 2—3. However, Appellants do not provide
persuasive argument or evidence as to why Polch’s thrust plates, as determined by
the Examiner and as stated supra, do not meet the definitions of a radial member
and/or a shield.
Second, Appellants argue that Grantz discloses “a pump seal between a
shaft, which is not a radial member, and a sleeve and/or bearing seat, which is . . .
not the same as the pump seal as recited in Claim 21.” Appeal Br. 15; see also id.
at 14—15 (citing Grantz 3:40-43, 57—70; 8:7—10). However, the Examiner is not
relying on the position of the pump seal in Grantz as described between the shaft
and sleeve and/or bearing seat. The Examiner relies on Grantz’ teaching that “a
pair of centrifugal capillary seals or grooved pumping seals could be used at
opposite ends of the shaft to seal an open-at-both-ends type of bearing in a motor
incorporating a simple shaft and sleeve connecting combination directly two fluid
dynamic bearings.” Grantz 5:31—35 (emphasis added); see also Final Act. 3
(citing, e.g., Grantz 5:30-35) (“Grantz discloses a pump seal may be used at either
or both ends of the bearing.”) In other words, the Examiner relies on Grantz’s
teaching of a capillary seal 660 between shield seal 668 and seal cone 628, as
Appeal 2014-006808
Application 13/194,796
discussed supra and as described in Grantz at column 7, lines 8 to 30, and also on
Grantz’s express teaching that a grooved pumping seal may be substituted for a
capillary seal, with tradeoffs known to one of ordinary skill in the art. See Grantz
9:58—62, with reference to Fig. 4 (“A further alternative, which provides an even
stiffer system, although it may not be as successful at expulsion of the air, would
substitute a grooved pumping seal for each of the centrifugal capillary seals 106,
108.”). Thus, Appellants’ argument does not apprise us of error in the Examiner’s
findings.
Third, Appellants argue that the Examiner is improperly relying on
inherency “to assert that the combination of Polch and Grantz teaches a ‘radial
member and [a] shield . . . configured to establish a pump seal.’” Appeal Br. 16.
In particular, Appellants contend that “the missing feature is not necessarily
present in Polch,” and that Polch does not “disclose or suggest that Polch’s surface
tension seal may be substituted with a pump seal.” Appeal Br. 16—17. However,
the Examiner does not rely on Polch for disclosing a pump seal at all, but rather
reasons that it would be obvious to substitute Polch’s surface tension (or capillary)
seal with a pump seal, as taught by Grantz, and therefore, Appellants’ argument
does not address the rejection as articulated by the Examiner.
Fourth, Appellants argue that “one cannot conclude that replacing the
surface tension seal of Polch with the pump seal of Grantz would necessarily result
in a radial member and a shield configured to establish a pump seal in the claimed
fashion.” Appeal Br. 17. In particular, Appellants submit that
[a]s one skilled in the art would appreciate that by forming a surface
tension seal in a diverging gap, such as Polch’s surface tension seal,
the surface tension seal can contain a high volume of lubricant, and
provide a relatively low stiffness in a motor in comparison to [a] pump
seal. . . . [I]n contrast to Polch’s surface tension seal, by forming a
pump seal in substantially linear surfaces, a pump seal, such as the one
Appeal 2014-006808
Application 13/194,796
disclose in Grantz, provides higher stiffness to a motor, but contains a
low volume of lubricant. As such, as one skilled in the art can
appreciate that at an implementation level the requirements to
implement a surface tension seal, such as the one disclosed in Polch,
are different from the implementation requirements of a pump seal,
such as the pump seal in Grantz. Consequently, it would be apparent
to one skilled in the art that a pump seal may not be formed and further
will not function within Polch’s tapered gap, and that the combination
of Polch and Grantz requires more than a mere substitution.
Appeal Br. 17—18; see also Reply Br. 5.
The Examiner responds that “[a]s there is express motivation provided in
Grantz for using a grooved pumping seal in place of a diverging gap seal [(or
capillary seal)], a person of ordinary skill in the art would have made the
substitution [of] one seal type for another known seal structure, and the
combination would have yielded predictable results.” Ans. 9-10. In other words,
the Examiner proposes replacing Polch’s tapered gap with Grantz’s pump seal.
Although tradeoffs may be required in balancing the benefits and drawbacks of
using surface tension seals as opposed to pump seals in hydrodynamic bearings,
such tradeoffs do not necessarily prevent the proposed combination or negate the
obviousness of the claimed subject matter. See Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”); see also Winner Int 7 Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.”). A preponderance
of the evidence supports the Examiner’s finding that Grantz teaches the
interchangeability of such seals, including tradeoffs, as discussed supra.
Appeal 2014-006808
Application 13/194,796
Fifth, Appellants argue that “the Examiner appear[s] to be improperly taking
official notice by relying on [the Examiner’s] own knowledge that substituting one
seal structure with another seal structure would have yielded predictable results.”
Appeal Br. 18 (citations omitted). We disagree in that, as discussed supra, the
Examiner relies on Grantz for teaching that it is known to substitute a pump seal
for a capillary seal.
Finally, Appellants submit that the Examiner impermissibly relies on
hindsight. Appeal Br. 15. However, as discussed supra, the Examiner cites
teachings in the references in articulating reasons for combining the references as
proposed in the rejection, and Appellants do not identify any knowledge that the
Examiner relied upon that was gleaned only from Appellants’ disclosure and that
was not otherwise within the level of ordinary skill at the time of the invention.
See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
Independent claims 28, 35, and 41, and dependent claims 22—27, 29—34, and 36—
40
Appellants chose not to present separate arguments for the patentability of
independent claims 28, 35, and 41, and dependent claims 22—27, 29—34, and 36—
40. Appeal Br. 20. Thus, for the reasons stated supra, we also sustain the
Examiner’s rejection of claims 22 41.
Appeal 2014-006808
Application 13/194,796
DECISION
The Examiner’s decision to reject claims 21—43 under 35 U.S.C. § 103(a)
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED