Ex Parte McGuire

Patent Trial and Appeal Board

Apr 18, 2017

13096712 (P.T.A.B. Apr. 18, 2017)

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.
13/096,712 04/28/2011 James E. McGuire JR. entrotech 11-0008 5134
36032 7590 04/20/2017
THE GRIFFITH LAW FIRM, A P.C.
991C Lomas Santa Fe Drive
Suite 450
Solana Beach, CA 92075
EXAMINER
WU, JERRY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
04/20/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lgriffith @ griffithpc .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. McGUIRE, JR.
Appeal 2015-001306
Application 13/096,712
Technology Center 2800
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—11, 13, and 22—26, which constitute all the pending claims.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as enrotech, inc. App. Br. 4.
2 Claims 12, 14—21, and 27 have been withdrawn. Final Act. 1, App. Br. 6.
Appeal 2015-001306
Application 13/096,712
Introduction
Appellant states the claimed “invention relates generally to hard disk
drives with integrated mechanisms for coupling of the hard disk drive within
a computing environment and related methods.” Spec. 12. Claim 1 is
illustrative (disputed requirements in italics)'.
1. A hard disk drive comprising
a housing comprising a base, a cover, and at least one
integrated coupling mechanism within a non-metallic portion of the
housing for coupling of the hard disk drive within a hard disk drive
rack assembly within a computing environment;
at least one disk for storage of data enclosed within the housing;
and
one or more electrical components enclosed within the housing
for facilitating reading and recording of data at a desired location on
the at least one disk contained within the housing.
App. Br. 47 (Claims App’x).
References and Rejections
Claims 1—9, 11, and 22—25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Applicant Admitted Prior Art (AAPA), Stefansky (US
6,226,143 Bl; May 1, 2001), and Chen (US 2005/0237708 Al; Oct. 27,
2005). Final Act. 3-5,1-9?
3 Although the rejection of claims 22—25 refers to “Chen and “Chen2,” based
on the Examiner’s citations, these are the same reference. See Final Act. 8;
see also App. Br. 41 n.3.
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Application 13/096,712
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over AAPA, Stefansky, Chen, and ENDO (JP 06-218799; Aug. 9, 1994).
Final Act. 6.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over AAPA, Stefansky, Chen, and Tomizawa et al. (US 2006/0139873; June
29, 2006). Final Act. 7.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over AAPA, Stefansky, Chen, and Repphun et al. (US 5,559,650; Sept. 24,
1996). Final Act. 5—6.
ISSUES
The issues before us are whether the Examiner errs in the rejections of
claims 1, 6, 10, 13, 22, and 26.4 See App. Br. 17-45.
ANAFYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions of reversible error. We disagree with Appellant’s conclusions.
Unless noted otherwise below, we adopt the Examiner’s findings and
reasons as set forth in the Final Rejection from which this appeal is taken
and as set forth in the Answer. We highlight the following for emphasis.
Claim 1
Appellant argues that because Stefansky teaches hard disk housings
that are unsuitable for mounting in a rack assembly, the Examiner errs by
4 Appellant argues (a) the patentability of dependent claims 2—5, 7—9, and 11
solely based on their dependencies from claim 1 (see App. Br. 12—16) and
(b) claims 22—25 together as a group (see id. at 41—45), from which we
select claim 22 as representative (see 37 C.F.R. 41.37(c)(l)(iv)). Except for
our final disposition, we do not further discuss infra claims 2—5, 7—9, 11,
and 23—25.
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Application 13/096,712
combining Stefansky’s teachings with the rack-mountable hard disk
teachings of AAPA and Chen. See App. Br. 12—16. Specifically, Appellant
contends: (a) “Stefansky teaches away from such mounting configurations
encompassed by AAPA and Chen” (id. at 14); (b) because AAPA and Chen
teach rack mounting “by way of screws positioned in side walls of the hard
disk drive housing” whereas Stefansky requires mounting “support posts on
the bottom wall of the housing” (id. at 15), an ordinarily skilled artisan
would not have combined the references’ teachings as proposed by the
Examiner; and (c) in view of the “contrasting teachings of AAPA and Chen
as compared to Stefansky,” an ordinarily skilled artisan would not have had
a reasonable expectation of success in making the combination. Id. at 16.
Appellant’s arguments do not persuade us. A teaching away requires
a reference to actually criticize, discredit, or otherwise discourage the
claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
“[T]hat two inventions were designed to resolve different problems ... is
insufficient to demonstrate that one invention teaches away from another.”
Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed.
Cir. 2004). “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, Stefansky teaches it was known in the art for hard disk drives to
include non-metallic housings for coupling of the hard disk drive to other
components (see 5:48—6:60, Fig. 1), which provides benefits such as reduced
weight (see 3:43—51). Appellant does not identify any disclosure in
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Application 13/096,712
Stefansky that discredits rack mounting or otherwise would discourage an
ordinarily skilled artisan from considering and adapting its teachings for use
with prior art directed to rack mounting of hard disks, such as AAPA or
Chen. Stefansky’s silence regarding rack mounting issues does not amount
to a teaching away from the requirements of claim 1. Instead, as the
Examiner finds, and we agree, based on considerations of weight, size, and
manufacturability, an ordinarily skilled artisan would have been motivated
to use plastic housing material as taught by Stefansky with the hard disk
housing taught by AAPA. See Final Act. 3—4, Ans. 4—5.
Although Chen and AAPA teach rack mounting by screws in the side
walls of the housing, whereas Stefansky teaches mounting supports on the
bottom wall of its housing not intended for rack mounting, our analysis
remains unchanged. The Examiner simply relies on Stefansky for teaching a
non-metallic housing material suitable for, inter alia, external coupling of a
hard disk, and combines this teaching with AAPA’s and Chen’s teachings of
a hard disk drive structure that includes screw holes in the sides for rack
mounting. See Ans. 4. In other words, the Examiner relies on AAPA and
Chen, not Stefansky, for teaching the recited requirement to “coupl[e] the
hard disk drive within a hard disk drive rack assembly.'’’’
Regarding expectation of success from the combination, Appellant
provides no persuasive argument or evidence that using plastic housing
components as taught by Stefansky for the disk drive housings taught by
AAPA was “uniquely challenging or difficult for one of ordinary skill in the
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).
Absent such an assertion, we “take account of the inferences and creative
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steps that a person of ordinary skill in the art would employ,” and find a
person of ordinary skill in the art would overcome any such difficulties
within their level of skill. KSR, 550 U.S. at 418 (2007); see also id. at 421
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). We agree with the Examiner that this combination is “a
simple substitution of one known element for another to obtain predictable
results” of the type that KSR found to be obvious. See Ans. 5.
Accordingly, we sustain the rejection of claim 1.
Claim 6
Claim 6 depends from claim 1 and recites “wherein the cover
comprises the integrated coupling mechanism.” App. Br. 47 (Claims
App’x). Similar to claim 1, Appellant argues Stefansky, which teaches
integrated mounting posts in the base (rather than the cover), “clearly
teaches away from” claim 6. App. Br. 40; see also id. at 39-40. For the
same reasons discussed supra for claim 1, we find Appellant’s arguments for
claim 6 unpersuasive. Accordingly, we sustain the rejection of claim 6.
Claim 10
In rejecting claim 10,5 the Examiner finds ENDO, in combination
with AAPA, Stefansky, and Chen, teaches the recited requirement “wherein
the female-type connector comprises a threaded bore.” Final Act. 6.
Appellant argues the Examiner errs because “[t]he threaded bore of ENDO
is not taught or suggested to be for securing an integrated coupling
mechanism within a non-metallic portion of a housing for coupling of the
5 Claim 10 depends from claim 9, which recites “[t]he hard disk drive of
claim 1, wherein the integrated coupling mechanism comprises a female-
type connector suitable for engagement with a male-type connector.” App.
Br. 48 (Claims App’x).
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Application 13/096,712
hard disk drive within a hard disk drive rack assembly.” App. Br. 28. This
argument does not persuade us, because Appellant argues the Examiner errs
based on limitations from claim 1 for which the rejection relies on AAPA,
Stefansky, and Chen. See Final Act. 6. One cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the rejection of claim 10.
Claim 13
Claim 13 adds the requirement “wherein the integrated coupling
mechanism comprises an elastomer” to claim 1. App. Br. 49 (Claims
App ’x). The Examiner finds Tomizawa, in combination with AAPA,
Stefansky, and Chen, renders claim 13 obvious. Final Act. 7. Appellant
argues the Examiner errs because “the buffer member of Tomizawa is not an
integrated coupling mechanism according to the invention and as recited in
claim 1.” App. Br. 33; see also id. at 33—34. We find this argument that
Tomizawa does not teach claim 1 requirements for which the rejection relies
on AAPA, Stefansky, and Chen unpersuasive for the same reasons discussed
supra for claim 10. Accordingly, we sustain the rejection of claim 13.
Claim 22
Claim 22 recites “[a] hard disk drive rack assembly, wherein the rack
assembly comprises at least one of the hard disk drives of claim 1.” App.
Br. 50 (Claims App’x). Appellant repeats the arguments of Examiner error
made previously for the rejection of claim 1. See App. Br. 41—45. For the
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reasons discussed supra for claim 1, we find these arguments unpersuasive.
Accordingly, we sustain the rejection of claim 22.
Claim 26
In rejecting claim 26, the Examiner finds Repphun, in combination
with AAPA, Stefansky, and Chen, teaches the recited requirement “wherein
the integrated coupling mechanism is secured within the housing using an
adhesive” added to claim 1. Final Act. 5—6. Appellant argues the Examiner
errs because “[n]ot one of the referenced uses of adhesive within Repphun is
for securing an integrated coupling mechanism within a non-metallic portion
of the housing for coupling of the hard disk drive within a hard disk drive
rack assembly within a computing environment.” App. Br. 22; see also id.
at 21—22. This argument does not persuade us for the same reasons
discussed supra for claims 10 and 13. Accordingly, we sustain the rejection
of claim 26.
DECISION
For the above reasons, we affirm the rejection of claims 1—11, 13, and
22—26. No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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