Ex parte NAITO

Board of Patent Appeals and Interferences

May 22, 1998

08053193 (B.P.A.I. May. 22, 1998)

Application for patent filed April 28, 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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TAKASHI NAITO
and
SHIZUO ARAI
_____________
Appeal No. 95-2898
Application 08/053,1931
______________
HEARD: May 7, 1998
_______________
Before HAIRSTON, KRASS and FLEMING, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection
of claims 1, 5, 10 and 11, the only claims pending in the
Appeal No. 95-2898
Application 08/053,193
2
application. Claims 2 though 4 and 6 through 9 have been canceled.
The invention is directed to a snap-fit hub for an
optical disk, the nature of which is apparent from a review of
representative independent claim 1, reproduced as follows:
1. An optical recording medium which is adapted to be
placed on a turn table rotatable as a unit with a spindle of an
optical disk apparatus to reproduce information on a disk surface
with an optical beam, said optical recording medium comprising:
an optical disk which has a center hole; and
a center core which fits into said center hole of said
optical disk, said center core having a bottom disk-shaped
portion; a cylindrical wall extending from said bottom disk-
shaped portion and a stopper ledge projecting outwardly from an
outside peripheral surface of said cylindrical wall and abutting
on a lower surface of said optical disk; claws formed in said
wall portion which project from said outside peripheral surface
of said cylindrical wall and which engage an upper surface of
said optical disc so as to clamp said optical disk between said
stopper ledge and said claws, and a plurality of slits formed in
said cylindrical wall for defining a first wall portion and for
rendering said first wall portion flexible so that said first
wall portion is elastically displaced radially inwards to a
deformed position to allow said center core to be attached to
said optical disk by passing said cylindrical wall and said claws
through said center hole of said optical disk until said claws
snap into position, wherein a magnetic member is attached to said
center core which is attracted by a magnet provided on said turn
table, and wherein said cylindrical wall of said center core is
divided by said slits into a plurality of first wall portions
each of which is formed with one of said claws, and a plurality
of second wall portions each of which is formed with said stopper
ledge, said first and second wall portions being alternately
arranged.
The examiner relies on the following references:
Ogusu 4,802,158 Jan. 31, 1989
Appeal No. 95-2898
Application 08/053,193
Our understanding of this reference is based on an English2
translation thereof prepared by the United States Patent and
Trademark Office. A copy of that translation is attached hereto.
The final rejection of claims 5, 10 and 11 under 35 U.S.C.3
102 has been withdrawn by the examiner and forms no part of the
appeal herein.
Appellants filed an appeal brief on October 27, 1994. We4
will refer to this appeal brief as simply the brief. Appellants
filed a reply appeal brief on March 22, 1995. We will refer to
this reply appeal brief as the reply brief. The Examiner stated
in the Examiner’s letter mailed April 3, 1995 that the reply
brief has been entered and considered but no further response by
the Examiner is deemed necessary.
3
Kikuchi 4,944,982 July 31, 1990
Azuma 1-107388 Apr. 25, 19892
(Japanese Kokai)
Claim 1 stands rejected under 35 U.S.C. § 103 as
unpatentable over Kikuchi and Azuma. Claims 5, 10 and 11 stand
rejected under 35 U.S.C. § 103 as unpatentable over Kikuchi and
Ogusu. 3
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the briefs and the answer for the4
details thereof.
Appeal No. 95-2898
Application 08/053,193
4
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claim 1 is properly rejected under
35 U.S.C. § 103. Thus, we will sustain the rejection of this
claim but we will reverse the rejection of the remaining claims
on appeal for the reasons set forth infra.
Turning first to the rejection of claim 1 under 35
U.S.C. § 103, Appellants argue on page 8 of the brief that the
combination of Kikuchi and Azuma do not render obvious claim 1,
which has claws formed in the wall portion which project from
said outside peripheral surface of said cylindrical wall and
wherein a plurality of slits formed in the cylindrical wall
render the first wall portion flexible so that the first wall
portion is elastically displaced radially inwardly to a deformed
position to allow the center core to be attached to said optical
disk. Appellants further state that Kikuchi and Azuma cannot be
combined to render claim 1 obvious.
Turning to Kikuchi, we find that Kikuchi teaches an
optical recording medium comprising an optical disk which has a
Appeal No. 95-2898
Application 08/053,193
5
center hole (See Figure 7 and column 5, lines 47-53) and center
core (See Figure 5) having all of the limitations as recited in
Appellants’ claim 1 except for "claws formed in said wall portion
which project from said outside peripheral surface of said
cylindrical wall and which engage an upper surface of said
optical disc so as to clamp said optical disk between said
stopper ledge and said claws." In particular, we find that
Kikuchi teaches a center core, shown as a hub 50 in Figure 5,
which fits into said center hole of said optical disk. We
find that Kikuchi teaches a center core having a bottom disk-
portion (the portion of flange 52 that supports boss 51 shown in
Figure 5) a cylindrical wall (shown as outer wall 55 in Figure 5)
extending from the bottom disk-portion and a stopper ledge (shown
as the portion of flange 52 that does not support boss 51 in
Figure 5) projecting outwardly from an outside peripheral surface
of said cylindrical wall and abutting on a lower surface of the
optical disk as set forth in Appellants' claim 1. Furthermore,
we find that Kikuchi teaches in Figure 5 and column 5, lines 26
and 27, a plurality of slits 59 formed in the cylindrical wall as
recited in Appellants’ claim 1.
Appeal No. 95-2898
Application 08/053,193
6
As pointed out above, Kikuchi fails to teach claws
which engage an upper surface of the optical disk. Kikuchi
teaches protrusions 56 for engaging the optical disk into proper
position. Appellants argue on page 1 of the reply brief that the
Kikuchi protrusions 56 do not engage the upper surface of the
optical disk, but instead engage the cylindrical opening in the
center of the disk. We agree. However, the Examiner did not
rely upon Kikuchi solely but relies on the combination of Kikuchi
and Azuma.
In figures (a) and (c), Azuma teaches claws 10 which
engage an upper surface of the optical disk. The Examiner argues
that it would have been obvious to those skilled in the art to
modify the Kikuchi center core 50 shown in Figure 5 by providing
the Azuma claw 10 and spring 13 in the Kikuchi center core 50 at
a position above the Kikuchi protrusion 56 as recited in
Appellants' claim 1.
The Appellants argue on page 2 of the reply brief that
it is only obvious in view of Appellants' teachings that Kikuchi
could be combined with Azuma. Thus, the Appellants have raised
the question whether it is proper to combine Kikuchi and Azuma.
Appeal No. 95-2898
Application 08/053,193
7
The Federal Circuit states that "[t]he mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification." In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). The Federal Circuit reasons in
Para-Ordnance Mfg. Inc. v. SGS Importers Int’l Inc., 73 F.3d
1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert.
denied, 117 S.Ct. 80 (1996), that for the determination of
obviousness, the court must answer whether one of ordinary skill
in the art who sets out to solve the problem and who had before
him in his workshop the prior art, would have been reasonably
expected to use the solution that is claimed by the Appellants.
Furthermore, the test of obviousness is not whether features of a
secondary reference may be bodily incorporated into the primary
reference's structure, nor whether the claimed invention is
expressly suggested in any one or all of the references; rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Appeal No. 95-2898
Application 08/053,193
8
Upon reviewing Azuma carefully, we find that Azuma
teaches on page 5 that the claws hold the optical disk in three
locations and offer a disk adapter device that is able to secure
an optical disk firmly. By such a mechanically stable
arrangement, the disk adapter device prevents surface vibration
and waving and thereby prevents resonance. We find that Azuma
suggests to those skilled in the art that the Azuma claw and
spring arrangement holds the optical disk more firmly by pressing
the optical disk in a vertical direction to the stopper ledge.
Thus, from these teachings, those skilled in the art would have
been reasonably expected to use the Azuma solution by adding the
claw and spring holding arrangement to the Kikuchi center core
shown in Figure 5. Therefore, in view of this teaching of the
desirability of the modification that would have provided a
mechanically stable arrangement that prevents resonance, surface
vibrations and waving, we find that the Kikuchi and Azuma com-
bination would have been suggested by the prior art reference,
Azuma.
Finally, Appellants argue on page 2 of the reply brief
that the Kikuchi and Azuma combination fails to teach a plurality
of slits formed in the cylindrical wall for defining a first wall
Appeal No. 95-2898
Application 08/053,193
9
portion and for rendering said first wall portion flexible so
that the first wall portion is elastically displaced radially
inward to a deformed position to allow the center core to be
attached to said optical disk by passing the cylindrical wall and
the claws through the center hole of the optical disk until the
claws snap into position. As pointed out above, Kikuchi teaches
a plurality of slits 59 in Figure 5 for rendering the first wall
portion (the portion of the wall having 57 face) flexible so that
the first wall portion is elastically displaced radially inward
to a deformed position to allow the center core to attach to the
optical disk by passing the cylindrical wall through the center
hole of the optical disk. Furthermore, we note that the modified
Kikuchi center core having the Azuma claws would allow the claws
via the spring displacement to pass through the center hole of
the optical disk until the optical disk passes by and then the
claw would snap into place. Thus, we find that the Kikuchi and
Azuma combination teaches all of the limitations of the claims as
argued by Appellants and there are suggestions in the prior art
that would have led those skilled in the art to combine the
teachings of Kikuchi and Azuma. Therefore, we will sustain the
Examiner's rejection of claim 1.
Appeal No. 95-2898
Application 08/053,193
We note, with curiosity, that the examiner, for whatever5
reason, has dropped Azuma, employed in the rejection of claim 1
to teach a claw and stopper ledge arrangement for clamping a
disk, in this rejection.
10
With regard to claims 5, 10 and 11, the examiner relies
on Kikuchi in view of Ogusu, applying Kikuchi as above and5
adding Ogusu for the teaching of a disk cartridge device that
includes a cartridge with a shutter, window, central hole and a
pivoting lid. Appellants do not argue the claim limitations
relating to the cartridge structure.
Independent claim 5 recites “claws engaging the top
surface of said optical disk and being normally held in an
unstressed normal position in which said claws prevent said
center core from being extracted from said optical disk. . . .”
As pointed out supra, Kikuchi’s protrusions 56 do not engage the
top surface of the optical disk. Furthermore, Ogusu fails to
provide for the deficiencies noted regarding Kikuchi. Therefore,
we will not sustain the rejection of claims 5, 10 and 11 under 35
U.S.C. § 103.
In view of the foregoing, the decision of the Examiner
rejecting claim 1 under 35 U.S.C. § 103 is affirmed; however, the
Appeal No. 95-2898
Application 08/053,193
11
decision of the Examiner rejecting claims 5, 10 and 11 under 35
U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-2898
Application 08/053,193
12
KRASS, Administrative Patent Judge, Dissenting-in-Part:
While I agree that the rejection of claims 5, 10 and 11
under 35 U.S.C. § 103 should be reversed for the reasons set
forth by the majority, I would also reverse the rejection of
claim 1 under 35 U.S.C. § 103.
Claim 1 requires, inter alia, “claws formed in said
wall portion which project from said outside peripheral surface
of said cylindrical wall and which engage an upper surface of
said optical disc so as to clamp said optical disk between said
stopper ledge and said claws.”
The examiner identifies protrusions 56 in Figure 5 of
Kikuchi as the claimed “claws.” However, as the majority and the
examiner recognize, the protrusions 56 of Kikuchi do not engage
an upper surface of the optical disk. These protrusions aid in
gradually and firmly pushing the hub into the circular hole of
the disk by application of pressure [column 6, lines 51-52 of
Kikuchi] and hold the disk to the hub, or vice versa, but nowhere
in Kikuchi is there any suggestion of clamping the disk between a
stopper ledge and claws, as required by instant claim 1.
Appeal No. 95-2898
Application 08/053,193
13
The examiner turns to Azuma for the teaching of a claw
10 snapped into position over an upper disk surface and concludes
that it would have been obvious to “provide the hub of Kikuchi
with a snap action type hub as taught by Azuma” because “the
resilient snap action provides a secure fit while also allowing
for easy removal of the hub” [answer-pages 3-4].
The “claw” 10 of Azuma is actually a spring loaded
chucking mechanism that fits over the top surface of the disk
while protruding part 9 acts as a stopper ledge for effectively
clamping the disk. But, in any event, neither element 56 of
Kikuchi nor element 10 of Azuma is “formed in said wall portion”
and “project[ed] from said outside peripheral surface of said
cylindrical wall” in such a manner as to render “said first wall
portion flexible so that said first wall portion is elastically
displaced radially inwards to a deformed position to allow said
center core to be attached to said optical disk . . . ,” as
claimed.
The majority appears to take the teachings of Azuma
relating to the merits of clamping a disk [page 5 of the trans-
lation] by supporting its top surface as well as its bottom
Appeal No. 95-2898
Application 08/053,193
14
surface, i.e., to secure the disk firmly, mechanical stabil-
ity, etc., and applies the spring loaded mechanism shown in
Figure 1(c) of Azuma to Kikuchi in order to obtain the benefits
of Azuma. However, even if, arguendo, the artisan would have
been led to modify Kikuchi in this manner and even if, arguendo,
the artisan would have found it obvious to replace the three
protrusions 56 of Kikuchi with the spring loaded mechanism of
Azuma, it is my opinion that the claimed subject matter would
still not be reached.
Claim 1 calls for a cylindrical wall extending from the
bottom disk-shaped portion of the center core and a “stopper
ledge” projecting outwardly from an outside peripheral surface of
the wall and abutting on a lower surface of the optical disk. If
the spring-loaded mechanism of Azuma were to be incorporated in
Kikuchi, the bottom of the disk would rest on the bottom portion
9 of the spring-loaded mechanism in which case, this bottom
portion 9 would have to be the claimed “stopper ledge.” While
that interpretation might be reasonable, the last part of the
claim requires that the plurality of first wall portions each be
formed with one of the claws and that the plurality of second
Appeal No. 95-2898
Application 08/053,193
15
wall portions is each formed with the stopper ledge, the first
and second wall portions being alternately arranged. Of course,
the claim language does not preclude each wall portion from
having both a claw and a stopper ledge and, if the spring-loaded
mechanism of Azuma were applied in place of protrusions 56 in
Kikuchi, then the walls of Kikuchi which are formed by these
protrusions would have both a claw [element 10 of Azuma] and a
stopper ledge [element 9 of Azuma]. The problem, as I see it, is
that even as modified by the spring-loaded mechanism of Azuma,
each of the three boss walls 55, separated by slits and walls 58
having protrusions 56, would have neither a claw nor a stopper
ledge. If the walls 58 having protrusions 56 in Kikuchi are
considered the claimed “first wall portions each of which is
formed with one of said claws,” then walls 55 must be the claimed
“second wall portions.” However, the claim requires these
“second wall portions” to be formed “with said stopper ledge,”
and they would not be in the modified version of Kikuchi. If we
consider walls 58 to be the second wall portions, with walls 55
being the “first wall portions,” then there are no claws on the
“first wall portion” in the modified version of Kikuchi. The
problem comes about because only one of the first and second wall
Appeal No. 95-2898
Application 08/053,193
16
portions in the modified version of Kikuchi has both claw and
stopper ledge and the other of the first and second wall portions
has neither.
If one were to identify flange 52 of Kikuchi as the
stopper ledge which appears to be part of, or joined to, each of
the first and second wall portions in Kikuchi, as the majority
does, then one might argue, as the majority apparently does,
that now the second wall portions 55 (as well as the first wall
portions 58) in the modified version of Kikuchi are formed with a
stopper ledge while the first wall portions 58 are formed with
claws. The problem with this approach is that if Kikuchi is to
be modified by employing the spring-loaded mechanism of Azuma,
then the stopper ledge would be element 9 because this is the
portion on which the bottom surface of the disk will lie. If
flange 52 of Kikuchi is to be the stopper ledge, as identified by
the majority, then the bottom of the disk must lie thereon and
element 9 of the spring-loaded mechanism of Azuma may not be
employed. But, if element 9 is not to be employed, one is left
with the situation that Kikuchi is to be modified but only by
using the top portion 10 of the spring-loaded mechanism of Azuma.
However, without the bottom portion 9, the entire spring-loaded
Appeal No. 95-2898
Application 08/053,193
17
mechanism of Azuma would be inoperable and one may not dissect
a reference taking only so much of that reference as is needed
to anticipate or make obvious claimed subject matter while
completely ignoring the remainder of the teachings of that
reference.
Accordingly, in my view, even if one were to modify
Kikuchi by using the teachings of Azuma, the subject matter of
instant claim 1 would still not have been obvious under 35 U.S.C.
§ 103.
Since the applied references, alone or in combination,
do not suggest the structure of the center core, as claimed, it
appears to me that both the examiner’s rationale for combining
the spring-loaded chucking mechanism of Azuma with the hub of
Kikuchi in such a manner as to result in the claimed subject
matter and the majority’s finding of obviousness to do so are
based on appellants’ own disclosure rather than on anything
taught or suggested by the applied references. The improper use
of hindsight may not be a basis for a conclusion of obviousness
under 35 U.S.C. § 103.
I would reverse the examiner’s decision.
Appeal No. 95-2898
Application 08/053,193
18
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 95-2898
Application 08/053,193
19
Hill, Steadman & Simpson
85th Floor, Sears Tower
Chicago, IL 60606