Ex parte Williams et al.

Board of Patent Appeals and Interferences

Aug 11, 1998

08253618 (B.P.A.I. Aug. 11, 1998)

Application for patent filed June 3, 1994. According to1
appellants, this application is a continuation of Application
08/032,411, filed March 15, 1993, now abandoned; which is a
division of Application 07/915,032, filed July 16, 1992, now
abandoned; which is a continuation of Application 07/424,667,
filed October 20, 1989, now abandoned.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROGER O. WILLIAMS, JIMMY D. GODWIN,
STEPHEN P. WILLIAMS, MARK E. STRYSKO,
ALTON B. OTIS and ANDREW M. ROSE
__________
Appeal No. 96-0663
Application No. 08/253,6181
__________
ON BRIEF
__________
Before THOMAS, KRASS and FLEMING, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
Appeal No. 96-0663
Application No. 08/253,618
2
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 14, 17 and 18. Claims 1 through 13, 15 and 16 have been
canceled.
The invention pertains to a method for writing to very high
track density as well as to conventional track density floppy
disks.
Representative independent claim 14 is reproduced as
follows:
14. A method for writing separated, concentric data tracks
on a floppy disk with a magnetic core with a write element and no
separate trim erasure elements, the method comprising:
determining whether a high-capacity floppy disk with
optical servo tracks is present or a lower-capacity floppy disk
without optical servo tracks is present, and if said high-
capacity floppy disk is present, restricting the subsequent steps
of positioning such that a subsequent step of reading or writing
data is limited to data recording areas between said optical
servo tracks;
positioning a magnetic core in a first radial position
relative to a surface of a rotating floppy disk on a first
revolution by use of both a stepper motor attached to a base
carriage that carries said magnetic core on a fine position
actuator attached to a voice coil motor, wherein a positioning
sensor attached to said fine position actuator and a reflective
pad attached to a shunt attached to a magnet that moves with said
base carriage is utilized to control movement of said fine
position actuator and when said fine position actuator moves
relative to said reflective pad to reflect light emitted from
said positioning sensor off said reflective pad to be collected
by said positioning sensor and converted to a signal which
controls movement of said fine position actuator, and wherein
Appeal No. 96-0663
Application No. 08/253,618
3
said reflective pad provides a linear reflectance signal over a
range of approximately 0.075 inches;
creating a first erased region on said floppy disk surface
by operating a write element of the magnetic core in an erase
mode while the magnetic core remains in said first radial
position and said floppy disk is rotated through at least part of
one whole rotation of said floppy disk;
moving the magnetic core to a second radial position
neighboring said first radial position on a second revolution of
said floppy disk approximately two mils from said first position
with said voice coil motor wherein said fine position actuator
moves relative to said base carriage;
creating a second erased region longitudinally aligned with
and radially displaced from said first erased region, by
operating said write element in an erase mode while the magnetic
core remains in said second radial position and said floppy disk
is rotated through said revolution of said floppy disk;
moving the magnetic core to a third position on a third
revolution of said floppy disk with said position sensor and said
voice coil motor to position said fine position actuator relative
to said base carriage, wherein said write element of the magnetic
core is radially aligned midway between said first and second
erased regions; and
writing a track of data longitudinally aligned with and
between said first and second erased regions that overwrites a
radial portion of both said first and second erased regions,
wherein a pair of erased blank areas result on either radial side
of said written data track that are each radially narrower than
said written data track and separate said written data track from
any adjacent data tracks.
Appeal No. 96-0663
Application No. 08/253,618
4
The examiner relies on the following references:
Bartlett et al. (Bartlett) 4,928,192 May 22, 1990
(filed Dec. 23, 1987)
Nigam 4,933,795 Jun. 12, 1990
(filed Dec. 7, 1987)
Williams et al. (Williams) 4,969,058 Nov. 6, 1990
(filed Nov. 10, 1988)
Claims 14, 17 and 18 stand rejected under 35 U.S.C. 103.
As evidence of obviousness, the examiner cites Nigam, Williams
and Bartlett.
Claims 14, 17 and 18 stand further rejected under
obviousness-type double patenting over claim 22 of Williams in
view of Nigam and Bartlett.
Reference is made to the brief and answer for the
respective positions of appellants and the examiner.
OPINION
We will not sustain the rejections in this case because it
is clear to us that the examiner has failed to establish a prima
facie case with respect either to obviousness or to obviousness-
type double patenting.
The instant claims are drawn to fairly detailed methods.
Yet the examiner has merely pointed to a few structural features
of Nigam, without even pointing out to which instant claimed
Appeal No. 96-0663
Application No. 08/253,618
5
steps such features are intended to correspond, suggests that the
only deficiency of Nigam is a failure to disclose magnetic
recording with optical servo tracks or a dual actuator system or
detecting whether a high density or low density disk is present
and concludes that Williams’ disclosure of an optical servo
track, utilizing a dual actuator configuration, and that
Bartlett’s means to detect a type of disk resident in the disk
drive, taken together with Nigam, would have made the subject
matter of claims 14, 17 and 18 obvious, within the meaning of 35
U.S.C. 103.
Similarly, the examiner concludes that the combination of
Nigam and Bartlett, taken together with claim 22 (which depends
from claims 16 and 21) of Williams would have made the instant
claimed subject matter obvious with regard to an obviousness-type
double patenting rejection.
Appellants appear to argue that prior art describing
structure cannot be properly applied against a method claim. If
this is what appellants mean, we do not agree that this is always
the case. There may very well be instances where the mere
disclosure of a certain structure would clearly suggest a
particular method. But, clearly, the instant case is not such an
instance.
Appeal No. 96-0663
Application No. 08/253,618
6
Claims 14, 17 and 18 set forth, in great detail, particular
methods for writing data tracks on a floppy disk. Without hereat
repeating the many and varied steps included in the claimed
methods, suffice it to say that in the face of such detailed
method steps, the examiner may not point generally to prior art
structure and conclude that the claimed methods would have been
obvious. The burden, in the first instance, is with the examiner
to establish a prima facie case of obviousness, whether it be
with regard to 35 U.S.C. 103 or obviousness-type double
patenting.
At the very least, and as a matter of fair play, the
examiner should point out how he considers each and every step of
the claimed methods to read on, or be suggested by, the applied
references so that appellants are given an opportunity to
understand the examiner’s position and to respond thereto. The
examiner has not done this and we will not speculate as to the
correspondence between the claimed steps of appellants’ methods
and the structure of the applied references. The examiner has
offered nothing in the way of pointing out how the prior art
structures are deemed to perform the method steps, as claimed.
Even in the face of appellants’ arguments in this regard,
the examiner offers no response, save at page 6 of the answer,
Appeal No. 96-0663
Application No. 08/253,618
7
wherein the examiner states that he “believes the rejections
should be maintained based solely on the rejections themselves as
provided above.”
We do not necessarily maintain that no prima facie case of
obviousness under 35 U.S.C. 103 or obviousness-type double
patenting of the instant claimed subject matter can be made in
view of the disclosures of the applied references, only that the
examiner has not done so.
Since the examiner has clearly fallen far short of making
out a prima facie case of obviousness of the claimed subject
matter by failing to address the specific steps of the claimed
methods, we will not sustain either the rejection of claims 14,
17 and 18 under 35 U.S.C. 103 or the rejection of these claims
under obviousness-type double patenting.
Appeal No. 96-0663
Application No. 08/253,618
8
The examiner’s decision is reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge)
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge)
Appeal No. 96-0663
Application No. 08/253,618
9
Thomas E. Schatzel
16400 Lark Avenue
Suite 300
Los Gatos, CA 95032