Ex Parte YAO et al

Board of Patent Appeals and Interferences

Jul 10, 2012

11750248 (B.P.A.I. Jul. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MING GAO YAO, MASASHI SHIRAISHI, and YI RU XIE
_____________

Appeal 2010-001677
Application 11/750,248
1

Technology Center 2600
______________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1
This application is related to application 11/375,966 (Appeal 2009-
008921).
Appeal 2010-001677
Application 11/750,248

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 10 and 20 through 29.
We affirm-in-part.

INVENTION
The invention is directed to the assembly of a hard disk drive. See
page 1 and Figures 5-10 of Appellants’ Specification. Claim 1 is reproduced
below:
1. A method of assembling a hard disk drive device comprising:
directly attaching a first section of a casing for the hard disk
drive device to at least one disk for data storage and at least one
component for rotating said at least one disk; and
directly attaching an opposing section of the casing for the hard
disk drive device to a component for at least one of reading data from
and writing data to said at least one disk,
wherein said at least one disk for data storage and at least one
component for rotating said at least one disk are exclusively directly
attached to a surface of the first section, and said
component for at least one of reading data from and writing
data to said at least one disk is exclusively directly attached to a
surface of the opposing section.

REFERENCES
Price US 6,560,075 B2 May 6, 2003
Yoshida JP 04351765 A Dec. 7, 1992

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Application 11/750,248

3

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 2, 5 through 10, 20, 21, and 24
through 29 under 35 U.S.C. § 102(e) as being anticipated by Price. The
Examiner’s rejection is on pages 3 through 5 of the Answer.
2

The Examiner has rejected claims 1, 2, 5, 7 through 10, 20, 21, 24,
and 26 through 29 under 35 U.S.C. § 102(b) as being anticipated by
Yoshida. The Examiner’s rejection is on pages 5 and 6 of the Answer.
The Examiner has rejected claims 3, 4, 22, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Price. The Examiner’s rejection is on
pages 6 and 7 of the Answer.
The Examiner has rejected claims 3, 4, 22, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Yoshida. The Examiner’s rejection is
on pages 7 and 8 of the Answer.

Rejections based on Price
ISSUE
Appellants’ contentions, on pages 5 through 7 of the Brief
3
with
respect to the rejections based upon Price present us with the issue: did the
Examiner err in finding that Price teaches a component for rotating a disk
exclusively directly attached to a first section and a component for reading

2
Throughout this decision we refer to the Examiner’s Answer mailed
August 20, 2009.
3
Throughout this decision we refer arguments made in the Brief filed on
June 8, 2009 and the Reply Brief filed September 29, 2009.
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Application 11/750,248

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data from and writing data to said disk exclusively directly attached to said
opposing section?

ANALYSIS
Appellants’ arguments have persuaded us that the Examiner erred in
rejecting claims 1, 2, 5 through 10, 20, 21, and 24 through 29 as being
anticipated by Price. Independent claim 1 recites that a component for
rotating the disk is exclusively directly attached to the first section and that a
component for reading and writing data from the disk is exclusively directly
attached to the opposing section. Independent claim 20 includes similar
limitations.
The Examiner finds Figure 15 of Price depicts the spindle shaft for the
disk is exclusively mounted to the lower casing item 1526. Answer 15. The
Examiner further finds that Figure 15 depicts a spindle shaft item 1520 for a
read write assembly exclusively mounted on the upper casing item 1524.
Answer 15. The Examiner states that although shaft 1520 is also supported
by shaft 1522 (which is mounted to the lower casing item 1526), it is
nonetheless mounted to the upper casing. We disagree. Shaft 1520 is
mounted to the upper casing and the lower casing, via shaft 1522, thus Price
does not anticipate the claim. Accordingly, we will not sustain the
Examiner’s rejection of claims 1, 2, 5 through 10, 20, 21, and 24 through 29
under 35 U.S.C. § 102(e) as being anticipated by Price, or claims 3, 4, 22,
and 23 under 35 U.S.C. § 103(a) as being unpatentable over Price.

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Application 11/750,248

5

Rejections based upon Yoshida
ISSUE
Appellants’ contentions, on page 7 of the Brief, with respect to the
rejections based upon Yoshida present us with the issue: did the Examiner
err in finding that Yoshida teaches a section of the casing comprising
components for reading and writing data from the disk which are exclusively
directly attached to a section of the casing?

ANALYSIS
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Yoshida teaches a section of the casing comprising
components for reading and writing data from the disk which are exclusively
mounted on the section of the casing. The Examiner finds that Yoshida
teaches a disk drive in a two piece casing, section 1 and section 3 as shown
in Figures 1-10. Answer 5. Section 1 includes the disk and associated
components, and section 3 includes items 11, 13, and 14 (sub base, support
spring, and arm) which are components for reading and writing from the
disk. Answer 56. We concur with these findings by the Examiner; we note
that in Figure 1 item 12, which is identified as the head, is also part of the
assembly. Appellants assert that section 3 does not comprise components
11, 13, and 14. We disagree. It is apparent from Figures 1 through 10 of
Yoshida that these components are mounted to a shaft which is mounted to
item 3, thus the assembly, of which item 3 is a part, comprises all of these
components which function to read and write to the disk. Accordingly,
Appellants have not persuaded us of error in the Examiner’s rejection of
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claims 1, 2, 5, 7 through 10, 20, 21, 24, and 26 through 29
4
under 35 U.S.C.
§ 102(b) as being anticipated by Yoshida or the Examiner’s rejection of
claims 3, 4, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over
Price.

CONCLUSION
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of:
1) Claims 1, 2, 5 through 10, 20, 21, and 24 through 29 under 35
U.S.C. § 102(e) as anticipated by Price;
2) Claims 3, 4, 22, and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Price.

However, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of:
1) Claims 1, 2, 5, 7 through 10, 20, 21, 24, and 26 through 29 under
35 U.S.C. § 102(b) as being anticipated by Yoshida;

4
We note that the Examiner has not rejected claims 6 and 25 under Yoshida,
it is unclear what limitation in claims 6 and 25 is not taught or is obvious
over Yoshida as the Examiner’s logic to reject claims 6 and 25 over Price
appears to apply to Yoshida also (i.e. the read write arms of Yoshida are
between the disks and vice versa, which appears to meet the claim as they do
in Price). Any further action by the Examiner should include (a) an
explanation of why a combination of these references fails to meet the
requirements of claims 6 and 25, or (b) a rejection based thereon.
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2) Claims 3, 4, 22, and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Yoshida.

ORDER
The decision of the Examiner to reject claims 1 through 10 and 20
through 29 is affirmed.
The decision of the Examiner to reject claims 6 and 25 is reversed.

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-IN-PART

ELD