Ex Parte Yao et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10103353 - (D) (B.P.A.I. Nov. 29, 2010)

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.
10/103,353 03/20/2002 Ming Gao Yao 4593-177 8666
23117 7590 11/30/2010
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KIM, PAUL D
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
11/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MING GAO YAO and MASASHI SHIRAISHI1
____________________

Appeal 2009-013095
Application 10/103,353
Technology Center 3700
____________________

Before JAMESON LEE, SALLY G. LANE, and DANIEL S. SONG,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is SAE Magnetics (H.K.) Ltd. (App. Br. 2).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013095
Application 10/103,353

2
The inventors (collectively “Appellant”) appeal under 35 U.S.C.
§ 134(a) from a Final Rejection of claims 1, 2, 5-10, 13-16, 22, 23 and 26-
29. We have jurisdiction over this appeal under 35 U.S.C. §§ 6(b) and
134(a).
The claimed invention is directed to a system and a method to couple
an actuator element to a suspension element in a magnetic hard disk drive.
Independent claim 1 is representative of the claimed invention and reads as
follows (App. Br. A-1, Claims App'x., emphasis added):
1. A system to couple an actuator element to a suspension
element comprising:
an actuator element to support a slider element and the
actuator element adapted to be physically supported by and
coupled to the suspension element by at least one application
site of a bonding agent, wherein upon the application of
bonding agent the actuator element remains generally parallel
to the suspension element and further comprising an
uninterrupted gap between the actuator element and the
suspension element.

Independent claim 9 differs from claim 1 in that it recites that the
suspension element is "adapted to physically support and be physically
coupled to the actuator element." (App. Br. A-2, Claims App'x.).
Independent claim 22 is directed to a method to couple an actuator element
to a suspension element and recites substantially similar limitations to those
in claim 1. (App. Br. A-3, Claims App'x.).
Appeal 2009-013095
Application 10/103,353

3
THE REJECTIONS3

The Examiner rejected claims 1, 2, 5, 9, 10, 13, 22, 23 and 26 under
35 U.S.C. § 102(e) as anticipated by Sluzewski (US 6,351,353 issued
February 26, 2002).
The Examiner rejected claims 6-8, 14-16 and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over Sluzewski.
We AFFIRM.

ISSUES
The issues raised in the present appeal are whether the Examiner erred
in finding that Sluzewski discloses:
1. Coupling an actuator element to a suspension element wherein
upon the application of bonding agent, the actuator element remains
generally parallel to the suspension element; and
2. An uninterrupted gap between the actuator element and the
suspension element.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Sluzewski discloses a slider assembly including a suspension
46, a micromotor package 44 supported by the suspension 46, a
slider 12 supported by the micromotor package 44, and solder

3 As explained in the Examiner's Answer, the rejection of claims 1, 2, 5-10,
13-16, 22, 23 and 26-29 under 35 U.S.C. § 112, ¶1, was withdrawn (Ans. 5).
Appeal 2009-013095
Application 10/103,353

4
bumps 72 between the suspension 46 and micromotor package
44 (col. 3, ll. 6-10 and 65-67; FIG. 2).
2. In Sluzewski, the micromotor package 44 is illustrated as being
parallel to the suspension 46 (FIG. 2).
3. A definition of the term "gap" is "a separation in space."
Merriam-Webster's Collegiate Dictionary 515 (11th ed. 2003).

PRINCIPLES OF LAW
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 or 35 U.S.C. § 103 begins with a
determination of the scope of the claim.
The Patent and Trademark Office determines the scope of the claims
in patent applications "not solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary skill in the art.'"
Phillips v. AWH Corp., 415 F.3d 1303, 1316-17 (Fed. Cir. 2005) (en banc)
(citation omitted). An applicant is permitted to define specific terms used to
describe the invention by setting forth a definition for terms with reasonable
clarity, deliberateness and precision. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). If claim language carrying a narrow meaning is absent, we
limit the claim based on the specification if there is an express disclaimer of
the broader definition therein. See In re Bigio, 381 F.3d 1320, 1325 (Fed
Appeal 2009-013095
Application 10/103,353

5
Cir. 2004). Particular embodiment appearing in the written description must
not be read into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) ("Though understanding the claim language may be
aided by the explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.")

ANALYSIS
The Examiner rejected claims 1, 2, 5, 9, 10, 13, 22, 23 and 26 as
lacking novelty over Sluzewski, contending that Sluzewski discloses each
and every limitation recited in these claims (Ans. 3).
Claim 1 recites, inter alia, that "upon the application of bonding agent
the actuator element remains generally parallel to the suspension element
and further comprising an uninterrupted gap between the actuator element
and the suspension element." (Emphasis added). The Examiner finds that
Sluzewski discloses that the micromotor package 44 "remains generally
parallel to" the suspension 46 upon the application of the bonding agent
(Ans. 3; FIG. 2; FF 1 & 2). The Examiner also finds that in Sluzewski's
head assembly, the space between two consecutive solder bumps 72 located
between the micromotor package 44 and suspension 46 is an "uninterrupted
gap" as claimed (Ans. 5).
Appeal 2009-013095
Application 10/103,353

6
The Appellant contends that Sluzewski does not teach a head
assembly "wherein upon the application of the bonding agent the actuator
element remains generally parallel to the suspension element." (App. Br. 7).
The Appellant also contends that Sluzewski does not disclose a system
"comprising an uninterrupted gap between the actuator element and the
suspension element," as recited in claim 1 (App. Br. 7; Reply Br. 2). In this
regard, the Appellant contends that Figure 2 of Sluzewski shows that any
gap between the element 44 and the element 46 "are clearly interrupted by
the bonding agent (72) in multiple (3) places." (App. Br. 7-8; Reply Br. 2).
Initially, we note that claim 1 does not specify the meaning of the
term "remains generally parallel." For example, claim 1 does not specify the
length of time, and under what particular conditions, the recited generally
parallel relationship is maintained between the actuator element and
suspension element upon application of the bonding agent. Nor has the
Appellant set forth a specific definition of the pertinent limitation in the
specification. There is also no persuasive basis or evidence for us to find
that the illustrated parallel relationship between the micromotor package 44
and suspension 46 in Figure 2 of Sluzewski will not remain "generally
parallel," for example, for at least some amount of time prior to extended
operation of the head assembly. Claim 1 simply does not include any
limitations that set forth parameters under which the recited "generally
parallel" relationship must remain, and the Appellant has not provided any
persuasive evidence to distinguish Sluzewski in this respect. Accordingly,
we agree with the Examiner's finding that Sluzewski fully meets this
claimed limitation.
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7
The Appellant's contention that Sluzewski does not disclose "an
uninterrupted gap between the actuator element and the suspension element"
(App. Br. 8; Reply Br. 2) is also not persuasive. The Appellant contends
that:
[T]he term 'specific gap', and the description 'should be
consistent along the length of the micro-actuator', along with
the exemplary embodiments illustrated in Figure 7A, 7B, 7C,
7D, 8A, 8B, 8C, and 8D (each including an illustration of an
uninterrupted gap) in combination reasonably convey to one of
ordinary skill in the art the subject matter of the limitation
'further comprising an uninterrupted gap between the actuator
element and the suspension element' as described in claim 1, 9
and 22.

(App. Br. 6) (emphasis in original).
In interpreting the meaning of the term "uninterrupted gap," the
Examiner explains that the claim "does not specify the extent of the
uninterrupted gap between the actuator element and the suspension
element," and the claims have been given their broadest reasonable
interpretation (Ans. 5). We find no error in the Examiner's finding that
Sluzewski discloses an uninterrupted gap.
Claim 1 merely requires that the system "comprise[] an uninterrupted
gap between the actuator element and the suspension element." Claim 1
does not specify any particular extent of this gap, specify how it is defined,
or recite that the gap extends uninterrupted in any particular direction for a
particular length. The term "uninterrupted gap" is not found in, and thus is
not defined or limited by, the original disclosure so as to preclude a broad
definition. In re Bigio, 381 F.3d at 1325.
Appeal 2009-013095
Application 10/103,353

8
As to the above-quoted language from the Appellant's Specification,
the Specification describes that "[t]his gap 706 should be consistent along
the length of the micro-actuator 702 (micro-actuator should be parallel to
suspension tongue)." (Spec. p. 6, ll. 22-23) (emphasis added). The
parenthetical description pertains to the meaning of "a specific gap 706" in
the embodiment shown in Figures 7A to 7D. However, such language is not
present in the claims and we decline to import limitations of an embodiment
into the claim. See Superguide Corp., 358 F.3d at 875. Moreover, such
language still does not distinguish Sluzewski, which discloses that the
micromotor package 44 is parallel to the suspension 46 as discussed supra
so that the gap there between is consistent along their length (Ans. 5; FF 2;
FIG. 2).
Neither the claim language nor the Specification requires the gap to be
a three-dimensional space that is defined by the entire surface of the
micromotor package 44 and the entire opposed surface of the suspension 46,
and that such defined gap is devoid of any structure therein. Sluzewski
illustrates a gap, that is, a separation in space (FF 3) extending uninterrupted
between the solder bumps (FF 2; FIG. 2). Sluzewski's gaps are shown to
also extend uninterrupted between the micromotor package 44 and the
suspension 46 along the micromotor package 44 in the direction
perpendicular to the plane of Figure 2, that is, extending uninterrupted in and
out of the page. Furthermore, we understand the solder bumps to be small,
oval structures (see, e.g., Fig. 6). As such, one of ordinary skill in the art
would understand Sluzewski as also disclosing an uninterrupted gap in front
Appeal 2009-013095
Application 10/103,353

9
of and behind the solder bumps. Hence, we agree with the Examiner that the
Sluzewski describes a system "comprising an uninterrupted gap."
In view of the above, we sustain the Examiner's anticipation rejection
of claim 1, as well as of claims 2 and 5, which depend therefrom. The
Appellant relies on the same arguments set forth with respect to independent
claim 1 for patentability of independent claims 9 and 22. Thus, we find no
error in the Examiner's rejection of claims 9 and 22 for the reasons discussed
supra with respect to claim 1. Therefore, we also sustain the rejection of
claims 9, 10, 13, 22, 23 and 26.
As to the rejection of dependent claims 6-8, 14-16 and 27-29 under 35
U.S.C. § 103(a) over Sluzewski, the Appellant merely argues that Sluzewski
fails to disclose or suggest all of the limitations of independent claims 1, 9
and 22, and that these dependent claims are allowable for depending on an
allowable base claim. However, as discussed supra, we agree with the
Examiner's anticipation rejection of claim 1. Hence, we sustain this
rejection as well.

CONCLUSION
1. The Examiner did not err in finding that Sluzewski discloses
coupling an actuator element to a suspension element, wherein upon the
application of bonding agent, the actuator element remains generally
parallel to the suspension element.
2. The Examiner did not err in finding that Sluzewski discloses an
uninterrupted gap between the actuator element and the suspension element.

Appeal 2009-013095
Application 10/103,353

10
DECISION
The Examiner's rejections of claims 1, 2, 5-10, 13-16, 22, 23 and 26-
29 are 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).

AFFIRMED

ack

cc:

NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203