Ex Parte Yeakley et al

Patent Trial and Appeal Board

Feb 27, 2018

14287415 (P.T.A.B. Feb. 27, 2018)

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.
14/287,415 05/27/2014 DARRYL WAYNE YEAKLEY ORA140439-US-NP 8868
81505 7590
ORACLE
(Oracle formerly d/b/a Sun Microsystems)
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
RENNER, CRAIG A
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
ptomail @ mfblaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRYL WAYNE YEAKLEY and
FRANK A. GOODKNIGHT
Appeal 2016-007673
Application 14/287,415
Technology Center 2600
Before JASON V. MORGAN, JEREMY J. CURCURI, and
BARBARA A. BENOIT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—11 and 26—29. Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
Claims 1, 2, 6—9, and 29 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Hartramph (US 6,037,739; Mar. 14, 2000). Final Act. 3—5.
Claims 3—5 are rejected under 35 U.S.C. § 103 as obvious over
Hartramph and Benner, Jr. (US 8,254,045 Bl; Aug. 28, 2012). Final Act. 6—
8.
Claim 10 is rejected under 35 U.S.C. § 103 as obvious over
Hartramph and Yeakley (US 8,422,173 B2; Apr. 16, 2013). Final Act. 8—9.
Appeal 2016-007673
Application 14/287,415
Claim 11 is rejected under 35 U.S.C. § 103 as obvious over
Hartramph, Yeakley and Official Notice. Final Act. 9—10.
Claims 26—28 are rejected under 35 U.S.C. § 103 as obvious over
Hartramph and Denne (US 5,440,183; Aug. 8, 1995). Final Act. 10-11.
We affirm.
STATEMENT OF THE CASE
Appellants’ invention relates to “linear actuators or voice coil
actuators that are used to position tape heads relative to recording media in
tape and disk drives.” Spec. 11. Claim 1 is illustrative and reproduced
below:
1. A linear actuator, comprising:
a housing including a body, wherein the body includes an
opening and an inner surface surrounding the opening;
an electrically conductive coil disposed within the
opening, wherein the electrically conductive coil includes a first
part that is wound in a rotary direction about an axis and a
second part that is wound in the rotary direction about the axis;
and
a magnet disposed within the opening, wherein the
magnet includes a first pole on a first axial end of the magnet
and a second pole on a second axial end of the magnet;
wherein one of the electrically conductive coil and
magnet is non-movably attached to the inner surface of the
body, and wherein the other of the electrically conductive coil
and magnet is linearly movable relative to the inner surface of
the body and the one of the electrically conductive coil and
magnet along the axis; and
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Application 14/287,415
wherein transmission of an electric current through the
first part of the electrically conductive coil in a first current
flow direction about the axis and simultaneously through the
second part of the electrically conductive coil in a second
current flow direction about the axis induces the linear
movement of the other of the electrically conductive coil and
magnet, wherein the first current flow direction is opposite to
the second current flow direction.
ANALYSIS
The Anticipation Rejection of Claims 1,2,6-9, and 29 by Hartramph
The Examiner finds Hartramph describes all limitations of claim 1.
Final Act. 3^4; see also Ans. 2-4.
Appellants present the following principal argument:
Claim 1 recites first and second parts wound in the same rotary
direction about the axis (see Appellant’s Fig. 4, upper coil part 174 and
lower coil part 175), while Hartramph discloses first and second parts wound
in opposite (different) rotary directions about the axis (see Hartramph’s Fig.
1, upper coil part near the south pole of magnet 1 and lower coil part near
the north pole of magnet 1). See App. Br. 4—6; see also Reply Br. 2-4.
Appellants characterize the Examiner’s position:
[T]he Examiner takes the position that the first/top coil part of
Hartramph (near the south pole of magnet in Figure 1 of
Hartramph) is wound in a clockwise direction when looked down
upon in a direction from top to bottom and that the
second/bottom coil part of Hartramph (near the north pole of the
magnet) is also wound in the clockwise direction when looked
down upon, but in a direction from bottom to ton (rather than
from top to bottom) which allegedly anticipates the claim.
App. Br. 4.
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Application 14/287,415
However, Appellants argue that the Examiner’s position is based on
an unreasonable claim construction:
[0]ne of ordinary skill in the art at the time of the present
invention would also understand that first and second coil parts
that are recited as being both wound in the same rotary direction
about an axis as in independent claim 1 means that the first and
second coil parts are both wound in the same rotary direction in
the same direction along the axis (i.e., either from the top to the
bottom or from the bottom to the top, but not both).
App. Br. 6.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
First, then, we must construe the phrase “a first part that is wound in a
rotary direction about an axis and a second part that is wound in the rotary
direction about the axis,” as recited in claim 1. See In re Geerdes, 491 F.2d
1260, 1262 (CCPA 1974) (“Before considering the rejections . . ., we must
first [determine the scope of] the claims”).
In this regard, Appellants’ Specification discloses the following:
For instance [in Figure 4], the electrically conductive coil 172
may be fixed or otherwise secured to the inner surface 168 of the
body 164 in any appropriate manner. Furthermore, the
electrically conductive coil 172 includes a first (e.g., upper)
portion or part 174 and a second (e.g.[,] lower) portion or part
175 that are wound in the same rotary direction about the axis
156, axially aligned along the axis 156, and separated or spaced
by any appropriate coil spacer 176 (e.g., in the shape of a disk or
washer and constructed of plastic or other non-electrically and
non-magnetically conductive material).
Spec. 129; see also Spec. 17 (“Winding the first and second parts of the
electrically conductive coil in the same rotary direction about the axis can
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Appeal 2016-007673
Application 14/287,415
advantageously simplify the manufacturing process as compared to linear
actuators having oppositely wound coil portions.”)
That is, the Specification discloses the first and second coil parts
would in the same rotary direction when viewed in the same direction along
the axis.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). Additionally, “[tjhough 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.” See SuperGuide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004).
Further in this regard, the Examiner finds “[t]he claims currently do
not recite that ‘the first and second coil parts are both wound in the same
rotary direction [when viewed] in the same direction along the axis.’” Ans.
4.
We agree with the Examiner and decline to import limitations from
the Specification into the claim. We construe the phrase “a first part that is
wound in a rotary direction about an axis and a second part that is wound in
the rotary direction about the axis” as not requiring the first and second coil
parts to be wound in the same rotary direction when viewed in the same
direction along the axis.
Given our construction, we review the Examiner’s findings that
Hartramph describes all limitations of claim 1. As shown in Hartramph’s
Fig. 1, Hartramph discloses first and second parts wound about the axis.
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The upper coil part near the south pole of magnet 1, when following the
winding from top to bottom, is wound in the same direction as the lower coil
part near north pole of magnet 1, when following the winding from bottom
to top. Appellants are not without recourse because Appellants are free to
amend their claims to require the first and second coil parts are both wound
in the same rotary direction when viewed in the same direction along the
axis. Had claim 1 included such a recitation, we would not have sustained
the Examiner’s rejection based on the evidence of the current record.
In reaching our decision, we also acknowledge the disclosure in
Hartramph:
The coil system (3) consists of two identical serially arranged
partial coils in the permanent excited magnetic field in a direction
of winding opposite to each other. The coil system is illustrated
in FIG. 1 schematically as a one layer system, whereby the
reverse of winding direction is indicated by the different
direction of the coil current.
Hartramph col. 4,11. 24—29.
However, this disclosure does not change our decision because we
decline to import limitations from the Appellants’ Specification into the
claim.
We, therefore, sustain the Examiner’s rejection of claim 1. We also
sustain the Examiner’s rejection of claims 2, 6—9, and 29, which are not
separately argued with particularity.
The Obviousness Rejection of Claims 3-5 over Hartramph and
Benner, Jr.
Appellants argue “Benner does not remedy any of the deficiencies of
Hartramph in relation to independent claim 1.” App. Br. 6.
For reasons discussed above, we find Hartramph is not deficient.
We, therefore, sustain the Examiner’s rejection of claims 3—5.
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The Obviousness Rejection of Claim 10 over Hartramph and Yeakley
Appellants argue “Yeakley does not remedy any of the deficiencies of
Hartramph in relation to independent claim 1.” App. Br. 7.
For reasons discussed above, we find Hartramph is not deficient.
We, therefore, sustain the Examiner’s rejection of claim 10.
The Obviousness Rejection of Claim 11 over Hartramph, Yeakley
and Official Notice
Appellants argue “Yeakley and the Examiner’s Official Notice do not
remedy any of the deficiencies of Hartramph in relation to independent
claim 1.” App. Br. 7.
For reasons discussed above, we find Hartramph is not deficient.
We, therefore, sustain the Examiner’s rejection of claim 11.
The Obviousness Rejection of Claims 26-28 over Hartramph and
Denne
Appellants argue “Denne does not remedy any of the deficiencies of
Hartramph in relation to independent claim 1.” App. Br. 7.
For reasons discussed above, we find Hartramph is not deficient.
We, therefore, sustain the Examiner’s rejection of claims 26—28.
DECISION
The Examiner’s decision rejecting claims 1—11 and 26—29 is 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)(1).
AFFIRMED
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