Ex Parte Slezak

Patent Trial and Appeal Board

Nov 19, 2012

09981556 (P.T.A.B. Nov. 19, 2012)

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.
09/981,556 10/17/2001 Arnold G. Slezak P1535US01 6786
7590 11/20/2012
Fellers, Snider, et al
Bank One Tower
100 N. Broadway,
Ste. 1700
Oklahoma City, OK 73102-8820
EXAMINER
TUGBANG, ANTHONY D
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
11/20/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARNOLD G. SLEZAK
____________

Appeal 2012-002804
Application 09/981,556
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Arnold G. Slezak (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1, 3, 5-9, and 21-24. Claims 2,
4, 10-20, and 30-33 are canceled, and claims 25-29 are withdrawn from
consideration. An oral hearing was held on November 8, 2012. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2012-002804
Application 09/981,556

2
We REVERSE.
THE INVENTION
Appellant’s claimed invention relates to “methods for reducing servo
pattern runout for the disc drive.” Spec. 1, ll. 8-9. Claim 1, reproduced
below, is the sole independent claim on appeal and is representative of the
subject matter on appeal.
1. A method comprising:
placing a plurality of prewritten discs, each prewritten
disc having servo tracks characterized by a concentricity offset
in a direction of an alignment axis that is in the same angular
direction for all of the plurality of prewritten discs in relation to
a center of the respective prewritten disc, around a motor hub,
the prewritten discs placed around the motor hub with respect
to each other so that the alignment axes among the plurality of
prewritten discs are angularly disposed symmetrically around
the motor hub; and
after the placing step, biasing each of the plurality of
prewritten discs in a direction of the respective alignment axis
to concentrically align the servo tracks of a first disc of the
plurality of prewritten discs with the servo tracks of a second
disc of the plurality of prewritten discs.
PROCEDURAL HISTORY
This application came before the Board in prior appeal 2009-000747.
In the prior appeal, the Board entered a new ground of rejection against
then-pending claims 1, 3, 5-9, and 21-24 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Prior Decision, dated Aug. 31, 2009. The
Board determined that the step in independent claim 1 calling for “placing
prewritten discs, each characterized by servo tracks that are offset in relation
Appeal 2012-002804
Application 09/981,556

3
to a common angular reference axis of each disc, around a motor hub, the
prewritten discs placed with respect to each other disposing the angular
reference axes symmetrically around the motor hub” was indefinite because
“[t]he Specification does not describe the Appellant’s invention in terms of a
‘common angular reference axis,’ and a person of ordinary skill in the art
would not understand what axis is being referred to.” Prior Decision at 4-5.
The Board reversed the prior art rejections without reaching the merits of the
rejections because they were necessarily based on speculative assumptions
as to the meaning of the claims. Prior Decision at 3. Appellant
subsequently amended the language of claim 1 that served as the basis for
the Board’s determination of indefiniteness. The Examiner then rejected the
amended claims, and the present appeal ensued.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1, 3, 5-9, and 21-24 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1, 3, 5-9, and 21-24 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
3. Claims 1, 3, 5-7, and 9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Kuroba (US 6,081,990; iss. Jul. 4, 2000).
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kuroba and Ogawa (JP 5-205442 A; pub. Aug. 13, 1993).
Appeal 2012-002804
Application 09/981,556

4
ISSUES
The issues presented by this appeal are:
Is the Examiner’s interpretation of “alignment axis” as encompassing
an axis that can be perpendicular to the surface of the disc unreasonably
broad?
Is the subject matter of independent claim 1 that calls for “the
prewritten discs placed around the motor hub with respect to each other so
that the alignment axes among the plurality of prewritten discs are angularly
disposed symmetrically around the motor hub” adequately supported by the
original disclosure?
Would those skilled in the art understand what is encompassed by the
limitation of claim 1 that calls for “each prewritten disc having servo tracks
characterized by a concentricity offset in a direction of an alignment axis
that is in the same angular direction for all of the plurality of prewritten discs
in relation to a center of the respective prewritten disc” when the claim is
read in light of the Specification?
ANALYSIS
Claim Construction
Each rejection is based on an interpretation of “alignment axis” as
broadly encompassing an axis that can be perpendicular to the surface of the
disc. Ans. 9-10. We construe the relevant claim language at the outset to
serve as a basis for our review of the rejections.
The Examiner’s interpretation of “alignment axis” improperly
overlooks the context of the surrounding words of the claim. “[T]he claims
Appeal 2012-002804
Application 09/981,556

5
themselves provide substantial guidance as to the meaning of particular
claim terms.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
(en banc) (citation omitted). See also ACTV, Inc. v. Walt Disney Co., 346
F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of
the claim also must be considered in determining the ordinary and customary
meaning of those terms”) (cited with approval in Phillips, 415 F.3d at 1314).
While the Patent and Trademark Office (“PTO”) gives claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art, the PTO cannot ignore the
surrounding claim language in making such an interpretation. See Phillips,
415 F.3d at 1316.
Claim 1 defines that the servo tracks prewritten on the discs are
“characterized by a concentricity offset in a direction of an alignment axis.”
As such, the surrounding claim language defines the alignment axis as being
in the direction of the concentricity offset of the servo tracks that have been
prewritten on the discs. The concentricity offset is depicted in Figure 2,
where it is shown that the center of the lines of concentricity of the servo
track pattern is offset from the center of the disc in a direction in the plane of
the disc. As such, the Examiner’s interpretation of “alignment axis” as
encompassing an axis that can be perpendicular to the surface of the disc is
overly broad in view of the claim language.
We recognize that the claim is to be interpreted in light of the
Specification, and we further recognize that Appellant’s Specification does
not use the words “alignment axis” to describe the invention. Rather, the
Appeal 2012-002804
Application 09/981,556

6
Specification describes an “alignment mark” located “at a same angular
position as a disc-to-hub contact point 138” and “aligned with a biasing
force 140.” Spec. 5, l. 31 – Spec. 6, l. 1. The Specification describes that
when a disc stack assembly according to the invention is formed, the disc
alignment mark 134 is aligned with a direction of a biasing force 140. Spec.
6, ll. 3-10. The Specification describes another embodiment in which “no
alignment mark is placed on the prewritten disc at all” and in which “the
position of the disc is precisely monitored relative to the biasing forces used
during servo write” so that at the time of forming the disc stack assembly,
the disc is “placed on the spindle motor hub and biased in precisely the same
manner in which it was biased during servo write.” Spec. 7, ll. 12-18.
It would be clear to one of ordinary skill in the art, reading the
Specification, that “a concentricity offset in a direction of an alignment axis”
refers to the axis in the direction of the biasing force used during servo write.
As such, the Examiner’s interpretation of “alignment axis” as encompassing
an axis that can be perpendicular to the surface of the disc is also
inconsistent with the understanding that one of ordinary skill in the art
would have of the claim language when read in light of the Specification.
Written Description
The Examiner rejected claim 1 and its dependent claims because
“[t]he specification and drawings, as originally filed, provide no written
description of any alignment axes of the prewritten discs being angularly
disposed symmetrically around the motor hub.” Ans. 5. We find adequate
written descriptive support for this claim limitation in the original disclosure
Appeal 2012-002804
Application 09/981,556

7
on page 7, lines 20-30, which describes an embodiment of disc stack
assemblies having multiple prewritten discs in which the disc stack
assemblies are balanced for rotation about the spindle motor hub by applying
the biasing force in an opposition direction (for disc stack assemblies with
even numbers of discs) or at even angular intervals about a circumference of
the discs (for disc stack assemblies with odd numbers of discs). See App.
Br. 11. The rejection also appears to have been based, at least in part, on an
overly broad interpretation of “alignment axis” as discussed supra. Ans. 11.
As such, we reverse the rejection of independent claim 1, and its dependent
claims 3, 5-9, and 21-24, under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement.
Indefiniteness
The Examiner rejected claim 1 and its dependent claims as being
indefinite because “[a] person of ordinary skill in the art would not
understand what alignment axis is being referred to.” Ans. 6 (stating
“angular directions for the discs can occur into and out of the page (of
Figure 2)”). For the reasons provided supra, the Examiner’s interpretation
of “alignment axis,” upon which the determination of indefiniteness is
based, is unreasonably broad. One of ordinary skill in the art would
understand that the claimed “alignment axis” is defined within the claim as
being an axis in the direction of the concentricity offset of the servo tracks
relative to the disc, i.e., an axis within the plane of the disc. Accordingly,
we reverse the rejection of independent claim 1, and its dependent claims 3,
5-9, and 21-24 as being indefinite.
Appeal 2012-002804
Application 09/981,556

8
Anticipation
The Examiner’s determination of anticipation of claim 1 by Kuroba is
based on an interpretation of “alignment axis” that is perpendicular to the
disc surface. Ans. 7, 12-13. For the reasons provided supra, the Examiner’s
interpretation of “alignment axis,” upon which the finding of anticipation is
based, is unreasonably broad. Accordingly, we reverse the rejection of
independent claim 1, and its dependent claims 3, 5-7, and 9 as being
anticipated by Kuroba.
Obviousness
The Examiner’s determination of unpatentability of claim 8 over
Kuroba and Ogawa is likewise based on an unreasonably broad
interpretation of “alignment axis.” Ans. 8. For the reasons provided supra,
we reverse the rejection of dependent claim 8 as being unpatentable over
Kuroba and Ogawa.
CONCLUSIONS
The Examiner’s interpretation of “alignment axis” as encompassing
an axis that can be perpendicular to the surface of the disc is unreasonably
broad.
The subject matter of independent claim 1 that calls for “the
prewritten discs placed around the motor hub with respect to each other so
that the alignment axes among the plurality of prewritten discs are angularly
disposed symmetrically around the motor hub” is adequately supported by
the original disclosure.
Appeal 2012-002804
Application 09/981,556

9
Those skilled in the art would understand what is encompassed by the
limitation of claim 1 that calls for “each prewritten disc having servo tracks
characterized by a concentricity offset in a direction of an alignment axis
that is in the same angular direction for all of the plurality of prewritten discs
in relation to a center of the respective prewritten disc” when the claim is
read in light of the Specification.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3, 5-9,
and 21-24.

REVERSED

hh