Ex Parte Anandan

Patent Trial and Appeal Board

Sep 25, 2012

11328556 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KRISHNA PRASHANTH ANANDAN
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Appeal 2010-005327
Application 11/328,556
Technology Center 2600
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Before BRADLEY W. BAUMEISTER, BRUCE R. WINSOR, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

MCKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
suspension load beam. The Examiner has rejected the claims as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

SUMMARY
Appellant appeals from the Examiner’s rejection of claims 1-6, 8, 19,
and 20:
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Claims 1, 2, 4, 6, 8, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Suzuki (WO 2004/040571 A1; published May 13,
2004); and
Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as obvious
over Suzuki. (App. Br. 5.)1
Claims 7, 9-18, 21, and 22 are canceled. (After Final Amendment
filed January 16, 2009).

STATEMENT OF CASE
The present invention is directed to a suspension load beam for
carrying a transducer head, where thermal insulation layers cover a portion
of the load beam to reduce structural distortion in response to environmental
temperature changes. (See Spec. 1:4-8.) According to Appellant,
[a] suspension load beam for use in supporting a
transducer head in a data storage system includes a front beam
section, a rear beam section, and a middle beam section. The
front beam section is configured to connect to a slider assembly
carrying a transducer head. The rear beam section is configured
to connect to an actuator arm. The middle beam section is
located between the front beam section and the rear beam
section. The middle beam section comprises a top thermal
insulation layer, a bottom thermal insulation layer and a rigid
layer between the top and bottom thermal insulation layers.
(Abstract.)
Independent claim 1 is illustrative, and is reproduced below with key
disputed limitations emphasized:
1. A suspension load beam comprising;

1 Throughout this opinion, we refer to (1) the Amended Appeal Brief filed
November 2, 2009; (2) the Examiner’s Answer mailed December 17, 2009;
and (3) the Reply Brief filed February 17, 2010.
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a front beam section defining a mounting feature for
connecting to a data transfer member at a distal end of the
suspension load beam;
a rear beam section defining another mounting feature for
connecting to a support structure at a proximal end of the
suspension load beam; and
a middle beam section extending between and contiguous
with both the front beam section and the rear beam section,
wherein the middle beam section comprises a rigid layer
sandwiched between opposing thermal insulation layers,
wherein each thermal insulation layer has a first surface that
contactingly engages a respective surface of the rigid layer
throughout the entire middle beam section, and each thermal
insulation layer has an opposing second surface that defines an
exposed external surface of the suspension load beam covering
the rigid layer surface throughout the entire middle beam
section.

CONTENTIONS
The Examiner finds that the Suzuki discloses every limitation of claim
1, including the recited thermal insulation layers. (Ans. 5.) In particular, the
Examiner notes “that insulation layers [of Suzuki] are formed of resin,
which is an insulation layer, resistant to changes in heat, at least with regard
to a metallic beam (34) formed of stainless steel.” (Id.) The Examiner
further elaborates that Suzuki inherently teaches the thermal insulation
layers. (See, e.g., Ans. 6 (discussing in the rejection of claims 3 and 5 that
the Suzuki’s resin is an “inherently thermally insulative material”); Advisory
Action 2 (Jan. 28, 2009) (stating that “the layers (35, 36) made of resin are
inherently to some degree, thermally insulative.”).)
The Examiner further reasons that the claimed thermal insulation
limitation is “very board [sic: broad] in scope.” (Ans. 11.) Particularly, the
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Examiner points out that the claim “fail[s] to ascribe any particular material
or a quantitative metric” to the thermal insulation layer and that the
Specification lacks any express definition or limit as to what may be
considered a thermal insulation layer. (Ans. 9-10.)
Appellant contends, inter alia, that Suzuki does not disclose the
claimed thermal insulation layers. (App. Br. 8-11.) More specifically,
Appellant argues that the resin of Suzuki is not necessarily thermally
insulative. (App. Br. 8.) For example, Appellant argues that one of ordinary
skill would likely use a thermally conductive resin for the elastic members
of Suzuki. (App. Br. 9.)

ANALYSIS
Claim 1 requires, inter alia, a suspension load beam comprising a
middle beam section “wherein the middle beam section comprises a rigid
layer sandwiched between opposing thermal insulation layers . . . (emphasis
added).” We find that the Examiner failed to provide sufficient evidence to
support the conclusion that Suzuki inherently teaches this limitation and,
therefore, erred in rejecting claim 1.
The Examiner finds that Suzuki teaches insulation layers formed of
resin. (Ans. 5.) Suzuki, more specifically, discloses first and second elastic
films that “may be made of resin material, for example.” (Suzuki ¶ [0041].)
The Examiner does not rely on any additional teachings from Suzuki for the
thermal insulation limitation, and Suzuki provides no insight as to the
composition or the thermal qualities of the exemplary resin. Therefore, as
Suzuki alone does not expressly disclose thermal insulation layers, the
Examiner relies on inherency to meet this claimed limitation.
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In particular, the Examiner concludes that Suzuki inherently discloses
the claimed thermal insulation layers because Suzuki uses a “generic resin.”
The Examiner reasons that it is well known that “pure resins are electrical
insulative and do not conduct heat well.” (Ans. 11.) Suzuki, however,
merely discloses the elastic films are formed of a resin material. (Suzuki
¶ [0041].) As noted by Appellant, “Suzuki is silent regarding the
composition of its resin.” (Reply Br. 6.) Without any additional supporting
evidence, we disagree with the Examiner that Suzuki’s “resin material”
would be limited to pure resins.
In fact, the Examiner’s definition of a resin, indicating that a resin
may be a modified natural resin or a resin including other materials (Ans.
12), supports a broader interpretation. Specifically, a resin, as defined by the
Examiner, is: “[a]ny of numerous physically similar polymerized synthetics
or chemically modified natural resins including thermoplastics . . . and
thermosetting materials . . . that are used with fillers, stabilizers, pigments,
and other components to form plastics.” (Id. (quoting WEBSTER’S II NEW
COLLEGE DICTIONARY) (emphasis added).) Accordingly, the Examiner
acknowledges that one of ordinary skill in the art would understand that a
resin may be a pure resin, but it may also be a modified natural resin or a
resin including other components. Appellant has further shown that resins
including thermally conductive materials were well known. (See, e.g., App.
Br. 9; Reply Br. 6-7 (highlighting that the resin overmold had a thermal
conductivity of at least 0.4 W/mK and identifying additional resins that
would have higher thermal conductivity values).)
Because we disagree that the resin of Suzuki is limited to a pure resin,
but could, instead, include resins that contain conductive fillers, we find that
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the Examiner fails to provide sufficient evidence or reasoning to support the
conclusion that Suzuki’s resin is necessarily resistant to changes in heat at
least with regard to a metallic beam formed of stainless steel. While some
resins may be thermally insulative with respect to a metallic beam, the
record indicates that all resins are not necessarily thermally insulative with
respect to a metallic beam. “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Therefore, we conclude that Suzuki does not inherently disclose the
claimed thermal insulation layers. Since resolution of this issue is
dispositive, we need not reach Appellant’s other arguments regarding claim
1. (See App. Br. 5-15.)
Accordingly, we do not sustain the anticipation rejection of
independent claims 1 and 19, which both recite thermal insulation layers, or
of claims 2, 4, 6, 8, and 20, which depend from claim 1 or 19.2

THE OBVIOUSNESS REJECTION
In the obviousness rejection of claims 3 and 5, the Examiner does not
change the inherency rationale explained above. Instead, the Examiner finds
that claims 3 and 5 are not anticipated by Suzuki because of the spatial

2 Our review is based only upon those rejections, rationales, and arguments
that were presented on appeal. We therefore do not address the separate
question of whether it would have been obvious to have made Suzuki’s
resins specifically from a composition that falls within the Specification’s
meaning of “thermal insulation layers,”
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configurations recited. For the reasons set forth with respect to claim 1,
then, we likewise do not sustain the obviousness rejection of dependent
claims 3 and 5.

DECISION
The Examiner’s decision rejecting claims 1-6, 8, 19, and 20 is
reversed.

REVERSED

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