Ex Parte Ho et al

Patent Trial and Appeal Board

Dec 12, 2012

11297767 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YIU SING HO, GUO HONG LU, CAN HUA CHEN,
YUAN NENG LUO, JEFFERY L. WANG, and LIU JUN ZHANG
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Appeal 2010-006984
Application 11/297,767
Technology Center 2600
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Before DENISE M. POTHIER, BARBARA A. BENOIT, and
JAMES B. ARPIN, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-9 and 19, all of the claims pending in the application. Claims 10-
18 and 20-29 have been canceled. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to a hard disc drive actuator in which an
actuator board is coupled to an actuator coil via a flexible cable element.
See generally Abstract. Claim 1 is illustrative and reads as follows, with key
disputed limitations emphasized
1. A hard disc drive actuator comprising:
a hard drive actuator board having at least one actuator pad to be
coupled to a flexible cable element having at least one flexible cable pad
by a bonding agent, wherein
said bonding agent includes a plurality of electrically conductive
particles;
said bonding agent is to be compressed between said actuator board
and said flexible cable element; and
a number of said particles is to form an electrical path between said
actuator pad and said flexible cable pad, and
wherein the hard drive actuator board is coupled to an actuator coil
of the hard disc drive via the flexible cable element.
The Examiner relies on the following as evidence of unpatentability:
Shin US 2003/0086214 A1 May 8, 2003
Yagi US 2004/0160701 A1 Aug. 19, 20041

The Rejections
1. The Examiner rejected claims 1, 2, 6-9, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Shin and Yagi.2 Ans. 3-6.3

1 This application is a divisional application of Application No. 09/694,010
filed October 23, 2000.
2 The Examiner introduced a new ground of rejection regarding claims 1, 2,
6-9, and 19 applying the same references. Ans. 2.
3 Throughout this opinion, we refer to the Appeal Brief filed October 1, 2009
(App. Br.); the Examiner’s Answer mailed January 7, 2010 (Ans.); and the
Reply Brief filed March 5, 2010 (Reply Br.).
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2. The Examiner rejected claims 3-5 under 35 U.S.C. § 103(a) as
unpatentable over Shin, Yagi, and Appellants’ admitted prior art.4 Ans. 6-7.

ANALYSIS
Claims 1, 2, 6, and 19
On this record, we are not persuaded by Appellants’ arguments that
Shin does not teach the connection between an actuator board and an
actuator coil using a flexible cable element, as recited in independent
claim 1. Reply Br. 2-3; see also App. Br. 4-5.
In the new ground of rejection, the Examiner finds Shin teaches all of
the limitations of claim 1, except for “the means of facilitating the electrical
connections between the [flexible printed circuit] and the circuit board
contacts.” Ans. 4. More particularly, the Examiner finds that Shin teaches
the recited hard drive actuator board (i.e., Shin’s printed circuit board)
coupled to an actuator coil (i.e., Shin’s voice coil) of the hard disc drive via
the flexible cable element (i.e., Shin’s flexible printed circuit 41). Ans. 3
(citing ¶¶ 0006, 0010, 0041; Figs. 2, 4, 5).
As shown in Figure 4, Shin teaches a hard disk drive that includes,
among other components, a flexible printed circuit 41 to transfer electrical
signals to an actuator 63 and a voice coil motor 61. ¶ 0040. The flexible
printed circuit 41 connects a printed circuit board to the actuator 63 to
transfer the electrical signals. ¶ 0041. Based on this structure, we are not
persuaded of Examiner error in finding that Shin teaches a hard drive

4 The Examiner introduced a new ground of rejection regarding claims 3-5
over Shin, Yagi, and Appellants’ admitted prior art. Ans. 2.
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actuator board coupled to an actuator coil of the hard disc drive via the
flexible cable element.
Appellants argue that Shin’s connection is not “a direct connection
between an actuator board and an actuator coil using a flexible cable
element.” Reply Br. 2 (emphasis added). Appellants’ argument is not
persuasive because it is not commensurate with the scope of claim 1, which
recites “the hard drive actuator board is coupled to an actuator coil of the
hard disc drive via the flexible cable element” (emphasis added). Further,
even assuming without deciding that Shin does not teach or suggest a direct
connection, Appellants have not explained–much less persuasively argued–
why the term “coupled to” should be construed as requiring a direct
connection. Accord, e.g., Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d
1262, 1270 (Fed. Cir. 2010) (holding the term “coupled to” should be
construed to allow an indirect attachment).
Nor are we persuaded by Appellants’ argument that Shin does not
teach the recited elements because connecting via a flexible print circuit is
different than connecting via a flexible cable (Reply Br. 4) or Appellants’
naked assertion that Shin’s connection is formed at a different location
(Reply Br. 3). Mere speculation unsupported by factual evidence is entitled
to little probative value. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997). We, nonetheless, note Appellants’ indication that Shin’s flexible
printed circuit 41 is similar to a flexible cable 9 in a typical hard disk drive,
which communicates electrical control signals to a voice coil actuator 20, as
disclosed in Appellants’ Specification. App. Br. 5 (citing Spec. ¶ 0003;
Fig. 1).
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Appellants also argue that the Examiner admits that both Shin and
Yagi are silent as to how the connections are made and that both Shin and
Yagi are silent regarding the flexible cable pad of the flexible cable element,
the bonding agent, the electrically conductive particles in the bonding agent,
and the compression of the bonding agent between the actuator board and
the flexible cable element. Reply Br. 3.
We disagree. Although the Examiner acknowledges that Shin does
not disclose “the means of facilitating the electrical connections between the
[flexible printed circuit] and the circuit board contacts,” the Examiner finds
that Yagi addresses “making the electrical connection between the [flexible
printed circuit] and the circuit board.” Ans. 4.
More particularly, the Examiner relies on Yagi’s teaching of an
anisotropic conductive tape 7 or adhesive paste as the recited bonding agent.
Ans. 4 (citing ¶¶ 0043-44; Figs. 3-4). The Examiner finds that Yagi teaches
or suggests using a bonding agent to make the electrical connection between
a flexible printed circuit and the contacts of the circuit board. The Examiner
acknowledges that Yagi may not teach or suggest using a bonding agent for
actuator coil connections. Ans. 4. The Examiner, however, concludes that,
in view of the collective teachings of Shin and Yagi, it would have been
obvious to one of ordinary skill to use Yagi’s electrically conductive tape or
adhesive paste to couple contacts on the flexible printed circuit (which
provide power to the actuator coil) with the contacts on the circuit board on
the disk drive actuator. Ans. 5.
Appellants’ mistaken assertion (Reply Br. 3) that the Examiner admits
that Shin and Yagi are silent regarding the flexible cable pad of the flexible
cable element, the bonding agent, the electrically conductive particles in the
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bonding agent, and the compression of the bonding agent between the
actuator board and the flexible cable element recited in claim 1 does not
persuasively show error in the Examiner’s position in this regard. Accord In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Nor are we persuaded of error in the Examiner’s position on the
collective teachings of Shin and Yagi. Appellants do not squarely address–
much less persuasively rebut–the Examiner’s findings of what the collective
references teach or suggest. Appellants merely argue that the references
teach connecting different components than claimed and the references do
not teach how the components are connected. Reply Br. 3. This is not
persuasive for “the test [for obviousness] is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” In
re Keller, 642 F.2d 413, 425 (CCPA 1981). One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See id. at 426.
Appellants also challenge the Examiner’s combination of Shin and
Yagi because purportedly the combination is not supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion. Reply Br. 3-5; see also App. Br. 5. In concluding
that claim 1 is obvious, the Examiner finds that using electrically conductive
tape or adhesive paste, as taught by Yagi, is an alternative choice to
soldering or welding contacts and would have been an obvious use of a
known material performing its known function. Ans. 5. Appellants argue
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that the Examiner’s combination is not a predictable variation because both
the location and type of connection are changed. Reply Br. 4-5 (citing KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). Appellants, however, do not
provide sufficient evidence for this argument to persuasively rebut the
Examiner’s combination. Reply Br. 3-5. Mere speculation unsupported by
factual evidence is entitled to little probative value. Cf. Geisler, 116 F.3d
at1470.
Thus, we are not we persuaded that substituting Yagi’s bonding agent
for welding or soldering is more than the combination of familiar elements
according to known methods, which would yield predictable results. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 550 U.S. at 416) (stating “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”). The Examiner’s proposed
combination of Shin and Yagi predictably uses prior art elements according
to their established functions—an obvious improvement. See KSR, 550 U.S.
at 417. Accordingly, we find the Examiner’s reason to combine the
teachings of the cited references supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion.
We, therefore, sustain the rejection of independent claim 1 and of
claims 2, 6, and 19, which are not separately argued with particularity.

Claims 7-9
Regarding claims 7-9, Appellants further argue that the Examiner
erred by not giving dependent claims 7-9 any patentable weight because the
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claims include product-by-process features that should be given patentable
weight pursuant to the Manual of Patent Examination Procedure (MPEP)
§ 2113 (8th ed. 2001) (Rev. 9, Aug. 2012). Reply Br. 5.
We are not convinced of Examiner error. The Examiner found that
the recited structural features are the same as those created by the
application of Yagi’s conductive bonding agent in the electrical connecting
arrangement of Shin (Ans. 6) in accordance with MPEP § 2113. See MPEP
§ 2113. According to the MPEP guidance, once the Examiner has found the
claimed product is the same or similar to that of the prior art although
produced by a different process, Appellants must establish an unobvious
difference between the claimed product and the prior art product. Id.
For the reasons described above with respect to claim 1, we are not
persuaded that Appellants have established such a difference. Accordingly,
we also sustain the rejection of claims 7-9.

Claims 3-5
Appellants merely rely on the same arguments with respect to the
alleged deficiencies of the combination of Shin and Yagi in connection with
independent claim 1, from which claims 3-5 depend, and that Appellants’
admitted prior art does not cure the deficiencies of Shin and Yagi. Reply
Br. 5-6. We are not persuaded by these arguments, however, for the same
reasons discussed above with respect to claim 1. The rejection of claims 3-5
is therefore sustained.

CONCLUSION
The Examiner did not err in rejecting claims 1-9 and 19 under § 103.
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ORDER
The Examiner’s decision rejecting claims 1-9 and 19 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)(iv).

AFFIRMED

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