Appeal No. 98-0816
Application 08/286,287
We turn next to the question of the obviousness of claim 36 under § 103. We note at the
outset that appellants admit (Brief, page 26) that independent claim 36 has been copied verbatim from
Jabbari (see claim 1 of Jabbari). According to appellants, claim 36 was not copied for purposes of
interference (and we note that no interference proceedings have been established by the examiner), and
claim 36 is alleged to be patentably distinct from Jabbari under In re Donaldson, 16 F.3d 1189, 29
USPQ2D 1845 (Fed. Cir. 1994), since the disclosed structure corresponding to the "means for
mounting . . ." clause differs as between Jabbari and appellants’ claim 36 on appeal. Although
appellants’ claim 36 and Jabbari’s claim 1 are identical in wording, we find that their meanings differ
due to the patentably distinct structures found in their disclosures supporting the "means for mounting . .
. " clause. In Jabbari, the "means for mounting said stator to said stationary shaft and for supporting
said stator in a generally fixed position relative to said hub" consists of support 70 which has an
unspecified attachment to the stator, whereas appellants’ disclosure employs a clamp spring, a headed
fastener, and an offset flange surfacer for performing the recited function. The combination of these
three elements as taught by appellants achieves the important function of mounting the stator to the hub
in order to hold it in place without the use of adhesives by compressing the stator in an axial direction.
The main issue before us then, is whether or not appellants’ claim 36 would have been obvious over
Jabbari in view of the applied secondary references to Tanaka and Starcevic.
The examiner rejects claim 36 (see Answer, pages 4 to 8) over Jabbari (as teaching a disc
drive having a stator mounted on a support in an undefined fashion) in view of Tanaka (as teaching a
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