Ex Parte AKOH

Board of Patent Appeals and Interferences

May 29, 2003

09247889 (B.P.A.I. May. 29, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SHIN-ICHI AKOH
__________
Appeal No. 2002-1914
Application 09/247,889
___________
ON BRIEF
___________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, all of the claims pending in
this application.
Appellant’s invention relates to a method for manufacturing
magnetic heads used in the recording and reproduction equipment
of various electronic devices, such as hard disk systems,
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Application 09/247,889
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computers, and word processors, wherein the magnetic heads
perform data recording and reproduction while traveling and
flying at an infinitesimal gap over the flat surface of a
recording medium. More particularly, appellant notes on page 6
of the specification that
[t]he purpose of the present invention is to provide a
method in which, by adding roundness to the angled parts of
the peripheral parts of the magnetic head slider, highly
durable and reliable magnetic heads may be manufactured
which prevent adhesion to the recording medium surface,
improve resistance to disk shocks, and enable stable flying
characteristics even for smaller magnetic heads and lower
flying heights.
In describing the method of manufacture in the present
application, appellant indicates that photoresist applied to the
air bearing surface (ABS) of the magnetic head slider causes
rounding at the slider peripheral part (2a in Fig. 2B) due to its
surface tension, and when this is baked (Fig. 2C), the film
thickness of the photoresist at said peripheral part becomes
rounded and thin facing the outside edges; therefore this curved
shape (21a of Fig. 2D) is transferred to the ABS of the slider by
uniform dry etching. Independent claim 1 is representative of
the subject matter on appeal and a copy of that claim can be
found in the Appendix to appellant’s brief.
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Application 09/247,889
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ellenberger 4,333,229 Jun. 8, 1982
Sawada et al. (Sawada) 4,896,417 Jan. 30, 1990
In addition to the foregoing prior art references, the
examiner has also relied upon applicant’s admitted prior art
(hereinafter the APA) set forth on pages 1 and 2 of the
specification in the “Background Information” section.
Claims 1 through 3 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the APA in view of Ellenberger and
Sawada.
Rather than reiterate the examiner's full commentary
regarding the above-noted rejection and the conflicting
viewpoints advanced by the examiner and appellant regarding the
rejection, we make reference to the examiner's answer (Paper No.
20, mailed October 1, 2001) for the reasoning in support of the
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Application 09/247,889
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rejection, and to appellant’s brief (Paper No. 19, filed July 23,
2001) and reply brief (Paper No. 22, filed February 15, 2002) for
the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references and APA, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determination which
follows.
In rejecting claims 1 through 3 under 35 U.S.C. § 103(a) on
the basis of the collective teachings of the APA, Ellenberger and
Sawada, it is the examiner’s position (answer, page 3) that the
APA discloses appellant’s claimed method except for 1) operating
on an individual slider and 2) the etching technique of using a
variable thickness photo resist mask to create surfaces at an
acute angle to the masked surface. To address the first of these
differences the examiner turns to Ellenberger, urging that
Ellenberger teaches “the equivalency of shaping individual
Appeal No. 2002-1914
Application 09/247,889
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sliders and batch processing (see Column 7, lines 3-12).” From
this teaching, the examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of
appellant’s invention to individually shape the APA sliders as a
matter of choice between art recognized equivalents, each having
their own advantages.
With respect to the second difference, the examiner contends
that it is conventional in the etching arts to create surfaces at
an acute angle to the masked surface by using the “rounded” masks
as exemplified by Sawada at Figures 7A-7E. From this teaching,
the examiner has concluded that it would have been obvious to one
of ordinary skill in the art at the time of appellant’s invention
“to have achieved the chamfer discussed by APA at page 2, lines
16-18 of the instant specification by the technique exemplified
by Sawada et al to realize the advantages inherent to etching
versus mechanical machining.” The examiner further asserts that
“this substitution, and its attendant advantages, is [sic] common
knowledge in the manufacturing arts and in the shaping of air
bearing surfaces as discussed by APA at page 1, lines 18-22 of
the instant specification.”
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Application 09/247,889
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Having reviewed and evaluated the applied prior art
references and the APA, we are of the opinion that the examiner’s
position regarding the purported obviousness of claims 1 through
3 on appeal represents a classic case of the examiner using
impermissible hindsight derived from appellant’s own disclosure
in an attempt to reconstruct appellant’s claimed subject matter
from disparate teachings and broad concepts purported to be
present in the applied prior art. In our view, there is no
motivation or suggestion in the applied references to Ellenberger
and Sawada which would have reasonably led one of ordinary skill
in the art to modify the APA in the particular manner urged by
the examiner so as to result in appellant’s claimed subject
matter.
Like appellant (reply brief, pages 2-3), we note that
neither the APA, Ellenberger, or Sawada teach or suggest the step
of applying a photoresist on an air bearing surface “such that
the photoresist is rounded and slopes downward in a curved shape
toward a peripheral region of the air bearing surface,” as
recited in claim 1 on appeal, followed by baking the photoresist
and then by uniform dry etching of the air bearing surface.
Sawada teaches a method of using a photoresist layer (62) and dry
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Application 09/247,889
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etching to ensure formation of a recess (63) having sloping side
walls with an angle of inclination of 70º or smaller so as to
form a thin film magnetic head wherein the magnetic fluxes are
gradually gathered toward the tip edge of the pole so that the
maximum magnetic flux density can be obtained at the tip end of
the pole so that recording can be performed with high recording
density. We see nothing in Sawada, the APA, or Ellenberger that
relates to appellant’s particular method of shaping a magnetic
head slider via a photoresist applied in the specific manner
required in claim 1 on appeal and subjected to baking and uniform
dry etching to shape the peripheral region of the slider ABS and
thus improve the magnetic head’s flying characteristics, as
appellant has done.
While page 2, lines 16-18, of appellant’s specification
allude to a method in the prior art in which the peripheral part
of a slider is chamfered by lapping the ABS or otherwise using
machining, we see nothing in this portion of the specification or
in the references to Ellenberger and Sawada which would have been
suggestive to one of ordinary skill in the art of appellant’s
method as set forth in claims 1 through 3 on appeal. In fact, as
appellant has pointed out in the brief, Ellenberger (at col. 6,
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Application 09/247,889
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lines 21-24) also teaches machining a desired bevel (38)
longitudinally of the rails (6) at a peripheral part of the
slider ABS (note Fig. 12). Thus, both the APA and Ellenberger
teach lapping or other machining to form a chamfer at the
peripheral part of a magnetic head and we see nothing in the
prior art which would have led a person of ordinary skill in the
art to any other technique for forming such chamfered surfaces on
the peripheral portion of a magnetic head.
Since we have determined that the teachings and suggestions
which would have been fairly derived from the APA, Ellenberger
and Sawada would not have made the subject matter as a whole of
claims 1 through 3 on appeal obvious to one of ordinary skill in
the art at the time of appellant’s invention, we must refuse to
sustain the examiner’s rejection of those claims under 35 U.S.C.
§ 103(a).
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Application 09/247,889
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In light of the foregoing, the decision of the examiner to
reject claims 1 through 3 under 35 U.S.C. § 103(a) is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF:pgg
Bradley Bereznak
Appeal No. 2002-1914
Application 09/247,889
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Burgess & Bereznak
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