Ex Parte Chaug

Board of Patent Appeals and Interferences

Feb 26, 2004

09310800 (B.P.A.I. Feb. 26, 2004)

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publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YI-SHUNG CHAUG
____________
Appeal No. 2002-1397
Application No. 09/310,800
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 1, 3-6, 8-10, and 19-29.
We reverse, and enter new a new ground of rejection in accordance with 37 CFR
§ 1.196(b).
Appeal No. 2002-1397
Application No. 09/310,800
1 We are unable to find pages 4 and 5 of the specification in the instant file wrapper. The
examiner should resolve the deficiency in the file. For our understanding of the invention, we referred to
the portion of the specification that is present and to the disclosure of U.S. Patent 5,943,196, which is a
parent of the instant (divisional) application.
-2-
BACKGROUND
The invention is directed to a multi-track magnetic tape head that includes “gluing
vias” to increase flow of the adhesive used between surfaces of bonded portions. The
“gluing vias” may be photolithographically defined and subsequently trenched to create
the desired pattern.1 Representative claim 21 is reproduced below.
21. A multi-recording element magnetic head assembly operable for at least
one of reading from and writing to a multi-track medium moving across the head
assembly, comprising:
a plurality of recording elements operable for at least one of reading from
and writing to the multi-track medium;
a core;
at least one gluing via located between two adjacent recording elements
of the plurality of recording elements, said at least one gluing via in contact with,
and extending from, said core; and
an adhesive inserted into said core and said at least one gluing via.
The examiner relies on the following reference:
Tsutaki et al. (Tsukaki) 5,022,140 Jun. 11, 1991
Claims 1, 3-6, 8-10, and 19-29 stand rejected under 35 U.S.C. § 102 as being
anticipated by Tsutaki.
Claims 11-14, 16-18, and 30 have been withdrawn from consideration.
Claims 2, 7, and 15 have been canceled.
Appeal No. 2002-1397
Application No. 09/310,800
-3-
We refer to the Final Rejection (Paper No. 16) and the Examiner’s Answer
(Paper No. 21) for a statement of the examiner’s position and to the Brief (Paper No.
20) for appellant’s position with respect to the claims which stand rejected.
OPINION
Section 102 rejection of claims 1, 3-6, 8-10, and 19-29
According to the rejection of claims 1, 3-6, 8-10, and 19-29, Tsutaki shows (Figs.
3A-3F) a multiple recording/reproducing head block structure that, prior to being cut into
single-element heads, anticipates the claimed invention. (Final Rejection at 3.)
Appellant responds (Brief at 3-4) that the reference does not teach a multi-recording
element head assembly that is operable for either reading or writing to a medium, as
claimed. In appellant’s view, the intermediate structure shown in Figures 3A through 3F
of Tsutaki is not so operable.
The examiner responds (Answer at 3-4) that all the independent claims use the
term “operable,” but as a statement of intended use. The examiner acknowledges that
the relevant structures in Tsutaki are ultimately divided into single-element heads, as
indicated in Figure 4G. However, the examiner finds that the structure shown in Figure
3E of Tsutaki is operable to record/reproduce multiple tracks, disagreeing with
appellant’s argument that adjoining structures would short one another out.
Instant, representative claim 21 recites a “plurality of recording elements
operable for at least one of reading from and writing to....” The language, in isolation,
Appeal No. 2002-1397
Application No. 09/310,800
2 Claim 29, a product-by-process claim that incorporates the method of claim 11, is independent
because it is in a different statutory class from claim 11. The subject matter of claim 19 is not understood,
and is subject to a new ground of rejection, infra.
-4-
could represent a statement of intended use, and read on the intermediate structures
taught by Tsutaki, which are ultimately divided into single-element heads operable for
reading from, and writing to, magnetic media. However, claim 21 recites that the
recording elements are operable with respect to “the multi-track medium.” The
preamble of claim 21 recites, “[a] multi-recording element magnetic head assembly
operable for at least one of reading from and writing to a multi-track medium moving
across the head assembly....” Although the “multi-track medium” is not a structural
limitation of the claim -- the recitation, instead, serves to further limit the recording
elements that are positively recited -- the body of the claim relies on the preamble for
antecedent.
A claim preamble has the import that the claim as a whole suggests for it. Bell
Communications Research, Inc., v. Vitalink Communications Corp., 55 F.3d 615, 620,
34 USPQ2d 1816, 1820 (Fed. Cir. 1995). In our view, the preamble of instant claim 21
is a limitation, rather than a statement of intended use. We thus hold that the scope of
the claim is limited to a multi-recording element magnetic head assembly operable for at
least one of reading from and writing to a multi-track medium moving across the head
assembly. For similar reasons, the remainder of the independent claims -- 1, 6, 27, and
292 -- are also limited to operable multi-recording element magnetic head assemblies.
Appeal No. 2002-1397
Application No. 09/310,800
-5-
Thus, under what we consider to be the proper interpretation of the independent
claims, we agree with appellant that Tsutaki fails to anticipate the instant invention.
The examiner points to no support in the reference for the position that the
structure shown in Figure 3E “is operable to record/reproduce multiple tracks.” Nor do
we find any such indication in the reference. Since Tsutaki does not expressly support
the examiner’s position, the finding is necessarily based on a theory of inherency. With
respect to what may be “inherent,” however, our reviewing court has set out clear
standards for such a showing. To establish inherency, the extrinsic evidence “must
make clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary
skill.” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted). Absent evidence in support of a finding by the examiner that is
disputed by appellant, the rejection must fail.
Since the examiner has not shown any of the independent claims to be met by
the reference, we do not sustain the rejection of claims 1, 3-6, 8-10, and 19-29 under 35
U.S.C. § 102 as being anticipated by Tsutaki.
Claim 19 -- new ground of rejection
We enter the following new ground of rejection in accordance with 37 CFR
Appeal No. 2002-1397
Application No. 09/310,800
-6-
§ 1.196(b): Claim 19 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
The function of claims is (1) to point out what the invention is in such a way as to
distinguish it from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5
(Fed. Cir. 1985). The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994). The inquiry is merely to determine whether the
claims do, in fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971). The definiteness of the language employed must be analyzed -- not in a
vacuum, but in light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of skill in the
pertinent art. Id.
Instant claim 19 purports “[t]he multi-recording element magnetic head assembly
of Claim 1 [an apparatus] formed in accordance with the method of Claim 11 [a
process].” The subject matter of claim 19 cannot be ascertained, at least for the reason
that same or similar structures are described by claim 1 and claim 11. For example,
claim 1 recites “a substrate” and “a thin film layer deposited on a substantially planar
surface of said substrate.” Claim 11 recites “forming a thin film layer on a substantially
Appeal No. 2002-1397
Application No. 09/310,800
-7-
planar substrate.” The invention of claim 19 thus appears to be defined by one or two
thin film layers, with at least one layer deposited on a substantially planar surface of a
substrate and at least one layer formed on a substantially planar substrate; i.e., one or
two layers on one or two substrates. The recitation of similar structures in claims 1 and
11, without antecedent reference with respect to one or the other of the similar
structures, renders the subject matter of claim 19 indeterminate.
CONCLUSION
The rejection of claims 1, 3-6, 8-10, and 19-29 under 35 U.S.C. § 102 is
reversed.
Claim 19 is newly rejected by us under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claim:
(1) Submit an appropriate amendment of the claim so rejected or a
showing of facts relating to the claim so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner
. . . .
Appeal No. 2002-1397
Application No. 09/310,800
-8-
(2) Request that the application be reheard under § 1.197(b) by the Board
of Patent Appeals and Interferences upon the same record. . . .
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2002-1397
Application No. 09/310,800
-9-
WAYNE P BAILEY
STORAGE TECHNOLOGY CORPORATION
ONE STORAGE TEK DRIVE
MS 4309
LOUISVILLE , CO 800284309