Ex parte Chaug et al.

Board of Patent Appeals and Interferences

Dec 18, 2001

08584118 (B.P.A.I. Dec. 18, 2001)

Applicants’ amendment filed March 31, 1998, canceling1
claims 10-12, should be formally entered, in accordance with
the indication in Part 3 of the Advisory Action mailed April
(continued...)
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not binding precedent of the Board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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte YI-SHUNG CHAUG,
THOMAS A. CARROLL, MARK SYNDER,
and R. SCOTT WINSLOW
______________
Appeal No. 1999-1539
Application 08/584,118
_______________
ON BRIEF
_______________
Before JERRY SMITH, LALL and BLANKENSHIP, Administrative Patent
Judges.
LALL, 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 to 9, 13 and 14.
Claims 10 to 12 have been canceled.1
Appeal No. 1999-1539
Application 08/584,118
(...continued)1
7, 1998.
2
The invention is directed to a magnetic recording head
having a substrate and closure element separated by a first
gap and comprising a recording track layer deposited on the
substrate, and a patterned gap layer deposited on a flat
surface of the closure element. The first gap layer has a
known nonplanar topography along a side facing the flat
surface of the closure element. In order to prevent the
creation of localized air gaps within the first gap layer and
the closure element, the patterned gap layer is formed on the
planar surface of the closure element with a topography
inverse to that of the first gap layer. As a result, the gap
separating the substrate and the closure element is
substantially filled. Because the localized air gaps are
filled to provide structural support for the closure element,
the present invention is able to effectively reduce and/or
eliminate micro chipping during lapping or grinding of the
closure element at the time of manufacture. A further under-
Appeal No. 1999-1539
Application 08/584,118
Our decision is based on the PTO English translation of2
this reference, a copy of which is enclosed with this
decision.
3
standing of the invention can be achieved by the following
claim.
Claim 1 is reproduced below.
1. A magnetic recording head for at least one of reading
from and writing to a medium moving across the head,
comprising:
a substrate;
a closure separated from said substrate by a gap, wherein
said closure has a substantially planar surface and is formed
from a magnetic material;
a gap layer deposited on said substrate in said gap, said
gap layer having a first nonplanar topography along said gap;
and
a patterned gap filler layer deposited on said
substantially planar surface of said closure having a second
topography along said gap that inversely corresponds to said
first nonplanar topography such that said gap between said
substantially planar surface of said closure and said gap
layer is substantially filled by said patterned gap filler
layer.
The examiner relies on the following references:
Sundaram et al. (Sundaram) 5,394,285 Feb. 28, 1995
Canon (Japanese) 2-29910 Jan. 31, 19902
Appeal No. 1999-1539
Application 08/584,118
A reply brief was filed as Paper No. 15. The examiner3
noted its entry, see Paper No. 16.
4
Claims 1 to 9, 13 and 14 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Sundaram.
Claims 1 to 3 stand rejected under 35 U.S.C. § 102 as
being anticipated by Canon.
Claims 4 to 9, 13 and 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Canon in view of Sundaram.
Rather than repeat verbatim the arguments of appellants
and the examiner, we make reference to the briefs and the3
answer for the respective details thereof.
OPINION
We have considered the rejections advanced by the
examiner
and the supporting arguments. We have, likewise, reviewed the
appellants’ arguments set forth in the briefs.
We reverse.
REJECTION UNDER 35 U.S.C. § 102
A prior art reference anticipates the subject of a claim
when the reference discloses every feature of the claimed
invention, either explicitly or inherently (see Hazani v.
Appeal No. 1999-1539
Application 08/584,118
5
Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Sys.,
Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)).
The examiner rejects claims 1 to 9, 13 and 14 at pages 2
to 4 of the final rejection. The main contention between the
examiner and the appellants is that the nonplanar topography
on the gap side layer of the closure element and on the gap
side layer of the substrate element are of inverse shape so
that the gap is eliminated between the two layers. The
examiner asserts, final rejection at page 3, that "[a]lthough
not specifically recited in Sundaram, the layer (304) is seen
to be filled with a non-interactive material (to prevent the
lodging of material in the otherwise open gap area, as in
usual and well-known)." Appellants argue, brief at page 4,
that "[b]ecause gap 304 (in Sundaram) is not substantially
filled, and layer 312 is not deposited on the planar surface
of the closure, Sundaram fails to satisfy this test for
anticipation."
We disagree with the examiner’s position. We note that
the examiner has pointed to no place in Sundaram, or provided
Appeal No. 1999-1539
Application 08/584,118
6
any other evidence, to show that gap 304 in Sundaram is filled
with a non-interactive material as asserted by the examiner.
From Figures 3, 5 and 6, it is clear that Sundaram shows a gap
304 existing between the gap layer of the closure element and
the gap layer of the substrate element.
Further, the examiner asserts that the examiner is going
to call 212 of Sundaram as the claimed substrate and label 308
as the claimed closure element. In fact, the examiner asserts
that he is going to consider gap 304 as a part of the closure
element, and that element 312 is deposited on the closure
element so that it provides the topography along the gap that
inversely corresponds to the nonplanar topography of the
nonplanar geometry comprising of elements 302 and 306 on the
substrate 212, see Figure 3 (answer, pages 2-3). Even if we
assume that the examiner is justified in calling element 308
as the closure element and element 212 as the substrate, which
is contrary to what Sundaram calls them, we still do not see
how the examiner is justified in making gap 304 as a part of
the closure element 308. Furthermore, we do not see how
element 312 is deposited on the substrate as recited in the
claims.
Appeal No. 1999-1539
Application 08/584,118
7
Therefore, we do not sustain the anticipation rejection
of claims 1 to 9, 13 and 14 by Sundaram.
The examiner rejects claims 1 to 3 as being anticipated
by Canon at page 4 of the examiner’s answer. The examiner
asserts, final rejection at page 4, that "substrate (7-6);
closure (7-5 and 7-3); gap layer (including 7-4 and 7-2);
patterned gap filler layer (7-1) having a topography inversely
corresponding with that of the gap layer so that the gap
between the planar surface of the closure and substrate is
substantially filled." However, we agree with appellants
that, brief at page 5, "a nonmetal layer
7-3 interposes layers 7-1 and 7-5, and does not have an
inverse topography. Neither layer 7-1 nor 7-3 meet the
limitations of being deposited on the planar surface of the
closure and substantially filling the gap between the closure
and gap layer deposited on the substrate." We also note that
in Figure 1 of the Canon reference there still exists gaps W1
and W between the substrate and the closure element. We,2
therefore, also do not sustain the anticipation rejection of
claims 1 to 3 by Canon.
REJECTIONS UNDER 35 U.S.C. § 103
Appeal No. 1999-1539
Application 08/584,118
8
In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case
of obviousness. If that burden is met, the burden of going
forward then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined
on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). We are further guided by the
precedent of our reviewing court that the limitations from the
disclosure are not to be imported into the claims. In re
Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957); In re
Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir. 1986). We also
note that the arguments not made separately for any individual
claim or claims are considered waived. See 37 CFR § 1.192(a)
and (c). In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
Appeal No. 1999-1539
Application 08/584,118
9
USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued
by an appellant, looking for nonobviousness distinctions over
the prior art.”); In re Wiechert, 370 F.2d 927, 936, 152 USPQ
247, 254 (CCPA 1967)(“This court has uniformly followed the
sound rule that an issue raised below which is not argued in
that court, even if it has been properly brought here by
reason of appeal is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them.”).
The examiner rejects claims 4 to 9, 13 and 14 as being
unpatentable over Canon in view of Sundaram at pages 5 and 6
of the final rejection. The examiner uses Sundaram for the
teaching that a gap layer would include read and write tracks
and that a magnetic head could be used in a tape recording
environment. See page 5 of the final rejection. However, we
note that neither Canon nor Sundaram provides for the
deficiency noted above regarding the inverse geometry of the
gap layers on the substrate and the closure element.
Therefore, we do not sustain the obviousness rejection of
these claims over Canon and Sundaram.
Appeal No. 1999-1539
Application 08/584,118
10
In conclusion, we reverse the decision of the examiner
rejecting under 35 U.S.C. § 102 claims 1 to 9, 13 and 14 as
being anticipated by Sundaram; and claims 1 to 3 as being
anticipated by Canon. We also reverse the decision of the
examiner rejecting under 35 U.S.C. § 103 claims 4 to 9, 13 and
14 as being obvious over Canon in view of Sundaram.
REVERSED

Jerry Smith )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Howard B. Blankenship )
Administrative Patent Judge )
PSL/jg
Timothy R. Schulte
Storage Technology Corporation
2270 South 77th St, MS-4309
Louisville, CO 80028-4309