Ex Parte Dee

Board of Patent Appeals and Interferences

Mar 25, 2008

09894378 (B.P.A.I. Mar. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD HENRY DEE
____________

Appeal 2007-3484
Application 09/894,378
Technology Center 2600
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Decided: [March 25, 2008
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Before ANITA PELLMAN GROSS, CARLA M. KRIVAK, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 3-7 and 10-14. Claims 1-2 and 8-9 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-3484
Application 09/894,378

Appellant’s claimed invention relates to a spin valve sensor apparatus
having first and second spin valve sensors and at least one flux guide. The
flux guide is shared between the first spin valve sensor and the second spin
valve sensor. (Spec. 23-24).
Appellant groups claims 3-7 and 10-14 together (Br. 3). Thus, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we group claims 3-7 and 10-
14 together and treat independent claim 3 as the representative claim.
Claim 3 is illustrative of the invention and reads as follows:
3. A spin valve sensor apparatus, comprising:
a first spin valve sensor;
a second spin valve sensor; and
at least one flux guide, wherein a flux generated by the at least
one flux guide is shared between the first spin valve sensor and the
second spin valve sensor to thereby reduce a sensitivity of the spin
valve sensor apparatus.

The Examiner relies on the following prior art references to show
unpatentability:
Cain US 5,493,467 Feb. 20, 1996
Suzuki US 6,134,078 Oct. 17, 2000

Claims 3-7 and 10-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Suzuki in view of Cain.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived,
see 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUE
Under 35 U.S.C § 103(a), with respect to appealed claim 3, would one
of ordinary skill in the art at the time of the invention have found it obvious
to combine Suzuki and Cain to render the claimed invention unpatentable?
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claim 3 based on the combination of Suzuki and Cain,
Appellant asserts a failure to set forth a prima facie case of obviousness
based on the failure of the combination to teach the claim element “to
thereby reduce a sensitivity of the spin valve sensor apparatus,” and a lack of
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combinability of the applied references (Br. 4-7). After careful review, we
are not persuaded that the Examiner erred in the determination of
obviousness.
Turning first to Appellant’s assertion that Suzuki’s apparatus “is not a
reduced sensitivity apparatus” (Br. 5), we note that Suzuki discloses a yoke
structure 4 (Figs. 3-4). Appellant admits that “[t]he yoke style, while less
sensitive, has advantages in that it is more reliable.” (Br. 7) (emphasis
supplied). In a similar vein, the Examiner cited Suzuki (Ans. 3) (citing
column 1, lines 27-28) as teaching that yoke structures reduce sensitivity
over prior art MR sensors without yokes. We concur with the Examiner and
find that Suzuki’s structure makes clear that a yoke structure reduces
sensitivity as compared to prior art MR sensors (col. 1, ll. 27-30).1
Further, as the Examiner finds, “it is inherent in the reference that by
sharing the flux between the first sensor and the second sensor it reduces a
flux injection efficiency of the sensor apparatus.” (Ans. 3). The Examiner’s
finding is not challenged by Appellant. To the contrary, we find that it is
supported by the Specification whereat Appellant describes flux sharing in a
prior art read head as reducing flux injection efficiency which reduces the
propensity for saturation, and consequently, reduces the sensitivity of a dual
spin valve sensor apparatus as compared to a single spin valve sensor
apparatus (Spec. 24: 1-16).

1 Appellant’s statement that Suzuki’s sensors are only less sensitive as
compared to prior art spin valve sensors (Br. 5) not only is unsupported by
evidence, but also does not address why the combination of Suzuki and Cain
as proposed by the Examiner (employing Suzuki’s yoke) fails to meet the
limitation of “to thereby reduce a sensitivity of the spin valve sensor
apparatus.”
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Application 09/894,378

Turning next to Appellant’s assertion that the references are not
combinable, we find no evidence and/or arguments advanced by Appellant
which convinces us of any error in the Examiner’s finding that one of
ordinary skill in the art would have been motivated to use Cain’s spin valve
sensors in Suzuki’s device in order to eliminate dependency on the direction
of the sense current (Ans. 4). The statement that “the dependency on the
direction of the sense current is a necessary trade off and not a strict
advantage” (Br. 6) does not defeat the Examiner’s finding of motivation.
Appellant offers no evidence or argument regarding how or why a tradeoff
defeats the finding of motivation.
Appellant’s argument that “spin valve sensors are too sensitive” to
read older media (Br. 4) is not material to the proposed combination. That
is, Appellant advances no evidence that the combination of Suzuki and Cain
would result in a structure unable to read such media; moreover, the claim
does not require such media.
Appellant’s related argument that “the present invention addresses this
problem by providing a reduced sensitivity spin valve sensor” is also not
material to the proposed combination. (Br. 4). That is,
the problem motivating [Appellant] may be only one of many
addressed by the [application’s] subject matter. The question is not
whether the combination was obvious to the [Appellant] but whether
the combination was obvious to a person with ordinary skill in the
art….
…Common sense teaches…that familiar items may have
obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle. Regardless of Asano’s
primary purpose, the design provided an obvious example of an
adjustable pedal with a fixed pivot point…The idea that a designer
hoping to make an adjustable electronic pedal would ignore Asano
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because Asano was designed to solve the constant ratio problem
makes little sense.

KSR, 127 S. Ct. at 1742.
In other words, regardless of Appellant’s motivation, or, Suzuki’s or
Cain’s primary purpose, we determine that one of skill would have
recognized, in light of Suzuki’s teaching of a desire for sensitivity and
reliability, that employing Cain’s more sensitive but “familiar” (see id.) spin
valve MR sensors would have been obvious not only for the reason put forth
by the Examiner, but further in order to overcome Suzuki’s reduced
sensitivity attributed to the yoke structure, and at the same time, to maintain
Suzuki’s reliability also attributed to the yoke structure. “[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR, 127 S. Ct. at 1740.
On the other hand, one of skill also would have recognized that if the
prior art spin valve sensors are too sensitive, “common sense teaches” that it
would have been obvious to make the sensor structure less sensitive by
employing the overly sensitive sensors with the sensitive reducing yoke of
Suzuki because “any need or problem known in the field…can provide a
reason for combining the elements in the manner claimed.” KSR, 127 S. Ct.
at 1742.
We also note that Suzuki’s MR sensor is structurally similar to Cain’s
structure. Each sensor comprises a conductive layer sandwiched between
two other magnetic or ferromagnetic layers (Suzuki, col. 3, ll. 1-7; Cain, col.
5, ll. 31-37). Such similarity in structure and function constitutes further
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evidence of a reason to combine the references (i.e., Suzuki’s sensor is a
“familiar item[],” see 127 S.Ct. at 1742).
Appellant’s further arguments that “MR sensors cannot be spin valve
sensors” and “are mutually exclusive” (Br. 4) are not supported factually.
For example, Cain refers to “a spin valve MR” (col. 2, l. 39). Hence, we
concur with the Examiner’s finding that MR sensors include spin valve
sensors (Ans. 4). We also find no factual support for Appellant’s related
argument that the “substitution as proposed by the Examiner would require
radical modification of Suzuki because Suzuki is an MR sensor device, not a
spin valve sensor device” (Br. 6). As noted, Cain implies that spin valves
are a type of MR sensor, and Appellant provides insufficient evidence
supporting the assertion of a required radical modification.
In view of the above discussion, since it is our opinion that the
Examiner’s prima facie case of obviousness has not been overcome by any
convincing arguments from Appellant, the Examiner’s 35 U.S.C. § 103(a)
rejection, based on the combination of Suzuki and Cain, of independent
claim 3, as well as claims 4-7 and 10-14, grouped therewith, is sustained.
CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejection of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 3-7 and 10-14 is affirmed.

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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

tdl/gw

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