Ex parte Dohmen

Board of Patent Appeals and Interferences

Apr 29, 1998

08152557 (B.P.A.I. Apr. 29, 1998)

Application for patent filed November 12, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GERARDUS M. DOHMEN
_____________
Appeal No. 95-5146
Application 08/152,5571
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 20-27, which constitute
all the claims remaining in the application.
Appeal No. 95-5146
Application 08/152,557
2
The claimed invention pertains to a longitudinal track
recording system in which a multi-gap magnetic head records and
reproduces information from longitudinal tracks on a magnetic
tape. The magnetic head has a contact face for cooperating with
the tape face of the magnetic tape. The invention concerns the
placement of a cleaning groove of predetermined size in the
contact face of the magnetic head for preventing the accumulation
of dust and dirt particles.
Representative claim 20 is reproduced as follows:
20. A longitudinal track recording system, comprising a
magnetic tape apparatus for use with a magnetic tape having one
or more longitudinal recording tracks, the magnetic tape
apparatus comprising a multi-gap magnetic head for writing and/or
reading the magnetic tape, which magnetic head has a contact face
for cooperation with a tape face of the magnetic tape, the head
comprising a transducing structure having transducing gaps
terminating in the contact face, characterized in that the
contact face is provided with at least one cleaning groove for
cleaning the tape face, which groove at the contact face has a
width dimension of between 100 and 300 Fm and which groove
extends at least substantially parallel to the transducing gaps
and has at least one wall portion oriented at least substantially
transversely to the contact face and constituting a scraping edge
at the contact face, which scraping edge has a radius of
curvature of between 1 and 5 Fm.
The examiner relies on the following references:
Soda et al. (Soda) 5,313,342 May 17, 1994
(effectively filed Nov. 29, 1990)
Kimura et al. (Kimura) 1-317261 Dec. 21, 1989
(Japanese Kokai)
Appeal No. 95-5146
Application 08/152,557
3
Brock et al. (Brock), “Wear-Resistant Coating,” IBM Technical
Disclosure Bulletin, Vol. 11, No. 10, March 1969.
Claims 20-27 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Soda in view of
Kimura with respect to claims 20 and 22-26, and adds Brock with
respect to claims 21 and 27. A rejection of the claims under the
second paragraph of 35 U.S.C. § 112 has been withdrawn by the
examiner [answer, page 7].
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner's
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner's answer.
It is our view, after consideration of the record before
us, that the collective evidence relied upon and the level of
skill in the particular art would not have suggested to one of
Appeal No. 95-5146
Application 08/152,557
4
ordinary skill in the art the obviousness of the invention as set
forth in claims 20-27. Accordingly, we reverse.
We consider first the rejection of claims 20 and 22-26
under 35 U.S.C. § 103 as unpatentable over Soda in view of
Kimura. These claims stand or fall together [brief, page 5].
Therefore, we will consider the rejection against independent
claim 20 as representative of all the claims subject to this
rejection. 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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
Appeal No. 95-5146
Application 08/152,557
5
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
The examiner has cited Soda as representative of a
conventional magnetic head which can record and reproduce on
longitudinal magnetic tracks of analog or digital cassette tapes.
The examiner acknowledges that Soda does not teach a cleaning
groove on the contact face of the magnetic head as recited in
independent claim 20 [answer, page 4]. The examiner cites Kimura
as disclosing a magnetic head having a cleaning groove. The
examiner asserts that it would have been obvious to provide the
Soda magnetic head with a cleaning groove as taught by Kimura.
With respect to the various dimensions recited in claim 20, the
examiner argues that the specific claimed values would have been
obvious through routine design experimentation [answer, pages 4-
5].
Appellant argues that the indentations 2b which the
examiner has referred to as the cleaning grooves in Kimura are
Appeal No. 95-5146
Application 08/152,557
6
not cleaning grooves at all [brief, page 7]. Appellant also
argues that the claimed dimensions have been disclosed as being
critical for proper operation of the magnetic tape recording and
reproducing apparatus, and that the examiner has failed to
demonstrate that the prior art suggests any dimensional
characteristics for a scraping edge [brief, pages 7-8].
We agree with appellant that indentations 2b of Kimura
are not on the contact face of the magnetic head for the purpose
of cleaning the tape face. Although Kimura discusses a desire to
reduce the amount of magnetic powder and binder which falls off
of the magnetic tape, Kimura achieves this result by eliminating
friction between the contact face of the magnetic head and the
tape. Thus, Kimura discloses that the magnetic tape of his
invention does not make contact with the head at large portions
along the width of the tape [translation, page 7]. Kimura
directs the artisan to eliminate contact between the tape face
and the contact face of the magnetic head.
Indentations 2b of Kimura’s Figure 3 are the result of
eliminating material from the contact face which would otherwise
contact the tape face. Kimura states that “[t]he areas at the
running surface of the magnetic tape (2) near the magnetic cores
(4) at both sides in directions A and B are eliminated so that
Appeal No. 95-5146
Application 08/152,557
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said resin (7) does not make contact with the magnetic tape (5),
and are formed as concave areas (2b) and (2b) as indicated in
Figure 3" [translation, page 8, underlining added]. Thus, it is
clear to us that indentations 2b simply represent areas where
material from the conventional magnetic head has been removed to
reduce the amount of frictional contact between the head and the
tape. Therefore, we agree with appellant that indentations 2b of
Kimura are not properly considered cleaning grooves with a
scraping edge as recited in the claims.
Even if we were to assume that the edges of Kimura’s
indentations 2b might frictionally scrape the surface of the
magnetic tape at these edges, the specific dimensions of the
cleaning groove recited in claim 20 would not have been obvious
in view of the teachings of the applied prior art. The examiner
considers the specific dimensions to be the result of routine
design experimentation. Since Kimura designs indentations 2b to
reduce the surface contact between the head and the tape and not
to provide a scraping edge, the factors leading to the dimensions
of Kimura’s indentations 2b are totally unrelated to the factors
leading to the design of a cleaning groove. Since Kimura’s
indentations are designed for an entirely different purpose, we
agree with appellant that the specific dimensions of claim 20
Appeal No. 95-5146
Application 08/152,557
8
would not have been an obvious result from the teachings of
Kimura. Accordingly, we do not sustain the rejection of claims
20 and 22-26.
We now consider the rejection of claims 21 and 27 under
35 U.S.C. § 103 as unpatentable over Soda in view of Kimura and
further in view of Brock. These claims depend from and
incorporate the limitations of independent claim 20 discussed
above. Since the additionally applied Brock reference does not
overcome the deficiencies noted above with respect to Soda and
Kimura, we also do not sustain the rejection of claims 21 and 27.
In summary, we have not sustained either of the
examiner’s rejections of the claims. Therefore, the decision of
the examiner rejecting claims 20-27 is reversed.
REVERSED
Appeal No. 95-5146
Application 08/152,557
9
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
Algy Tamoshunas
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