Ex Parte Giorgi et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201512059539 (P.T.A.B. Feb. 6, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALAN PAUL GIORGI, WESLEY LEROY HILLMAN, WEN-CHIEN DAVID HSIAO, EDWARD HIN PONG LEE, TONY MELLO, and RANDALL GEORGE SIMMONS ____________________ Appeal 2012-011476 Application 12/059,539 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-011476 Application 12/059,539 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–15 and 26, all the claims presently pending in the application. Claims 11–15, 22, and 25 were canceled by Appellants in an amendment after the Final Rejection (Appellants’ Amendment filed Jan. 25, 2012). Claims 16–21, 23, and 24 were withdrawn from further consideration by the Examiner as being drawn to a non-elected invention (Final Act. 2). Therefore, claims 1–10 and 26 stand finally rejected and are before us on appeal (see Advisory Act. p. 2, box 7). We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s (i) anticipation rejection of claims 1, 3, 6–8 based on the teachings of Li (US 2006/0002021 A1; published Jan. 5, 2006); and (ii) obviousness rejections of claims 2, 4, 5, 9, 10, and 26 which are all based on Li either alone or in combination with various other secondary references. Disclosed Invention The invention concerns a perpendicular writing head for data storage systems used for media certification testing of disk drive media (Spec. ¶¶ 1– 3; Abs.). Exemplary Claim An understanding of the invention can be derived from a reading of exemplary and sole independent claim 1, which is reproduced below with emphasis added: Appeal 2012-011476 Application 12/059,539 3 1. A system, comprising: a head having a perpendicular writer, the writer comprising: a first pole structure having a pole tip positioned towards an air bearing surface of the head, the first pole structure having a portion that is recessed from an extent of the pole tip closest the air bearing surface; a return pole having an end positioned towards the air bearing surface of the head; and a gap between the first pole structure and the return pole, wherein the recessed portion is recessed less than about 1.25 microns relative to the extent of the pole tip closest the air bearing surface, and wherein the writer is characterized as emitting about a uniform flux across the write width thereof. The Examiner’s Rejections (1) The Examiner rejected claims 1, 3, and 6–8 under 35 U.S.C. § 102(b) as being anticipated by Li.1 Ans. 3–5. (2) The Examiner rejected claims 2, 4, and 5 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li and Nakanishi (US 5,027,247; issued June 25, 1991). Ans. 6–7. 1 With regard to the anticipation rejection, Appellants only present arguments as to claim 1 (App. Br. 5–9; Reply Br. 2–8). Because claim 1 is the sole independent claim, and the remaining claims rejected based on anticipation all depend from claim 1, we select claim 1 as representative of the group of claims 1, 3, and 6–8 rejected under § 102(b). Appeal 2012-011476 Application 12/059,539 4 (3) The Examiner rejected claims 9 and 26 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li and Liikanen (US 6,600,636 B1; July 29, 2003). Ans. 7–8. (4) The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Li alone. Ans. 8. Issue on Appeal Based on Appellants’ arguments in the Appeal Brief (App. Br. 5–14) and the Reply Brief (Reply Br. 2–8), the following two issues are presented on appeal: (1) Have Appellants shown that the Examiner erred in rejecting (i) claims 1, 3, and 6–8 under 35 U.S.C. § 102(b) for anticipation, and/or (ii) claims 2, 4, 5, 9, 10, and 26 as being unpatentable under 35 U.S.C. § 103(a) for obviousness, because Li fails to inherently or expressly disclose the system including the writing head “wherein the writer is characterized as emitting about a uniform flux across the write width thereof,” as recited in representative independent claim 1? (2) Did the Examiner err in rejecting claims 2, 4, 5, 9, 10, and 26 as being obvious over Li alone and/or with the various secondary references because it would not have been obvious to modify Li (i.e., the Examiner employed impermissible hindsight)? ANALYSIS We have reviewed the Examiner’s rejections (Ans. 3–5) in light of Appellants’ contention in the briefs (App. Br. 5–14; Reply Br. 2–8) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments (Ans. 9–14). We disagree with Appellants’ conclusions with Appeal 2012-011476 Application 12/059,539 5 respect to the anticipation and obviousness rejections. Primarily, we disagree with Appellants’ assertion (App. Br. 7) that the Examiner has the burden of showing that Li inherently discloses the disputed limitation of a write head emitting “about a uniform flux” across a write width thereof. With regard to the anticipation rejection of representative claim 1, we agree with the Examiner’s conclusion that Li discloses, inherently or expressly, the disputed limitation recited in independent representative claim 1, “wherein the writer is characterized as emitting about a uniform flux across the write width thereof” (Ans. 3–5 and 9–14). Specifically, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 3–5), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 9–14). We find that Appellants have not met the required burden of showing that Li’s structure, which has been shown by the Examiner to be the same as Appellants’ invention recited in claim 1 (Ans. 3– 4 (citing Li ¶ 34, Figs. 14 and 16)), is not encompassed by the “wherein” clause at the end of claim 1. We concur with the conclusions reached by the Examiner, and highlight and address specific findings and arguments for emphasis as follows. Paragraph 59 of Appellants’ originally filed Specification contains the written description support for Appellants’ addition of the limitation “wherein the writer is characterized as emitting about a uniform flux across the write width thereof” to claim 1. Paragraph 59 states, “In a preferred embodiment, α [the width of the main pole 806 of the writer] is greater than about 1.5 microns. Also, the writer may be characterized as emitting about a uniform flux across the width α of the main pole 806” (Spec. ¶ 59). Appeal 2012-011476 Application 12/059,539 6 Notably, claim 1 on appeal fails to limit the dimension of the pole tip of the write head (to 1.5 microns or any other dimension). In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent upon the Examiner to establish a factual basis to support the prior art rejection – the so-called “prima facie” case. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “to produce the factual basis for its rejection of an application under sections 102 and 103” (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)) (internal quotation marks omitted)). “[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). In the instant case on appeal, the Examiner has made a prima facie case of anticipation in view of the teachings of Li (Ans. 3–5 and 9–14), including a determination that Li’s write head emits “about a uniform flux across the write width thereof” as recited in claim 1. “[A]fter the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to [A]ppellant to ‘prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”’ In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (emphasis added) (quoting In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971)). See also MPEP §§ 2112 (IV-V). In the instant case on appeal, Appellants have not provided declarations, evidence, or otherwise rebutted the Examiner’s findings, and merely provide conclusory arguments alleging the properties recited in the “wherein” clause and the end of claim 1 are not met. Appeal 2012-011476 Application 12/059,539 7 Additionally, while features of an apparatus or system may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellants have failed to structurally distinguish the prior art’s write head (which has a pole tip, return pole, and gap as recited in claim 1) from the write head recited in representative claim 1. “Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977); see also King, 801 F.2d at 1327. Appellants have not met the required burden of showing that the structure of Li, which is similar to Appellants’ structure recited in claim 1, does not necessarily result in there being “about a uniform flux across the write width” of the write head. Furthermore, we agree with the Examiner (Ans. 11–13) that under the broadest reasonable interpretation of claim 1 in light of the Specification, “about a uniform flux” encompasses the magnetic flux field 55 shown in Li’s Figure 16. In view of the foregoing, we sustain the Examiner’s anticipation rejection of sole independent and representative claim 1, as well as claims 3 and 6–8 grouped therewith, based on Li. Appeal 2012-011476 Application 12/059,539 8 Obviousness Rejection of Claims 2, 4, 5, 9, 10, and 26 With regard to the obviousness rejection of claims 2, 4, 5, 9, 10, and 26 over Li alone and/or in combination with either Nakanishi or Liikanen, Appellants argue (App. Br. 11) that the Examiner employed impermissible hindsight in modifying Li, and further rely upon the failure of Li to disclose all of the features of claim 1 from which these claims depend (App. Br. 9– 14). Because we find (i) the Examiner did not err in rejecting claim 1 under § 102(b), (ii) the Examiner’s obviousness rejections of claims 2, 4, 5, 9, 10, and 26 are based upon the findings as to claim 1 as anticipated by Li, and (iii) the Examiner provided a rationally articulated reasoning and findings in determining claims 2, 4, 5, 9, 10, and 26 to be obvious (Ans. 6–8 and 13), we find that the Examiner did not err in the rejection of claims 2, 4, 5, 9, 10, and 26. Appellants’ allegation in the Appeal Brief that “one skilled in the art would have no reason to expect that Li would provide the claimed ‘wherein the writer is characterized as emitting about a uniform flux across the write width thereof’, absent the teachings of the present application” (App. Br. 11) is not persuasive because it is merely attorney argument and is not supported by evidence in the record. See e.g., Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (arguments of counsel cannot take the place of evidence lacking in the record). In view of the foregoing, we sustain the Examiner’s obviousness rejections of claims 2, 4, 5, 9, 10, and 26 over Li, either alone or in combination of with Nakanishi or Liikanen. Appeal 2012-011476 Application 12/059,539 9 CONCLUSIONS Appellants have not adequately demonstrated that the Examiner erred in rejecting representative claim 1 as being anticipated under 35 U.S.C. § 102(b) by Li, because Li inherently or expressly discloses “wherein the writer is characterized as emitting about a uniform flux across the write width thereof,” as recited in representative independent claim 1 and Appellants have not met the required burden to show otherwise. Further, Appellants have not met the required burden of showing the obviousness rejections of claims 2, 4, 5, 9, 10, and 26 to be in error. DECISION We affirm the Examiner’s (i) anticipation rejection of claims 1, 3, and 6–8, and (ii) obviousness rejections of claims 2, 4, 5, 9, 10, and 26. 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 msc Copy with citationCopy as parenthetical citation