Ex Parte Giorgi et al

Patent Trial and Appeal Board

Feb 6, 2015

12059539 (P.T.A.B. Feb. 6, 2015)

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

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Application 12/059,539

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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 Claims 16–21, 23, and 24 were withdrawn from further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:

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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).
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(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
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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).
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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.
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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.
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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.

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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

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