Ex Parte Gunder et al

Patent Trial and Appeal Board

Oct 29, 2012

11238786 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/238,786 09/29/2005 Jeffrey P. Gunder 15872.0104US01/HSJ9200402 9118
23552 7590 10/29/2012
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
KLIMOWICZ, WILLIAM JOSEPH
ART UNIT PAPER NUMBER
2688
MAIL DATE DELIVERY MODE
10/29/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY P. GUNDER, IAN R. MCFADYEN,
DARRICK T. SMITH, SCOTT A. THOMAS,
and XIAO Z. WU
____________________

Appeal 2010-005732
Application 11/238,786
Technology Center 2600
____________________

Before: MAHSHID D. SAADAT, ROBERT E. NAPPI, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005732
Application 11/238,786
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8
and 12-15.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The invention is directed to a lapping method and station to achieve
tight dimension controls for both read and write elements of magnetic
recording heads and magnetic storage device formed thereby. Claim 8,
reproduced below, is illustrative of the claimed subject matter:
8. A method for controlling stripe height and throat height of a
recording head, comprising:
measuring a read-write offset;
providing the measured read-write offset to a lapping process;
and
lapping the read and write head while applying a torque force to
achieve a target wedge angle for canceling the measured read-
write offset to provide a target stripe height for the read head
and a target throat height for the write head.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dovek US 6,884,148 B1 Apr. 26, 2005

REJECTIONS
The Examiner made the following rejections:

1 Claim 16 was objected to as being considered allowable over the art of
record. Claims 1-7 and 18-22 were withdrawn from further consideration.
Claims 9-11 and 17 were canceled.
Appeal 2010-005732
Application 11/238,786
3
Claims 8 and 12-14 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Dovek. Ans. 3.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dovek. Ans. 8.

Appellants’ Contention2
Appellants contend that the Examiner erred in rejecting claim 8 under
35 U.S.C. § 102(e) as being anticipated by Dovek because the reference fails
to disclose lapping the read and write heads while applying a torque force to
cancel the measure read-write offset. App. Br. 7.

Issue on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-8)
and the Reply Brief (Reply Br. 1-4), the issue presented on appeal is:
Did the Examiner err in concluding that Dovek discloses lapping the
read and write heads while applying a torque force to cancel the measure
read-write offset as required by independent claim 8?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
concur with Appellants’ conclusions that the Examiner erred in finding that
Dovek discloses lapping the read and write heads while applying a torque
force to cancel the measure read-write offset as required by claim 8.

2 As our resolution of this contention is dispositive of the outcome of the
appeal, we do not address Appellants’ other contentions of error.
Appeal 2010-005732
Application 11/238,786
4
The Examiner has taken the position that controlling lapping wedge
angle α is performed by adjusting the applied torque. See Ans. 4, 7, 10 and
12-13. However, the Examiner had failed to provide persuasive evidence
that Dovek’s disclosure of controlling lapping wedge angle α is disclosed as
being performed by adjusting the applied torque.
We therefore agree with Appellants that the Examiner has erred by
failing to provide persuasive evidence of how Dovek discloses lapping the
read and write heads while applying a torque force to cancel the measure
read-write offset as required by independent claim 8. Accordingly, we will
not sustain the Examiner’s rejection of independent claim 8 and dependent
claims 12 through 14 under 35 U.S.C. § 102(e).
The Examiner’s obviousness rejection of dependent claim 15,
similarly relies upon the Dovek to teach the limitations of claim 8.
Accordingly we will not sustain the Examiner’s rejection of claim 15 for the
same reasons as claim 8.

CONCLUSIONS
The Examiner has erred in rejecting claims 8 and 12-14 under 35
U.S.C. § 102(e) as being anticipated by Dovek. For the same reasons, the
Examiner has also erred in rejecting dependent claim 15 under 35 U.S.C. §
103(a) as being unpatentable over Dovek.

DECISION
The rejections of claims 8 and 12-15 are reversed.

REVERSED

Appeal 2010-005732
Application 11/238,786
5

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