Ex Parte Hagiya et al

Board of Patent Appeals and Interferences

Sep 21, 2011

11153164 (B.P.A.I. Sep. 21, 2011)

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.
11/153,164 06/15/2005 Shinobu Hagiya HSJ920050044US1 8160
45552 7590 09/22/2011
HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
CASTRO, ANGEL A
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
09/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte SHINOBU HAGIYA, SHIGEO NAKAMURA, and
WING CHUN SHUM
________________

Appeal 2009-008079
Application 11/153,164
Technology Center 2600
________________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-008079
Application 11/153,164

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STATEMENT OF THE CASE
Summary
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. These claims stand rejected under 35 U.S.C.
§ 103(a) as obvious over Zhang (US 6,965,499 B1; issued Nov. 15, 2005) in
view of Subrahmanyam (US 7,006,330 B1; issued Feb. 28, 2006).
We affirm.
The Claimed Invention
Independent claim 1 is illustrative of Appellants’ claimed invention:
1. A head assembly for a data storage device comprising:
a suspension;
a contact pad coupled to said suspension, such that the
contact pad does not overlap a stainless steel edge of said
suspension, thereby allowing greater flexibility for said contact
pad;
a slider coupled to said contact pad; and
a slider mounting point on said suspension, said slider
mounting point including an adhesive pocket at least partially
bounded by polyimide standoffs, wherein said polyimide
standoffs are positioned and sized to provide an adhesive
pocket with an increased area, and wherein an edge of said
polyimide standoff closest to said contact pad is positioned such
that the effect of the solder shrinkage moment is reduced.

Appeal 2009-008079
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CONTENTIONS AND ANALYSIS
Appellants generally argue claims 1-20 together as a group (App. Br.
9-12). Appellants present an additional set of arguments with respect to
dependent claims 4-8, 13-16, and 20 (App. Br. 12-14). We therefore address
claims 1-3, 9-12, and 17-19 as a single claim grouping and select
independent claim 1 as representative of this group. See 37 C.F.R.
§ 41.37(c)(1)(vii). We separately address claims 4-8, 13-16, and 20 as a
second claim grouping.
Claims 1-3, 9-12, and 17-19
Appellants contend that Zhang, either alone or in combination with
Subrahmanyam, fails to disclose, inter alia, a slider mounting point
including an adhesive pocket that is at least partially bounded by polyimide
standoffs (App. Br. 9). This argument is not persuasive. As noted by the
Examiner (e.g., Ans. 3 (citing Zhang, Fig. 4, col. 2, ll. 6-52)), Zhang
discloses a dielectric layer 140 on which a slider is mounted. Figures 1-4
depict a dielectric cross member 142 and three unlabeled strips of dielectric
disposed in the head slider mounting region 124. Appellants have not
provided any reason that would preclude these dielectric strips from being
interpreted as constituting “standoffs.” Moreover, the Examiner has taken
the position that although Zhang does not state what the dielectric may be
composed of, it would have been obvious to have made Zhang’s dielectric
layer specifically from polyimide because Subrahmanyam teaches that
polyimide was conventionally used for the dielectric standoff on which a
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slider is mounted (Ans. 4). Appellants have not disputed Subrahmanyam
teaches this feature (see App. Br. 9-14). Accordingly, we find that the
combination of Zhang and Subrahmanyam discloses all of the limitations of
independent claim 1. See also 37 C.F.R. § 41.37(c)(1)(vii) (2006)
(establishing that “[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim”).
Appellants further contend “there is no motivation to combine the
teachings of Zhang in view of Subrahmanyam to obtain the resultant
features, because both [references] teach away from the suggested
modification” (App. Br. 9). They more specifically argue that the present
claims include the feature,
“a slider mounting point on said suspension, said slider
mounting point including an adhesive pocket at least partially
bounded by polyimide standoffs, wherein said polyimide
standoffs are positioned and sized to provide an adhesive
pocket with an increased area, and wherein an edge of said
polyimide standoff closest to said contact pad is positioned such
that the effect of the solder shrinkage moment is reduced”
(App. Br. 10 (citing claim 1)). Appellants attempt to contrast this claim
language from Zhang, which they contend teaches
reducing the mechanical and thermal effects of the bonding
process on the flexure of the head suspension by providing
various configurations for mechanically and thermally isolating
the trace bonding pads from the head slider mounting regions,
while positioning the trace bonding pads adjacent to the
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location of the slider bonding region to facilitate bonding
between the pads and the slider.
(App. Br. 10) (emphasis omitted). That is, Appellants argue “Zhang teaches
a different method for dealing with the problem the present Application
addresses” (App. Br. 10).
It is not entirely clear which particular claim element(s) of the lengthy
recited claim limitation Appellants are alleging the cited art fails to teach.
“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim” (C.F.R.
§ 41.37(c)(1)(vii) (2006)). Assuming, though, Appellants are contending
that Zhang’s standoffs neither (1) provide an adhesive pocket with an
increased area, nor (2) reduce the solder shrinkage moment, this argument
would not be persuasive. The claim language, “increased area” and
“[reduced] solder shrinkage moment,” are relative terms. Neither the claims
nor the Specification provides any reasonable objective standard by which
one of ordinary skill would be able to ascertain how big an adhesive pocket
has to be in order to be deemed to have an “increased area” per claim 1 or
how small a solder shrinkage moment would have to be in order to constitute
being “reduced.”1 In light of this ambiguity, the combined teachings of
Zhang and Subrahmanyam can be said to teach these claim limitations in
that the disclosed adhesive pocket area is capable of being made smaller

1 Upon further prosecution, the Examiner should consider whether at least
independent claims 1, 10, and 18 should be rejected under 35 U.S.C. § 112,
¶ 2 for indefiniteness.
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than depicted by Zhang. Likewise, the dielectric cross member 142 (“the
standoff closest to the contact pad” as recited in claim 1) is capable of being
alternatively positioned so as to allow bonding pads 132 of traces 130 to
partially overhang the dielectric cross member 142, which would increase
the solder shrinkage moment.
Furthermore, the only modification the rejection proposes is to
employ a specific material (polyimide) for a standoff layer that Zhang
discloses generically (dielectric). Subrahmanyam teaches that polyimide
was conventionally used for the exact same application – as a standoff layer
for a head slider (e.g., col. 2, ll. 7-9). Appellants have pointed to no
evidence that would indicate Subrahmanyam teaches away from using
polyimide for a head slider standoff layer.
For the forgoing reasons, Appellants have not persuaded us of error in
the Examiner’s obviousness rejection of representative claim 1. Thus, we
will sustain the Examiner’s rejection of that claim and claims 2, 3, 9-12, and
17-19, which were not separately argued.
Claims 4-8, 13-16, and 20
Claims 4-8, 13-16, and 20 differ from claims 1-3, 9-12, and 17-19 in
that dependent claims 4-8, 13-16, and 20 narrow the subject matter of
independent claims 1, 10, and 18 so as to recite objective dimensions or
standards by which one of ordinary skill would be able to ascertain the metes
and bounds of at least some of the claims’ features. Claims 4, 6, and 7 are
illustrative:
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4. The head assembly of Claim 1, wherein said slider
comprises a femto format slider.2
6. The head assembly of Claim 1, wherein said polyimide
standoff is no more than 0.085mm from the edge of said contact
pad.
7. The head assembly of Claim 1, wherein the edge of the
stainless steel layer of said suspension is no more than 0.025
mm from the edge of said polyimide standoff.
The Examiner takes the position that the cited prior art fails to teach
the dimensions recited in any of claims 4-8, 13-16, and 20, but nonetheless
finds that it “is [sic: was] notoriously old and well known in the magnetic
head art to modify the parameters of a magnetic head during the course of
routine optimization/experimentation” (Ans. 4). The Examiner thus
concludes these claim limitations to be obvious because the various
dimensions lacked any criticality and/or unexpected results (Ans. 5).
Appellants contend that the Examiner has provided inadequate
support for taking Official Notice (App. Br. 13-14). Appellants argue that it
was not well known or common knowledge to position the edge of the
polyimide standoff such that the effect of the solder shrinkage moment is
reduced (App. Br. 13).
This argument is not persuasive. Regardless of whether it was known
to position the edge of the polyimide standoff for the specific purpose of
reducing the solder shrinkage moment, it would have been obvious, for other

2 Appellants’ Specification indicates that Femto sliders were conventionally
known, having a footprint of 0.85mm by 0.7mm (Spec. 3).
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reasons, to position the standoff in a manner that has the effect of reducing
the solder shrinkage moment. For example, the record indicates that
miniaturization of slider heads was a known industry goal (e.g., Spec.
¶ [0007]). It was also known to fill the adhesive pocket, formed by the
standoffs, with an epoxy or other adhesive (e.g., Subrahmanyam, col. 5, l. 67
– col. 6, l. 3; see also, Spec. ¶ [0007] (acknowledging that known Femto
sliders conventionally employed epoxy within the standoffs to assist in
securing the slider to the suspension)). One of ordinary skill would have
readily understood that adhesion of the slider to the suspension would
increase as the area of the slider and suspension covered with an adhesive
increases. One of ordinary skill also would have readily understood that the
slider would be more stable, and less prone to wobble, as the supporting
standoffs are moved on the suspension towards the periphery of the slider.
As such, one of ordinary skill would have been motivated to make the
adhesive pocket as large as possible and have the pair of Zhang’s standoffs,
which extend perpendicular to dielectric cross member 142, extend as close
as possible to the face of the slider containing the slider boding pads 106 for
maximizing both adhesion and stability. That is, one of ordinary skill would
have understood that choosing the dimensions of the suspension’s apertures
128, and choosing how far the dielectric cross member 142 is offset from the
edge of the suspension’s apertures 128, would have constituted balancing the
tradeoff between stability and thermal isolation.
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Moreover, the record contains no evidence of any secondary
considerations that would have led a person of ordinary skill to believe that
positioning the standoffs in the manner recited in any of claims 4-8, 13-16,
and 20 would have been technologically difficult or impractical. For
example, the Specification contains no indication that positioning the
standoffs so as to satisfy any of the claimed distance limitations posed any
manufacturing challenges or would have been restricted by any
manufacturing limitations.3
Because common-sense reasons existed for positioning the standoffs
within the dimensions recited by dependent claims 4-8, 13-16, and 20,
Appellants have not persuaded us that the Examiner erred in finding the
claimed dimensions constitute obvious optimizations or art-recognized
parameters. Accordingly, we will sustain the Examiner’s obviousness
rejection of dependent claims 4-8, 13-16, and 20.

3 In fact, the language of claim 6 does not even appear in the written portion
of the Specification. A fortiori, the Specification contains no disclosure of
any challenge in achieving the dimensional relationship claimed therein.
This lack of support in the written description of the Specification has no
actual bearing on the rejection of claim 6, though, as Zhang depicts the
bonding pads 132 being disposed directly on the dielectric cross member
142 (or “no more than 0.085mm from the edge of the contact pad” as recited
in claim 6).
Appeal 2009-008079
Application 11/153,164

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DECISION
The Examiner’s decision rejecting claims 1-20 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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