Ex Parte Hagiya et al

Board of Patent Appeals and Interferences

Oct 29, 2010

11152938 (B.P.A.I. Oct. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/152,938 06/15/2005 Shinobu Hagiya HSJ920050043US1 7526
45552 7590 10/29/2010
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
10/29/2010 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 2009-008357
Application 11/152,938
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JOHN C. MARTIN, and
MAHSHID D. SAADAT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008357
Application 11/152,938

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
Claim 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.

Rejections
1. The Examiner rejected claims 1-4, 7-11, 14-17, and 20 under 35
U.S.C. § 102(b) as being anticipated by Schott U. S. Patent No. 6,349,017
(hereinafter “Schott”).
2. The Examiner rejected claims 5, 6, 12, 13, 18, and 19 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Schott and
Tian et al. U. S. Patent Application Publication No. 2005/0231852
(hereinafter “Tian”).
Appellants’ Contentions
1. At pages 8-9 of the Appeal Brief, Appellants contend that the
Examiner erred in rejecting claims 1-4, 7-11, 14-17, and 20 under 35 U.S.C.
§ 102(e) [sic] as being anticipated by Schott because (App. Br. 8):
Appeal 2009-008357
Application 11/152,938

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Appellants respectfully submit that Independent Claim 1
(and similarly Independent Claims 8 and 15) includes the
feature: "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" (emphasis added).
In other words, as shown in Figures 9 and 10, there is no
portion of the contact pad 950 that is above the stainless steel
layer 930. For example, as shown at least in Figures 9, there are
at least two standoff regions 955 and 957 which illustrate the
distance between the edge of the contact pad 950 and the edge
of the stainless steel layer 930. As stated herein, the lack of
overlap allows greater flexibility for the contact pad.
2. At pages 11-13 of the Appeal Brief, Appellants contend that the
Examiner erred in rejecting claims 5, 6, 12, 13, 18, and 19 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Schott and
Tian et al. U. S. Patent Application Publication No. 2005/0231852
(hereinafter “Tian”) because (App. Br. 11-12):
With respect to the combination of Tian as presented in
the Present Office Action, Appellants respectfully submit that
inadequate support of a finding of obviousness has been
provided. That is, Appellants respectfully submit that the
claimed embodiments of a modification of a femto slider based
on a Pemto or Femto-L type slider (or other combinations), is
not common knowledge or obvious as asserted by the Office
Action. In fact, Appellants respectfully submit that cost savings
including manufacturing and materials requirements and
procedures would more obviously and commonly be used to
suggest or even dictate a motivation for differences between
different slider types (emphasis added).
Further, Appellants respectfully submit that the
modification is not necessarily as simple as reducing the size of
the drive. Moreover, Appellants respectfully submit that the
motivation to modify the components as claimed in the present
Appeal 2009-008357
Application 11/152,938

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Application is not a "normal" methodology when making things
smaller.
Issues on Appeal
Whether the Examiner has erred in rejecting claims 1-4, 7-11, 14-17,
and 20 as being anticipated?
Whether the Examiner has erred in rejecting claims 5, 6, 12, 13, 18,
and 19 as being obvious?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions.
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusion reached by the
Examiner.
As to Appellants’ contention 1 above, the Examiner correctly points
out that “the contact pad [of Schott] does not overlap a stainless steel edge of
the suspension.” (Ans. 5). Appellants’ argument that “there is no portion of
the contact pad 950 that is above the stainless steel layer 930” (App. Br. 8)
is misguided as it ignores Appellants’ actual negative claim requirement that
“the contact pad does not overlap a stainless steel edge of said suspension.”
(Emphasis added). Contrary to Appellants’ argument, this negative claim
limitation does not preclude the contact pad from overlapping any other
portion of the suspension.
Appeal 2009-008357
Application 11/152,938

5
As to Appellants’ contention 1 above, Appellants essentially argue
that the rejection fails because “a modification of a femto slider based on a
Pemto or Femto-L type slider (or other combinations), is not common
knowledge.” (App. Br. 11). However, Appellants’ own disclosure
implicitly admits that such must be common knowledge as the disclose relies
on such knowledge of an artisan and fails to discuss how a Femto (or Pemto
or Femto-L) slider is to be implemented except for stating that:
According to one embodiment, slider 310 is a femto
slider. (¶ [0026]).
According to one embodiment, slider 510 is a femto
slider. (¶ [0028]).
According to one embodiment, slider 710 is a femto
slider. (¶ [0031]).
According to one embodiment, slider 910 is a femto
slider. (¶ [0033]).
The only other discussion of Femto, Pemto, and Femto-L type sliders
by Appellants is found in the “Related Arts” at paragraphs [0006]-[0008] of
the Appellants’ Specification:
This continual reduction in size has placed steadily
increasing demands on the technology used in the HGA,
particularly in terms of power consumption, shock
performance, and disk real estate utilization. One recent
advance in technology has been the development of the Femto
slider, which is roughly one-third of the size and mass of the
older Pico slider, which it replaces; over the past 23 years,
slider size has been reduced by a factor of five, and mass by a
factor of nearly 100.
Some of the recent improvement has resulted from
techniques relating to the integrated lead suspension (ILS). An
ILS includes contact pads, typically made of copper, attached to
the suspension. A slider is also attached to the suspension with
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Application 11/152,938

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epoxy or another adhesive, and the contact pads are connected
to the slider by means of a solder ball. The Pico slider has a
footprint of 1.25 mm by 1 mm, and sat directly on the
suspension. The Femto slider has a footprint of 0.85 mm by 0.7
mm, meaning it has less than half the available surface area for
bonding of the larger Pico slider. Further complicating this are
process constraints, which require the presence of polyimide
standoffs for the Femto slider to sit on which were not required
for the Pico slider. These standoffs further reduce the available
area for bonding of the slider by the adhesive. Other slider
formats, such as the Pemto or Femto-L (0.7 mm wide, but
greater than 0.85 mm long), also have reduced slider bonding
areas and can benefit from the present invention.
When the solder ball cools and resolidifies, it shrinks.
This exerts a moment, hereinafter the "solder shrinkage
moment," on the Femto slider, with the polyimide standoff
closest to the solder ball acting as a fulcrum. This moment is
not adequately countered by the adhesive moment used to hold
the Femto slider to the suspension, because of the very limited
area for adhesive on the current suspension. This results in a
pitch static attitude (PSA) tilt to the slider after solder ball bond
termination. This PSA tilt pulls the slider out of the most
desirable position.
Appellants’ argument that the Examiner has erred in finding 5, 6, 12,
13, 18, and 19 to be obvious, is contradicted by Appellants’ own reliance on
common knowledge in the art.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-4, 7-11, 14-17,
and 20 as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 5, 6, 12, 13, 18,
and 19 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-20 are not patentable.
Appeal 2009-008357
Application 11/152,938

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DECISION
The Examiner's rejections of claims 1-20 are 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)(v).

AFFIRMED

KIS

HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076