Ex Parte Itagi et al

Board of Patent Appeals and Interferences

Mar 16, 2010

11106980 (B.P.A.I. Mar. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte AMIT V. ITAGI, DANIEL D. STANCIL,
TUVIAH E. SCHLESINGER, and JAMES A. BAIN
_____________

Appeal 2009-004191
Application 11/106,980
Technology Center 2600
______________

Decided: March 16, 2010
_______________

Before, ROBERT E. NAPPI, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004191
Application 11/106,980
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejections of these claims.

INVENTION
The invention is directed to an apparatus that directs optical energy
onto a recording medium in a way that increases throughput efficiencies and
reduces optical spot size. See Spec: 1-3. Claim 1 is representative of the
invention and reproduced below:
1. A transducer, comprising:
a waveguide including a ridge and defining an aperture
having an end lying in a plane; and
a protrusion extending from the ridge beyond the plane.

REFERENCES
Challener US 2003/0184903 A1 Oct. 2, 2003

Rettner 6,975,580 B2 Dec. 13, 2005
(filed Feb. 28, 2002)

Stancil 6,999,384 B2 Feb. 14, 2006
(filed Sep. 27, 2002)

REJECTIONS AT ISSUE
Claims 1-2, 4-6, 8-12, 14-16, and 18-20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Challener in view of Rettner.
Ans. 3-7.
Claims 3, 7, 13, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Challener in view of Rettner and Stancil. Ans. 7.
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Application 11/106,980

ISSUE
Rejection of claims 1-20 under 35 U.S.C. § 103(a)
Appellants argue on pages 4-7 of the Appeal Brief and pages 2-4 of
the Reply Brief that the Examiner’s rejection of claim 1 is in error.
Appellants argue that none of the references disclose “a protrusion
extending from the ridge beyond the plane” as required by claim 1. Reply
Br. 2. Appellants present similar arguments directed to claims 2-20 on
pages 7-11 of the Appeal Brief and page 4 of the Reply Brief.
Thus, with respect to claims 1-20, Appellants’ contentions present us
with the issue: does Challener in view of Rettner and Stancil teach a
protrusion extending from the ridge beyond the plane?1
FINDINGS OF FACT (FF)
Rettner
1. Rettner discloses an apparatus that facilitates thermally-assisted
recording of data. Col. 1, ll. 15-19 and col. 2, ll. 58-59.
2. The apparatus contains a waveguide with a single ridge or a periodic
array of ridges located on both sides of an aperture. Col. 8, ll. 8-10
and Figs. 9A and 9B.
3. The ridges can protrude either into a dielectric material associated
with the waveguide or directly into the waveguide. Col. 8, ll. 11-13
and Figs. 9A and 9B.

1 Appellants make additional arguments regarding claims 1-20. App. Br. 3-
11; Reply Br. 2-4. We do not reach these additional issues as resolution of
this issue is dispositive of the case.
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Appeal 2009-004191
Application 11/106,980
4. The ridges are not visible when viewed from the perspective of the
magnetic disk and they do not extend beyond the aperture. Col. 9, ll.
19-22 and Fig. 9B.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).

ANALYSIS
Rejection of claims 1-20 under 35 U.S.C. § 103(a)
Appellants’ arguments have persuaded us of error in the rejection of
claims 1-20. Claim 1 recites “a waveguide including a ridge and defining an
aperture having an end lying in a plane; and a protrusion extending from the
ridge beyond the plane.” Appellants and the Examiner agree that Challener
discloses a waveguide including a ridge and defining an aperture having an
end lying in a plane: i.e., the plane that is formed by the waveguide’s bottom
surface, or “air bearing surface.” Ans. 3; App. Br. 4-5. The parties further
agree that Challener discloses a recess extending from the plane of the air
bearing surface into the waveguide’s ridge – not a protrusion extending from
the ridge beyond the plane. Id. The Examiner further finds, though, that
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Application 11/106,980
Rettner discloses protrusion ridges that protrude beyond a plane. Ans. 3.
Appellants argue that Rettner discloses ridges that are parallel to the
magnetic disk and are therefore parallel to the plane and do not extend
beyond a plane. App. Br. 7; Reply Br. 3. We agree with Appellants.
Rettner discloses a single ridge or a periodic array of ridges that
protrude into a dielectric material and are arranged on both sides of an
aperture. FF 2. Alternatively, the ridge or ridges may be built into the
waveguide directly. FF 3. In either situation, though, these ridges cannot be
seen when viewed from the disk because the ridges do not extend beyond the
end of the aperture, but rather, are parallel to the end of the aperture that lies
in a plane. FF 4. That is, Rettner’s ridges extend from the top – not bottom
– surface of metallic layer 206. As such, Rettner’s ridges extend in a
direction that is away from the plane of the air bearing surface –not beyond
the plane of the air bearing surface. Therefore, we do not agree with the
Examiner that Rettner’s protrusions extend beyond the plane. As a result,
we will not sustain the Examiner’s rejection of claims 1-20. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974) (noting that in order to establish
prima facie obviousness of a claimed invention, all of the claim limitations
must be taught or suggested by the prior art).

CONCLUSION
Appellants have shown that Challener in view of Rettner and Stancil
does not teach a protrusion extending from the ridge beyond the plane.

DECISION
The Examiner’s decision to reject claims 1-20 is reversed.
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Appeal 2009-004191
Application 11/106,980

REVERSED

ELD

LARA A. NORTHROP
PIETRAGALLO, BOSICK & GORDON
ONE OXFORD CENTER, 38TH FLOOR
301 GRANT STREET
PITTSBURGH, PA 15219
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