Ex Parte Karr et al

Patent Trial and Appeal Board

Dec 27, 2012

11265629 (P.T.A.B. Dec. 27, 2012)

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.
11/265,629 11/02/2005 Brian William Karr S01.12-1084/STL 12654 6678
27365 7590 12/27/2012
SEAGATE TECHNOLOGY LLC
C/O WESTMAN, CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3244
EXAMINER
KLIMOWICZ, WILLIAM JOSEPH
ART UNIT PAPER NUMBER
2686
MAIL DATE DELIVERY MODE
12/27/2012 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 BRIAN WILLIAM KARR, ERIC WALTER SINGLETON, and
QING HE
____________________

Appeal 2010-012345
Application 11/265,629
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J.
DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012345
Application 11/265,629

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6, and 9-23. Claims 5, 7, and 8 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Disclosure and Claims
Appellants’ disclosed invention relates to thin film magnetoresistive
sensors used in disc drives (Fig. 1; Spec. 9:3-18; Abs.).
Claims 1, 9, 15, and 21 are independent. Claims 1-4, 6, and 21-23
recite magnetoresistive sensors, claims 9-14 recite magnetic sensors, and
claims 15-20 recite tunneling magnetoresistive sensors. Exemplary
independent claim 1 under appeal reads as follows:
1. A magnetoresistive sensor, comprising:

a synthetic anti-ferromagnetic structure including a magnetic
layer comprising magnetic material and a grain refining
agent that comprises boron, the magnetic layer having a
grain-refined magnetic layer surface;

a thin film stack adjacent the grain-refined magnetic layer
surface, the thin film stack having a stack surface that
conforms to the grain-refined magnetic layer surface;

a seed layer supporting the synthetic anti-ferromagnetic
structure;

a shield layer formed of magnetic material supporting the seed
layer; and

the magnetic layer comprises cobalt, iron and boron in ratios of
(Co100-xFex)100-yBy where B is the grain refining agent, x
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is in the range of 0-50% atomic, and y is in the range of
1- 15% atomic.

Examiner’s Rejection
The Examiner rejected claims 1-4, 6, and 9-23 as being unpatentable
under 35 U.S.C. § 103(a) over Parkin (US 2005/0110004 A1), Horng (US
2004/0252418 A1), and Fontana, Jr. (US 5,701,223). Ans. 3-14.
Examiner’s Findings and Conclusion
The Examiner rejects independent claims 1, 9, 15, and 21 and the
corresponding dependent claims over the combination of Parkin, Horng, and
Fontana, Jr. (Ans. 3-14), finds what Parkin does not teach, Horng does
(Ans. 6-7), explains the motivation to combine the teachings of Horng with
those of Parkin (Ans. 7), finds what Parkin-Horng do not teach, Fontana
does (Ans. 8-9), and explains the motivation to combine Fontana with
Parkin-Horng (Ans. 9). The Examiner concludes that ample motivation was
provided for the combination (Ans. 15-18).
Appellants’ Contentions
With regard to independent claims 1, 9, 15, and 21, Appellants argue
that the Examiner did not have proper motivation to combine Parkin, Horng,
and Fontana but instead relied upon hindsight reasoning (App. Br. 9-11;
Reply Br. 3-4). Appellants contend that “[o]rdinary skill in the art at the
time of the invention was insufficient to make the selection of references,
and insufficient to select the particular elements in the claimed
combinations” (App. Br. 10).
Appellants contend (App. Br. 11) that the Examiner erred in rejecting
claims 2-4, 6, 10-20, 22, and 23 for the same reasons argued with respect to
claims 1, 9, 15, and 21.
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Application 11/265,629

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Appellants contend that the Examiner’s Answer contain new grounds
of rejection because the Examiner “[made] changes to the grounds for
rejection [that] are so extensive as to change the thrust” (Reply Br. 1-2).
Issue on Appeal
Based on Appellants’ arguments, the following issue is presented for
appeal:
Did the Examiner err in rejecting claims 1-4, 6, and 9-23 as being
obvious because Parkin, Horng, and Fontana, Jr. are not properly
combinable?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 9-12) and the Reply Brief (Reply
Br. 1-4) 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 (see Ans. 3-14). We concur with the conclusions
reached by the Examiner.
If a prima facie case of obviousness is established, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
To establish a prima facie case of obviousness, so as to meet the notice
required of 35 USC § 132, requires (1) “set[ting] forth the statutory basis of
the rejection”; (2) “the reference or references relied upon”; and (3)
explaining the references “in a sufficiently articulate and informative
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Application 11/265,629

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manner.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Further, there
must be (4) “a reason to combine prior art references[, which] is a question
of fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
1367 (Fed. Cir. 2012) (internal citations omitted). Also, an obviousness
determination cannot rest upon impermissible hindsight reasoning, and to
guard against hindsight reasoning the Federal Circuit “flexibly seeks
evidence from before the time of the invention in the form of some teaching,
suggestion, or even mere motivation (conceivably found within the
knowledge of an ordinarily skilled artisan) to make the variation or
combination.” Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d
1325 (Fed. Cir. 2010) (internal citations omitted).
The Examiner has provided articulated reasoning with a rational
underpinning to support the combination for the legal conclusion of
obviousness, i.e., set forth a prima facie case of obviousness in rejecting
claims 1-4, 6, and 9-23 under §103(a) over Parkin, Horng, and Fontana, Jr.
(Ans. 3-14). In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We agree with
the Examiner that the combination of Parkin, Horng, and Fontana, Jr. meets
all of the magnetoresistive sensor limitations set forth in claims 1, 9, 15, and
211 and that it would have been obvious to combine Parkin, Horng, and
Fontana, Jr. Indeed, the Examiner explains in detail the reasons that would
motivate an ordinarily skilled artisan to combine: (1) the teachings of Horng
with those of Parkin (Ans. 6-7 and 16-17) and (2) the teachings of Fontana,
Jr. with those of Parkin and Horng (Ans. 8-9 and 17-18). Thus, the

1 The examiner element-to-element matched the features of the references to
the limitations of the claims in a sufficiently articulate and informative
manner (see, e.g., discussion of claim 1 at Ans. 3-4 and 6-9).
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examiner has met the prima facie showing and the burden of persuasion
shifts to Appellants to demonstrate non-obviousness.2
Appellants conclude the Examiner’s obviousness determination is
hinged upon impermissible hindsight. To support their conclusions of
hindsight, Appellants present conclusory statements that such combination
of references would require more than ordinary skill in the art (App. Br. 9-
10). Appellants’ conclusory statements are unsupported by factual
evidence. Arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also, while not
required to, Appellants have not submitted evidence of secondary
considerations. Evidence of secondary considerations “may also serve a
guard against slipping into use of hindsight.” Kahn, 441 F.3d at 986
(quoting Graham v John Deere Co., 383 U.S. 1, 36 (1966)). Therefore, we
accord very little probative value to Appellants’ conclusory statements that
combining the teachings of Parkin, Horng, and Fontana, Jr. required more
than ordinary skill in the art.
Appellants’ contention that the Examiner’s Answer contain new
grounds of rejection (Reply Br. 1-2) is unpersuasive because Appellants
responses to the alleged new grounds of rejection (see Reply Br. 3-4) are
merely directed to hindsight and lack of motivation to combine (the same
issues raised by Appellants in the Appeal Brief), without any supporting
evidence. Accordingly, we do not find that the Examiner has applied any

2 Once the Examiner has satisfied the burden of presenting a prima facie
case of obviousness, the burden then shifts to Appellants to present evidence
and/or arguments that persuasively rebut the Examiner's prima facie case.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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new grounds or thrust of the rejection or that Appellants have responded to
any alleged new grounds with arguments any different than those arguments
already presented.
In view of the foregoing, Appellants’ contentions (App. Br. 9-12;
Reply Br. 3-4) that that it would not have been obvious to combine Parkin,
Horng, and Fontana, Jr. because the Examiner’s reasoning is conclusory and
involves hindsight are unconvincing. Appellants have not sufficiently
shown that the Examiner erred in finding that it would have been obvious to
modify Parkin with the teachings of Horng and Fontana, Jr. or that the
combination of Parkin, Horng, and Fontana, Jr. teaches or suggests the
magnetoresistive sensors recited in claims 1 and 21, the magnetic sensor
recited in claim 9, and the tunneling magnetoresistive sensor recited in claim
15. Accordingly, we will sustain the obviousness rejection of claims 1, 9,
15, and 21 based upon the combined teachings and suggestions of Parkin,
Horng, and Fontana, Jr.
Appellants have not sufficiently shown that the Examiner erred in
rejecting claims 2-4, 6, 10-20, 22, and 23 under § 103(a) over Parkin, Horng,
and Fontana, Jr. Accordingly, we will sustain the obviousness rejection of
claims 2-4, 6, 10-20, 22, and 23 for similar reasons as discussed with regard
to claims 1, 9, 15, and 21.

CONCLUSION
The Examiner has not erred in rejecting claims 1, 9, 15, and 21 as
being obvious because Parkin, Horng, and Fontana, Jr. are properly
combinable.

Appeal 2010-012345
Application 11/265,629

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DECISION
The Examiner’s rejection of claims 1-4, 6, and 9-23 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)(iv).

AFFIRMED

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