Ex parte KATASE et al.

Board of Patent Appeals and Interferences

Dec 22, 1999

08366448 (B.P.A.I. Dec. 22, 1999)

Application for patent filed December 30, 1994. 1
According to appellants, the application is a continuation of
Application 07/952,920, filed September 28, 1992, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHUNICHI KATASE
and SIGEO TAMURA
_____________
Appeal No. 1997-1321
Application 08/366,4481
______________
HEARD: December 6, 1999
_______________
Before HAIRSTON, BARRETT and DIXON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2,
Appeal No. 1997-1321
Application No. 08/366,448
2
3, 5 through 7, 21, 24 through 29, 32 and 34.
Appeal No. 1997-1321
Application No. 08/366,448
3
The disclosed invention relates to a magnetic head with a
slider. The slider has at least one trace formed by a process
that will induce a strain in a groove between the air bearing
surfaces of the slider. The strain controls the degree of
flatness of the air bearing surfaces.
Claim 21 is the only independent claim on appeal, and it
reads as follows:
21. A magnetic head with a slider, wherein said slider
has at least two air bearing surfaces in a medium opposing
surface, said slider also having a surface remote from the
medium opposing surface, said slider having at least one trace
of processing, said trace of processing arranged on a linear
line imaginarily drawn on a groove between the air bearing
surfaces, said trace of processing formed by a process
selected from machining, irradiating laser, electron rays, ion
beams, or ultrasonic waves, or by injecting fine abrasive
particles to the slider, so that said trace induces a strain
in the groove between the air bearing surfaces, said strain
controlling the degree of flatness of the air bearing
surfaces, wherein said air bearing surfaces are either all
convex or all concave.
Appeal No. 1997-1321
Application No. 08/366,448
Copies of the translations of the references are2
attached.
4
The Japanese patent applications relied on by the2
examiner are:
Tagawa 58-88872 May 27, 1983
(Japanese Kokai)
Tagawa 60-52978 Mar. 26, 1985
(Japanese Kokai)
Ide et al. (Ide) 63-7575 Jan. 13, 1988
(Japanese Kokai)
Kojima et al. (Kojima) 2-210678 Aug. 22, 1990
(Japanese Patent Application)
Claims 2, 3, 5, 21, 24, 26 and 27 stand rejected under
35 U.S.C. § 102(b) as anticipated by Tagawa ‘872 or, in the
alternative, under 35 U.S.C. § 103 as being unpatentable over
Tagawa ‘872.
Claims 6, 28, 29 and 32 stand rejected under 35 U.S.C. §
103 as being unpatentable over Tagawa ‘872.
Claims 2, 3, 5, 21, 24, 26, 27 and 29 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Tagawa ‘978
or, in the alternative, under 35 U.S.C. § 103 as being
unpatentable over Tagawa ‘978.
Claims 7, 28 and 32 stand rejected under 35 U.S.C. § 103
as being unpatentable over Tagawa ‘978.
Appeal No. 1997-1321
Application No. 08/366,448
5
Claim 34 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Tagawa ‘872 in view of Ide.
Claims 2, 3, 5 through 7, 21, 24 through 27 and 29 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Kojima or, in the alternative, under 35 U.S.C. § 103 as being
unpatentable over Kojima.
Reference is made to the brief and the answer for the
respective positions of the appellants and the examiner.
OPINION
All of the rejections are reversed.
The examiner met his initial burden of presenting a prima
facie case of unpatentability by demonstrating that the
product-by-process “claims are directed to the product per se”
(Answer, pages 3, 4 and 8), that Tagawa ‘872 has
grooves/traces 3a perpendicular to the air bearing surfaces
1a, that Tagawa ‘978 has grooves/traces 3a parallel to the air
bearing surfaces 1a, and that Kojima has grooves/traces
parallel to the air bearing surfaces 2.
Appellants do not dispute the examiner’s position
concerning product-by-process claims (Brief, pages 11 and 16).
Nor do appellants deny that grooves have been placed in
Appeal No. 1997-1321
Application No. 08/366,448
6
sliders before appellants’ invention (Brief, page 7).
Although the grooves in each of the references is made by
a chemical etching process, the examiner nevertheless
concludes (Answer, pages 15 and 16) that a strain would be
induced in each of the sliders.
If the examiner has met his initial burden of presenting
a prima facie case of unpatentability, then the burden of
coming forward with evidence or argument shifts to applicants.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Thereafter, the ultimate determination of
patentability is made on the entire record. In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). In
rebuttal to the examiner’s prima facie case of
unpatentability, appellants provided a copy of an excerpt from
Metals Handbook, Ninth Edition, Vol. 16, page 583, which
clearly states that chemical milling of the surface of a
material does not induce stress in the material because
“neither mechanical deformation nor exposure to high
temperatures is involved.”
In the absence of any evidence in the record that states
otherwise, we must agree with appellants that the evidence in
Appeal No. 1997-1321
Application No. 08/366,448
7
the Metals Handbook teaches that the teachings of the applied
references do not encompass an induced strain “in the groove
between the air bearing surfaces” of the sliders. For this
reason, none of the prior art rejections of claims 2, 3, 5
through 7, 21, 24 through 29, 32 and 34 can be sustained.
Appeal No. 1997-1321
Application No. 08/366,448
8
DECISION
In view of the reversal of all of the rejections of
record, the decision of the examiner is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
KWH:hh
Appeal No. 1997-1321
Application No. 08/366,448
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