Ex Parte Kiely et al

Patent Trial and Appeal Board

Dec 19, 2016

14037139 (P.T.A.B. Dec. 19, 2016)

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.
14/037,139 09/25/2013 James Dillon Kiely STB.113.A1 1079
98068 7590
Hollingsworth Davis
8000 West 78th Street
Suite 450
Minneapolis, MN 55439
12/21/2016 EXAMINER
SNIEZEK, ANDREW L
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
12/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tdotter @ hdpatlaw. com
roswood@hdpatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES DILLON KIELY and JON D. TRANTHAM
Appeal 2015-006622
Application 14/037,139
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants assert we have misapprehended “1) the plain meaning of
an air bearing and 2) that a slider trailing edge is not a media-facing surface”
and, as a result, we “did not recognize the technical differences” between the
cited prior art, Smith, and Appellants’ invention (Req. for Reh’g 1).
In our Decision we found:
Smith’s Figure 3 illustrates “a rear view of a slider trailing edge
showing a thin film coil with a drop of liquid lubricant partially
covering the coil” (Smith 114). Smith further teaches “FIG. 3
illustrates the trailing edge of a slider 35, having an airbearing surface
Appeal 2015-006622
Application 14/037,139
66” (Smith 128, Fig. 3). As Appellants’ Specification describes the
media-facing surface may be configured as an air bearing surface, and
Smith teaches the slider trailing edge having an air bearing surface,
we are not persuaded Smith does not teach or at least suggest, the
slider trailing edge is a media-facing surface. Additionally, we find
Smith teaches contamination detection on the trailing edge of the
slider (Smith || 1, 5, 10, 26).
Appellants argue Smith’s disclosure should not be interpreted as the
trailing edge having an air bearing surface; rather, according to Appellants,
Smith’s disclosure should be interpreted as the slider having an air bearing
surface (Req. for Reh’g at 2). Appellants contend “[t]he trailing (back) edge
of a slider does not form a load-bearing interface with another surface.
Rather, the trailing edge is generally perpendicular to the surface of a
recording medium” {id.). Thus, Appellants urge us to interpret “slider
trailing edge” as only that portion of Figure 3 shown as the x-y plane,
perpendicular to the media {id. at 2—3).
We are not persuaded by Appellants’ contention that Smith’s trailing
edge is perpendicular to the surface of a recording medium as Appellants
assert. Initially, we note Appellants have not identified where Smith
explicitly defines “slider trailing edge” as suggested. Looking to Smith’s
disclosure, we are not persuaded Smith construes the term as narrowly as
suggested by Appellants. Furthermore, accepting Appellants arguments,
arguendo, we note that an “edge” as described by Appellants is the
intersection of two planes—the plane of the media-facing surface and a
plane perpendicular to the media-facing surface. Thus, the trailing “edge” of
Smith’s slider, applying Appellants’ proposed construction, is within the
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Appeal 2015-006622
Application 14/037,139
“media-facing” plane in which an air bearing is formed as well as within the
plane perpendicular to the media-facing surface.
Specifically, Smith describes “FIG. 3 illustrates the trailing edge of a
slider 35, having an air[ Jbearing surface 66 and connection pads 68. A[n]
inductive coil 70 for the thin film write element is shown as positioned on
the back of slider 35” (Smith 128). Smith does not state Figure 3 illustrates
the trailing edge of a slider having an air bearing surface but instead states
Figure 3 illustrates the trailing edge of a slider, having an air bearing surface
{id.). We are, thus, not persuaded an ordinarily skilled artisan would
understand Smith as describing the slider has the air bearing surface as
opposed to the trailing edge having the air bearing surface.
Moreover, Figure 3 is described as rear view of a slider trailing
edge” {id. 114). In light of this description, we are not persuaded the slider
trailing edge lacks a z-dimension. Instead, because Figure 3 illustrates the
rear view of the slider trailing edge, not the rear view of the slider, we are
unpersuaded Smith describes the slider trailing edge as not having a z-
dimension. Based on the disclosure in Smith, including the rear view of the
slider trailing edge illustrated {id. at Fig. 3), and the placement of the air
bearing surface {id. 128, Fig. 3), along with the description of Smith’s
invention {see e.g., Smith || 1, 5, 10, 26), Appellants have not persuaded us
Smith’s slider trailing edge fails to teach the recited media-facing surface.
Appellants further assert “[t]he plain meaning of an air bearing is a
bearing that uses a thin film of pressurized air to provide an exceedingly low
friction load-bearing interface between surfaces,” citing an undated
Wikipedia definition (Req. for Reh’g 2). Initially, we note Appellants have
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Appeal 2015-006622
Application 14/037,139
not proffered sufficient evidence to support a determination that an
ordinarily skilled artisan would have interpreted “air bearing” as argued, at
the time of the invention. Nonetheless, Appellants’ arguments are predicated
on Appellants’ narrow interpretation of Smith’s “slider trailing edge” (Req.
for Reh’g 2). As set forth above, we are not persuaded by Appellants’
arguments regarding the interpretation and thus, it follows, we are not
persuaded by Appellants’ argument that Smith’s slider trailing edge does not
comprise an air bearing surface. Accordingly, Appellants have not
persuaded us Smith’s slider trailing edge fails to teach a media-facing
surface, as recited.
As a result, we find Appellants’ arguments that we misapprehended
“1) the plain meaning of an air bearing and 2) that a slider trailing edge is
not a media-facing surface” and, as a result, we “did not recognize the
technical differences” between the cited prior art, Smith, and Appellants’
invention unpersuasive.
DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have denied it with respect to
making any modifications to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REHEARING DENIED
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