Ex parte KIRA

Board of Patent Appeals and Interferences

May 13, 1999

08221999 (B.P.A.I. May. 13, 1999)

Application for patent filed April 4, 1994. According to appellant, this application is a continuation1
of application 07/871,540, filed April 21, 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publication in a law journal and (2) is not binding precedent of the Board.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 TOHRU KIRA
_____________
Appeal No. 96-1707
Application 08/221,9991
______________
HEARD: April 7, 1999
_______________
Before THOMAS, DIXON, and FRAHM, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 7-14 and
29-36, which are all of the claims pending in this application.
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Application 08/221,999
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BACKGROUND
The invention is directed to a combined thin film magnetic head that has two
separate heads formed on a single substrate, one for analog and the other for digital
operation. The two heads are fabricated on the same substrate and placed linearly
adjacent to each other rather than in a stacked arrangement.
Independent claim 7 is representative of the invention and reproduced as follows:
A combined thin film magnetic head comprising:
a first yoke magnetic head; and
a second yoke magnetic head having at least a portion of a recording and
reproducing track overlapped with the first yoke magnetic head and having longer
recording and reproducing track width than said first yoke magnetic head formed
on the same substrate, wherein
said first yoke type magnetic head includes;
a first lower yoke of a magnetic thin film formed approximately parallel to the
surface of the substrate,
a first interlayer insulating layer formed on an upper surface of the first lower
yoke,
a first electromagnetic transducing element provided on the first interlayer
insulating layer,
a second interlayer insulating layer formed on the first electromagnetic
transducing element, and
a first upper yoke of a magnetic thin film formed along an upper surface of
the second interlayer insulating layer, said first upper yoke and said first lower yoke
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Application 08/221,999
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at a front end portion providing a first front gap, in use to be in contact with a
magnetic recording medium,
for picking up magnetic flux of the magnetic recording medium; and wherein
a second lower yoke formed on a surface of said substrate, opposing to
said first lower yoke with a third interlayer insulating film interposed and extending
at a distance behind said first lower yoke with a surface which is in contact in use
with and sliding relative to a magnetic recording medium at a front end,
a fourth interlayer insulating layer formed to have approximately trapezoidal
cross section at a region behind said first lower yoke on an upper surface of said
third interlayer insulating layer,
a second electromagnetic transducing element provided on the fourth
interlayer insulating layer,
a fifth interlayer insulating layer formed on the second electromagnetic
transducing element and
a second upper yoke of a magnetic thin film formed along an upper surface
of the fifth interlayer insulating layer,
said first upper yoke and said second upper yoke being formed of the same
layer of magnetic thin film; and wherein
said second yoke magnetic head includes an upper yoke provided by
combining magnetically said first lower yoke and said second upper yoke, said first
lower yoke and said second lower yoke opposing with each other with said
third interlayer insulating layer interposed as a gap layer at a front end serving as a
surface which in use is in contact with and sliding relative to a magnetic recording
medium,
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Application 08/221,999
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thus providing a second front gap picking up magnetic flux of the magnetic
recording medium.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Nomura et al. (Nomura) 4,065,797 Dec. 27, 1977
Jones, Jr. (Jones) 4,404,609 Sep. 13, 1983
Otsuka et al. (Otsuka) 4,789,910 Dec. 06, 1988
Admitted prior art in the specification (pages 1-7 and Figures 12-16)
Claims 7-9, 11, 13, 14, 29-34 and 36 are rejected under 35 U.S.C. § 103 over
Otsuka in view of appellant's admitted prior art in the specification (pages 1-7 and Figures
12-16) and Jones.
Claims 10, 12 and 35 are rejected under 35 U.S.C. § 103 over Otsuka in view of
appellant's admitted prior art in the specification (pages 1-7 and Figures 12-16) and
Jones as applied against claims 7-9, 11, 13, 14, 29-34 and 36 further in view of Nomura.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
appellant, we make reference to the briefs and answers for the details thereto.
OPINION
After a careful review of the evidence before us we agree with the Examiner that
claims 7-9, 11, 13,14, 29-34 and 36 are properly rejected under 35 U.S.C. § 103 and we
Appeal No. 96-1707
Application 08/221,999
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will sustain the rejection of claims 7-9, 11, 13,14, 29-34 and 36. We disagree with the
Examiner that claims 10,12 and 35 are properly rejected under 35 U.S.C. § 103 and we
will not sustain the rejection of claims 10,12 and 35. As a consequence of our review, we
make the determinations which follow.
REJECTION OF
CLAIMS 7-9, 11, 13,14, 29-34 and 36 UNDER §103
Claims 7-9, 11, 13,14, 29-34 and 36 are rejected under 35 U.S.C. § 103 over
Otsuka in view of appellant's admitted prior art in the specification (pages 1-7 and Figures
12-16) and Jones. The Examiner has set forth the rejection in detail including
corresponding teachings in the prior art references for the claimed elements and the
motivation for the combination of references. (See answer at pages 3-7.) We agree with
the Examiner and further elaborate below.
Otsuka teaches the basic structure of an individual head and the required layering
on the substrate as discussed by the examiner. (See answer at pages 3-5.) The admitted
prior art shows a conventional two head structure on the same substrate
where the heads are set forth in a stacked arrangement. (See answer at pages 5-6.) The
specification also discusses the well known and recognized problems of higher number of
layers on the substrate, lower yields and higher production costs associated with the
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stacked head arrangement. (See specification at pages 6-7.) The admitted prior art
recognizes that the stacked two head orientation has problems and would have motivated
the skilled artisan to planarize the two head arrangement. To improve the yields, it would
have been obvious to one of ordinary skill in the art at the time of the invention to reduce
the number of layers thereby reducing the manufacturing costs. (See answer at pages 6-7.)
The skilled artisan would have found the teachings of Jones which teaches the planarizing
of a single head device with transmission of the signal using a second gap to a second
portion of the single head, linearly spaced from the portion closest to the signal source.
Jones also discusses some of the manufacturing considerations and benefits achieved by
the planar structured device. Jones teaches the skilled artisan that the signal may be
picked up from the tape and transmitted a distance to a second area within the transducer.
The skilled artisan would have recognized that Jones teaches a single head device where
the gap size would have been the same due to the single head. It would have been
obvious to one of
ordinary skill in the art at the time of the invention to know that the same basic structure
may be used for a two head device as a means of transmitting the signal to the second
head farthest from the source. The skilled artisan would have also known that the type of
Appeal No. 96-1707
Application 08/221,999
We note that the Examiner indicated in the answer at pages 2-3 that an error was present in2
claim 12, but we further note that the amendment entered February 3, 1994 deleted the word "head"
accidentally from claim 12 in two places in line 5 after "magnetic."
7
heads would have dictated the exact dimensions of the gap configuration.
REJECTION OF CLAIMS 10, 12 and 35 UNDER §103
Claims 10, 12 and 35 are rejected under 35 U.S.C. § 103 over Otsuka in view of
appellant's admitted prior art in the specification (pages 1-7 and Figures 12-16) and
Jones and applied against claims 7-9, 11, 13, 14, 29-34 and 36 further in view of Nomura.
(See answer at pages 10-11).
We disagree with the Examiner. As discussed above, we agree with the Examiner
concerning the basic combination of references and the teachings of the references.
Claims 10 and 12 add a limitation to the claimed invention to include "a trench portion2
having a prescribed depth formed in a substrate on which said combined thin film
magnetic head is formed." The Examiner has argued that it would have been obvious to
one of ordinary skill in the art at the time of the invention to include a groove "to prevent the
magneto-resistive element from directly facing the ferromagnetic material (the second
lower yoke made of highly permeable film of NiFe)." (See answer at page 10.) Appellant
argues that the trench portion is directly below the first yoke magnetic head and second
yoke magnetic head. (See brief at pages 18-21 and reply at pages 6-7.) Furthermore,
appellant argues that in claim 10, the second lower yoke is formed along the bottom of the
Appeal No. 96-1707
Application 08/221,999
8
trench. We agree with the appellant that the Examiner has made assertions which are not
clearly supported by the teachings of Nomura as to why it would have been obvious to one
of ordinary skill in the art at the time of the invention to form the trench/groove beneath both
heads in the configuration as claimed. Nomura does not teach skilled artisans that a
trench is useful in preventing leakage due to magnetic flux in the linear/planar configuration
as set forth in the language of claims 10 and 12.
Since all the limitations of claim 12 are not taught or suggested by the applied prior
art, we cannot sustain the Examiner's rejection of appealed claim 35 which depends
therefrom, under 35 U.S.C. § 103.
RESPONSE TO ARGUMENTS
Appellant argues that the rejection of the claims lacks motivation to combine the
teachings of the references. (See brief at page 9.) We disagree. Appellant argues that
the rejection of the claims uses improper hindsight reconstruction in the motivation to
combine the teachings of the references. (See brief at page 10.) We disagree.
Appellant argues that the rejection of the claims is unclear as to the Examiner's basis for
the "compactness" rationale. (See brief at page 11-12.) We disagree and have further
elaborated upon the line of reasoning used in the combination of the teachings/references.
(See above.) Jones teaches and motivates skilled artisans to form the head structure
Appeal No. 96-1707
Application 08/221,999
9
having 2 gaps on the same plane. The skilled artisan would have been motivated, as the
Examiner states, to use this same/similar configuration where other 2 gap systems may be
useful such as in a 2 head device. (See answer at pages 12-14). We find that the
Examiner has not used only bits and pieces of the Jones teachings, but merely used some
of the basic teachings to modify that which was known in the art concerning conventional 2
head devices. (See brief at pages 12-13.) We observe that a skilled artisan must be
presumed to know something about the art apart from what the references disclose (see
In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)), and the conclusion
of obviousness may be made from "common knowledge and common sense" of the
person of ordinary skill in the art (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545,
549 (CCPA 1969)). Moreover, skill is presumed on the part of those practicing in the art.
See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). We hold
that the skilled artisan would have been motivated to combine the teachings of the
references, and furthermore, the
teachings would have taught or fairly suggested to one of ordinary skill in the art at the time
of the invention to combine the teachings to achieve the invention as claimed.
Next we consider appellant's argument that even if the references are properly
Appeal No. 96-1707
Application 08/221,999
10
combined, the claimed invention would not be achieved. (See brief at pages 13-14.) We
disagree. Appellant argues that the claimed invention "provides a structure with two heads
having different sized gaps on and in contact with the same surface of a substrate." (See
brief at page 14.) The admitted prior art teaches the desire and need for 2 heads on the
same substrate wherein the heads are oriented in the same manner as the prior art
stacked individual heads. The admitted prior art also discloses the known deficiencies in
the individual and combined stacked heads which would have motivated skilled artisans to
modify the design by forming the stacked arrangement on the same plane as taught by
Jones. The result would have been to form both heads on the same surface of the
substrate as discussed above. With respect to the different gap sizes, we note that the
language of the claims 7 and 11 merely set forth the presence of two gaps and not the size
of the gaps. Moreover, the type of head would have dictated the size of the gap as
discussed above.
With respect to appellant's argument to secondary considerations concerning the
IEEE article, we agree with both the appellant's and the Examiner's statements.
Appellant argues that the evidence of publication should be considered by the Examiner.
We agree and find that the Examiner did consider the evidence, but the Examiner did not
find the evidence submitted to be persuasive in light of the prima facie case of
Appeal No. 96-1707
Application 08/221,999
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obviousness set forth by the Examiner in the rejection. Furthermore, it is our conclusion
that the evidence adduced by the Examiner is sufficient to establish a prima facie case of
obviousness with respect to dependent claims 8, 9, 13, 29 and 30 as grouped by
appellant. (See brief at page 7.)
Appellant argues the mere fact that this article was published and that "all manu-
scripts considered for publication are subject to peer review" is evidence of nonobvi-
ousness. (See brief at pages 15-16.) Appellant further argues that the fact that the article
was published is "evidence (facts) that the Appellant's device has been accepted by
peers, (at a minimum those skilled in the art) as meritorious. The IEEE article is indicative
of professional approval of the merits of the invention." We disagree with appellant's
characterization of the article as "acceptance by peers" or "professional approval" merely
by the publication of the article. We have considered the article as did the Examiner, but
do not find the article by itself to be persuasive. Appellant has not provided any evidence
to support the position that the mere publication of the invention/device amounts to
approval and/or acceptance within the field or by his peers.
Moreover, appellant has not provided any discussion of how the disclosure of the paper
corresponds to the language of claims 7 and 11 beyond a discussion of a "two head
structure . . . in a linear position." (See brief at page 15.)
With respect to the arguments that the Examiner has not addressed the limitations
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concerning claim 31, 14 and 34, the Examiner briefly discusses the limitations in the
answer at pages 7-8 and 15. The Examiner has not discussed the specific location of the
elements, but considers placement of either type of head as an obvious choice with a
combination of the two types of heads in the combined teachings. (See answer at pages
7-8.) We agree with the Examiner. Appellant cites to the article for support of the
increase of stability and productivity, but does not show support in the originally filed
specification. Appellant has not argued claim 14 separately, therefore it is treated with
claims 31 and 34. (See 37 CFR 1.192(c)(7).)
With respect to appellant's argument to claim 36, the Examiner has set forth a
response which discusses the use of a ferrite substrate which would obviate the need for
the second lower yoke on top of the substrate. (See brief at pages 18-19.) Therefore, the
first and second magnetic heads would contact the same surface of the substrate and
would be linear in the combination, as the Examiner has stated. We agree.
CONCLUSION
To summarize, the decision of the Examiner rejecting claims 7-9, 11, 13,14, 29-34
and 36 under 35 U.S.C. § 103 is affirmed. The decision of the Examiner rejecting
claims 10, 12 and 35 under 35 U.S.C. § 103 is reversed. The decision of the Examiner is
Appeal No. 96-1707
Application 08/221,999
13
affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ERIC S. FRAHM )
Administrative Patent Judge )
vsh
Appeal No. 96-1707
Application 08/221,999
14
Birch, Stewart, Kolasch & Birch
P.O. Box 747
Falls Church, VA 22040-0747