Ex Parte Lo

Board of Patent Appeals and Interferences

Oct 22, 2008

10856637 (B.P.A.I. Oct. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JYH-SHUEY JERRY LO
____________

Appeal 2008-2414
Application 10/856,637
Technology Center 3700
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Decided: October 22, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Jyh-Shuey Jerry Lo (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 7-12. Claims 1-6 and 13-18 have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention relates to a method for making
write heads for use in magnetic storage systems (Spec. 1). Claim 7,
reproduced below, is the sole independent claim on appeal.
7. A method for establishing a desired write
track width of a write head, comprising the steps
of:
executing a first trim/notch process of a
second pole piece P2;
stopping the first trim/notch process; and
executing a second trim/notch process of a
second pole piece P2 based at least in part on
information relating to the first trim/notch process,
the information being obtained between the first
and second trim/notch processes.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ring US 6,281,025 B1 Aug. 28, 2001
Lo US 6,539,610 B1 Apr. 1, 2003
The Appellant seeks review of the Examiner’s rejection of claims
7-12 under 35 U.S.C. § 103(a) as unpatentable over Lo and Ring.
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ISSUE
The issue before us is whether the Appellant has shown the Examiner
erred in determining that the addition of the feedback manufacturing process
of Ring to the method of Lo would result in the claimed invention.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Lo discloses a method for the rapid production of thin film
inductive read-write heads having very narrow write track widths
(Lo, col. 1, ll. 9-13).
2. Lo’s method uses preliminary precision milling of a narrow P2B
track width followed by conventional pole tip trimming and pole
piece notching in order to create the desired P2B track width (Lo,
col. 4, ll. 49-51).
3. Lo describes that fringing fields limit the narrowness of pole tips
and “[m]ethods known in the prior art for reducing fringing field
include P1 notching, which involves removal of a significant
amount of material from the first pole piece at field regions 17 and
19, as well as from the top of P2T, indicated at 10 in FIG. 1” (Lo,
col. 4, ll. 52-60).
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4. We understand from Lo that conventional pole piece notching
includes notching of the top of pole piece P2.
5. As such, Lo discloses a method for establishing a desired write
track width of a write head that includes removing material from
second pole piece P2 by a preliminary precision milling process
and then executing a conventional notching process of the second
pole piece P2.
6. Lo does not disclose executing the notching process of the second
pole piece P2 based at least in part on information relating to the
preliminary precision milling process of second pole piece P2,
where the information was obtained between the preliminary
precision milling process and the notching process.
7. Ring discloses a method of controlled removal of substrate on a
semiconductor chip to conduct post-manufacturing analysis of the
chip (Ring, col. 2, ll. 44-46).
8. Ring teaches using ion beam energy to mill the substrate and
secondary ion beam detection to automatically stop the milling
process when the endpoint is reached or to reduce the milling rate
when the endpoint is near to avoid damage to or destruction of
circuitry and other substrate in the device (Ring, col. 2, ll. 28-30
and 47-50 and col. 6, ll. 12-48; Fig. 4).
9. Thus, Ring shows that it was known to a person having ordinary
skill in the art to use detection and feedback during a milling
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operation in order to determine when to stop a milling operation to
avoid overmilling and thus destruction of the device.
10. Ring does not appear to teach stopping the milling operation until
the endpoint has been reached.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
The method of claim 7 includes the step of “executing a second
trim/notch process of a second pole piece P2 based at least in part on
information relating to the first trim/notch process, the information being
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obtained between the first and second trim/notch processes.” Assuming for
purposes of this opinion that the Examiner was correct in finding that Lo
discloses the both the first and second trim/notch processes of claim 7, the
rejection is still improper because the combination of Ring and Lo does not
result in the claimed method. In particular, we find that the combined
teachings of Ring and Lo would not have led one having ordinary skill in the
art to execute a second trim/notch process based at least in part on
information relating to the first trim/notch process, where such information
was obtained between the first trim/notch process and the second trim/notch
process, as recited in claim 7.
Lo discloses a method for establishing a desired write track width of a
write head that includes preliminary precision milling of a narrow P2B track
width followed by conventional pole tip trimming and pole piece notching
(Facts 1 & 2). Conventional pole piece notching includes notching of the
top of pole piece P2 (Facts 3 & 4). As such, Lo discloses a method for
establishing a desired write track width of a write head that includes
removing material from second pole piece P2 by a preliminary precision
milling process and then executing a conventional notching process of the
second pole piece P2 (Fact 5). Lo does not disclose executing the notching
process of the second pole piece P2 based at least in part on information
relating to the preliminary precision milling process of second pole piece P2,
where the information was obtained between the preliminary precision
milling process and the notching process (Fact 6).
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Ring discloses a method of controlled removal of substrate on a
semiconductor chip including using ion beam energy to mill the substrate
and secondary ion beam detection to automatically stop the milling process
when the endpoint is reached or to reduce the milling rate when the endpoint
is near (Facts 7 & 8). Thus, Ring shows that it was known to a person
having ordinary skill in the art to use detection and feedback during a
milling operation in order to determine when to stop a milling operation to
avoid overmilling and thus destruction of the device (Fact 9).
Assuming that Lo’s first preliminary precision milling process of
second pole piece P2 corresponds to the claimed first trim/notch process and
Lo’s notch process of second pole piece P2 corresponds to the claimed
second trim/notch process, if one were to incorporate Ring’s detection and
feedback manufacturing process into Lo’s method to avoid overmilling at
either stage during the write head formation, one would use the feedback to
stop the first preliminary precision milling process once the endpoint had
been reached and before starting the second notch milling process of the
second pole piece.
Even when combined however, the teachings of the prior art would
not have led one having ordinary skill in the art to execute the second notch
milling process of Lo based at least in part on information relating to the
first preliminary milling process, where such information was obtained
between the first preliminary milling process and the second notch milling
process, as claimed. Ring does not appear to teach stopping the milling
operation until the endpoint has been reached (Fact 10). Rather, the detected
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information is continuously fed back to the system while the milling
operation is ongoing, and once the endpoint has been reached, then the
milling is stopped (Fact 8). A second milling operation could then be
performed on another substrate in Ring, but we do not see where Ring
teaches that such a second milling operation would be executed based at
least in part on information relating to the first milling operation. As such,
we agree with the Appellant that “[n]owhere does Ring et al. suggest that
any particular dopant layer is partially etched away prior to stopping,
evaluating, and restarting the etching of that layer” (App. Br. 5).
In view of these findings, we see no reason why one having ordinary
skill in the art would stop either of the first preliminary milling process or
the second notch milling process of Lo and then continue that process using
information obtained during the stoppage in view of the teachings of Ring.
Further, we see no reason why one having ordinary skill in the art would use
information obtained between the first preliminary milling process and
second notch milling process of Lo to execute the second notch milling
process of Lo in view of the disclosure in Ring. As such, the Appellant has
persuaded us that the Examiner erred in rejecting claim 7 as unpatentable
over Lo and Ring. The remaining dependent claims 8-12 are likewise
patentable over Lo and Ring. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)
(If an independent claim is nonobvious under 35 U.S.C. § 103, then any
claim dependent therefrom is nonobvious).

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CONCLUSION
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 7-12 under 35 U.S.C. § 103(a) as unpatentable over Lo and
Ring.

DECISION
The decision of the Examiner to reject claims 7-12 is reversed.

REVERSED

vsh

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