Ex Parte Lui et alDownload PDFPatent Trial and Appeal BoardOct 31, 201713064993 (P.T.A.B. Oct. 31, 2017) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/064,993 04/29/2011 23117 7590 11/02/2017 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Cheukman Lui 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JSP-4593-337 2134 EXAMINER MCANDREW, CHRISTOPHER P ART UNIT PAPER NUMBER 2858 NOTIFICATION DATE DELIVERY MODE 11/02/2017 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHEUKMAN LUI, CHIUMING LUENG, HOKEI LAM, MANKIT LEE, KWOKKAM LEUNG, CHEUKWING LEUNG, JUREN DING, and RONGKW ANG NI Appeal2016-005826 Application 13/064,993 Technology Center 2800 Before JAMES C. HOUSEL, GEORGE C. BEST, and MERRELL C. CASHION, JR., Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1--42 of Application 13/064,993 under 35 U.S.C. § 103(a) as obvious. Final Act. (January 16, 2015). The Examiner also provisionally rejected claims 1, 5-11, 15-17, 19, 20, 22, 27- 32, 36-38, 40, and 41 on the nonstatutory ground of obviousness-type double patenting as obvious variants of claims 1, 10, 17, and 26 of co- pending Application 13/064,994. Appellants 1 seek reversal of these 1 SAE Magnetics (H.K.) Ltd. is identified as the real party in interest. Appeal Br. 3. Appeal2016-005826 Application 13/064,993 rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6. For the reasons set forth below, we reverse. BACKGROUND The '993 Application describes methods and apparatus for testing the performance of a magnetic head, particularly methods and apparatus for testing the anti-high temperature performance of a magnetic head. Spec. i-f 1. These methods and apparatus may be especially useful for the testing of magnetoresistive read/write heads for use in hard disk drives. Id. i-fi-1 2-9. Claim 1 is representative of the '993 Application's claims and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A method of testing anti-high temperature performance of a read head of a magnetic head, the magnetic read head including two shielding layers and an air bearing surface, the method comprising: repeatedly applying a plurality of first magnetic fields with different intensities in a first direction to the magnetic head, and measuring a first output parameter curve, the first direction being perpendicular to the air bearing surface; repeatedly applying a plurality of second magnetic fields with different intensities in a second direction to the magnetic head, and measuring a second output parameter curve, the second direction passing through the air bearing surface and at an angle whose absolute value is an acute angle to the air bearing surface; and judging whether a variation that is beyond an allowable value is presented on the first output parameter curve and the second output parameter curve, thereby screening out a defective magnetic head, in the testing of the anti-high 2 Appeal2016-005826 Application 13/064,993 temperature performance of the magnetic head that includes the two shielding layers and the air bearing surface. Appeal Br. 20. REJECTIONS In this opinion, we discuss the following rejections: 1. Claims 1, 5-11, 15-17, 19, 20, 22, 27-32, 36-38, 40, and 41 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over claims 1, 10, 17, and 26 of co-pending Application No. 13/064,994.2 Final Act. 3-5. 2. Claims 1-5, 8, 11-16, 19, 22-26, 29, 32-37, and 40 are rejected3 under 35 U.S.C. § 103(a) as unpatentable over the combination of Taratorin '941,4 Taratorin '389,5 and Merrow.6 Final Act. 6-28. 2 On September 1, 2015, Application No. 13/064,994 issued as US 9,121,888 B2. 3 The summary statement of this rejection on page 6 of the Final Action omits some claims that are discussed in the body of the rejection and includes other claims that are not discussed in the body of the rejection. We have corrected the summary statement of the rejection to reflect those claims which the Examiner provided a substantive discussion as a basis for a rejection under§ 103(a). 4 US 2009/0128941 Al, published May 21, 2009. 5 US 2009/0147389 Al, published June 11, 2009. 6 US 2009/0261228 Al, published October 22, 2009. 3 Appeal2016-005826 Application 13/064,993 3. Claims 10, 21, 31, and 42 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Taratorin '941, Taratorin '389, Merrow, and Wakefield.7 Final Act. 28-31. 4. Claims 6, 17, 27, and 38 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Taratorin '941, Taratorin '389, Merrow, and Shimazawa.8 Final Act. 31-34. 5. Claims 7, 18, 28, and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Taratorin '941, Taratorin '389, Merrow, and Patland. 9 Final Act. 34--36. 6. Claims 9, 20, 30, and 41 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Taratorin '941, Taratorin '389, Merrow, and Ahlert. 1° Final Act. 36-39. DISCUSSION Rejection 1. The Examiner provisionally rejected claims 1, 5-11, 15-17, 19, 20, 22, 27-32, 36-38, 40, and 41 on the ground ofnonstatutory double patenting as unpatentable over claims 1, 10, 17, and 26 of Application No. 13/064,994. Final Act. 3. Appellants argue that this rejection is moot because they filed a terminal disclaimer in the '994 Application. Appeal Br. 8. The Examiner has not indicated whether or not this terminal disclaimer is sufficient to overcome the rejection. See Advisory Action (June 4, 2015); Answer. 7 US 6, 178,054 Bl, issued January 23, 2001. 8 US 7,683,610 B2, issued March 23, 2010. 9 US 6,943,545 B2, issued September 13, 2005. 10 US 5,227,212, issued July 13, 1993. 4 Appeal2016-005826 Application 13/064,993 For the following reasons, we decline to review these rejections. See Ex parte Jerg, No. 2011-000044, slip op. at 6 (BPAI April 4, 2012) (Informative Decision) (available at httg_;LD_:Jg~_9:,_gQ_yL_22JJKQ1:'.Q) (holding that the Board has discretion as to whether or not to reach provisional double patenting rejections). On April 29, 2011, Appellants filed both the '993 Application and '994 Application. On July 10, 2013, the Examiner first provisionally rejected the independent claims of the '993 Application for double patenting over the independent claims in the '994 Application. The Examiner continued to assert a double patenting rejection in each Office Action in the '993 Application, including the Final Action now on appeal which is dated January 16, 2015. On May 13, 2015, Appellants filed a Terminal Disclaimer in the '994 Application. The Terminal Disclaimer disclaims the terminal part of the statutory term of any patent granted in the '994 Application that would extend beyond the expiration date of the full statutory term of any patent granted on the '993 Application. Appellants also amended the claims of the '994 Application on May 13, 2015. On July 7, 2015 the Examiner issued a notice of allowance in the '994 Application. On September 1, 2015, US 9,121,888 B2 issued from the '994 Application. We exercise our discretion to not review the provisional double patenting rejection. In the time since the provisional double patenting rejection has most recently been issued, the claims of the '994 Application have been amended and issued as part of the '888 Patent. In the event that the Terminal Disclaimer is not sufficient to overcome a double patenting rejection, the claims of the '993 Application should be compared with the claims of the issued '888 Patent to determine whether a non-provisional 5 Appeal2016-005826 Application 13/064,993 double patenting rejection is appropriate. We decline to do this examination in the first instance. Rejection 2. Appellants present substantive arguments for reversal of the rejection of claim 1. See Appeal Br. 8-16. Appellants further assert that [i]ndependent claims 11, 22, and 32 require similar features to those discussed above with respect to claim 1. Thus, Applicant respectfully submits that these claims define[ d] over the cited art for substantially the same reasons as those discussed above for claim 1. Reversal of this rejection as to all claims therefore is respectfully requested. Id. at 16-17. In view of the foregoing, we select claim 1 is representative of all of the claims subject to this ground of rejection and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Each of the remaining claims will stand or fall with claim 1. Appellants argue, inter alia, that the rejection of claim 1 should be reversed because the Examiner erred in construing claim 1. Appeal Br. 11 - 12. In particular, Appellants argue that the Examiner erred by not giving the preamble of claim 1 any patentable weight. Appellants argue that the preamble is limiting. Id. The Examiner, on the other hand, concluded that Appellants' use of the term "read head" in the preamble is not limiting and stated that that Appellants "must explicitly claim, in the body of the independent claim, the testing of a read head so as to avoid any possible confusion." Answer 6. In general, the preamble limits a claim if it recites essential structure, essential steps, or is otherwise "necessary to give life, meaning, and vitality" to the claim, Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quotingKropa v. Robie, 187 F.2d 150, 152 (CCPA 6 Appeal2016-005826 Application 13/064,993 1951)), while the preamble is not limiting when the claim body defines a structurally complete invention and the preamble states only a purpose or intended use, Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The default presumption is that a claim's preamble is not limiting. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) ("'Generally,' we have said, 'the preamble does not limit the claims."' (quoting Allen Eng 'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))). In this case, we conclude that the preamble of claim 1 is limiting. Claim 1 's preamble reads " [a] method of testing anti-high temperature performance of a read head of a magnetic head, the magnetic read head including two shielding layers and an air bearing surface, the method comprising ... "(emphasis added). We conclude that this language is limiting for several reasons. First, the preamble is necessary to give proper antecedent basis to the references to "the air bearing surface," "the two shielding layers," and "the magnetic head" in the body of claim 1. Second, the preamble must be limiting to give life meaning and vitality to claim 1. The default presumption that a preamble is not limiting is consistent with the obligation to give a claim its broadest reasonable interpretation during prosecution. Once, however, an applicant explicitly indicates the intent that the preamble of a claim be given limiting effect, 11 the claim should be construed in this manner and the examiner should indicate in the written 11 The applicant's expression of intent should be made as part of the written prosecution history. If the applicant expresses this intent during an Examiner Interview, the Interview Summary should contain an explicit reference to this expression of intent so that the application's prosecution history is unequivocal. 7 Appeal2016-005826 Application 13/064,993 record that the preamble has been given limiting effect. Failing to do so results in a claim interpretation that is unreasonably broad. Because the Examiner erred in construing claim 1, we reverse the rejection of claim 1. Thus, we also reverse the rejection of claims 5-11, 15- 17, 19, 20, 22, 27-32, 36-38, 40, and 41. In so doing, we recognize that each of the other independent claims in the '993 Application have preambles that are similar to claim 1 's preamble. Thus, it is likely that the Examiner also erred by construing those preambles as non-limiting. Rejection 3. Appellants argue that the introduction of Wakefield cannot remedy the alleged deficiencies with respect to the rejection of the independent claims discussed in connection with Rejection 2. Appeal Br. 17. Because we have reversed the rejection of claim 1, we also reverse this rejection. Rejection 4. Appellants argue that "[t]he further introduction of Wakefield, [sic, Shimazawa] even if appropriate (which Applicant does not concede), does not make up for [the] fundamental deficiencies" in the rejection of the independent claims discussed in connection with Rejection 2. Appeal Br. 18. Because we have reversed the rejection of claim 1, we also reverse this rejection. Rejection 5. Appellants argue that "[t]he further introduction of Wakefield, [sic, Patland] even if appropriate (which Applicant does not concede), does not make up for [the] fundamental deficiencies" in the rejection of the independent claims discussed in connection with Rejection 2. Appeal Br. 18. Because we have reversed the rejection of claim 1, we also reverse this rejection. Rejection 6. Appellants argue that "[t]he further introduction of Wakefield, [sic, Ahlert] even if appropriate (which Applicant does not 8 Appeal2016-005826 Application 13/064,993 concede), does not make up for [the] fundamental deficiencies" in the rejection of the independent claims discussed in connection with Rejection 2. Appeal Br. 18-19. Because we have reversed the rejection of claim 1, we also reverse this rejection. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1 - 42 of the '993 Application under 35 U.S.C. § 103(a). We exercise our discretion and do not review the Examiner's provisional double patenting rejection of claims 1, 5-11, 15-17, 19, 20, 22, 27-32, 36-38, 40, and 41. REVERSED 9 Copy with citationCopy as parenthetical citation