Ex Parte Lui et al

Patent Trial and Appeal Board

Oct 31, 2017

13064993 (P.T.A.B. Oct. 31, 2017)

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.
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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
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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.
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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.
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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
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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
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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.
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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
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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
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