10195955 (B.P.A.I. Feb. 24, 2010)

Ex Parte Mei et al

Board of Patent Appeals and InterferencesFeb 24, 2010

10195955 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte YOUPING MEI and LANCE E. STOVER _____________ Appeal 2009-004056 Application 10/195,955 Technology Center 2600 ______________ Decided: February 24, 2010 _______________ Before, ROBERT E. NAPPI, MARC S. HOFF, and KARL D. EASTHOM, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-004056 Application 10/195,955 This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-4, 6, and 13-22.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. INVENTION The invention is directed to a slider that contains a movable element that is adjusted in order to control the magnetic spacing between the surface of a disc and the pole tips of the slider. See Spec: 1-3. Claim 1 is representative of the invention and reproduced below: 1. A slider comprising: a base having a leading edge and a bottom surface; a movable surface element positioned at the leading edge of the base; and a non-thermally responsive actuator positioned at the leading edge of the base and coupling the base to the movable surface element, wherein the actuator moves the moveable surface element in a substantially vertical direction relative to the bottom surface of the base. REFERENCES Boutaghou US 5,943,189 Aug. 24, 1999 Kang US 6,775,103 B2 Aug. 10, 2004 (filed Apr. 2, 2001) 1 Claim 5 is objected to and has been indicated as containing allowable subject matter in the Non-Final Rejection, mailed May 17, 2006. Claim 7 is objected to and has been indicated as containing allowable subject matter in the Final Rejection, mailed February 3, 2006. Claims 8-12 were cancelled in response to a Restriction Requirement, filed November 15, 2004. 2 Appeal 2009-004056 Application 10/195,955 REJECTION AT ISSUE Claims 1-4, 6, and 13-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kang in view of Boutaghou. Ans. 3-5. ISSUE Rejection of claims 1-4, 6, and 13-22 under 35 U.S.C. § 103(a) as being unpatentable over Kang in view of Boutaghou Independent claim 1 and Dependent claims 2-4, 6, and 21 Appellants argue on pages 6-7 of the Appeal Brief that the Examiner’s rejection of claims 1-4, 6, and 21 is in error. Appellants argue that neither reference teaches a non-thermally responsive actuator as required by the claims. App. Br. 6. Thus, Appellants’ contentions with respect to claims 1-4, 6, and 21 present us with the issue: Have Appellants shown that the Examiner erred in finding that Kang in view of Boutaghou discloses a non-thermally responsive actuator? Independent claim 13 and Dependent claims 14-15 Appellants argue on pages 7-8 of the Appeal Brief that the Examiner’s rejection of claims 13-15 is in error. Appellants make the same argument that was made with respect to claims 1-4, 6, and 21. App. Br. 7-8. Thus, Appellants’ arguments with respect to claims 13-15 present us with the same issue as claims 1-4, 6, and 21. 3 Appeal 2009-004056 Application 10/195,955 Independent claim 16 and Dependent claims 17-20 and 22 Appellants argue on page 8 of the Appeal Brief that the Examiner’s rejection of claims 16-20 and 22 is in error. Appellants make the same argument that was made with respect to claims 1-4, 6, and 21. App. Br. 8. Thus, Appellants’ arguments with respect to claims 16-20 and 22 present us with the same issue as claims 1-4, 6, and 21. FINDINGS OF FACT Kang 1. Kang discloses a slider assembly that controls the distance between the slider head and a rotating disc through the use of a thermally actuated distal end. Col. 1, ll. 7-11 and Figs. 1 and 2. 2. Kang’s slider assembly includes the use of a thermally expanding member or a member comprised of other materials (i.e., materials having a negative coefficient of thermal expansion) that respond to an external signal. Col. 4, ll. 13-24 and Figs. 1 and 2. Boutaghou 3. Boutaghou discloses a slider assembly that alters the position of a transducing head with respect to a rotating disc. Col. 2, ll. 23-25. 4. Boutaghou discloses the use of known actuators that accomplish high resolution head positioning, including: piezoelectric, fluidic, electromagnetic, capacitive, and electrostatic. Col. 1, ll. 53-56. 4 Appeal 2009-004056 Application 10/195,955 PRINCIPLES OF LAW Office personnel must rely on Appellants’ disclosure to properly determine the meaning of the terms used in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc). “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). On the issue of obviousness, the Supreme Court has stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). ANALYSIS Rejection of claims 1-4, 6, and 13-22 under 35 U.S.C. § 103(a) as being unpatentable over Kang in view of Boutaghou Independent claim 1 and Dependent claims 2-4, 6, and 21 Appellants’ arguments have not persuaded us of error in the Examiner’s rejection of claims 1-4, 6, and 21. Claim 1 recites “a non- thermally responsive actuator.” Claims 2-4, 6, and 21 depend upon claim 1, but were not argued separately. Therefore, claim 1 is selected to represent this group. Appellants argue that neither reference teaches “a non-thermally responsive actuator.” App. Br. 6. The Examiner, citing to column 4, lines 16-7, of Kang finds that Kang discloses that actuators can be made of thermally expanding materials or other materials. Ans. 3, 6. Appellants 5 Appeal 2009-004056 Application 10/195,955 argue that the teaching in Kang that the Examiner relies upon only includes other thermal materials and does not include non-thermal materials. App. Br. 6. While we agree with Appellants that the Kang does not explicitly discuss non-thermal materials, the Examiner’s finding does show that Kang contemplates materials other than thermally expanding materials and that non-thermal materials are not precluded. FF 2. The Examiner additionally finds that Boutaghou discloses non-thermally responsive actuator materials such as PZT or MEMS. Ans. 3. Appellants have not contested this finding by the Examiner. Boutaghou is similar to Kang in that Boutaghou also discloses a slider assembly that alters the transducing head position with respect to a disc. FF 3. Boutaghou discloses the use of piezoelectric, fluidic, electromagnetic, capacitive, and electrostatic actuators. FF 4. These are some of the same devices Appellants use for actuators, as described by Appellants’ Specification. Spec. 5:19-22. Thus, we concur with the Examiner’s findings that Boutaghou discloses non-thermally responsive actuators. Substituting Boutaghou’s non-thermally responsive actuator for Kang’s thermally responsive actuator is nothing more than using a known device to perform its known function of responding to an external signal. The combination of Kang with Boutaghou yields the predictable result of creating an actuator that responds to a non-thermal signal. Accordingly, Appellants’ arguments directed to claim 1 are not found to be persuasive. Therefore, for the reasons stated above, we sustain the Examiner’s rejection of claim 1 and claims 2-4, 6, and 21 that have been grouped with claim 1. 6 Appeal 2009-004056 Application 10/195,955 Independent claim 13 and Dependent claims 14-15 Appellants’ arguments have not persuaded us of error in the Examiner’s rejection of claims 13-15. Appellants’ arguments present the same issues as discussed supra with respect to claims 1-4, 6, and 21. App. Br. 7-8. Therefore, we sustain the Examiner’s rejection of claims 13-15 for the reasons discussed supra with respect to claims 1-4, 6, and 21. Independent claim 16 and Dependent claims 17-20 and 22 Appellants’ arguments have not persuaded us of error in the Examiner’s rejection of claims 16-20 and 22. Appellants’ arguments present the same issues as discussed supra with respect to claims 1-4, 6, and 21. App. Br. 8. Therefore, we sustain the Examiner’s rejection of claims 16-20 and 22 for the reasons discussed supra with respect to claims 1-4, 6, and 21. 7 Appeal 2009-004056 Application 10/195,955 CONCLUSION Appellants have not shown that the Examiner erred in finding that Kang in view of Boutaghou discloses a non-thermally responsive actuator. SUMMARY The Examiner’s decision to reject claims 1-4, 6, and 13-22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv). 8 Appeal 2009-004056 Application 10/195,955 AFFIRMED ELD SEAGATE TECHNOLOGY LLC C/O WESTMAN CHAMPLIN & KELLY, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 9