Ex Parte Nazarov et al

Patent Trial and Appeal Board

Feb 10, 2017

11475685 (P.T.A.B. Feb. 10, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/475,685 06/27/2006 Alexey V. Nazarov 13043.00 2226
16275 7590
HolzerlPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
RENNER, CRAIG A
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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):
docket @ holzerlPlaw. com
rholzer @ holzeriplaw .com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXEY V. NAZAROV, OLLE G. HEINONEN,
BHARAT B. PANT, and KAIZHONG GAO
Appeal 2014-006802
Application 11/475,685
Technology Center 2600
Before KRISTEN L. DROESCH, JOHNNY A. KUMAR, and
MELISSA A. HAAPALA, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-006802
Application 11/475,685
STATEMENT OF CASE
Introduction
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 17—21, 23—26, and 28-42. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Exemplary Claim
Exemplary claim 17 reads as follows:
17. A method for writing to a magnetic medium, the method
comprising:
heating a region of the magnetic medium by effectuating
an alternating current voltage between a magnetic recording
head and the magnetic medium, wherein an electric current is
induced between the magnetic recording head and the magnetic
medium and eddy currents are induced in the magnetic
medium; and
generating a write field with the magnetic recording head
at the heated region
Rejections
Claims 17, 18, and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akagi (US 2005/0259343 Al, Nov. 24, 2005) in view of
Hamann (US 2004/0240109 Al, Dec. 2, 2004). Final Act. 4-7.
Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Akagi in view of Hamann, further in view of Akiyama (US 5,949,600,
Sept. 7, 1999). Final Act. 7-8.
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Appeal 2014-006802
Application 11/475,685
Claims 20, 21, 23—26, 28, 29, and 31—42 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Akagi in view of Hamann, and further
in view of Ichihara (US 2001/0006435 Al, July 5, 2001). Final Act. 8—16.
ANALYSIS1
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants’ arguments. However, we highlight
and address specific findings and arguments for emphasis in our analysis
below.
Claim 17 recites, inter alia, “heating a region of the magnetic medium
by effectuating an alternating current voltage between a magnetic recording
head and the magnetic medium.”
As a threshold issue, we decide the question of whether the Examiner
erred by improperly combining the cited references under 35 U.S.C. § 103.
Appellants advance the following contentions in the Appeal Brief:
(1) “[njeither of Akagi and Hamann disclose effectuating an alternating
current voltage between a magnetic recording head and the magnetic
medium” (emphasis added) (hereinafter “the disputed limitation”) (App. Br.
7—9); (2) the “Combination of Akagi and Hamann Requires Undue
1 Appellants focus their contentions on claim 17, allowing independent
claims 30 and 37 to stand or fall with representative claim 17. Separate
patentability is not argued for claims 18—21, 23—26, and 28—29, 31—36, and
38^42. App. Br. 6—12.
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Appeal 2014-006802
Application 11/475,685
Experimentation” (App. Br. 7—9); (3) the “Combination of Akagi and
Hamann Requires Substantial Reconstruction” (App. Br. 9—10); and (4) the
combination requires “impermissible hindsight. . . gleaned solely from
Appellant’s specification” (App. Br. 10—11).
Regarding the first contention, the Supreme Court guides the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). We find that, in view of Hamann’s teaching of using
AC current/voltage for a heating device in a magnetic recording head
(Hamann || 31, 33, 83), an artisan of ordinary skill at the time of the
invention would have understood that Akagi’s driving current (Akagi
40, 41, 44) could be alternating current (AC) voltage (Claim 17).2
Furthermore, Appellants do not explain why Appellants’ claimed invention
would not have been obvious to one skilled in the art, and thus, Appellants’
arguments are not persuasive of Examiner error. Also, we note that while
Hamann was also used for teaching the disputed limitation (Ans. 4—5), any
teaching regarding Hamann for the disputed limitation is considered
cumulative.
2 “The person of ordinary skill in the art is a hypothetical person who is
presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573, 1579
(Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
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Appeal 2014-006802
Application 11/475,685
Regarding the second and third contentions, Appellants have failed to
offer supporting objective evidence or adequately explain why the
combination of Akagi and Hamann requires undue experimentation, or
substantial reconstruction.3
We additionally find Appellants’ allegation of impermissible
hindsight is unsupported in the record. Appellants provide no evidence that
combining the teachings of Akagi and Hamann, as proffered by the
Examiner (Final Act. 5), would have been “uniquely challenging or difficult
for one of ordinary skill in the art” (.Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor have Appellants provided
any objective evidence of secondary considerations, which our reviewing
court guides “operates as a beneficial check on hindsight.” Cheese Systems,
Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Consequently, we find no error in the Examiner’s rejection of claims
17-21, 23-26, and 28-42.
CONCFUSION
The Examiner has not erred in rejecting claims 17—21, 23—26, and
28-42 as being unpatentable under 35 U.S.C. § 103(a).
3 The arguments of counsel cannot take the place of evidence in the record.
In re Schulze, 346 F.2d 600, 602 (CCPA 1965); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997).
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Appeal 2014-006802
Application 11/475,685
DECISION
The decision of the Examiner to reject claims 17—21, 23—26, and
28—42 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)(l)(iv).
AFFIRMED
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