Ex parte Nepela et al.

Board of Patent Appeals and Interferences

Feb 15, 2000

08500741 (B.P.A.I. Feb. 15, 2000)

Application for patent filed July 11, 1995. According 1
to applicants, this application is a continuation-in-part of
Application 08/387,395, filed February 13, 1995; which is a
continuation of Application 08/103,669, filed August 10, 1993.
1
Paper No. 27
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DANIEL A. NEPELA,
ERICH P. VALSTYN and
DEREK J. KROES
______________
Appeal No. 1997-3962
Application 08/500,7411
_______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 1997-3962
Application 08/500,741
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 2, 3 and 5-9,
which constituted all the claims remaining in the application.
An amendment after final rejection was filed on July 9, 1996
and was entered by the examiner. This amendment cancelled
claims 2, 3 and 5. Therefore, this appeal is directed to the
rejection of claims 6-9 which are all the claims remaining in
this application. A declaration was also filed after final
rejection which was also entered by the examiner [advisory
action mailed August 6, 1996].
The disclosed invention pertains to a thin film read-
write magnetic head for recording and reproducing information
on a magnetic medium.
Representative claim 8 is reproduced as follows:
8. A thin film read-write magnetic head for use with a
magnetic medium on which data tracks are recorded and read out
comprising:
first and second magnetic layers for forming a magnetic
yoke with a nonmagnetic transducing gap and having at least
three separate closely spaced sections, all of said three
sections each being formed of material having substantially
the same magnetic reluctance, wherein the total width of said
nonmagnetic transducing gap defined by said three sections
delineates the total width of said recorded data tracks, the
Appeal No. 1997-3962
Application 08/500,741
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center section of at least one of said layers having an
interspace formed therein;
flux sensing means disposed within said interspace for
sensing a readout signal;
write coil means disposed between said first and said
second magnetic layers;
magnetic valve conductor means coupled to said magnetic
yoke adjacent said flux sensing means;
said magnetic valve conductor means being disposed
between said write coil means and said flux sensing means; and
means for magnetically saturating said magnetic valve
conductor means during sensing of said readout signal and for
providing a magnetic shunt around said flux sensing means
during signal recording by said write coil means.
The examiner relies on the following references:
Fukazawa et al. (Fukazawa) 5,097,372 Mar. 17, 1992
Valstyn et al. (Valstyn) 5,255,141 Oct. 19, 1993
Claims 6-9 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Valstyn in view of
Fukazawa.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
Appeal No. 1997-3962
Application 08/500,741
4
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answers.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 6-9. Accordingly, we reverse.
Appellants have indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 5]. Consistent with this indication
appellants have made no separate arguments with respect to any
of the claims on appeal. Accordingly, all the claims before
us will stand or fall together. Note In re King, 801 F.2d
Appeal No. 1997-3962
Application 08/500,741
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1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Therefore, we will consider the rejection against independent
claim 8 as representative of all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
Appeal No. 1997-3962
Application 08/500,741
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664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could
have made but chose not to make in the briefs have not been
considered [see 37 CFR § 1.192(a)].
With respect to representative, independent claim 8,
the examiner cites Valstyn as teaching a thin film read-write
Appeal No. 1997-3962
Application 08/500,741
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magnetic head having most of the elements recited in claim 8.
The examiner notes that Valstyn does not disclose a yoke
having three separate closely spaced sections. Fukazawa is
cited as teaching a thin film read-write magnetic head in
which the yoke is made up of three or more sections for
providing a wide writing area and a narrower reproducing area.
The examiner observes that it would have been obvious to use
the three yoke sections of Fukazawa with the magnetic head of
Valstyn because it would greatly enhance the off-track
reproducing of a thin film magnetic head as suggested by
Fukazawa [answer, pages 3-5]. The examiner also notes that
the combination of Fukazawa and Valstyn does not show the
valve conductor means being disposed between the write coil
means and the flux sensing means as claimed. The examiner
finds that it would have been obvious to dispose the valve
conductor means as claimed for several general reasons and
because no new or unexpected results are obtained [id., page
6]. Appellants basically rely on two separate
arguments to demonstrate error in the examiner’s rejection.
First, appellants argue that the device of Fukazawa is
Appeal No. 1997-3962
Application 08/500,741
8
inoperative to perform as set forth in the Fukazawa patent
[brief, pages 6-11]. A declaration by Dr. Samuel W. Yuan has
been filed in support of this position. Second, appellants
argue that even if the teachings of Fukazawa are combined with
the teachings of Valstyn, there is no suggestion within the
applied references of the claimed location of the magnetic
valve conductor means [id., pages 12-17]. We consider the
second argument first.
As noted above, the examiner admits in the rejection
that the combined teachings of Valstyn and Fukazawa
specifically show the coil means and flux sensing means being
located on the same side of the valve conductor means [note
Figure 1 of Valstyn]. The examiner simply asserts that the
claimed location of the valve conductor means between the coil
means and the flux sensing means would have been obvious
because of several alleged advantages and because an
equivalent result is achieved with no unexpected properties.
This rejection cannot stand because the examiner has provided
no evidence to support his conclusions of obviousness.
Appeal No. 1997-3962
Application 08/500,741
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The fact that a rearrangement of parts of a prior art
device may result in a device that operates in the same manner
is not, by itself, evidence of obviousness. The examiner must
still demonstrate why the artisan would have been motivated to
modify the prior art. Here, the examiner’s reasons are based
on pure speculation such as an increase in manufacturing
yield. There is absolutely no evidence on this record to
support such assertions by the examiner. Since the
evidentiary record before us does not support the examiner’s
conclusion of obviousness, we do not sustain the examiner’s
rejection of claims 6-9 under 35 U.S.C. § 103.
Since the combination of Valstyn and Fukazawa would
not have suggested the obviousness of the claimed invention,
we need not dwell on the merits of appellants’ argument that
the device of Fukazawa is inoperable. We simply note for the
record that a patent is presumed to be valid, and the burden
of proving that a patent is inoperable, and therefore invalid,
is an extremely heavy one. Arguments of appellants’
representative and the opinion of Dr. Yuan that the Fukazawa
device does not effectively operate would not have been
Appeal No. 1997-3962
Application 08/500,741
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sufficient to meet this heavy burden. As noted above,
however, determination of this question is not necessary to
dispose of this appeal.
In summary, we have not sustained the examiner’s
rejection of claims 6-9. Therefore, the decision of the
examiner rejecting claims 6-9 is reversed.
REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
)
Lee E. Barrett ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lance Leonard Barry )
Administrative Patent Judge )
JS/cam
Appeal No. 1997-3962
Application 08/500,741
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Nathan N. Kallman
20900 Sarahills Drive
Saratoga, CA 95070