Ex parte OKADA

Board of Patent Appeals and Interferences

Jan 6, 1998

07944653 (B.P.A.I. Jan. 6, 1998)

Application for patent filed September 14, 1992.1
1
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(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SEIJIRO OKADA
__________
Appeal No. 95-2807
Application 07/944,6531
__________
ON BRIEF
__________
Before McCANDLISH Senior Administrative Patent Judge and
KRASS and STAAB, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 and 3 through 8. No other claims are
pending in the application.
Appeal No.95-2807
Application 07/944,653
Although the magnetic gaps are not specifically defined or2
described in appellant’s specification, U.S. Patent No. 4,849,841
issued to Edmund Sokolik states that a magnetic gap in a tape
recording/reproducing head of an electromagnetic transducer core
structure lies between confronting pole faces of the core. This
patent was cited in the first office action in this application.
See Paper No. 4.
2
Appellant’s invention relates to a magnetic head for a tape
recording/reproducing apparatus. Appealed claim 1 recites that
the head comprises a “slidable surface” (which we interpret as
being a tape sliding surface inasmuch as this surface of the head
is not “slidable” in a literal sense) and first and second
magnetic gaps (1A, 2A). The first magnetic gap is recited to2
correspond to a first running direction of the magnetic tape, and
the second magnetic gap is recited to correspond to a second
running direction of the tape. According to claim 1, each of the
magnetic gaps lies between a head peak (9, 10) of the slidable
surface and a tape departure point (7, 8) downstream from the
head peak so that it is effectively offset from the peak.
A copy of the appealed claims, as these claims appear in the
appendix to appellant’s brief, is appended to this decision.
The following references are relied upon by the examiner in
support of his rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103:
Takanohashi et al. (Takanohashi) 4,387,410 Jun. 07, 1983
Favrou et al. (Favrou) 4,875,129 Oct. 17, 1989
Appeal No.95-2807
Application 07/944,653
A copy of a translation of this reference is attached.3
3
Toshimitsu JP 57-176521 Oct. 29, 19823
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Favrou, claims 3 and 4 stand rejected under 35
U.S.C. § 103 as being unpatentable over Favrou in view of
Toshimitsu, claims 5 and 6 stand rejected under 35 U.S.C. § 103
as being unpatentable over Toshimitsu alone and claims 7 and 8
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Toshimitsu in view of Favrou or Takanohashi.
With regard to the rejection of claims 3 and 4, the examiner
concludes that the teachings of Toshimitsu would have made it
obvious to provide Favrou’s head device with a pad for pressing
the tape against a predetermined portion of the tape sliding
surface. With regard to claim 5, the examiner concludes that it
would have been obvious to enlarge Toshimitsu’s pad 5 to cover
the offset magnetic gap 2a in Figures 3-5 of the drawings of the
reference to cause the tape to run over the head surface “in a
more accurate and precise manner” (answer, page 4). Reference is
made to the examiner’s answer for further details of the standing
rejections.
Considering first the § 102 rejection of claim 1, it is well
Appeal No.95-2807
Application 07/944,653
4
settled that for a reference to be properly anticipatory, each
and every element of the rejected claim must be found either
expressly described or under the principles of inherency in the
applied reference. See, inter alia, RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984).
In the present case, appellant does not take issue with the
examiner’s finding that each of Favrou’s elements or
configurations 148 and 149, which constitute the magnetic gaps
according to the examiner, lie between a head peak of a tape
sliding surface and a tape departure point downstream from the
head peak as recited in appealed claim 1. Appellant also does not
specifically challenge the examiner’s finding on page 6 of the
answer that a magnetic gap is an inherent part of each of
Favrou’s transducers 140 and 142. Indeed, it is noteworthy that
appellant’s illustration of the magnetic gaps 1A and 2A (Figure
1) and also magnetic gaps 1 and 2 (Figure 3) closely resembles
the configurations designated by the reference numerals 148 and
149 in the Favrou patent. In any case, we are satisfied that
Appeal No.95-2807
Application 07/944,653
5
the magnetic gaps are inherently disclosed in the Favrou
patent inasmuch as one of ordinary skill in the art would have
recognized from Favrou’s specification and drawings, as well as
the prior art as shown in Figure 3 of appellant’s drawings, that
the Favrou’s transducers are each of the type incorporating a
magnetic gap. See Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). This view is
reinforced by the fact that in illustrations of the prior art,
such as Figure 3 of appellant’s drawings, the magnetic gap in the
core structure is simply illustrated as a relatively thick line
between pole pieces similar to the illustration in the Favrou
patent.
Furthermore, appellant’s arguments in the second full
paragraph on page 4 of the brief are unpersuasive. As stated by
our reviewing court in In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989), “[d]uring patent examination the
pending claims must be interpreted as broadly as their terms
reasonably allow.”
Applying the foregoing principle to the present case, the
recitation of a magnetic head in appealed claim 1 is broad enough
to read on what appears to be non-unitary head structures
Appeal No.95-2807
Application 07/944,653
6
designated by the reference numerals 140 and 142 in the Favrou
patent. Neither claim 1 nor any of the other appealed claims
recites that the head incorporating the two magnetic gaps is a
unitary structure. In fact, appellant’s head as illustrated in
Figure 3 of the patent application drawings appears to be two
side-by-side structures lying along what appears to be a central
dividing line extending vertically between the chain link lines
7B and 8B.
For the foregoing reasons, we will sustain the examiner’s
§ 102(b) rejection of appealed claim 1.
With regard to the § 103 rejection of dependent claims 3 and
4, the purpose of employing a pressure pad for a tape is known in
the art as evidenced by the use of such a pad in the prior art
head device shown in Figure 1 of appellant’s own drawings.
Moreover, Toshimitsu expressly teaches the art that the pad 5
provides close contact between the tape and the head space as
shown, for example, in Figure 3 and noted on page 3 of the
accompanying translation. Contrary to appellant’s arguments, such
a teaching would have been ample motivation for one of ordinary
skill in the art to provide Favrou’s head device with a
corresponding pad. Admittedly, Toshimitsu’s pad in Figures 3-5
Appeal No.95-2807
Application 07/944,653
7
does not cover the magnetic gap. However, unlike appealed claim
5, claims 3 and 4 do not require the pad to press the tape
against the head portion containing the magnetic gap. For these
reasons we will also sustain the examiner’s § 103 rejection of
claims 3 and 4.
We cannot, however, sustain the § 103 rejection of appealed
claims 5 and 6. In contrast to the invention defined in claim 5,
Toshimitsu expressly teaches the art to locate the pad remotely
from the head portion containing the offset magnetic gap 2a as
shown, for example, in Figure 3 of Toshimitsu’s drawings so that
the pressure exerted by the pad is not applied directly over the
offset gap to avoid the problems discussed on pages 2 and 3 of
the accompanying translation of the Toshimitsu reference. As
such, the teachings of Toshimitsu points away from, not toward,
the invention defined in appealed claim 5. The examiner’s
speculative reason why one of ordinary skill in the art would
ignore this express teaching in Toshimitsu lacks the requisite
factual basis to support a conclusion of obviousness. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Appeal No.95-2807
Application 07/944,653
8
Finally, we also cannot sustain the § 103 rejection of
dependent claims 7 and 8 inasmuch as neither Favrou nor
Takanosashi rectifies the deficiency of Toshimitsu as discussed
supra.
In summary, the examiner’s decision rejecting the appealed
claims is affirmed with respect to claims 1, 3 and 4, but is
reversed with respect to claims 5 through 8.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136 a.
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No.95-2807
Application 07/944,653
9
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No.95-2807
Application 07/944,653
10
James E. Ledbetter, Esq.
Watson, Cole, Stevens & Davis, P.L.L.C
Suite 1000
1400 K Street, NW
Washington, DC 20005-2477