Ex Parte Ruigrok et al

Board of Patent Appeals and Interferences

Jun 26, 2003

09006014 (B.P.A.I. Jun. 26, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACOBUS J.M. RUIGROK and GERARDUS H.J. SOMERS
__________
Appeal No. 2001-2262
Application 09/006,014
___________
ON BRIEF
___________
Before JERRY SMITH, DIXON, and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 6-15. Claims 1-5 have been
cancelled. Claims 16-27 stand withdrawn from consideration by
the examiner as a result of a restriction requirement.
The disclosed invention pertains to a multi-channel magnetic
head using magnetoresistive measuring elements.
Appeal No. 2001-2262
Application 09/006,014
2
Representative claim 11 is reproduced as follows:
11. A multi-channel magnetic head having a head face which
extends in a first direction and in a second direction transverse
to the first direction, for scanning a record carrier which is
relatively movable with respect to the magnetic head in the first
direction,
comprising a structure of layers which extend respectively
substantially in the second direction and in a third direction
transverse to the first and second directions, said layers being
disposed one on top of the other as viewed in the first
direction,
said structure including a plurality of magnetoresistive
sensors, each of said magnetoresistive sensors comprising a
magnetoresistive measuring element, a first magnetic element and
a second magnetic element respectively,
said magnetoresistive measuring elements being arranged such
that, viewed in the second direction, adjacent magnetoresistive
sensors are distinguishable; and, viewed in the first direction,
the magnetic elements are opposite each other, at least the
respective first magnetic elements extending as far as the head
face,
characterized in that both magnetic elements of each of at
least two adjacent magnetoresistive sensors are electrically
conducting and have respective electric connection faces, the
respective magnetoresistive measuring element being electrically
arranged in series between the respective two magnetic elements
for passing a measuring current through the measuring element
substantially in the third direction.
The examiner relies on the following references:
Takino et al. (Takino) 4,896,235 Jan. 23, 1990
Ruigrok 5,973,889 Oct. 26, 1999
Appeal No. 2001-2262
Application 09/006,014
3
Claims 6, 7, 10, 11 and 13-15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by the disclosure of Takino.
Claims 8, 9 and 12 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Takino taken alone.
Claim 11 stands additionally rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claim 1 of Ruigrok in view of Takino.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the examiner and the evidence of
anticipation and obviousness relied upon by the examiner as
support for the rejections. 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 rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us,
that the evidence relied upon by the examiner does not support
any of the examiner’s rejections of the claims on appeal.
Appeal No. 2001-2262
Application 09/006,014
4
Accordingly, we reverse.
We consider first the rejection of claims 6, 7, 10, 11 and
13-15 under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Takino. Anticipation is established only when a
single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner has indicated how he reads the claimed
invention on the disclosure of Takino [answer, pages 3-4]. With
respect to sole independent claim 11, appellants argue that
magnetic elements 8F and 8B of Takino are not one on top of the
other as claimed. Appellants also argue that the mere assertion
by Takino that multi-channel heads may be formed fails to teach
one how to make such a head [brief, pages 9-10]. The examiner
responds by providing a diagram which, in the examiner’s view,
shows that elements 8F and 8B of Takino are on top of each other
Appeal No. 2001-2262
Application 09/006,014
5
as claimed. The examiner also refers to the portion of Takino
which suggests a multi-channel modification [answer, pages 8-9].
Appellants respond that the examiner’s diagram establishes a
first direction which is contrary to the claimed invention.
Specifically, appellants assert that the first direction defined
by the examiner is not the direction of relative movement between
the record carrier and the magnetic head as recited in claim 11
[reply brief, page 2].
We will not sustain the examiner’s anticipation rejection of
any of the claims based on Takino. As pointed out by appellants,
the first direction defined by the examiner is indeed contrary to
the claimed invention. Since Takino does not disclose every
feature of the claimed invention, it does not anticipate the
claimed invention. Since Takino does not anticipate independent
claim 11, it also does not anticipate any of the claims which
depend therefrom.
We now consider the rejection of claims 8, 9 and 12 under
35 U.S.C. § 103(a) based on Takino taken alone. 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
Appeal No. 2001-2262
Application 09/006,014
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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, 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
Appeal No. 2001-2262
Application 09/006,014
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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 brief
have not been considered and are deemed to be waived by
appellants [see 37 CFR § 1.192(a)].
The examiner’s rejection is set forth on pages 5-6 of the
answer. Although the examiner acknowledges that there are
features of these claims which are not disclosed by Takino, the
examiner dismisses these differences as being obvious to the
artisan. Appellants argue that Takino teaches away from the
claimed invention [brief, pages 12-13]. The examiner responds
that appellants have failed to define the third direction in a
manner which distinguishes over Takino and repeats the assertion
that the differences between the claimed invention and Takino
would have been obvious to the artisan [answer, pages 10-11].
We will not sustain the examiner’s obviousness rejection of
claims 8, 9 and 12. Since the examiner’s rejection relies on an
improper reading of the claimed invention on the disclosure of
Takino for reasons discussed above, the examiner has failed to
establish a prima facie case of obviousness. We also agree with
Appeal No. 2001-2262
Application 09/006,014
8
appellants that there are no teachings or suggestions within
Takino that support the examiner’s findings that the acknowledged
differences between Takino and the claimed invention would have
been obvious to the artisan.
We now consider the rejection of claim 11 under the
judicially created doctrine of obviousness-type double patenting
over claim 1 of Ruigrok in view of Takino. The examiner finds
that claim 1 of Ruigrok recites the head structure of claim 11
except for the head being a multi-channel head. The examiner
notes that Takino suggests a multi-channel head. The examiner
finds that it would have been obvious to the artisan to modify a
single channel head so that it becomes a multi-channel head as
claimed [answer, page 3].
Appellants argue that the single channel head as taught by
Ruigrok would never be modified to be a multi-channel head as
claimed. Specifically, appellants argue that the dimensions of
the single channel head in Ruigrok preclude its use as a multi-
channel head because it would destroy the specific desirable
properties of the single channel head. Appellants also argue
that the mere mention of multi-channel heads in Takino does not
teach the artisan that the single channel head of Ruigrok can be
made into a multi-channel head as claimed. Finally, appellants
Appeal No. 2001-2262
Application 09/006,014
9
note that a patent granted on this application would expire
before the Ruigrok patent anyway [brief, pages 5-9].
The examiner responds by repeating his assertion that it
would have been obvious to the artisan to modify a single channel
magnetic head so that it was a multi-channel head as taught by
Takino. The examiner also responds that the rejection is made to
prevent an unjustified or improper timewise extension of the
Ruigrok patent [answer, pages 6-8].
We will not sustain this rejection of claim 11. Although
the examiner refers to an improper timewise extension of the
patent, he does not address the fact that a patent granted on
this application would in fact expire before the Ruigrok patent.
Nevertheless, we agree with appellants that there is nothing on
this record which would motivate the artisan to turn the single
channel head of Ruigrok into a multi-channel head. The mere fact
that some single channel heads can be replicated to form multi-
channel heads does not mean that all such single channel heads
can be so modified. We agree with appellants that the particular
single channel head of Ruigrok, which is specifically designed
for single channel use, cannot simply be transformed into a
multi-channel head as proposed by the examiner. The examiner has
not addressed the argument that the specific properties of the
Appeal No. 2001-2262
Application 09/006,014
10
Ruigrok single channel head would be lost if the head were
modified to be a multi-channel head.
In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 6-15 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JS:pgg
Appeal No. 2001-2262
Application 09/006,014
11
Corporate Patent Counsel
US Philips Corporation
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