10431489 (B.P.A.I. Mar. 10, 2011)

Ex Parte Santini

Board of Patent Appeals and InterferencesMar 10, 2011

10431489 (B.P.A.I. Mar. 10, 2011)

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. 10/431,489 05/06/2003 Hugo Alberto Santini HIT1P005/SJO 920020071US1 6057 50535 7590 03/10/2011 ZILKA-KOTAB, PC- HIT P.O. BOX 721120 SAN JOSE, CA 95172-1120 EXAMINER BLOUIN, MARK S ART UNIT PAPER NUMBER 2627 MAIL DATE DELIVERY MODE 03/10/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HUGO ALBERTO SANTINI ____________ Appeal 2009-007658 Application 10/431,489 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL1 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007658 Application 10/431,489 Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1, 2, 4-9, 11-15, 24, 25, and 27-29. Claims 3, 10, 26, and 30-32 have been canceled and claims 16-23 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Exemplary Claim Independent claim 1, which is illustrative of the invention, reads as follows: 1. A magnetic head structure for perpendicular recording and reading, comprising: a write head portion for writing data to magnetic media via lines of flux oriented substantially perpendicular to a surface of the media facing the write head portion, the write head portion including: a first pole piece, the first pole piece having a first pole tip; a probe pole piece, the probe pole piece having a probe pole tip for emitting magnetic flux; an insulation stack positioned between the pole pieces; and at least one write coil embedded in the insulation stack; and a read head portion: and a slider, the write head being positioned between the read head and the slider, and the probe pole piece being disposed between the first pole piece and the slider. Appellant’s Contention Appellant contends that the Examiner erred in rejecting claims 1, 2, 4- 9, 11-15, 24, 25, and 27-29 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Sato (US 6,697,221 B2) and Shukh (US 2002/0176214 A1). Appellant specifically contends that Shukh merely mentions a slider with reference to Figure 1, wherein the slider 24 is described as carrying a transducing head, but does not mention any positional relationship between a read head, write head, and the slider, nor of 2 Appeal 2009-007658 Application 10/431,489 the relative relationship between a first pole, probe pole, and a slider, as recited in claim 1 (App. Br. 11-12). Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious over the cited references for teaching or suggesting “the write head being positioned between the read head and the slider, and the probe pole piece being disposed between the first pole piece and the slider?” ANALYSIS Appellant presents arguments as to why the Examiner has erred. (App. Br. 11-13). We agree with Appellant’s contention above. The Examiner relies on Figures 1 and 8-13 of Shukh and the corresponding description in paragraphs [0023], [0028], and [0029], and asserts that the relationship between the read head and the write head identifies them “as one unit – the read/write head (10)” carried by the slider 24 (Ans. 7). The Examiner concludes that one of ordinary skill in the art would have embedded the transducer into the body of the slider (id.). The Examiner relies on the same portion of Shukh for concluding that the claimed relationship between the probe pole piece, the first pole piece, and the slider would have also been obvious to the skilled artisan (id.). We agree with Appellant that Shukh does not teach or suggest the specific relationship between the read head and the write head or the first pole and the probe pole with the slider, as recited in claim 1. While the Examiner correctly asserts that the transducing head is positioned on the slider, the Examiner has not identified any teachings or provided any 3 Appeal 2009-007658 Application 10/431,489 persuasive line of reasoning for modifying Shukh to arrive at the claimed invention. CONCLUSIONS 1. The Examiner erred in rejecting claim 1 as being obvious because the combination of the references fails to teach or suggest “the write head being positioned between the read head and the slider, and the probe pole piece being disposed between the first pole piece and the slider.” 2. We do not sustain the 35 U.S.C. § 103(a) rejection of claim 1, as well as the other independent claims 9 and 24, which include similar limitations recited in claim 1. We also do not sustain the rejection of claims 2, 4-8, 11-15, 25, and 27-29 that are dependent thereon. ORDER The Examiner’s decision rejecting claims 1, 2, 4-9, 11-15, 24, 25, and 27-29 is reversed. REVERSED ELD ZILKA-KOTAB, PC- HIT P.O. BOX 721120 SAN JOSE, CA 95172-1120 4