Ex Parte Scholz et al

Patent Trial and Appeal Board

Jun 1, 2015

11925012 (P.T.A.B. Jun. 1, 2015)

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.
11/925,012 10/26/2007 Werner Scholz 430.14036010 2268
75742 7590 06/01/2015
MUETING, RAASCH & GEBHARDT, P.A.
P.O. Box 581336
Minneapolis, MN 55458-1336
EXAMINER
RENNER, CRAIG A
ART UNIT PAPER NUMBER
2688
MAIL DATE DELIVERY MODE
06/01/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte WERNER SCHOLZ,
THOMAS WILLIAM CLINTON, SHARAT BATRA,
MARK THOMAS KIEF, ERIC S. LINVILLE,
WEI PENG, and KENNETH A. MEDLIN
____________________

Appeal 2013-002067
Application 11/925,012
Technology Center 2600
____________________

Before JOHN F. HORVATH, CHRISTA P. ZADO, and
NORMAN H. BEAMER, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–6, 8, 10–15, and 17–23. Claim 7 has been
withdrawn; claims 9 and 16 have been cancelled. Claims App’x. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2013-002067
Application 11/925,012

2
SUMMARY OF THE INVENTION
The invention is directed to a magnetic writer that includes a
conductor to generate a magnetic field to assist a write field. Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus comprising:
a write element including a write element tip that defines
a medium confronting surface, wherein the write element is
operable to generate a first field at the medium confronting
surface;
an assist device proximate the write element tip;
first and second conductive leads connected to the assist
device and configured to enable the assist device to generate a
second field that augments the first field, at least a portion of
the first conductive lead and the second conductive lead are
each recessed from the medium confronting surface; and
first and second side elements disposed on opposite sides
of the write element tip in a cross-track direction at the medium
confronting surface, wherein at least a portion of the first
conductive lead is disposed adjacent the first side element on a
side opposite the medium confronting surface of the first side
element, and wherein at least a portion of the second conductive
lead is disposed adjacent the second side element on a side
opposite the medium confronting surface of the second side
element.
REJECTIONS
Claims 1–6, 8, 10–15, and 17–23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Clinton et al. (US 2005/0280935 A1; Dec. 22,
2005)(hereafter “Clinton”). Final Act. 2.
Appeal 2013-002067
Application 11/925,012

3
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2–4)
and (2) the second reason set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief (Ans. 3–5) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellants contend claim 1 is patentable over Clinton because Clinton
discloses leads 216 and 220 are co-planar with air bearing surface 208 rather
than being recessed from the surface as recited in claim 1. App. Br. 7 (citing
Clinton ¶¶ 34, 36, and Figs 3–4). Consequently, Appellants contend, “[t]he
assertion in the Final Office Action that the leads 216 and 220 are recessed
from the air bearing surface is clear error.” Id.
We are not persuaded by Appellants argument. The Examiner did not
identify Clinton’s composite elements 216 and 220 as the first and second
leads as Appellants contend. Rather, the Examiner identified sub-element
234 of element 216 and sub-element 236 of element 220, respectively, as the
first and second leads. Final Act. 2–3. (citing Clinton Figs. 3–4). As shown
in Figure 4 of Clinton, sub-elements 234 and 236 are each recessed from air-
bearing or media-confronting surface 208 by a distance ‘T,’ being the
thickness of respective side elements 230 and 232.
Moreover, as the Examiner found, Clinton discloses leads 234 and
236 are preferably made of copper (Cu), and side elements 230 and 232 are
Appeal 2013-002067
Application 11/925,012

4
preferably made of a soft magnetic material such as Nickel-Iron (NiFe).
Ans. 3–4 (citing Clinton ¶¶ 35–36). These are the same materials Appellants
describe as forming leads 60 and 62 and side elements 106 and 108. Ans. 3
(citing Spec. ¶¶ 31, 34, Fig. 3C). Consequently, we agree with and adopt as
our own the Examiner’s findings that (a) Clinton “teaches the same
invention claimed by appellants, however, describes the invention using
different terminology,” and (b) Clinton’s invention “is structurally no
different from the invention claimed by appellants when interpreted in light
of the invention as disclosed by appellants.” Ans. 3–5.
For the reasons discussed above, we sustain the Examiner’s rejection
of claim 1. Appellants argue independent claims 8 and 17, and dependent
claims 2–6, 10–15, and 18–23 are patentable for the same reason as claim 1.
App. Br. 7–8. We therefore sustain the Examiner’s rejection of these claims
for the same reasons we sustain the Examiner’s rejection of claim 1.

DECISION
For the reasons indicated above, the Examiner’s rejection of claims 1–
6, 8, 10–15, and 17–23 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)(1)(iv).

AFFIRMED

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