Ex parte Schott

Board of Patent Appeals and Interferences

Jul 16, 2001

08803578 (B.P.A.I. Jul. 16, 2001)

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was not written for publication and is not binding precedent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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DANIEL P. SCHOTT
_____________
Appeal No. 1999-2277
Application 08/803,578
______________
ON BRIEF
_______________
Before FLEMING, RUGGIERO and BLANKENSHIP, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 4-8, 10, 11, 13 and 15-17,
all the pending claims. Claims 2, 3, 9, 12, 14 and 18 are
cancelled.
Appeal No. 1999-2277
Application 08/803,578
2
The instant invention relates to magnetic head
suspensions and particularly to the attachment of an air
bearing slider to a magnetic head suspension. Appellant’s
Specification, page 1, lines 5-7. Sliders are commonly
attached to the flexure with resilient adhesives.
Specification, page 2. However, the use of an adhesive to
secure the slider to the flexure is undesirable because the
manufacturing process is time-consuming and tedious.
Specification, page 2. The invention enables a method wherein
the time-consuming steps of epoxy application are avoided
resulting in a more reliable and accurately oriented slider in
the final magnetic head suspension assembly. The invention
features a magnetic head suspension that includes a load beam,
a flexible member or flexure, and a slider. Specification,
page 4, lines 18-21. Bonding pads are formed on the edge of
the slider and corresponding bonding pads are formed on the
flexure. Specification, page 4, lines 18-22. The bonding pads
of the slider and the corresponding bonding pads on the
flexure are attached to each other via bonding joints.
Specification, page 4, lines 22-24. The bonding joints are
Appeal No. 1999-2277
Application 08/803,578
3
preferably attached to the bonding pads by ultrasonic means.
Specification, page 4.
Appellant’s independent claim 1, reproduced below, is
representative of the invention:
1. A magnetic head suspension assembly comprising:
an air bearing slider having a leading edge and a
trailing edge;
bonding pads disposed on said leading and trailing edges;
and
a flexible member having an attachment surface, and metallic
bonding joints for fixedly attaching said bonding pads to said
attachment surface via ultrasonic means for securing said slider
to said flexible member without adhesive.
In rejecting Appellant’s claims, the Examiner relies on
the following reference:
Kudo et al. (Kudo) 5,567,186 Aug. 12,
1997
Claims 1, 4-8, 10, 11, 13 and 15-17 stand rejected under
35 U.S.C. § 103 as unpatentable over Kudo. Rather than repeat
the arguments of Appellant and Examiner, we refer the reader to
Appeal No. 1999-2277
Application 08/803,578
1 Appellant filed a Brief for Appellant on June 9, 1998.
2 The Examiner, in response to Appellant’s Brief, mailed
an Examiner's Answer on December 23, 1998.
4
the Appellant’s Brief1 and Examiner’s Answer2 for the respective
details thereof.
OPINION
With full consideration being given the subject matter on
appeal, the Examiner’s rejection and the arguments of Appellant
and Examiner, for the reasons stated infra, we will reverse the
Examiner’s rejection of claims 1, 4-8, 10, 11, 13 and 15-17
under 35 U.S.C. § 103 as unpatentable over Kudo.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). The Examiner can satisfy this
burden only by showing some objective teaching in the prior art
or that knowledge generally available to one of ordinary skill
in the art would lead that individual to combine the relevant
teachings of the references. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
Appeal No. 1999-2277
Application 08/803,578
5
burden is met does the burden of coming forward with evidence or
argument shift to the Appellant. Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444. See also In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984) (“After a prima facie case of
obviousness has been established, the burden of going forward
shifts to the applicant.”). If the examiner fails to establish
a prima facie case, the rejection is improper and accordingly
merits reversal. Fine, 837 F.2d at 1074, 5 USPQ2d at 1598.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. See
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444 (“In reviewing the
examiner’s decision on appeal, the Board must necessarily weigh
all of the evidence and argument.”). Accordingly, we now
consider the claims on appeal.
Appellant argues that Appellant’s invention solves a prior
art problem by the use of metallic bonding joints for joining
the slider and flexure by ultrasonic means without the use of an
adhesive. Brief at page 4. In contrast, Appellant contends,
Kudo requires an adhesive to join a slider to a flexible wiring
substrate. Brief at page 4. Therefore, Appellant concludes
Appeal No. 1999-2277
Application 08/803,578
6
that Kudo cannot anticipate or suggest Appellant’s claimed
magnetic head assembly because Kudo fails to address or solve
the problem associated with the use of an adhesive for
assembling a slider and a flexure and for joining the bonding
pads of the slider and flexure. Brief at page 5.
The Examiner responds that the Kudo teaching of an adhesive
in addition to the bonding joints is just a preferred embodiment
of the Kudo invention. Examiner’s Answer at page 4. The
adhesive, the Examiner asserts, is not required to bond the
slider to the flexible member, but is merely a desired feature
to enable a stronger bond. Examiner’s Answer at page 4.
Further, the Examiner contends that one of ordinary skill in the
art at the time of the invention would have been faced with the
engineering trade-off of strength of bond versus manufacturing
cost. Examiner’s Answer at page 4. The Examiner states that
”[e]liminating the adhesive would decrease the strength of the
bond, but it would also reduce the number of steps in the
manufacturing process. This would make the suspension assembly
easier to assemble and less costly.” Examiner’s Answer at page
4. Concluding, the Examiner asserts that “[i]n the case of
Kudo, the strength of bond is considered more important so the
Appeal No. 1999-2277
Application 08/803,578
7
inventor decided to use an adhesive in addition to bond joints.
Others might opt for the less costly manufacturing process and
decide to eliminate the adhesive.” Examiner’s Answer at page 4.
Our analysis of Kudo reveals the use of an adhesive
between the slider and a flexible wiring substrate:
The magnetic head slider[] is bonded by means of an
adhesive (not shown) on the upper surface of the flexible
wiring substrate[] which is formed on the gimbal[] of the
suspension[]. Column 5, lines 53-56.
However, we find that the use of an adhesive to accomplish a
bond between the slider and the flexible wiring substrate is
integral to the Kudo invention rather than an optional
embodiment of Kudo. This adhesive requirement is further
evidenced by Kudo’s claim 1 which recites in part:
A device for supporting a magnetic head slider having . .
. a support member for supporting the magnetic head slider,
said bottom surface of said slider being fixed to said
support member by an adhesive; . . . . (Emphasis added).
Column 7, line 62 to column 8, line 3.
We further find no evidence or suggestion that Kudo would
accomplish the bonding between the slider and the flexible
wiring substrate by means other than an adhesive. Kudo uses
gold ball bonding to connect the signal terminals to the signal
electrodes. Kudo discloses:
Appeal No. 1999-2277
Application 08/803,578
8
The signal terminals[] of the slider[] are directly
connected to the signal electrodes[] on the wiring
substrate[] by . . . using gold balls. . . . The grounding
terminal[] of the slider[] is also directly connected to
the grounding electrode[] on the wiring substrate[] by . .
. ball bonding using a gold ball. Column 6, line 65, to
column 7, lines 4.
We find no evidence in Kudo that teaches or suggests that
the gold ball bonding is used to attach or support an attachment
of the magnetic slider to the flexible wiring substrate. We
find that the gold ball bonding is only used to attach the
signal electrodes to the respective signal terminals of the
slider.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in the
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. Piasecki,
745 F.2d at 1471-72, 223 USPQ at 787-88; In re Knapp-Monarch
Co., 296 F.2d 230, 232, 132 USPQ 6,8 (CCPA 1961); In re Cofer,
354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Based on the evidence and arguments presented, and the
pertinent law in this matter, we find that the Examiner has
Appeal No. 1999-2277
Application 08/803,578
9
failed to establish a prima facie case of unpatentability with
respect to the claims. Accordingly, we reverse the Examiner’s
rejection of claims 1, 4-8, 10, 11, 13 and 15-17 as unpatentable
over Kudo.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
HOWARD BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-2277
Application 08/803,578
10
MRF:pgg
Nathan N. Kallman
20900 Sarahills Drive
Saratoga, CA 95070