Ex Parte Smith Jr.

Board of Patent Appeals and Interferences

Oct 31, 2002

09237578 (B.P.A.I. Oct. 31, 2002)

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was not written for publication and is not binding
precedent of the Board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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte STANLEY C. SMITH, JR.
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Appeal No. 2001-1094
Application 09/237,578
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ON BRIEF
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Before FLEMING, LALL and GROSS, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-6 and 9-11.
The invention relates to a glide head structure adapted
for use with a system for testing moving surfaces to detect the
presence of asperities. See Appellant’s specification on page 1,
lines 8-9. The glide head structure (50) includes a slider (60)
that projects downwardly from a tongue (44) and a piezoelectric
Appeal No. 2001-1094
Application 09/237,578
2
transducer (70) which is secured to a sidewall surface (65)
of the slider (60) and projects outwardly. See Appellant’s
specification on page 11, lines 19-23.
Independent claim 1 present in the application is
representative and reproduced as follows:
1. A glide head assembly associated with a mounting
structure and adapted for use with a test system for detecting a
presence of asperities on a moving surface, wherein the test
system includes a signal processor operative to process an
electronic signal generated in response to the presence of an
asperity, said glide head assembly comprising:
(a) an elongated flexure having a longitudinal axis and
including a first end portion attachable to said mounting
structure and a second end portion opposite said first end
portion, said second end portion adapted to be positioned in
proximity to the moving surface when in an operative state;
(b) a slider disposed on said second end portion, said
slider having a first surface facing the moving surface when in
the operative state, a second surface opposite the first surface
and a surrounding sidewall surface extending therebetween; and
(c) a piezoelectric transducer secured to said surrounding
sidewall surface and projecting outwardly therefrom, said
piezoelectric transducer responsive in the operative state to the
presence of the asperity relative to said slider as the asperity
moves past said slider to vibrate, thereby to produce the
electronic signal at a selected signal frequency.
REFERENCES
The references relied on by the Examiner are as follows:
Zak 5,166,847 Nov. 24, 1992
Flechsig et al. (Flechsig) 5,423,207 June 13, 1995
Horikawa et al. (Horikawa) 5,640,089 June 17, 1997
Appeal No. 2001-1094
Application 09/237,578
1 The Appellant filed an Appeal Brief on October 23, 2000,
Paper No. 16. In response, the Examiner’s Answer, Paper No. 17,
was mailed on November 13, 2000.
3
REJECTIONS AT ISSUE
Claims 1-3, 5, 6, and 9-11 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Flechsig in view of Horikawa.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flechsig and Horikawa as applied to the claims
above, and further in view of Zak.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the Brief1 and the Answer for the
respective details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of Appellant
and Examiner, for the reasons stated infra, we will not sustain
the Examiner’s rejection of claims 1-6 and 9-11 under 35 U.S.C.
§ 103.
Appellant points out that the Examiner maintains that
Flechsig shows every limitation of claims 1, 9 and 11, with the
exception of locating the piezoelectric element on the side face
Appeal No. 2001-1094
Application 09/237,578
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surface of the slider. Further, Appellant points out that the
Examiner maintains that it would have been obvious to relocate
the Flechsig sensor on the side face surface of the slider in
view of the teachings in Horikawa of locating a force sensor on
the side face of a slider to test for roughness. See Appeal
Brief, page 12, lines 11-16. However, Appellant argues that the
Examiner has failed to present some objective teaching leading to
the purported combination of these references. In addition,
Appellant argues that a careful reading of these references would
steer one of ordinarily skill away from combining them in the
manner suggested by the Examiner. See Appeal Brief, Page 13,
lines 9-13.
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 USPQ 1443,
1444 (Fed. Cir. 1992). See Also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 87 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Appeal No. 2001-1094
Application 09/237,578
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Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki
745 F.2d at 1472, 223 USPQ at 788.
The factual inquiry whether to combine references under
35 U.S.C. § 103 must “be based on objective evidence of record.”
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir.
2002). This “showing must be clear and particular.” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “In other words, the Board must explain the reasons one
of ordinary skill in the art would have been motivated to select
the references and combine them to render the claimed invention
obvious.” In re Lee, 277 F.3d at 1343, 61 USPQ2d at 1434 quoting
In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). See also Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617 quoting In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453,
1459 (Fed. Cir. 1998). “[T]he Board must not only assure that
the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the agency’s conclusion.” In re Lee, 277 F.3d at
1344, 61 USPQ2d at 1434. With these principles in mind, we
Appeal No. 2001-1094
Application 09/237,578
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commence review of the pertinent evidence and arguments of
Appellant and Examiner.
Upon review, we fail to find that the Examiner has provided
us with objective evidence to support why one of ordinary skill
in the art would have combined Horikawa with Flechsig. All of
the independent claims include the limitation of a piezoelectric
transducer secured to the surrounding sidewall surface and
projecting outwardly. See Appeal Brief, Page 17, lines 14-15 and
Page 19, lines 5-6 and Page 20, lines 1-2. We find Flechsig
teaches a piezoelectric sensor sandwiched within a slider. See
Flechsig, Figure 2, and column 4, lines 5-9. However, we find
that Flechsig fails to provide any suggestion to move the
piezoelectric sensor to be secured to the surrounding sidewall
surface.
We find that Horikawa teaches a composite magnetic head
portion 20 attached to the front surface of the head slider 13.
See Horikawa Figure 1(B) and column 4, lines 21-23. We also find
that the composite magnetic head portion 20 is used for detecting
surface roughness of a magnetic recording medium, a magnetic disk
11. See Horikawa, column 3, lines 45-53. However, we find this
teaching of placing a roughness sensor on the front surface of
Appeal No. 2001-1094
Application 09/237,578
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the head slider 13 alone would not lead one of ordinary skill in
the art to conclude that a piezoelectric sensor would prove
beneficial if positioned on the slider’s front surface of the
head.
In conclusion, we find the references fail to disclose,
teach or suggest a piezoelectric transducer which projects
outwardly from the slider’s surrounding sidewall to produce an
electronic signal in response to the presence of an asperity
relative to the slider as recited in claims 1, 9, and 11. Since
claims 2-6 and 10 are dependent on independent claims 1, 9, and
Appeal No. 2001-1094
Application 09/237,578
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11, we also cannot sustain the art rejections of these claims.
Therefore, we cannot sustain the rejection of claims 1-6 and 9-11
under 35 U.S.C. § 103(a).
REVERSED
Michael R. Fleming )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )
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