Ex parte Stearns et al.

Board of Patent Appeals and Interferences

Aug 6, 1999

08202991 (B.P.A.I. Aug. 6, 1999)

The application, entitled “Giant Magnetoresistive1
Sensor,” was filed February 28, 1994.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL G. STEARNS,
STEPHEN P. VERNON,
NATALE M. CEGLIO,
and ANDREW W. HAWRYLUK
____________
Appeal No. 97-1627
Application No. 08/202,9911
____________
ON BRIEF
____________
Before THOMAS, BARRETT, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-19. We reverse.
BACKGROUND
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Application No. 08/202,991
The invention at issue in this appeal relates to
magnetoresistive sensors. It is a giant magnetoresistive
(GMR)
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Application No. 08/202,991
sensor comprising a three-dimensional microstructure of
alternating magnetic layers and nonmagnetic, spacer layers.
The sensor achieves a strong magnetoresistive response, high
sensitivity, and high spatial resolution. It is useful in
magnetic read/write heads for storing and retrieving high
density data.
Claim 1, which is representative for our purposes,
follows:
1. A giant magnetoresistive (GMR) sensor,
comprising:
a sensor element formed of a plurality of
alternating layers of a magnetic material and a
nonmagnetic conducting material patterned in a
three-dimensional microarchitecture with a length L
and a width W and a total thickness B, wherein L $ W
> B and W is between about 0.1 microns and about 5
microns, and wherein each magnetic layer is a single
magnetic domain and the layers of nonmagnetic
material have a thickness such that exchange
coupling between adjacent magnetic layers is less
than magnetostatic coupling;
means for flowing a current through the sensor
element and for detecting resistance changes.
(Spec. at 15.)
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Application No. 08/202,991
Claims 1-19 stand rejected under 35 U.S.C. § 112, ¶ 1, as
non-enabled. The claims also stand rejected under 35 U.S.C.
§ 112, ¶ 2, as indefinite. (Examiner’s Answer at 3.) Rather
than repeat the arguments of the appellants or examiner in
toto, we refer the reader to the appeal and reply briefs and
the examiner’s answer for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections and evidence
advanced by the examiner. We also considered the appellants’
and examiner’s arguments. After considering the record before
us, it is our view that the specification would enable any
person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the invention
without undue experimentation. It is also our view that the
claims particularly point out and distinctly claim the subject
matter regarded as the invention. Accordingly, we reverse.
We begin our consideration of the patentability of the
claims by recalling that in rejecting claims, the patent
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Application No. 08/202,991
examiner bears the initial burden of presenting a prima facie
case of unpatentability. If the burden of establishing a
prima facie case is met, the burden of coming forward with
evidence or argument shifts to the appellant. After evidence
or argument is submitted by the appellant in response,
patentability is determined on the totality of the record, by
a preponderance of evidence with due consideration to
persuasiveness of argument. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In reviewing the examiner's decision on appeal, the Board
of Patent Appeals and Interferences (Board) must weigh all the
evidence and argument. An observation by the Board that the
examiner made a prima facie case is not improper, if the
ultimate determination of patentability is made on the entire
record. Id., 24 USPQ2d at 1444. With this in mind, we
consider the enablement and definiteness of the claims.
Enablement
The examiner rejects claims 1-19 under 35 U.S.C. § 112,
¶ 1, for three reasons. We address these reasons seriatim.
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Application No. 08/202,991
The first reason is that the “claims are inadequately
disclosed under 112
par.1 if read to encompass any number of layers, any L/W
ratio, and any total thickness.” (Final Rejection at 3.)
We find, however, that the examiner misconstrues the
claimed sensor as comprising any number of layers, any length-
to-width (L/W) ratio, and any total thickness. The Examiner
ignores many claim limitations. Among the ignored limitations
of independent claims 1 and 14 are a plurality of alternating
layers of a magnetic material and a nonmagnetic (NM),
conducting material; a three-dimensional microarchitecture
with L $ W > B and O.1Fm # W # 5Fm; each magnetic layer acting
as a single magnetic domain; the layers of NM material having
a thickness such that exchange coupling between adjacent
layers is less than magnetostatic coupling; and a means or
conductive layers for flowing a current through the sensor and
for detecting changes in resistance. (Spec. at 15, 17.)
Accordingly, we find that the examiner’s first reason for
rejecting the claims does not satisfy his burden of
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At the time of the answer, examiners were instructed2
that “[a] feature which is taught as critical in a
specification and is not recited in the claims should result
in a rejection of such claim under the enablement provision
section of 35 U.S.C. 112.” Manual of Patent Examining
Procedure § 2164.08(c) (6th ed., Rev. 2, July 1996).
establishing a prima facie case of non-enablement. We turn to
his second reason.
The examiner’s second reason for rejecting the claims
under 35 U.S.C. § 112, ¶ 1, is that the claims fail to recite
features that the specification teaches are critical.
Although the examiner presents this reason in a rejection
under the second paragraph of section 112, (Final Rejection at
3-4), the language indicates that he is relying on the first
paragraph, which requires that claims be supported by an
enabling disclosure. See In re Mayhew, 527 F.2d 1229, 1232,
188 USPQ 356, 358 (CCPA 1976).2
The examiner begins his explanation by alleging, “[t]he
disclosure clearly indicates critical limitations for the
number of layers, L/W ratio, and total thickness.” (Final
Rejection at 3.) He ends it by concluding, “these claims are
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indefinite and incomplete for failing to clearly and
completely recite the critical features of the sensor.”
(Id. at 4.)
We find, however, that the unclaimed number of layers
(N), L/W ratio, and total thickness (B) of the sensor are not
critical limitations. In determining whether an unclaimed
feature is critical, the entire disclosure must be considered.
Broad language in the disclosure including language in the
abstract that omits an allegedly critical feature tends to
rebut an argument of criticality. In re Goffe, 542 F.2d 564,
567, 191 USPQ 429, 431 (CCPA 1976).
Here, it is true that a few parts of the appellants’
specification mention ranges for N, the L/W ratio, and B. In
determining what is disclosed, however, we cannot restrict our
consideration only to parts of the disclosure. The appellants
are entitled to have the whole of their disclosure considered.
Neither the broad disclosures of the appellants’ abstract
nor their summary of the invention refers to N, the L/W ratio,
or B at all. Although claim 1 mentions the total thickness,
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the claim merely recites that the total thickness of the
sensor is less than its width. (Spec. at 15.) The claim,
moreover, does not even note N or the L/W ratio. These
omissions evidence that the appellants did not regard the
number of layers, L/W ratio, or total thickness of their
sensor as critical. Cf. In re Anderson, 471 F.2d 1237, 1240-
41, 176 USPQ 331, 333 (CCPA 1973) (finding that omissions of a
hemostatic primary layer from an abstract and original claim 1
“make clear that appellant did not regard his invention as
limited” to such a layer).
The parts of the specification that mention ranges for
these limitations, moreover, are brief and inexact. One part
mentions
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Application No. 08/202,991
It is true that the disclosure fixes a lower-bound of3
three for the number of layers. (Spec. at 6.) We agree with
the appellants, however, that one skilled in the art would
know that there must be a minimum of two magnetic layers,
which switch from antiparallel to parallel orientations, and
there must be a NM layer to separate the magnetic layers.
(Reply Br. at 4.) Thus, the recitation of three layers is
not critical.
that the sensor “may” comprise “400 or more” layers. (Spec.
at 6 (emphasis added).) Another part adverts that the L/W3
ratio will “typically be greater than 1,” (Id. at 7 (emphasis
added)), and adds that L/W ratios as great as 50:1 “are also
possible for some applications.” (Id.) An additional part
mentions that B is “typically between 15 nm and 1000 nm.”
(Id. at 6 (emphasis added).) The use of the equivocal
language further evidences that these ranges are not critical
to the operability of the invention. Cf. In re Armbruster,
512 F.2d 676, 679-80, 185 USPQ 152, 155 (CCPA 1975) (finding
that two statements in a specification that hydrolysate has a
D.E. between about 5 and about 15 do not imply that a D.E. of
at least 5 is essential). We also agree with the appellants,
(Reply Br. at 4), that the “great” size of the ranges is more
evidence of their lack of criticality.
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Accordingly, we find that the examiner’s second reason
for rejecting the claims does not satisfy his burden of
establishing
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a prima facie case of non-enablement. We turn to his third
and last reason.
The examiner’s third reason for rejecting the claims
under 35 U.S.C. § 112, ¶ 1, follows.
The disclosure lists many different materials
for the magnetic and non-magnetic layers, states
that materials different from those listed could
also be used, states that each layer of the laminate
can be formed using a different material, states
that any number of layers can be used, states that
addition [sic] unspecified layers may be used in
unspecified locations, and lists very broad
numerical ranges for the layer thicknesses.
The disclosure presents so many alternatives
that it represents no guidance to one skilled in the
art. It really requires one skilled in the art to
extensively experiment with untold numbers of
combinations of materials, sizes for each element,
and configurations to determine some that will
actually work. (Final Rejection at 2-3.)
We observe that this reason satisfies the examiner’s
burden of establishing a prima facie case of non-enablement.
In response, the appellants came forward with argument. We
now consider their argument.
The appellants’ argument follows.
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[T]he Examiner focusses on statements in the
application about different materials and
thicknesses, and wide range of layers .... Beyond
this statement
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there is nothing to show that one skilled in the art could not
easily select operative combinations, i.e. make and use a
sensor. Appellant has provided ample reasons that show one
skilled in the art can practice the invention. The choice of
materials is a nonissue; Appellant has shown that the only
requirement for the FM and NM materials is that they be
magnetic and conductive. The thicknesses depend on the
material properties, magnetostatic coupling, and single
magnetic domain size. The number of layers depends on desired
sensitivity. Of course, one does not need to produce every
variation that is encompassed by the claims. For example, one
does not need to make every layer of a different material; one
can use one material for all FM layers. But the claims need
to cover the case of using some other material for some of the
layers; otherwise one could avoid infringement merely by
adding some layers of a different material when they are
functionally the same. (Reply Br. at 3.)
To be enabling under § 112, a patent must contain a
description that enables one skilled in the art to make and
use the claimed invention. That some experimentation is
necessary does not preclude enablement. All that is required
is that experimentation not be unduly extensive. Atlas Powder
Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984).
We find that one skilled in the art could make and use
the appellants’ sensor without undue experimentation. The
appellants defined ranges of materials for, numbers of, and
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Application No. 08/202,991
thicknesses of the sensor’s magnetic and NM layers.
Specifically, materials that can be used for the magnetic
layers include cobalt, nickel,
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Application No. 08/202,991
iron, and magnetic alloys such as permalloy. Materials for
the NM layers include copper, silver, and gold. (Spec. at 6,
12.) Different magnetic and NM materials can be used for
different layers of the sensor. (Id. at 5.) The minimum
number of layers is 3; the maximum, 400. The thickness of
each magnetic and NM layer is between 0.1 nm and 100 nm.
(Id. at 12.)
Given these ranges and the level of skill in the art, one
skilled in the art could make and use the invention. Although
some experimentation might be required to decide which
materials, numbers, and thicknesses would be optimum for a
particular application of the sensor, the disclosure indicates
that any combination within the parameters would produce a
working sensor. Thus, the experimentation would not be undue.
For the foregoing reasons, we find that the specification
would enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make
and use the invention without undue experimentation.
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Therefore, we reverse the rejection of claims 1-19 under 35
U.S.C. § 112, ¶ 1.
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Definiteness
We begin our consideration of the definiteness of claims
1-19 by recalling that the test for the definiteness of a
claim is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification.
If the claim read in light of the specification would
reasonably apprise one so skilled of the scope of the
invention, 35 U.S.C. § 112 demands no more. Miles Labs., Inc.
v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.
Cir. 1993). Breadth of a claim, moreover, is not to be
equated with its indefiniteness. In re Miller, 441 F.2d 689,
693, 169 USPQ 597, 600 (CCPA 1971). With this in mind, we
analyze the examiner’s rejection.
The examiner begins his rejection by alleging, “[t]he
disclosure clearly indicates critical limitations for the
number of layers, L/W ratio, and total thickness.” (Final
Rejection at 3.) He ends it by concluding, “these claims are
indefinite and incomplete for failing to clearly and
completely recite the critical features of the sensor.”
(Id. at 4.)
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We agree that some of the claims do not recite the number
of layers, L/W ratio, and total thickness of the sensor. This
omission, however, does not offend the second paragraph of 35
U.S.C. § 112. While the claim language under consideration
may be broad, breadth is not indefiniteness. Instead, the
second paragraph simply requires that the claims, read in
light of the specification, reasonably apprise one skilled in
the art of the scope of the invention.
The examiner has not articulated any reason why one so
skilled would have any difficulty ascertaining the inventions’
scope. He did not satisfy the burden of establishing a prima
facie case of indefiniteness. Therefore, we reverse the
rejection of claims 1-19 under 35 U.S.C. § 112, ¶ 2.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-19 under 35 U.S.C. § 112, ¶ 1, and under 35 U.S.C. §
112, ¶ 2, is reversed.
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REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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LLB/dal
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RICHARD E. CONSTANT
ASST. GENERAL COUNSEL FOR INTELLECTUAL PROP.
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