Ex parte STRAND

Board of Patent Appeals and Interferences

Jan 9, 1998

08136997 - (D) (B.P.A.I. Jan. 9, 1998)

Application for patent filed October 18, 1993. According1
to appellant, this application is a continuation of Application
07/817,234 filed January 6, 1992.
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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(2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEINAR J. STRAND
____________
Appeal No. 96-1631
Application 08/136,9971
____________
ON BRIEF
____________
Before and THOMAS, BARRETT and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of Claims 1
and 3-16, which constitute all the claims remaining in the
application.
Appeal No. 96-1631
Application 08/136,997
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Claim 1 reads as follows:
1. A magnetic head for contact with a magnetic tape,
comprising:
a ferromagnetic body having a protruding rail defined
by sides and having a top surface defining a maximum tape
contacting surface area between the sides;
a recess in the ferromagnetic body extending beyond
said sides in a tape running direction;
a ferromagnetic core having pole tips in the recess and
arranged for contact with the magnetic tape at said top surface
of the rail, said pole tips extending at said top surface in a
tape running direction beyond body sides of the rail and up to
sidewalls of said recess which are perpendicular to said tape
running direction;
a non-magnetic material only along each side of the
magnetic core pole tips in the recess, said non-magnetic material
extending parallel to the running direction of the tape, no non-
magnetic material being provided between ends of the pole tips
and said side-walls of said recess which are perpendicular to the
tape running direction;
relative hardnesses of the ferromagnetic body,
ferromagnetic core pole tips, and non-magnetic material being
chosen such that as the tape wears away on contact surfaces of
the magnetic core pole tips, non-magnetic material, and
ferromagnetic body, the core pole tips protrude relative to
adjacent portions of the ferromagnetic body and the non-magnetic
material so that the tape rides on the protruding core pole tips;
and
a radius of curvature in a running direction of the
tape at the tape contact surface of the core pole tips prior to
wearing being smaller than a natural radius of bending of the
tape, and said relative hardnesses being selected such that after
approximately 1500 hours of tape wear, said radius of curvature
substantially becomes said natural radius of bending of the tape.
The examiner’s Answer cites the following prior art:
Appeal No. 96-1631
Application 08/136,997
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Schneider et al. (Schneider) 3,983,622 Oct. 5, 1976
Mersing 4,839,959 Jun. 20, 1989
McClure 4,868,697 Sep. 19, 1989
Milo et al. (Milo) 4,949,208 Aug. 14, 1990
Claims 1, 3-5, 7-11 and 16 stand rejected under 35
U.S.C. § 103 as being unpatentable over Milo in view of Mersing
and McClure. Claims 6 and 12-15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Milo in view of Mersing and
McClure and further in view of Schneider.
OPINION
The claims all recite a magnetic head with magnetic
core pole tips extending to recess sidewalls which are
perpendicular to the tape running direction, no non-magnetic
material being provided therebetween.
None of the references disclose such an arrangement.
The primary reference, Milo, shows in Figure 3 pole tips which do
not extend to the perpendicular sidewalls. Rather, non-magnetic
material 67 is provided therebetween. The examiner concedes this
difference and illustrates it in Appendix A of the Examiner’s
Answer.
Even without such a teaching in any reference, the
examiner contends, the recited configuration would have been
obvious as a result of “routine optimization.” The examiner
Appeal No. 96-1631
Application 08/136,997
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attempts to place the burden on Appellant to provide evidence of
criticality. Examiner’s Answer at 6-7. Appellants argue that
absent a teaching of the recited feature in the references, the
claims are patentable. Reply (Paper No. 20) at 2.
We agree with Appellant.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992). In the present case, the
examiner has failed to establish such a suggestion and has thus
failed to set forth a prima facie case of unpatentability.
The examiner has not identified any suggestion in the
prior art to change the configuration shown in the top drawing of
Appendix A to that shown in the bottom drawing. Such a change
would require these three modifications to the configuration
shown in the top drawing: (1) remove the non-magnetic material
from the perpendicular sidewalls; (2) extend the pole tips to the
perpendicular sidewalls; and (3) insert non-magnetic material at
the parallel sidewalls. The examiner offers no reason why one
skilled in the art would make any of the required modifications,
let alone all of them.
Appeal No. 96-1631
Application 08/136,997
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Upon our own review of the references, we find no
suggestion to make the required modifications to Milo.
CONCLUSION
The rejections are not sustained.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Hill, Steadman & Simpson
85th Floor Sears Tower
Appeal No. 96-1631
Application 08/136,997
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Chicago, IL 60606