Ex Parte Tian et al

Patent Trial and Appeal Board

Jun 3, 2016

11340161 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111340, 161 01/26/2006
28112 7590 06/06/2016
SAILE ACKERMAN LLC
28 DAVIS AVENUE
POUGHKEEPSIE, NY 12603
FIRST NAMED INVENTOR
Hong Tian
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2855/160 SM04-006_CIP 8520
EXAMINER
RENNER, CRAIG A
ART UNIT PAPER NUMBER
2688
MAILDATE DELIVERY MODE
06/06/2016 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 HONG TIAN, TAKEHIRO KAMIGAMA,
and ELLIS T. CHA
Appeal2015-002340
Application 11/340, 161
Technology Center 2600
Before CATHERINE SHIANG, LINZY T. McCARTNEY, and
KAMRAN JIVANI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 18, 20, and 22, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
The present invention relates to magnetic hard disk drives. See
generally Spec. 1. Claim 1 is exemplary:
Appeal2015-002340
Application 11/340, 161
1. A slider, comprising:
a body with a width of 0.5 mm, a thickness of 0.18 mm
or smaller and a length of 0.85 mm; and
an air-bearing surface to allow the slider to fly on a layer
of air above a moving data storage medium;
wherein said air-bearing surface includes a U-shaped rail,
closed at a leading edge of said slider and opening outward
towards a trailing edge of the slider and surrounding a main
compression pad thereby.
References and Rejections
Claims 1 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shiramatsu (US 2005/0094316 Al, May 5, 2005) and
Matsuzaki (US 2002/0191343 Al, Dec. 19, 2002).
Claims 20 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueno (US 2002/0126418 Al, Sept. 12, 2002) and
Takasugi (US 6,466,413 Bl, Oct. 15, 2002).
PRINCIPLES OF LAW
"[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Kahn, 441F.3d977, 990
(Fed. Cir. 2006) (citation omitted).
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Application 11/340, 161
The "mere disclosure of alternative designs does not teach away" and
"just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
The Obviousness Rejections
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. Therefore, we provide the following for emphasis.
Claims 1 and 8
On this record, we find the Examiner did not err in rejecting claims 1
and 8.
Appellants contend there is no motivation to combine the teachings of
Shiramatsu and Matsuzaki. See App. Br. 7-12. In particular, Appellants
contend "the limitations given in [Matsuzaki's] [0067] refer to a slider such
as that described in [0065] and there would be no motivation to combine that
slider with Shiramatsu's thermal adjustment slider." App. Br. 11.
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Appellants argue "Shiramatsu is teaching away from improving slider
performance by purely dimensional variations." App. Br. 10.
Appellants have not persuaded us of error.
First, the U.S. Supreme Court has held "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416. Further, "[i]f
the claim extends to what is obvious, it is invalid under§ 103" and "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id. at 418-19.
Contrary to Appellants' arguments, "[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls." KSR, 550 U.S. at 419.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Shiramatsu and Matsuzaki. See Final Act. 3--4;
Ans. 2-3. Appellants fail to adequately show error in such finding. In fact,
the Examiner correctly finds Appellants' attorney argument is not supported
by adequate evidence. See Ans. 3. Further, Appellants' argument that
"there would be no motivation to combine that [Matsuzaki] slider with
Shiramatsu's thermal adjustment slider" (App. Br. 11) is not directed to the
specific combination proposed by the Examiner.
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
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Application 11/340, 161
automaton." KSR, 550 U.S. at 420-21. Appellants do not present adequate
evidence that the resulting arrangements were "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, we agree with the Examiner that applying Matsuzaki's
width dimension in the Shiramatsu slider (or disk drive) would have
predictably used prior art elements according to their established functions-
an obvious improvement. See KSR, 550 U.S. a 417.
Second, Appellants advance many unsupported attorney arguments
(App. Br. 8-11 ), which are unpersuasive of error.
Third, Appellants' following arguments are not commensurate with
the scope of the claim: "The present claimed slider of amended claim 1,
however, controls its flying height entirely by the aerodynamics of its
dimensions, shape and surface topology and there is no additional control by
an energizer to correct any deviations from a desired trajectory" (App. Br.
1 O); and "Shiramatsu does not teach the fabrication and use of the present
ATTO slider, which is to provide a much smaller slider than the FEMTO
with no dynamic flying height effects." App. Br. 10.
Fourth, Appellants have not shown the argument that "Shiramatsu
proceeds to describe his invention ... as being based on the FEMTO slider"
(App. Br. 9) is supported by evidence, as the Shiramatsu excerpt cited by
Appellants does not state the invention is being based on the FEMTO slider.
Fifth, Appellants' teaching away argument is unpersuasive because
Appellants fail to provide adequate analysis under the case law. Appellants
fail to assert-let alone show---one skilled in the art "would be discouraged
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Application 11/340, 161
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." Kahn,
441 F.3d at 990.
Accordingly, we sustain the Examiner's rejection of claims 1 and 8.
Claims 20 and 22
On this record, we find the Examiner did not err in rejecting claims 20
and 22.
Appellants argue "Examiner should not be permitted to rely on
Takasugi's length dimension to provide Ueno with his missing length
dimension." App. Br. 16. In particular, Appellants argue Takasugi's author
mistakenly drafted the length dimension. See App. Br. 14--17. Appellants
contend modifying Ueno's length would have required more than routine
experimentation, if we disregard Takasugi's teaching as a mistake. See App.
Br. 16-17.
Appellants do not cite any case law for the unsupported argument that
we must go beyond the four comers of the reference and speculate as to the
drafter's intent when Appellants allege a drafting mistake, while the
Examiner finds no such mistake exists. See App. Br. 14--17; Ans. 4.
Because "[a] reference may be read for all that it teaches," we find
Appellants' argument unpersuasive. Mouttet, 686 F.3d at 1331. Therefore,
the Examiner correctly relies on Takasugi's length dimension for the
rejection.
Further, Appellants' argument that "even beyond Ueno's dimensions,
Ueno's slider has a surface topography that is different from that of the
present PEMTO slider as it is being required to fulfill certain operational
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Application 11/340, 161
conditions that the present PEMTO slider does not" (App. Br. 16) is not
commensurate with the scope of the claim.
In addition, to the extent Appellants argue there is no motivation to
combine the teachings of the references, Appellants' argument is
unpersuasive for similar reasons discussed above with respect to claim 1.
Accordingly, we sustain the Examiner's rejection of claims 20 and 22.
DECISION
We affirm the Examiner's decision rejecting claims 1, 8, 20, and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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