Ex Parte URAI

Board of Patent Appeals and Interferences

Apr 23, 2002

08855279 (B.P.A.I. Apr. 23, 2002)

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written for publication and is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HARUO URAI
_____________
Appeal No. 2000-1675
Application No. 08/855,279
______________
HEARD: APRIL 10, 2002
_______________
Before RUGGIERO, DIXON, and SAADAT, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-10, which are all of the claims pending in the present
application.
The claimed invention relates to a magnetoresistive (MR)
sensing element and a magnetic head using the MR sensing element.
According to Appellant (specification, pages 2 and 3),
conventional MR sensing elements having a rectangularly-shaped
sensing pattern have non-linear response characteristics of
resistance changes to corresponding magnetic field changes due to
the fact that the demagnetizing field within the sensing pattern
Appeal No. 2000-1675
Application No. 08/855,279
1 Although mentioned at page 8 of the Answer, the Logue reference is not
relied on by the Examiner in any of the rejections before us on appeal.
2
is not constant with respect to the direction of magnetization.
In the present claimed invention, a MR sensing element with a
circular-shaped sensing pattern is utilized which Appellant
indicates (specification, page 4) results in a demagnetizing
field within the sensing pattern that is substantially constant
with respect to the direction of magnetization, thereby achieving
a linear response characteristic of resistance changes to
magnetic field changes.
Claim 1 is illustrative of the invention and reads as
follows:
1. A magnetoresistive sensing element comprising:
a sensing pattern consisting of a magnetoresistive layer
whose resistance changes in accordance with a direction of
magnetization; and
an electrode layer for applying a sense current to said
sensing pattern, wherein
said sensing pattern is formed to be of substantially
circular shape.
The Examiner cites the following prior art in the Answer:
Hamakawa et al. (Hamakawa) 4,814,921 Mar. 21, 1989
Fontana et al. (Fontana) 5,528,440 Jun. 18, 1996
(filed Jul. 26, 1994)
Logue1 5,574,367 Nov. 12, 1996
(filed Jan. 27, 1994)
Appeal No. 2000-1675
Application No. 08/855,279
2 The Appeal Brief (revised) was filed September 8, 1999 (Paper No. 16).
In response to the Examiner’s Answer dated January 6, 2000 (Paper No. 17), a
Reply Brief was filed March 6, 2000 (Paper No. 19), which was acknowledged and
entered by the Examiner in the communication dated March 17, 2000 (Paper No.
20).
3
Dovek et al. (Dovek) 5,650,887 Jul. 22, 1997
(filed Feb. 26, 1996)
George 5,669,133 Sep. 23, 1997
(filed Nov. 28, 1995)
Claims 1-10 stand finally rejected under 35 U.S.C. § 103(a).
As evidence of obviousness, the Examiner offers Dovek alone with
respect to claims 1-4, Fontana alone with respect to claims 8 and
9, Dovek in view of George with respect to claims 5-7, and
Hamakawa in view of Dovek with respect to claim 10.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs2 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, and the evidence of
obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
Appeal No. 2000-1675
Application No. 08/855,279
4
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-10. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion, or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
Appeal No. 2000-1675
Application No. 08/855,279
5
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to claim 1, the sole independent claim in the
case, the Examiner, as the basis for the obviousness rejection,
proposes to modify the magnetoresistive sensing element
disclosure of Dovek. According to the Examiner (Answer, page 4),
Dovek discloses the claimed invention except for the formation of
a sensing pattern with a substantially circular shape.
Nevertheless, to address this deficiency, the Examiner asserts
the obviousness to the skilled artisan of modifying the existing
sensing pattern of Dovek to form a sensing pattern with a
substantially circular shape “ . . . in order to improve the
sensing characteristics of the sensing element.” (Id.)
In response, Appellant asserts several arguments in support
of the position that the Examiner has not established proper
motivation for the proposed modification of the applied
Appeal No. 2000-1675
Application No. 08/855,279
6
references so as to set forth a prima facie case of obviousness.
In particular, Appellant contends (Brief, pages 3 and 4) that,
although the Examiner has recognized that none of the applied
prior art references disclose a MR sensing element with a
circularly shaped sensing pattern as claimed, no supporting
evidence has been provided by the Examiner for the proposed
modifications of the prior art to arrive at the claimed
invention.
After careful review of the applied prior art in light of
the arguments of record, we are in agreement with Appellant’s
position as stated in the Briefs. 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).
As to the Examiner’s suggestion that the skilled artisan would
have been motivated to modify the sensing patterns of the applied
prior art to produce a circular sensing pattern, we find no
evidentiary support in the references relied upon, outside of
Appellant’s own disclosure, for such an assertion. The
Examiner’s conclusory statements that the skilled artisan would
know that making the suggested change in the shape of the
Appeal No. 2000-1675
Application No. 08/855,279
7
magnetoresistive element sensing pattern would improve the
sensing characteristics does not adequately address the issue of
motivation to modify the applied prior art references. This
question of motivation is material to patentability, and can not
be resolved on subjective belief and unknown authority. The
Examiner must not only make requisite findings, based on the
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the conclusion of obviousness.
See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002). We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or capable of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. 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).
In view of the above discussion, since the Examiner has not
established a prima facie case of obviousness, the 35 U.S.C.
§ 103 rejection of independent claim 1, as well as claims 2-10
dependent thereon, is not sustained.
We note that the Examiner in the “Response to Argument”
portion at page 9 of the Answer, points to Japanese Patent
Appeal No. 2000-1675
Application No. 08/855,279
8
Publications 8-203032 and 4-19809, cited by Appellant in an
Information Disclosure Statement filed August 21, 1998, Paper No.
8, as evidence of the existence of differently shaped sensing
patterns in magnetoresistive sensing elements. To whatever
extent these references may be applicable to the instant claimed
invention, we will not consider them because they are not part of
the statement of the rejection and may not be properly relied
upon. “Where a reference is relied on to support a rejection,
whether or not in a ‘minor capacity,’ there would appear to be no
excuse for not positively including the reference in the
statement of the rejection.” In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). See also Ex parte Raske,
28 USPQ2d 1304, 1305 (Bd. Pat. App. & Int. 1993).
If the Examiner was of the opinion that these references had
sufficient bearing on the issues on appeal, the Examiner was
under a duty to properly formulate a rejection incorporating
these references. The Examiner should be aware of the
implications of discussing the relevance of prior art not relied
upon to reject a claim. In accordance with the principles
articulated in In re Portola Packaging, Inc., 110 F.3d 786, 790,
42 USPQ2d 1295, 1299 (Fed. Cir. 1997), the PTO will not order or
conduct a reexamination in any application in which the relevance
Appeal No. 2000-1675
Application No. 08/855,279
9
of prior art not relied upon to reject a claim was discussed on
the record with respect to the patentability of any claim. (See
Manual of Patenting Examining Procedure (MPEP) § 2242).
REMAND TO THE EXAMINER
In view of the Examiner’s comments at page 9 of the Answer,
this case is being remanded to the Examiner to consider whether
any of the documents cited by Appellant in the Information
Disclosure Statement filed August 21, 1998, Paper No. 8, warrant
reopening of prosecution in this application. Particular
consideration should be given to JP 4-19809 which in the English
language Abstract, refers to a magnetoresistive element with a
“ . . . circular annular shape.” Since the limited disclosure in
the English language Abstract of these publications make a
meaningful consideration of the pertinence of the publications
indeterminate, the Examiner is required to obtain a full
translation of these publications which will be placed into the
record. In the application of prior art references against the
claims as a result of any resumption of prosecution of this
application before the Examiner, the Examiner’s statement of
rejection is required to include references to the full
Appeal No. 2000-1675
Application No. 08/855,279
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disclosure of the applied prior art. Due process considerations
require that Appellant be given an opportunity to respond to any
changes in the record.
CONCLUSION
The decision of the Examiner to reject claims 1-10 under
35 U.S.C. § 103(a) is reversed, and the application is remanded
to the Examiner for further consideration.
REVERSED AND REMANDED

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JFR:hh
Appeal No. 2000-1675
Application No. 08/855,279
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