Ex Parte Wong et al

Board of Patent Appeals and Interferences

Jun 12, 2008

09741684 (B.P.A.I. Jun. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte XM WONG and ROCK TAO
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Appeal 2008-1723
Application 09/741,684
Technology Center 2600
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Decided: June 12, 2008
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Before TERRY J. OWENS, JOSEPH F. RUGGIERO, and ANITA
PELLMAN GROSS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 19-24. Claims 1-18 and 25-30 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2008-1723
Application 09/741,684

Appellants’ claimed invention relates to a suspension and slider
assembly for a magnetic recording head in which a bonding substance is
heated prior to being applied as a surface finishing material to a metal
bonding pad of the suspension. A slider bonding pad, which initially has no
bonding substance, is coupled to the suspension by the reflowing of the
bonding substance on the suspension bonding pad, thereby coupling the
suspension bonding pad to the slider bonding pad. Reuse of the suspension
is enabled by removing the connection with the slider bonding pad with heat
treatment. (Specification 3).
Claim 19 is illustrative of the invention and reads as follows:

19. A suspension comprising:
a suspension bonding pad for electrically bonding a magnetic head
terminal, wherein said bonding pad includes a metal pad having a bonding
substance applied as a surface finishing material, the surface finishing
material being heat treated prior to bonding to a surface; and a slider
bonding pad initially without bonding substance coupled to said suspension
such that the bonding substance on said suspension bonding pad is reflowed
so as to electrically couple the suspension bonding pad and the slider
bonding pad, wherein the slider bonding pad enables the reuse of the
suspension by removing the connection between a slider and the slider
bonding pad with heat treatment.

The Examiner relies on the following prior art references to show
unpatentability:
Ainslie US 4,761,699 Aug. 2, 1988
Albrecht US 5,821,494 Oct. 13, 1998

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Application 09/741,684

Claims 19-23 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Albrecht.
Claims 19-23 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ainslie.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over either one of Albrecht or Ainslie alone.1
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C § 102(b), does either one of Albrecht or
Ainslie have a disclosure which anticipates the invention set
forth in claims 19-23?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claim 24,
would one of ordinary skill in the art at the time of the
invention have found it obvious to modify either one of
Albrecht or Ainslie to render the claimed invention
unpatentable?

1 As indicated at page 2 of the Answer, the Examiner has withdrawn the 35
U.S.C. § 112, second paragraph, rejection of claims 19-24.
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Application 09/741,684

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
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Application 09/741,684

the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, 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.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION
With respect to the 35 U.S.C. § 102(b) rejection of independent claim
19 based on the teachings of either one of Albrecht or Ainslie, the Examiner
initially indicates (Ans. 3-4) how the various limitations are read on the
disclosure of Albrecht. In particular, the Examiner directs attention to the
illustration in Figures 3 and 12A-12C of Albrecht as well as the
accompanying description at column 10, lines 35-53 and column 11, lines
16-25 of Albrecht. With respect to Ainslie, the Examiner (Ans. 4) points to
the slider/suspension assembly structure illustrated in Figures 4-6 of Ainslie.
Appellants’ arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of either
one of Albrecht or Ainslie so as to establish a prima facie case of
anticipation. Appellants’ arguments (App. Br. 5-6; Reply Br. 2) focus on the
contention that, in contrast to the claimed invention, neither Albrecht nor
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Ainslie provides a disclosure of a slider bonding pad which enables reuse of
a magnetic recording head suspension by removing the connection with the
slider bonding pad by heat treatment.
We do not find Appellants’ arguments to be persuasive in showing
any error in the Examiner’s finding (Ans. 6) that the claimed feature of
removing the slider bonding pad connection with heat treatment is a process
limitation which is entitled to no patentable weight in a claim directed to a
product. In other words, it is the patentability of the final product per se
which must be determined. See In re Thorpe, 777 F. 2d 695, 697 (Fed. Cir.
1985).
We find that the Examiner has provided a reasoned analysis for
concluding that the final end product in both Albrecht and Ainslie, i.e., the
suspension including the slider/suspension connection, will be the same or at
least structurally equivalent to that claimed. As explained by the Examiner
(Ans. 6), the slider/suspension structure in both Albrecht and Ainslie
corresponds to the structure that is presently claimed regardless of whether
the solder bonding pad connection is subsequently removed by heat
treatment melting of the solder.
Further, we find to be unpersuasive Appellants’ contention (Reply Br.
2) that appealed claim 19 cannot be treated as a product by process claim
because there is no process set forth. Appellants’ arguments to the contrary
notwithstanding, the only distinction alleged by Appellants over the bonding
pad structure described by both Albrecht and Ainslie is based on the claimed
limitation directed to the removal of the solder bonding pad connection
through heat treatment, i.e., a process limitation, which is entitled to no
patentable weight in a claim drawn to the product.
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In view of the above discussion, it is apparent that, based on the
record before us, Appellants have not shown how their claimed or, in fact,
disclosed slider/suspension bonding pad structure distinguishes over that
described by both Albrecht and Ainslie. Appellants’ alleged distinction is
that the claimed bonding pad enables reuse of the suspension by removing
the bonding connection. However, Appellants point to no particular
structure of the bonding pad and, indeed, there is no particular structure
disclosed which would function to enable reuse of the suspension. Indeed,
any enabling of reuse of the suspension is not based on any structure but
rather on the removal of the bonding pad solder connection by heating, i.e., a
process limitation, not a structural limitation.

35 U.S.C. § 103(a) REJECTION

Dependent claim 24

We also sustain the Examiner’s obviousness rejection of dependent
claim 24. We find no error in the Examiner’s line of reasoning (Ans. 5)
establishing a basis for modifying the disclosures of either one of Albrecht
or Ainslie to address the dimensional features of claim 24. Appellants (App.
Br. 6) have made no separate arguments for patentability of claim 24 but,
instead, have relied on arguments with respect to Albrecht and Ainslie made
against the rejection of claims 19-23, which arguments we found to be
unpersuasive as discussed supra.

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CONCLUSION
In summary, we have sustained the Examiner’s rejections of all of the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
19-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

eld

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