Ex parte YUAN

Board of Patent Appeals and Interferences

Jun 28, 2000

08541441 (B.P.A.I. Jun. 28, 2000)

Application for patent filed October 10, 1995.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SAMUEL W. YUAN
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Appeal No. 98-0600
Application 08/541,4411
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ON BRIEF
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Before McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1, 2 and 4-7. No claim has
been allowed. Claim 3 has been canceled. The real party in
interest is Read-Rite Corporation.
References relied on by the Examiner
Kira et al. (Kira) 4,639,806 January 27,
1987
The Rejections on Appeal
Appeal No. 98-0600
Application 08/541,441
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Claims 1, 2, and 4-7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kira.
The Invention
The claimed invention is directed to a giant
magnetoresistive transducer having an air bearing surface,
including a giant magnetoresistive sensor. The sensor has a
sensing surface and side surfaces and is recessed at a
distance S from the air bearing surface for defining a gap
between the sensor and the bearing surface. Magnetic shield
members are spaced from the side surfaces of the sensor and
are separated from each other by a distance G. The distance S
is less than half the distance G. A dielectric layer is
disposed within the gap.
Claim 1 is the only independent claim and reads as
follows:
1. A giant magnetoresistive transducer for reading
data signals recorded on a surface of a magnetic
medium, said transducer having an air bearing
surface comprising:
a giant magnetoresistive sensor having a sensing
surface and side surfaces, said sensor being
recessed at a distance S from said air bearing
surface to define a gap between said sensor and said
air bearing surface;
Appeal No. 98-0600
Application 08/541,441
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magnetic shield members spaced from each of said
side surfaces and at a distance G between said
shield members wherein said distance S is less than
half of said distance G for preventing signal loss
caused by said shields shunting away incoming
transition flux from said magnetic medium; and
a dielectric layer disposed within said gap,
said dielectric layer extending from said sensing
surface to separate said sensing surface from said
surface of said magnetic medium on which data
signals are recorded which are to be read out by
said transducer.

Opinion
The rejection of claims 1, 2, and 4-7 cannot be
sustained. A reversal of the rejection on appeal should not
be construed as an affirmative indication that the appellants’
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
The examiner has the initial burden to present a factual
basis supporting the conclusion of prima facie obviousness.
As is stated by the Court of Customs and Patent Appeals in In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967):
A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the
Appeal No. 98-0600
Application 08/541,441
4
invention from the prior art. In making this
evaluation, all facts must be considered. The
Patent Office [examiner] has the initial duty of
supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. (Emphasis in
original).
In this case, the examiner has made several findings
which lack an adequate factual basis in the record. First,
the
examiner concludes that Figure 1 of Kira shows a recess
between the magnetoresistive sensor 3 and the air bearing
surface located along the side where arrow A is disposed. But
because of the angular view of the illustration, the
appellant’s view is just as plausible that the forward end of
sensor element 3 is actually aligned or flush with the air
bearing surface. The examiner does not point to any
description in the specification which refers to or discusses
a recess as is claimed by the appellant, or otherwise
identifies a recess as being illustrated in Figure 1.
Secondly, the examiner finds that in Kira the gap defined
by the "alleged" recess is filled with a dielectric material,
even though the examiner points to no description or
Appeal No. 98-0600
Application 08/541,441
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discussion in Kira of any such dielectric material in the
recess. The examiner reasons (answer at 6): "If there was no
dielectric in the space between the MR sensor and the air
bearing surface then the upper shield would contact the lower
shield in this space since there would be no material to
deposit the upper shield on in this region. Again, this would
not allow the device to work." However, the examiner pointed
to no evidence which supports his apparent conclusion that the
only way to produce and/or arrange two shields which do not
touch each other is by having a dielectric material disposed
within the entire space between them. We decline to take the
examiner’s mere assertions as fact.
Finally, the examiner finds that in Kira the distance
between the sensor and the air bearing surface (identified as
S in the appellant’s claims) is indeed less than half the
distance between the two shield members (identified as G in
the appellant’s claims). That finding is speculative, since
there is no basis to find that Kira’s Figure 1 is drawn to
scale and since the angular view of Kira’s Figure 1 makes it
questionable whether there is even any distance between the
front edge of the sensor and the air bearing surface.
Appeal No. 98-0600
Application 08/541,441
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Alternatively, the examiner finds that it would have been
obvious to one with ordinary skill in the art to make the
distance S at less than half of the distance G, because if
not, the magnetic shield members on the sides of the sensor
would shunt away incoming transition flux from the magnetic
medium. But even assuming that one with ordinary skill in the
art would have recognized some shunting effects due to the
shields, the evidence does not support the examiner’s
conclusion that one with ordinary skill in the art would have
arrived at the specific upper threshold claimed by the
appellant for distance S, i.e., "half of the distance G."
Just as an attorney’s arguments do not constitute facts,
neither do the examiner’s unsubstantiated factual assertions.
For the foregoing reasons, the examiner’s conclusion of
obviousness is without adequate factual basis. Rather, it is
highly speculative and based on improper hindsight in light of
the appellant’s own disclosed invention.
Conclusion
Appeal No. 98-0600
Application 08/541,441
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The rejection of claims 1, 2 and 4-7 under 35 U.S.C. §
103 as being unpatentable over Kira is reversed.
REVERSED

FRED E. McKELVEY, Senior )
Administrative Patent Judge )
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) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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JAMESON LEE )
Administrative Patent Judge )
Nathan N. Kallman
20900 Sarahills Drive
Appeal No. 98-0600
Application 08/541,441
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Saratoga, CA 95070