Ex Parte Biskeborn et al

Patent Trial and Appeal BoardMar 24, 2014

12638921 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT GLENN BISKEBORN, JASON LIANG, and CALVIN SHYHJONG LO ____________________ Appeal 2011-008422 Application 12/638,921 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and MICHAEL J. STRAUSS, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008422 Application 12/638,921 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a magnetic head with planar outrigger. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A magnetic head, comprising: a substrate having a tape bearing surface; a plurality of elements coupled to the substrate and positioned towards the substrate tape bearing surface, the elements being selected from a group consisting of readers, writers, and combinations thereof; and an outrigger held in a fixed position relative to the substrate, the outrigger having a tape bearing surface; wherein the outrigger tape bearing surface and the substrate tape bearing surface lie along planes, the planes being offset from one another; wherein the outrigger tape bearing surface lies along a single plane. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Biskeborn US 2003/0039069 A1 Feb. 27, 2003 Rubas US 2003/0235011 A1 Dec. 25, 2003 Appeal 2011-008422 Application 12/638,921 3 REJECTIONS The Examiner made the following rejections: Claims 7 and 16 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1-6, 8-15, and 17-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rubas in view of Biskeborn. Appellants seek our review of these rejections. ANALYSIS 35 U.S.C. § 112, second paragraph The Examiner maintains that In the absence of a reasonably definite interpretation of a claim, it is improper to rely on speculative assumptions regarding the meaning of a claim and then base a rejection under 35 U.S.C. 103 on these assumptions (In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962)). See MPEP 2143.03. (Ans. 3). Appellants maintain that the planes of claims 7 and 16 do not necessarily have to be parallel but can be offset “angularly as well as spatially.” (App. Br. 26; Spec. 17). We agree with Appellants. 35 U.S.C. § 103 With respect to claims 1-3, 5, 6, 8, 9, 11, and 12, Appellants address these claims as a group. We select independent claim 1 as the representative claim for this grouping and will address Appellants’ arguments thereto. (App. Br. 11). Appellants repeat the language of independent claim 1 and contend that the prior art fails to teach an “outrigger held in a fixed position Appeal 2011-008422 Application 12/638,921 4 relative to the substrate.” (App. Br. 12 (emphasis omitted); Reply Br. 6). Appellants contend that “the outriggers are part of the head (‘A magnetic head, comprising:..an outrigger’).” (Reply Br. 7). Appellants further contend that “Rubas’ head 10 (having the transducers coupled thereto) are not fixed relative to the purported outriggers of Rubas.” (Id.). The Examiner maintains that “the outriggers of Rubas et al are ‘held in a fixed position relative to’ the head and its substrate insofar as the outrigger neither approaches nor moves away from the head.” (Ans. 15). We agree with the Examiner that the outriggers 20 are held in a fixed position relative to the head 10 in one dimension. Therefore, we find Appellants’ argument to be unpersuasive of error in the Examiner’s conclusion of obviousness. With respect to the preamble, which recites a “magnetic head,” Appellants identify embodiments from the Specification, which illustrates “the outrigger 302 is a portion formed on the substrate 306 itself, and thus is held in a fixed position relative to the substrate. In Fig. 4, the outrigger 302 is adhered to the substrate and/or module 304, fixing its position relative to the substrate 306.” (Reply Br. 7). We find Appellants’ argument is not commensurate in scope with the express language of independent claim 1. Appellants repeatedly contend that the claim requires the “outrigger held in a fixed position relative to the substrate” and maintains that the Rubas reference does not teach or suggest a limitation. (Reply Br. 7-10). We disagree with Appellants’ contention. Appellants’ contention does not appreciate that the outriggers maintained by the Examiner do not move and therefore they are “fixed.” Appellants appear to contend a two-way fixation between both the substrate and the outriggers. No such limitation is found in independent Appeal 2011-008422 Application 12/638,921 5 claim 1. Therefore, Appellants’ argument does not show error in the Examiner’s conclusion of obviousness. Additionally, Appellants maintain that the modification proposed in the rejection would render the Rubas invention unsatisfactory for its intended purpose. (Reply Br. 10-11). We find Appellants’ contention does not show error in the proffered combination nor show that the combination is unsatisfactory for its intended use. We further note that Appellants’ contention with regard to the movement of the Rubas reference head to read all of the tracks is not persuasive since the relative size of the tape and the head are not recited in the claim. (Reply Br. 11). Therefore, the Examiner’s position with writing or reading a single track is reasonable. (Ans. 17). Accordingly, Appellants’ argument does not show error in the Examiner’s conclusion of obviousness of representative independent claim 1, and we sustain the rejection of representative claim 1 and its respective dependent claims 2, 3, 5, 6, 8, 9, 11, and 12. With respect to dependent claim 4, Appellants contend that the limitation is a structural limitation. (Reply Br. 13). The Examiner finds that the claim language “the outrigger is adhesively coupled to the substrate” is a process limitation and further finds that the Biskeborn reference discloses the well-known use of adhesive. (Ans. 17-18). We agree with the Examiner. Therefore, we find Appellants’ argument to be unpersuasive of error in the Examiner’s conclusion of obviousness. With respect to dependent claim 10, Appellants merely repeat the language of the claim and maintain that one skilled in the art would not be motivated to make the proposed modification to the Rubas reference. (App. Appeal 2011-008422 Application 12/638,921 6 Br. 16-17; Reply Br. 14). Appellants contend that the head in Biskeborn’s Figure 7 is “a single head 700 having opposing modules, and no outriggers.” (Reply Br. 14). Appellants further contend that “Biskeborn’s head 700 may have two arrays of elements, substitution of Rubas’ head with that of Biskeborn would not add elements to Rubas’ tape guides 20.” (Id.). The Examiner maintains that “[w]hen the head of Biskeborn is substituted for the head of Rubas et al, all elements are coupled to the outrigger.” (Ans. 18). We agree with the Examiner that the term “coupled” is a broad interrelationship between the claimed elements. Therefore, we find Appellants’ argument to be unpersuasive of error in the Examiner’s conclusion of obviousness. With respect to independent claim 13, Appellants present similar arguments advanced with respect to independent claim 1. (App. Br. 17-21; Reply Br. 15-19). Therefore, we find Appellants’ arguments to be unpersuasive of error in the Examiner’s conclusion of obviousness, and we sustain the rejection of representative claim 13 and its respective dependent claims 14, 15, and 17. With respect to independent claim 18, Appellants present similar arguments advanced with respect to independent claim 1. (App. Br. 21-25; Reply Br. 19-23). Therefore, we find Appellants’ arguments to be unpersuasive of error in the Examiner’s conclusion of obviousness, and we sustain the rejection of representative claim 18 and its respective dependent claims 19 and 20. Appeal 2011-008422 Application 12/638,921 7 CONCLUSIONS OF LAW The Examiner erred in rejecting claims 7 and 16 based upon failing to particularly point out and distinctly claim the invention. The Examiner did not err in rejecting claims 1-6, 8-15, and 17-20 based upon obviousness. DECISION For the above reasons, the Examiner’s rejection of claims 7 and 16 is reversed, and the Examiner’s rejection of claims 1-6, 8-15, and 17-20 is sustained. 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). AFFIRMED-IN-PART bab