Ex Parte Karr et alDownload PDFPatent Trial and Appeal BoardDec 27, 201211265629 (P.T.A.B. Dec. 27, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/265,629 11/02/2005 Brian William Karr S01.12-1084/STL 12654 6678 27365 7590 12/27/2012 SEAGATE TECHNOLOGY LLC C/O WESTMAN, CHAMPLIN & KELLY, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402-3244 EXAMINER KLIMOWICZ, WILLIAM JOSEPH ART UNIT PAPER NUMBER 2686 MAIL DATE DELIVERY MODE 12/27/2012 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 BRIAN WILLIAM KARR, ERIC WALTER SINGLETON, and QING HE ____________________ Appeal 2010-012345 Application 11/265,629 Technology Center 2600 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012345 Application 11/265,629 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-4, 6, and 9-23. Claims 5, 7, and 8 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Disclosure and Claims Appellants’ disclosed invention relates to thin film magnetoresistive sensors used in disc drives (Fig. 1; Spec. 9:3-18; Abs.). Claims 1, 9, 15, and 21 are independent. Claims 1-4, 6, and 21-23 recite magnetoresistive sensors, claims 9-14 recite magnetic sensors, and claims 15-20 recite tunneling magnetoresistive sensors. Exemplary independent claim 1 under appeal reads as follows: 1. A magnetoresistive sensor, comprising: a synthetic anti-ferromagnetic structure including a magnetic layer comprising magnetic material and a grain refining agent that comprises boron, the magnetic layer having a grain-refined magnetic layer surface; a thin film stack adjacent the grain-refined magnetic layer surface, the thin film stack having a stack surface that conforms to the grain-refined magnetic layer surface; a seed layer supporting the synthetic anti-ferromagnetic structure; a shield layer formed of magnetic material supporting the seed layer; and the magnetic layer comprises cobalt, iron and boron in ratios of (Co100-xFex)100-yBy where B is the grain refining agent, x Appeal 2010-012345 Application 11/265,629 3 is in the range of 0-50% atomic, and y is in the range of 1- 15% atomic. Examiner’s Rejection The Examiner rejected claims 1-4, 6, and 9-23 as being unpatentable under 35 U.S.C. § 103(a) over Parkin (US 2005/0110004 A1), Horng (US 2004/0252418 A1), and Fontana, Jr. (US 5,701,223). Ans. 3-14. Examiner’s Findings and Conclusion The Examiner rejects independent claims 1, 9, 15, and 21 and the corresponding dependent claims over the combination of Parkin, Horng, and Fontana, Jr. (Ans. 3-14), finds what Parkin does not teach, Horng does (Ans. 6-7), explains the motivation to combine the teachings of Horng with those of Parkin (Ans. 7), finds what Parkin-Horng do not teach, Fontana does (Ans. 8-9), and explains the motivation to combine Fontana with Parkin-Horng (Ans. 9). The Examiner concludes that ample motivation was provided for the combination (Ans. 15-18). Appellants’ Contentions With regard to independent claims 1, 9, 15, and 21, Appellants argue that the Examiner did not have proper motivation to combine Parkin, Horng, and Fontana but instead relied upon hindsight reasoning (App. Br. 9-11; Reply Br. 3-4). Appellants contend that “[o]rdinary skill in the art at the time of the invention was insufficient to make the selection of references, and insufficient to select the particular elements in the claimed combinations” (App. Br. 10). Appellants contend (App. Br. 11) that the Examiner erred in rejecting claims 2-4, 6, 10-20, 22, and 23 for the same reasons argued with respect to claims 1, 9, 15, and 21. Appeal 2010-012345 Application 11/265,629 4 Appellants contend that the Examiner’s Answer contain new grounds of rejection because the Examiner “[made] changes to the grounds for rejection [that] are so extensive as to change the thrust” (Reply Br. 1-2). Issue on Appeal Based on Appellants’ arguments, the following issue is presented for appeal: Did the Examiner err in rejecting claims 1-4, 6, and 9-23 as being obvious because Parkin, Horng, and Fontana, Jr. are not properly combinable? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 9-12) and the Reply Brief (Reply Br. 1-4) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 3-14). We concur with the conclusions reached by the Examiner. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). To establish a prima facie case of obviousness, so as to meet the notice required of 35 USC § 132, requires (1) “set[ting] forth the statutory basis of the rejection”; (2) “the reference or references relied upon”; and (3) explaining the references “in a sufficiently articulate and informative Appeal 2010-012345 Application 11/265,629 5 manner.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Further, there must be (4) “a reason to combine prior art references[, which] is a question of fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012) (internal citations omitted). Also, an obviousness determination cannot rest upon impermissible hindsight reasoning, and to guard against hindsight reasoning the Federal Circuit “flexibly seeks evidence from before the time of the invention in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.” Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010) (internal citations omitted). The Examiner has provided articulated reasoning with a rational underpinning to support the combination for the legal conclusion of obviousness, i.e., set forth a prima facie case of obviousness in rejecting claims 1-4, 6, and 9-23 under §103(a) over Parkin, Horng, and Fontana, Jr. (Ans. 3-14). In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We agree with the Examiner that the combination of Parkin, Horng, and Fontana, Jr. meets all of the magnetoresistive sensor limitations set forth in claims 1, 9, 15, and 211 and that it would have been obvious to combine Parkin, Horng, and Fontana, Jr. Indeed, the Examiner explains in detail the reasons that would motivate an ordinarily skilled artisan to combine: (1) the teachings of Horng with those of Parkin (Ans. 6-7 and 16-17) and (2) the teachings of Fontana, Jr. with those of Parkin and Horng (Ans. 8-9 and 17-18). Thus, the 1 The examiner element-to-element matched the features of the references to the limitations of the claims in a sufficiently articulate and informative manner (see, e.g., discussion of claim 1 at Ans. 3-4 and 6-9). Appeal 2010-012345 Application 11/265,629 6 examiner has met the prima facie showing and the burden of persuasion shifts to Appellants to demonstrate non-obviousness.2 Appellants conclude the Examiner’s obviousness determination is hinged upon impermissible hindsight. To support their conclusions of hindsight, Appellants present conclusory statements that such combination of references would require more than ordinary skill in the art (App. Br. 9- 10). Appellants’ conclusory statements are unsupported by factual evidence. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also, while not required to, Appellants have not submitted evidence of secondary considerations. Evidence of secondary considerations “may also serve a guard against slipping into use of hindsight.” Kahn, 441 F.3d at 986 (quoting Graham v John Deere Co., 383 U.S. 1, 36 (1966)). Therefore, we accord very little probative value to Appellants’ conclusory statements that combining the teachings of Parkin, Horng, and Fontana, Jr. required more than ordinary skill in the art. Appellants’ contention that the Examiner’s Answer contain new grounds of rejection (Reply Br. 1-2) is unpersuasive because Appellants responses to the alleged new grounds of rejection (see Reply Br. 3-4) are merely directed to hindsight and lack of motivation to combine (the same issues raised by Appellants in the Appeal Brief), without any supporting evidence. Accordingly, we do not find that the Examiner has applied any 2 Once the Examiner has satisfied the burden of presenting a prima facie case of obviousness, the burden then shifts to Appellants to present evidence and/or arguments that persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appeal 2010-012345 Application 11/265,629 7 new grounds or thrust of the rejection or that Appellants have responded to any alleged new grounds with arguments any different than those arguments already presented. In view of the foregoing, Appellants’ contentions (App. Br. 9-12; Reply Br. 3-4) that that it would not have been obvious to combine Parkin, Horng, and Fontana, Jr. because the Examiner’s reasoning is conclusory and involves hindsight are unconvincing. Appellants have not sufficiently shown that the Examiner erred in finding that it would have been obvious to modify Parkin with the teachings of Horng and Fontana, Jr. or that the combination of Parkin, Horng, and Fontana, Jr. teaches or suggests the magnetoresistive sensors recited in claims 1 and 21, the magnetic sensor recited in claim 9, and the tunneling magnetoresistive sensor recited in claim 15. Accordingly, we will sustain the obviousness rejection of claims 1, 9, 15, and 21 based upon the combined teachings and suggestions of Parkin, Horng, and Fontana, Jr. Appellants have not sufficiently shown that the Examiner erred in rejecting claims 2-4, 6, 10-20, 22, and 23 under § 103(a) over Parkin, Horng, and Fontana, Jr. Accordingly, we will sustain the obviousness rejection of claims 2-4, 6, 10-20, 22, and 23 for similar reasons as discussed with regard to claims 1, 9, 15, and 21. CONCLUSION The Examiner has not erred in rejecting claims 1, 9, 15, and 21 as being obvious because Parkin, Horng, and Fontana, Jr. are properly combinable. Appeal 2010-012345 Application 11/265,629 8 DECISION The Examiner’s rejection of claims 1-4, 6, and 9-23 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). AFFIRMED peb Copy with citationCopy as parenthetical citation