Ex Parte Singleton et al

Patent Trial and Appeal Board

Mar 11, 2016

11971664 (P.T.A.B. Mar. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111971,664 01109/2008 Eric W. Singleton
136310 7590 03/15/2016
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
STL12898.00 5293
EXAMINER
WA TKO, TIJLIE ANNE
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
03/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC W. SINGLETON, QING HE, JAE-YOUNG YI,
MATT JOHNSON, ZHENG GAO,
DIMITAR V. DIMITROV, and SONGS. XUE
Appeal2014-004325
Application 11/971,6641
Technology Center 2600
Before LARRY J. HUME, JOHN P. PINKERTON, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge HUME.
Opinion Dissenting filed by Administrative Patent Judge STEPHENS.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 33, 34, 38--41, and 44. Appellants have previously
canceled claims 1-32. The Examiner objects to claims 35-37, 42, 43, 45,
and 46, and indicates claims 4 7 and 48 are allowed. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Seagate Technology.
App. Br. 2.
Appeal2014-004325
Application 11/971,664
STATEMENT OF THE CASE2
The Invention
Appellants' claimed invention relates to a magnetic sensor device with
reduced shield-to-shield spacing. Title.
Exemplary Claim
Claim 33, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
33. A magnetic sensor assembly comprising:
first and second shields comprising a magnetic material,
wherein a distance between the first and second shields defines
a physical shield-to-shield spacing; and
a sensor stack positioned between the first and second
shields, the sensor stack including a first seed layer, first cap
layer, and magnetic sensor; wherein the first seed layer and first
cap layer comprise a magnetic material such that an effective
shield-to-shield spacing of the magnetic sensor assembly does
not include the first seed layer and first cap layer.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Knapp et al. ("Knapp") US 6,700,759 Bl Mar.2, 2004
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 30, 2013); Reply Brief ("Reply Br.," filed Feb. 24, 2014); Examiner's
Answer ("Ans.," mailed Feb. 12, 2014); Final Office Action ("Final Act.,"
mailed Mar. 18, 2013); and the original Specification ("Spec.," filed
Jan. 9, 2008).
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Appeal2014-004325
Application 11/971,664
Rejections on Appeal
RI. Claims 33, 34, 40, 41, and 44 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Knapp. Ans. 2.
R2. Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Knapp. Ans. 4.
ISSUE
Appellants argue (App. Br. 4--7; Reply Br. 1--4) the Examiner's
rejection of claim 33 under 35 U.S.C. § 102(b) as being anticipated by
Knapp is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a magnetic
sensor assembly that includes, inter alia, a sensor stack having a first seed
layer and a first cap layer, "wherein the first seed layer and first cap layer
comprise a magnetic material such that an effective shield-to-shield spacing
of the magnetic sensor assembly does not include the first seed layer and
first cap layer," as recited in claim 33?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants.
We agree with particular arguments advanced by Appellants with
respect to claim 33 for the specific reasons discussed below. We highlight
and address specific findings and arguments regarding claim 33 for
emphasis as follows.
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Appeal2014-004325
Application 11/971,664
Appellants contend:
The Examiner alleges that the Knapp reference
anticipates Appellant's claim. In doing so, the Examiner reads
Knapp's seed layer 112 on the claimed first cap layer. As shown
in Knapp's FIG. 2 and described in column 4:30-33, Knapp's
seed layer 112 adds to and is included in an effective shield-to-
shield spacing (dimension L 1 }-in direct contrast to Appellant's
claim. "An effective length LI of the sensor 101 for linear
resolution is simply the sum of layers 110, 112, 115, 118, 120,
122, and 125 .... "
As such, Knapp cannot anticipate at least: wherein the
first seed layer and first cap layer comprise a magnetic
material such that an effective shield-to-shield spacing of the
magnetic sensor assembly does not include the first seed !aver
and first cap layer.
Moreover, the Examiner has failed to point to any
teaching that anticipates the above-recited claim features.
App. Br. 5---6.
The Examiner responds to Appellants' contentions in the Response to
Arguments section of the Answer. Ans. 6-10. However, the majority
disagrees with the Examiner's findings, and find the Examiner has not shown
Knapp anticipates claim 33.
We agree with Appellants because the Examiner has not provided a
clear mapping of each claim limitation to the cited prior art. In particular,
we find the Examiner has not unambiguously mapped each of the claimed
layers of the recited "sensor stack," and has not adequately addressed
Appellants' arguments related thereto, as cited above.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
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Appeal2014-004325
Application 11/971,664
the cited prior art to disclose the contested limitation of claim 33, and to
anticipate claim 33.
Therefore, we sustain the Examiner's anticipation rejection of
independent claim 33, and dependent claims 34, 40, 41, and 44, which
depend from claim 33 and stand therewith.
§ 103(a) Rejection R2 of Claims 38 and 39
For the same reasons discussed above with respect to the anticipation
rejection of claim 33, we cannot sustain the obviousness rejection of claims
38 and 39 under§ 103 over Knapp.
CONCLUSIONS
(1) The Examiner erred with respect to anticipation Rejection RI of
claims 33, 34, 40, 41, and 44 under 35 U.S.C. § 102(b) over the cited prior
art of record, and we do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejection R2
of claims 38 and 39 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 33, 34, 38--41,
and 44.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC W. SINGLETON, QING HE, JAE-YOUNG YI,
MATT JOHNSON, ZHENG GAO,
DIMITAR V. DIMITROV, and SONGS. XUE
Appeal2014-004325
Application 11/971,664
Technology Center 2600
Before LARRY J. HUME, JOHN P. PINKERTON, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge, dissenting.
I respectfully dissent from the decision of the majority to reverse the
Examiner's rejections of claims 33, 34, 38--41, and 44.
Appellants argue Knapp does not disclose "wherein the first seed
layer and first cap layer comprise a magnetic material such that an effective
shield-to-shield spacing of the magnetic sensor assembly does not include
the first seed layer and first cap layer" (App. Br. 6), as recited in claim 33. I
agree with the Examiner that Knapp discloses seed layer 112 can be made of
nickel-iron-chromium (Final Act. 2 (citing Knapp 4:8-10); Ans. 7-8), and
Appellants do not dispute that one of ordinary skill in the art would
understand nickel-iron-chromium generally to be magnetic. Instead,
Appeal2014-004325
Application 11/971,664
Appellants argue Knapp expressly teaches including the thickness of
layer 112 in the effective length of the sensor. (App. Br. 6 (quoting Knapp
4:31-33).) Appellants' argument is not persuasive because the statement in
Knapp relied on by Appellants relates to an example that includes
nonmagnetic spacer 110 between seed layer 112 and magnetically permeable
shield 102, and the Examiner correctly finds spacer 110 is "optional" (Knapp
4:60-61; see Ans. 7). Without nonmagnetic spacer 110, the magnetic seed
layer 112 is directly next to shield 102, as in Appellants' Specification (see
Fig. 3), and, therefore, "serv[es] as an extension of the shield" like Knapp's
sidewall adjacent the shield on the other side of the sensor. Knapp Abstract,
2:54--56; Ans. 7.
Appellants contend it is not sufficient for a seed or cap layer to be
made of any magnetic material, and that Knapp's nickel-iron-chromium does
not inherently meet the disputed limitation because it is not the same
magnetic material Appellant discloses. Reply Br. 1-3. Claim 33 does not
recite a specific magnetic material or recite any other criteria necessary for
the first seed layer and first cap layer comprising a magnetic material to be
excluded from the effective shield-to-shield spacing. Appellants' written
description confirms that a first seed layer and first cap layer comprising a
magnetic material is sufficient to meet the disputed limitation: "In other
words, effective shield-to-shield spacing sseff is defined by the distance
between magnetic layers most proximate to sensor stack 68 in magnetic
sensor assembly 40." Spec. i-f 18.
In addition, I am not persuaded by Appellants' argument that the
Examiner unreasonably interprets seed layer and cap layer in claim 33. See
App. Br. 7. The Examiner finds Knapp's seed layer 112 can be considered
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Appeal2014-004325
Application 11/971,664
the first seed layer of claim 33 (Ans. 7; see also Final Act. 3), and
Appellants agree Knapp's use of the term "seed layer" is consistent with
Appellants' use of the term. App. Br. 7. Under this alternative finding,
Knapp's layer 133 is the first cap layer in claim 33. See Final Act. 3.
Appellants argue Figure 2 of Knapp lacks temporary cap layer 178 (App.
Br. 7), but do not dispute that Knapp's layer 133 "adds a protective layer to
the top of [the] magnetic sensor" (Spec. i-f 11 ), which Appellants argue is the
function of the cap layer. App. Br. 7.
In view of the foregoing, I would affirm the Examiner's rejection of
claim 33 as anticipated by Knapp, and the rejections of claims 33, 34, 38--41,
and 44, which were not separately challenged with particularity.
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