Ex Parte Yao et al

Patent Trial and Appeal BoardOct 9, 2012

11866334 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MING GAO YAO, MASASHI SHIRAISHI, and YI RU XIE ____________ Appeal 2010-001678 Application 11/866,334 Technology Center 2600 ____________ Before JEAN R HOMERE, ST JOHN COURTENAY III, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3, 6, 16, and 17. Claims 8-15 and 26-31 have been cancelled; claims 18-25, 32, and 35 are allowed; and claims 2, 4, 5, 7, 33, and 34 are objected to as being dependent upon a rejected base claim. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-001678 Application 11/866,334 2 STATEMENT OF THE CASE Appellants’ invention is directed to an air bearing slider which utilizes negative pressure grooves. See Spec. 20, Abstract of the Disclosure. Claim 1 is illustrative, with key disputed limitations emphasized: 1. A slider comprising: a slider body; first and second rails on a first structure at a first depth from said first and second rails, said first and second rails extending in a longitudinal direction along the slider body; a first groove segment in said first structure to a groove depth, said groove depth being greater than said first depth; a second and third groove segment in said first structure to said groove depth, wherein said first groove segment extends from the leading edge of the body and between said first and second rails; and said second and third groove segments extend from said first groove segment to a trailing edge of the body. The Examiner relies on the following as evidence of unpatentability: Kohira US 6,628,480 Sep. 30, 2003 Appeal 2010-001678 Application 11/866,334 3 THE REJECTION The Examiner rejected claims 1, 3, 6, 16, and 17 under 35 U.S.C. §102(e) as anticipated by Kohira. Ans. 3-4.1 ISSUE Based upon our review of the record, the arguments proffered by Appellants and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under § 102, has the Examiner erred in rejecting claims 1, 3, 6, 16, and 17 by finding that Kohira anticipates “a first groove segment in said first structure to a groove depth, said groove depth being greater than said first depth” and “a second and third groove segment in said first structure to said groove depth” as set forth in independent claims 1 and 16? 1 Throughout this opinion, we refer to the Appeal Brief filed March 2, 2009; the Examiner’s Answer mailed June 8, 2010; and the Reply Brief filed August 10, 2009. Appeal 2010-001678 Application 11/866,334 4 ANALYSIS The Examiner has relied upon Figure 19 of Kohira, which is depicted below: Figure 19 of Kohira is a plan view of a fifth form of the magnetic head slider of Kohira, annotated by hand with the Examiner’s indication of the first, second and third grooves, as previously set forth in the Office Action dated October 1, 2008. The Examiner finds that Figure 19 of Kohira depicts a first groove which extends from the leading edge of the body and a second and third groove which extend from the first groove to the trailing edge of the body. Ans. 3-4. Appellants argue that “groove” is an easily undertood term by one of ordinary skill in the art. Indeed, Merriam Webster defines “groove” as “a long narrow channel or depression” such as “the grooves on a vinyl record.” (See http://merriam-webster.com/dictionary/groove) Consequently, Appellants argue that the Examiner’s citation of a singular area (recess 11), which the Examiner arbitrarily divided into three segments, cannot be said to anticipate the Appellants claimed “grooves.” App. Br. 5-6. Appeal 2010-001678 Application 11/866,334 5 We find the Appellants’ argument persuasive. Recess 11, as illustrated above, appears to be wider than it is long and cannot be reasonably construed as “narrow.” We therefore find that the Examiner erred in rejecting independent claims 1 and 16 and claims 3, 6, and 17, which depend therefrom. CONCLUSION The Examiner erred in rejecting claims 1, 3, 6, 16, and 17 under § 102. ORDER The Examiner’s decision rejecting claims 1, 3, 6, 16, and 17 is reversed. REVERSED peb