Ex Parte Zhao et al

Patent Trial and Appeal BoardOct 12, 2012

11210211 (P.T.A.B. Oct. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YANGGUO ZHAO and SIUKEI WONG ____________________ Appeal 2010-004592 Application 11/210,211 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and RAMA G. ELLURU, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004592 Application 11/210,211 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim(s) Exemplary independent claim 5 under appeal reads as follows (emphasis added): 5. A head gimbal assembly (HGA) testing system, comprising: a hard disk to store data; a spindle chuck to support the hard disk; a mounting block to support a head gimbal assembly in a position to read and write data to and from the hard disk; a test probe card with a set of one or more probes to provide electrical contact with the head gimbal assembly; and a preamplifier to transmit signals to and receive signals from the head gimbal assembly via the test probe card. Rejections on Appeal The Examiner rejected claims 1-2, 4-8, 10-14, and 16-19 under 35 U.S.C. § 102(e) as being anticipated by Anderson (US 2007/0143055 A1). 1 The Examiner rejected claims 3, 9, and 15 as being unpatentable under 35 U.S.C. § 103(a) over Anderson. 2 1 Separate patentability is not argued for claims 1-2, 4, 6-8, 10-14, and 16-19. Therefore, we treat claim 5 as representative for purposes of the rejection of these claims. Except for our ultimate decision, these claims are not discussed further herein. 2 Separate patentability is not argued for claims 3, 9, and 15. Rather, Appellants reference the arguments of claim 5 for purposes of the rejection Appeal 2010-004592 Application 11/210,211 3 Appellants’ Contentions Appellants contend that the Examiner erred in rejecting claim 5 because: One of skill in the art will readily recognize that a test probe card is not the same as a solderless connector. (App. Br. 5). Further: Applicants submit that contrary to the embodiments of the present application, the solderless connector of Anderson is not used for testing purposes at all. The rejection is lacking and should be reversed. (App. Br. 5) (emphasis added). Issue on Appeal Did the Examiner err in rejecting claim 5 because Anderson fails to teach a test probe card? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions 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. We concur with the conclusions reached by the Examiner. of these claims. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2010-004592 Application 11/210,211 4 As to the above contention, Appellants state a conclusion that “[o]ne of skill in the art will readily recognize that a test probe card is not the same as a solderless connector.” However, Appellants do not explain why this conclusion is the case. Contrary to Appellants’ argument, the solderless connector of Anderson is used for testing purposes. Paragraph [0100] of Anderson states: “FIG. 5A shows a cross-section of the test nest 212, which includes the collet assembly 500 used to secure the HGA 100a for dynamic electrical testing with the disc 810” (Emphasis added). The subsequent discussion in Anderson at paragraphs [0101]-[0105] describes alternative embodiments for the testing structure and includes the solderless connector disclosure relied on by the Examiner. We concur with the Examiner’s anticipation finding. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-2, 4-8, 10-14, and 16-19 as being anticipated under 35 U.S.C. § 102(e). (2) The Examiner has not erred in rejecting claims 3, 9, and 15 as being unpatentable under 35 U.S.C. § 103(a). (3) Claims 1-19 are not patentable. Appeal 2010-004592 Application 11/210,211 5 DECISION The Examiner’s rejections of claims 1-19 are 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 3 msc 3 We have decided the appeal before us. However, should there be further prosecution of these claims, the Examiner’s attention is directed to claim 1 where due to an amendment adding “a test probe card” to the body of the claim, claim 1 now recites “[a] test probe card, comprising: . . . a test probe card . . .”. Such circular claiming warrants further scrutiny under 35 U.S.C. § 112, second paragraph.