11486549 (B.P.A.I. Jun. 11, 2012)

Ex Parte Davis et al

Board of Patent Appeals and InterferencesJun 11, 2012

11486549 (B.P.A.I. Jun. 11, 2012)

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. 11/486,549 07/14/2006 Damaris Davis HSJ920050183US1 4006 45552 7590 06/11/2012 HITACHI C/O WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVILLE, CA 95076 EXAMINER KIM, PAUL D ART UNIT PAPER NUMBER 3729 MAIL DATE DELIVERY MODE 06/11/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DAMARIS DAVIS, HARDAYAL S. GILL, KENNETH D. MACKAY, and XIAO Z. WU ____________________ Appeal 2010-003262 Application 11/486,549 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003262 Application 11/486,549 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter The disclosed subject matter relates to the method of manufacturing read/write heads, such as those used in hard disk drives. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of manufacturing pre-sliders for read write heads by annealing to saturation, the method comprising: lapping pre-sliders associated with a wafer to prepare for air bearing surfaces for the pre-sliders; and annealing the pre-sliders to saturation to level off the amount of overcoat expansion for the pre-sliders. Rejections I. Claims 18-20 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite1. Ans. 3. 1 The appealed rejection includes claims 7-14 and 19-20. App. Br. 6; Ans. 3. However, the Examiner withdraws the rejection of claims “4 and 18” because the Examiner is persuaded that “the phrase of ‘a magnetic field assisted annealing’ fully describes in the specification” [sic]. Ans. 6. Claim 4 does not have such a limitation and is not rejected under § 112. We assume this is a typographical error, intended to be claim 7. The Examiner does not specify that the rejection of the claims that depend therefrom are likewise withdrawn. However, given that the rejection of the claims that depend from claim 7 appear to rely on the same reasoning, we likewise consider the rejection of claims 8-14 to be withdrawn. See Ans. 3 (not specifying any additional reason for rejecting dependent claims 8-14). Accordingly, only claim 18 (and the claims depending therefrom), for the separate reason identified at Ans. 3, remains rejected under § 112. See Ans. 6-7. Appeal 2010-003262 Application 11/486,549 3 II. Claims 1, 15, and 16 are rejected under § 102(b) as anticipated by Appellants’ Admitted Prior Art (AAPA), Spec. 2, fig. 1. Ans. 4, 8.2 III. Claims 2-5, 19, and 20 are rejected under § 103(a) as unpatentable over AAPA3. Ans. 4-5. IV. Claims 6 and 17 are rejected under § 103(a) as unpatentable over AAPA and Toyoda (US 5,713,123, iss. Feb. 3, 1998). Ans. 5. OPINION The Prior Art Rejections Both independent claims (1 and 18) require a step of “annealing the pre-sliders to saturation.” The Examiner found that the AAPA describes this step and that it is Appellants’ burden to show otherwise. Ans. 4, 7-8. The AAPA states: A high temperature can be applied to the pre-sliders to align the magnetic moments of the material from which sensors 116 are made. More specifically, a high temperature can be applied to the pinning layer of the read sensor 116. The process of applying a high temperature to the pre-sliders is commonly referred to as annealing 120. Pre-slider 130 has been annealed 120. Pre-slider 130 includes an overcoat 132 and substrate 134. As a result of being annealed 120, the overcoat 132 has expanded resulting in a protrusion 136. Since the ABS of a pre- 2 Appellants appealed the anticipation rejection of claims 1, 7, 15, 16, and 18. App. Br. 6; Ans. 4. The Examiner “withdraws the … rejection of the phrase ‘a magnetic field assisted annealing.’” Ans. 8. Because claims, not phrases, are rejected, we assume the Examiner withdraws from this rejection all claims in this rejection including this phrase. This would include claims 7 and 18 subject to this rejection. We do not consider the rejection(s) of the claims that depend therefrom and rejected under a different ground of rejection to be withdrawn. 3 Appellants appealed a rejection of claims 2-5, 8-14, 19, and 20. App. Br. 6; Ans. 4. The Examiner withdraws the rejection of claims 8-14. Ans. 10. Appeal 2010-003262 Application 11/486,549 4 slider must be flat and smooth in order for a read write head to glide properly over a platter, the protrusion 136 causes the pre- slider 130 to be unsuitable. Only those pre-sliders that do not have protrusions can continue in the manufacturing process to become acceptable sliders. Spec. 2. While we agree with the Examiner that the AAPA describes annealing, we agree with Appellants that the AAPA does not describe annealing to saturation (App. Br. 9). We find no passage indicating, nor does the Examiner explain, how the AAPA implies that “high temperatures” are necessarily high enough and/or held long enough to saturate the overcoat. See also Appellants’ fig. 3 (showing saturation as a function of time); Spec. 6 (specifying an annealing temperature range of 100-220 ºC). As such, the Examiner has not passed the burden to Appellants to show that the AAPA did not anneal to saturation. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441 F.2d 660, 664 (CCPA 1971)). Each of the Examiner’s prior art rejections is predicated on this unsupported finding in the AAPA. Accordingly, we cannot sustain them. The Indefiniteness Rejection Claim 18 has two “if” clauses specifying steps to perform if the pre- slider has a protrusion or if the pre-slider has a misaligned magnetic moment. The Examiner states that it is “unclear as to perform final lapping what if the pre-sliders have no protrusion and … no misaligned magnetic moment” [sic]. Ans. 3. However, the claim is clear: if the condition does not occur, then the step need not be performed to satisfy the method. The Appeal 2010-003262 Application 11/486,549 5 silence as to performance of one of the conditional steps in the event the condition does not occur does not affect the performance of the other steps or otherwise render the claim indefinite. The Examiner does not cogently set forth how these limitations render the scope of the claimed subject matter indefinite. Accordingly, we do not sustain the Examiner’s indefiniteness rejection. DECISION We reverse the Examiner’s decision regarding all rejected claims. REVERSED hh