Ex Parte Gadbois et alDownload PDFPatent Trial and Appeal BoardJun 19, 201714050725 (P.T.A.B. Jun. 19, 2017) 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. 14/050,725 10/10/2013 Jason Bryce Gadbois STX.113.A1 3312 98068 7590 Hollingsworth Davis 8000 West 78th Street Suite 450 Minneapolis, MN 55439 06/21/2017 EXAMINER MILLER, BRIAN E ART UNIT PAPER NUMBER 2688 NOTIFICATION DATE DELIVERY MODE 06/21/2017 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): tdotter @ hdpatlaw. com roswood@hdpatlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON BRYCE GADBOIS, DECLAN MACKEN, and KARSTEN KLARQVIST1 Appeal 2017-000851 Application 14/050,725 Technology Center 2600 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, 5, 12, and 18—22.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Seagate Technology LLC as the real party in interest. App. Br. 1. 2 Claims 3 and 4 have been canceled. See claim amendments filed June 15, 2015. Claims 6—11 and 13—17 have been withdrawn from consideration. See Final Act. 1—2; App. Br. 10—12; Ans. 2. Appeal 2017-000851 Application 14/050,725 STATEMENT OF THE CASE Appellants’ disclosure relates to “bond pad sharing for powering a plurality of electrical components” in which “at least one electrical bond pad is shared between two or more of the electrical components.” Spec. 1:10, 17—18. Claims 1 and 18 are independent. Claim 1 is reproduced below for reference (with emphasis added): 1. An apparatus, comprising: a slider comprising a plurality of electrical bond pads coupled to bias sources; a plurality of electrical components of the slider each coupled to at least one of the electrical bond pads; at least one of the electrical bond pads is a shared electrical bond pad coupled to at least two of the electrical components; and circuitry configured to operate the plurality of electrical components alternately with respect to one another. The Examiner’s Rejections3 Claims 1,2, 18, and 19 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Miyamoto (US 8,879,189 B2; Nov. 4, 2014). Final Act 3. Claims 5,12, and 20—22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Miyamoto and Fontana, Jr. (US 5,896,249; Apr. 20, 1999). Final Act. 5. 3 Although the Final Rejection indicates claims 8 and 9 are rejected as being unpatentable (see Final Act. 1, 5), these claims are withdrawn from consideration as being drawn to a non-elected species. See Ans. 2. 2 Appeal 2017-000851 Application 14/050,725 ANALYSIS Appellants argue the Examiner erred because “Miyamoto discloses that a circuit design ‘would allow control of the heater element 503 and the contact sensor element 506 individually'” and “[individual control does not equate to the claimed alternate control.” Br. 5—6. Appellants further contend that Miyamoto teaches “concurrent operation of the heater element 503 and the contact sensor element 506” such that [o]ne skilled in the art would understand that performing contact sensing when the head is expanded or protruded necessarily requires that the heater element 503 be operating in order to generate the heat needed to produce the head expansion or protrusion. Br. 6. We are persuaded by Appellants’ arguments. The cited portion of Miyamoto describes the control of the electrical elements as follows: [T]he heater element 503 and the contact sensor element 506 may be coupled in parallel across the two terminals 501, 502. Of course, any other circuit design may be used as would be known to one of skill in the art which would allow control of the heater element 503 and the contact sensor element 506 individually. Miyamoto 9:8—13. The Examiner finds this portion of Miyamoto “states that the heater and contact sensor can be controlled individually, therefore, it inherently suggests that one would be on while the other is off, thus considered to meet the claim language.” Ans. 3. We disagree with the Examiner, because although Miyamoto’s use of “individually” may suggest the elements could be alternately controlled, Miyamoto is silent as to turning one element on while the other one is off. We note that Miyamoto does not inherently disclose such a feature. Inherency may not be established by probabilities or possibilities. See In re Robertson, 169 F.3d 743, 745 (Fed. 3 Appeal 2017-000851 Application 14/050,725 Cir. 1999) (internal citations omitted). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Further, we agree with Appellants that even if we agreed with the Examiner’s finding of alternate control, it would lead to an embodiment unable to prevent excess head expansion, because under such timing, contact sensor 506 would be switched off whenever heater element 503 supplied heat (i.e., is active). See Br. 6. Thus, we find Miyamoto does not disclose all limitations recited by independent claim 1. We do not sustain the rejection of independent claim 1 or independent claim 18 commensurate in scope, and the rejections of the claims that depend therefrom. DECISION The Examiner’s decision rejecting claims 1, 2, 5, 12, and 18—22 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation