Ex Parte Gill

Board of Patent Appeals and Interferences

Aug 14, 2009

10833347 (B.P.A.I. Aug. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARDAYAL SINGH GILL
____________

Appeal 2009-001178
Application 10/833,347
Technology Center 2600
____________

Decided: August 14, 2009
____________

Before JOSEPH F. RUGGIERO, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-18, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed July 16, 2007), the Answer (mailed Oct.
31, 2007), and the Reply Brief (filed Dec. 31, 2007) for the respective
details. Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a magnetoresistive sensor having
improved pinned layer stability through use of an iron (Fe) layer in the
pinned layer structure. The pinned layer structure includes antiparallel (AP1
and AP2) layers separated from one another by a non-magnetic coupling
layer. The AP1 layer includes a first layer of iron (Fe) and a second layer of
cobalt iron (CoFe). (See generally Spec. 6:3-8)).
Representative independent claim 1 is reproduced as follows:

1. A magnetoresistive sensor comprising:
a magnetic free layer;
a magnetic pinned layer structure; and
a spacer layer sandwiched between the magnetic free layer and the
magnetic pinned layer
structure;
the magnetic pinned layer structure comprising:
a first pinned layer (AP1) comprising a layer consisting
essentially of Fe and a layer comprising CoFe, the AP1
layer having a first magnetic thickness equal to the sum
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of a magnetic thickness of said Fe layer and a magnetic
thickness of said CoFe layer; and
a second pinned layer (AP2) comprising CoFe, having a second
magnetic thickness.

The Examiner’s Rejections
The Examiner relies on the following prior art to show
unpatentability:
Pinarbasi (‘210) US 6,219,210 B1 Apr. 17, 2001
Pinarbasi (‘068) US 6,282,068 B1 Aug. 28, 2001
Smith US 2002/0085323 A1 Jul. 4, 2002
Gill (‘426) US 2002/0126426 A1 Sep. 12, 2002
Lin US 2003/0184918 A1 Oct. 2, 2003
Gill (‘798) US 6,781,798 B2 Aug. 24, 2004
(filed Jul. 15, 2002)
Gill (‘412) US 6,801,412 B2 Oct. 5, 2004
(filed Apr. 19, 2002)

Claims 1, 8, and 13-16 stand rejected under 35 U.S.C. § 102(a) as
being anticipated by Pinarbasi ‘210.
Claims 2 and 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinarbasi ‘210 in view of Gill ‘412.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinarbasi ‘210 in view of Gill ‘426.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinarbasi ‘210 in view of Pinarbasi ‘068.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinarbasi ‘210 in view of Gill ‘798.
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Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinarbasi ‘210 in view of Lin.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinarbasi ‘210 in view of Smith.

ISSUE
The pivotal issue before us is whether Appellant has demonstrated
that the Examiner erred in finding that the magnetoresistive pinned layer
structure disclosed by Pinarbasi ‘210 anticipates the invention recited in
representative claim 1. The issue turns on whether the Examiner properly
construed the claim language “consisting essentially of Fe” as not excluding
the NiFe pinned layer 620 disclosed by Pinarbasi ‘210.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Pinarbasi ‘210 discloses (Figs. 16 and 17, col. 6, l. 57-col. 7, l.
63) a magnetoresistive sensor having a magnetic free layer structure 606
including a magnetic free layer 610, a magnetic pinned layer structure 604,
and a spacer layer 602 between the magnetic free layer and the magnetic
pinned layer structure.
2. Pinarbasi ‘210 also discloses (col. 7, ll. 4-16) that the magnetic
pinned layer structure 604 includes a first pinned layer having a CoFe layer
616 over a NiFe layer 620.
3. Pinarbasi ‘210 further discloses that the magnetic pinned layer
structure 604 has a second pinned layer 618 of CoFe.
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PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if the
prior art reference discloses every element of the claim. See In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v.
Am. Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). “Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (citations
omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
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§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(a) REJECTION
Appellant’s arguments in response to the Examiner’s anticipation
rejection, based on Pinarbasi ‘210, of representative independent claim 1
assert that the Examiner has not shown how each of the claimed features is
present in the disclosure of Pinarbasi ‘210 so as to establish a prima facie
case of anticipation.1 Appellant’s arguments focus on the contention that, in
contrast to the claimed magnetoresistive sensor pinned layer structure having

1 Appellants argue rejected claims 1, 8, and 13-16 together as a group,
making particular reference solely to independent claim 1. See App. Br. 11-
13. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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a layer “consisting essentially of Fe,” Pinarbasi ‘210 discloses a pinned layer
structure with a layer of NiFe. According to Appellant (App. Br. 11-13;
Reply Br. 2-3), the use of the claim language “consisting essentially of”
excludes the Ni layer of Pinarbasi ‘210 since the addition of Ni in the NiFe
layer would affect the basic characteristics of the claimed pinned layer
structure by changing the material properties and crystalline structure of the
layer of Fe.
We do not find Appellant’s arguments to be persuasive in convincing
us of any error in the Examiner’s stated position. Initially, we agree with the
Examiner (Ans. 13) that it was proper to construe the claimed “‘consisting
essentially of’” language as equivalent to “comprising” since there is no
clear indication in Appellant’s disclosure of what the basic and novel
characteristics of the Fe layer are. See PPG Industries v. Guardian
Industries, Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998). It is noteworthy
that, in the summary of the claimed subject matter of claim 1 (App. Br. 7),
Appellant makes reference to page 12, lines 11-13 of the Specification,
which uses the open-ended language “comprising Fe” in describing the first
magnetic layer 324 of the first pinned layer 310.
We also find that Appellant has not adequately met the burden of
showing that the addition of Ni to an Fe layer, such as in the NiFe layer 620
disclosed by Pinarbasi ‘210, would materially change the characteristics of
the pinned layer structure of Appellant’s claimed invention so as to exclude
the NiFe layer of Pinarbasi ‘210 by use of the “consisting essentially of Fe,”
claim language. While Appellant contends (App. Br. 12-13; Reply Br. 2-3)
that the strong intrinsic magnetic anisotropy characteristics achieved by
applying a CoFe layer over a Fe layer would not exist if a CoFe layer were
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applied over a NiFe layer, the record before us is totally devoid of any
evidence to support such a conclusion. The arguments of counsel cannot
take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997).
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding that all of the claimed limitations are
present in the disclosure of Pinarbasi ‘210, the Examiner’s 35 U.S.C.
§ 102(a) rejection of independent claim 1, as well as dependent claims 8 and
13-16 not separately argued by Appellant, is sustained.

35 U.S.C. § 103(a) REJECTIONS
The Examiner’s obviousness rejections of dependent claims 2-7, 9-12,
17, and 18 based on the separate combinations of Pinarbasi ‘210 with the
various secondary references is sustained as well. Appellant’s arguments
(App Br. 14) rely on the previously asserted arguments alleging deficiencies
in the anticipatory disclosure of Pinarbasi ‘210 with respect to rejected
claims 1, 8, and 13-16 which arguments we have found to be unpersuasive
for all of the previously discussed reasons.2

2 We acknowledge that Appellant, at pages 3-6 of the Reply Brief, has made
separate arguments for the patentability of dependent claims 2, 4-6, and 9-
12. These issues, however, were raised for the first time on appeal in the
Reply Brief and are therefore deemed to be waived. See Optivus Tech., Inc.
v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue
not raised by an appellant in its opening brief ... is waived.”) (citations and
quotation marks omitted); see also Ex parte Scholl, No. 2007-3653, slip op.
at n.13 (BPAI Mar. 13, 2008) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (same).

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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1, 8,
and 13-16 for anticipation under 35 U.S.C. § 102(a), nor in rejecting claims
2-7, 9-12, 17, and 18 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 8, and 13-16 under
35 U.S.C. § 102(a) and claims 2-7, 9-12, 17, and 18 under 35 U.S.C.
§ 103(a) is 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) (2007).

AFFIRMED

KIS

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