Ex Parte Park et al

Board of Patent Appeals and Interferences

Feb 12, 2007

09892790 (B.P.A.I. Feb. 12, 2007)

The opinion in support of the decision being entered today was not written 1
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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KI-OOK PARK, IN-EUNG KIM
IN-SEOP JEONG and TAE-SEOK PARK
____________________

Appeal 2007-0112
Reissue Application 09/892,7901
Patent 5,917,679
Technology Center 2600
____________________

Oral Argument: None2
Decided: February 12, 2007
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and
HOWARD B. BLANKENSHIP and ALLEN R. MacDONALD,
Administrative Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

1 Reissue application filed 28 June 2001 seeking to reissue U.S. Patent
5,917,679, granted 29 June 1999, based on application 08/915,342 filed
22 August 1997. The real party in interest is SamSung Electronics Co., Ltd.

2 Oral argument was scheduled for 21 February 2007. In preparing for oral
argument, it became apparent that further action by the Examiner was
required. Accordingly, oral argument was cancelled, counsel for Appellants
being notified by phone 6 February 2007 of the cancellation.
Appeal 2007-0112
Application 09/892,790

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MEMORANDUM OPINION and ORDER
Limited Remand

A. Statement of the case
The appeal is from a decision of the Examiner rejecting claims 21,
30-32 and 41 under 35 U.S.C. § 102 as being “clearly anticipated” by
Nepela, U.S. Patent 5,568,981, issued 29 October 1996 based on an
application filed 10 April 1995.
Nepela is prior art under 35 U.S.C. § 102(a) and 35 U.S.C. § 102(e).
In the answer, the Examiner states (page 4):
Note figure 5c. NEPELA et al shows a negative pressure
slider with a U-shaped air bearing platform (108) defining a
negative pressure cavity (not numbered—the area between the
two rear extending legs of the U), the U-shaped air bearing
platform having a cross rail portion (not numbered) and not
more than two separate air bearing platforms (not numbered—
the rear extending legs) which terminate before the rear edge of
the slider, the not more than two separate air bearing platforms
have side wall portions (not numbered), and a centered rear air
bearing platform (120) which mounts a transducer.

B. Discussion
We start out with the observation that it is not readily apparent to us
how claims 21, 30-32 and 41 are “clearly anticipated” by Nepela. Nor are
we sure if there is a difference is between “clearly anticipated” and
“anticipated.”
The Examiner, however, believes the claims on appeal are anticipated.
The Examiner no doubt is considerably more knowledgeable about the art
than we are. Furthermore, because of that knowledge, the Examiner may
have been inclined to make justified assumptions about the scope and
content of Nepela which we are unable to appreciate.
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Appeal 2007-0112
Application 09/892,790

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We would appreciate further input from the Examiner on precisely
how the Examiner sees the claims on appeal to be anticipated. Most
respectfully, we ask the Examiner to reproduce each of the claims on appeal
and after each claim limitation insert a reference to the drawing element and
specification (by column and lines) so that we can better appreciate how the
Examiner believes that all the limitations of the claims are described by
Nepela.
We call the Examiner’s attention to Ex parte Braeken, 54 USPQ2d
1110 (Bd. Pat. App. & Int. 1999), for a suggested format to be followed.
With respect to claim 21 on appeal, the Examiner may use the following
format:
21. A negative pressure air bearing slider (col. __, line __;
Fig. _, element _) having a negative pressure cavity (col. __,
line __; Fig. _, element _), comprising:

a body with a principal surface (col. __, line __; Fig. _,
element _) disposed to confront a recording surface (col. __,
line __; Fig. _, element _) of a recording medium (col. __, line
__; Fig. _, element _), said principal surface having a lead
portion (col. __, line __; Fig. _, element _) and a rear portion
(col. __, line __; Fig. _, element _), said lead portion being
spaced upstream from said rear portion relative to a rotational
direction (col. __, line __; Fig. _, element _) of any recording
medium confronted by said slider, said lead portion having a
front edge (col. __, line __; Fig. _, element _), said rear portion
having a rear edge (col. __, line __; Fig. _, element _), said
front edge and said rear edge together defining boundaries (col.
__, line __; Fig. _, element _) of said principal surface in a
longitudinal direction (col. __, line __; Fig. _, element _) of
said slider body; and

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a U-shaped air bearing platform (col. __, line __; Fig. _,
element _) defining a negative pressure cavity (col. __, line __;
Fig. _, element _) on said principal surface (col. __, line __;
Fig. _, element _), said U-shaped air bearing platform
comprising not more than two separate air bearing platforms
(col. __, line __; Fig. _, element _) each extending rearwardly
(col. __, line __; Fig. _, element _) toward said rear portion of
said principal surface and respectively terminating (col. __, line
__; Fig. _, element _) at a first rear termination (col. __, line __;
Fig. _, element _) and a second rear termination (col. __, line
__; Fig. _, element _), at least one of said not more than two
separate air bearing platforms including a side wall portion (col.
__, line __; Fig. _, element _);

at least one of said first rear termination and said second
rear termination not coinciding (col. __, line __; Fig. _, element
_) with said rear edge, and being disposed upstream (col. __,
line __; Fig. _, element _) of said rear edge relative to said
rotational direction (col. __, line __; Fig. _, element _) of said
recording medium.

The Examiner may use a similar format for the other four claims on
appeal. Based on the Examiner’s discussion in the answer, it may be that
certain elements of the claims on appeal are not numbered in the drawings.
The Examiner should feel free to reproduce a copy of any relevant figure of
the drawings and add numbers to elements not otherwise numbered and
include a copy of the drawing with the response to this remand.
We appreciate the fact that this remand is the second remand to the
Examiner, the first having to do with a recapture rejection which the
Examiner has withdrawn. However, where possible, a proper decision on
the merits is to be achieved and we are confident we will be able to better
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appreciate how Nepela is believed to anticipate the claims after we receive
what we expect will be valuable input from the Examiner.

C. Order
Upon consideration of the record on appeal, and for the reasons given,
it is
ORDERED that the appeal is remanded to the Examiner for
action not inconsistent with views expressed in this opinion.
FURTHER ORDERED that except as otherwise expressly
provided herein, the Board retains jurisdiction over the appeal.
FURTHER ORDERED that within one (1) month of the date
the Examiner enters a response to this remand, Appellants may file a paper
(not to exceed 10 pages) addressing the Examiner’s response.
FURTHER ORDERED that oral argument scheduled for
21 February 2007 is cancelled and will be reset in due course.
FURTHER ORDERED that, unless otherwise ordered, the
provisions of 37 C.F.R. § 1.136(a) (2006) are not applicable to further
proceedings involving the application on appeal.

McK/lp

cc (via First Class Mail):

Robert E. Bushnell, Esq.
1522 “K” Street, N.W., Suite 300
Washington, D.C. 20005

Tel: 202-408-9040
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