Ex Parte Agarwal et al

Patent Trial and Appeal Board

Jul 28, 2014

12133353 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHASHI BHUSHAN AGARWAL, HUAN TANG,
and JING GUI1
____________

Appeal 2013-000512
Application 12/133,353
Technology Center 1700
____________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 6, and 18-35. We have jurisdiction
pursuant to 35 U.S.C. § 6(b). We affirm.

BACKGROUND

Appellants’ claimed invention “relates to the recording, storage and
reading of magnetic data” (Spec. 1:7-8) and is directed to “[a] method and
system for cleaning and/or burnishing an article” (Abstract).

1 According to the Appeal Brief, the Real Party In Interest is Seagate
Technology LLC. App. Br. 1.
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Application 12/133,353

2
Claims 1, 18, and 26 are the independent claims on appeal and are
reproduced below from the Claims Appendix:
1. A method of operating a burnishing apparatus, the method
comprising:
obtaining a burnishing object configured to operably maintain a
nominal spatial separation from a work article;
activating a heating element in the burnishing object to protrude
a cutting edge portion of the burnishing object to a
preselected protrusion height, thereby reducing the nominal
spatial separation between the burnishing object and the
work article; and
after the activating a heating element step, radially translating
the burnishing object relative to the work article to abrade a
particle from the work article by making initial contacting
engagement by the cutting edge portion against the particle
while the burnishing object is being radially translated
relative to the work article.
18. A burnishing head, comprising:
a slider having a body with one side thereof sized in terms of a
longitudinally directed length of the body and a laterally directed
width of the body, the slider defining a fluid bearing surface
spanning at least a portion of the side;
a burnishing pad supported by the slider and sized to span less than
the width of the body; and
a heating element selectively operable to protrude the burnishing
pad from the slider.
26. A burnishing device, comprising:
a burnishing head, comprising:
a slider having a body with one side thereof sized in terms of a
longitudinally directed length of the body and a laterally directed
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3
width of the body, the slider defining a fluid bearing surface
spanning at least a portion of the side;
a burnishing pad supported by the slider and sized to span less than
the width of the body; and
a heating element selectively operable to protrude the burnishing pad
from the slider; and
control logic stored in computer readable memory and operably
executing processing instructions to selectively actuate the
heating element to protrude the burnishing pad from the slider,
and to radially translate the burnishing head with respect to a
work article so that the protruded burnishing pad abrades a
particle from the work article by making initial contacting
engagement with the particle while the burnishing object is
radially translating relative to the work article.
The Examiner maintains, and Appellants appeal, the rejection of:
1. Claims 1, 6, and 18-35 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. App.
Br. 4-21.
2. Claims 1, 6, and 18-35 as unpatentable under 35 U.S.C. § 102 over
Blachek (US 5,880,899, issued Mar. 9, 1999). App. Br. 22-28.

OPINION
Written Description – Claim 1
Independent claim 1 requires, inter alia, “obtaining a burnishing
object configured to operably maintain a nominal spatial separation from a
work article.” App. Br. 30 (Claims Appendix) (emphasis added). This
limitation was introduced into the claim by amendment submitted on March
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Application 12/133,353

4
9, 2011, as part of a Request for Continued Examination. See Response
filed March 9, 2011.
The Examiner finds that the “original disclosure is silent regarding
any . . . ‘nominal spatial separation.’” Final Action dated November 23,
2011 (“Final Act.”), at 3.
Appellants argue that the Examiner failed to establish a prima facie
case of a failure to comply with the written description requirement, and
improperly required the claimed subject matter to be described literally to
satisfy the written description requirement. App. Br. 4. Appellants do not
contest that the phrase “nominal spatial separation” does not appear in the
Specification. Instead, Appellants contend that “[t]o the skilled artisan, the
ordinary meaning of the term ‘nominal’ in the context of the claim language
as a whole is ‘theoretical.’” Id. at 8 (citing http://dictionary.reference.com/
browse/nominal). Appellants further contend that “the skilled artisan having
read the specification readily ascertains that a slider (burnishing object) is
designed . . . to fly over the disk at a predetermined (theoretical) fly height.”
Id.
According to Appellants, “[t]he term ‘stable’ in the specification
discloses that steady state after the . . . head has settled to the predetermined
(theoretical) fly height.” Id. at 9. Additionally, “[t]he skilled artisan having
read the specification also readily ascertains that the head flies at the
predetermined (theoretical) fly height when the heater is deactivated – that is
defined by the specification as the passive fly height.” Id. Therefore,
Appellants argue that “the skilled artisan finds written description support
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for the claim term ‘nominal’ in the specification’s disclosure of the fly
height associated with being a stable and passive state.” Id.; see also id. at
7-8 (stable fly height) (citing Spec. 6:10-19)) and id. at 8 (passive fly height)
(citing Spec. 6:20-7:9)).
In response, the Examiner finds that Appellants’ arguments are not
persuasive because “conventionally ‘nominal’ does not have the same
meaning as ‘stable’ or ‘passive,’” and Appellants “presented no evidence
that the referenced terms have a special meaning in the art.” Ans. 5.
In the Reply Brief, Appellants contend the Examiner has
mischaracterized Appellants’ arguments and failed to
substantiate any objective evidence whatsoever (much less a
preponderance of the evidence) as to why the skilled artisan
would not recognize a description of the nominal spatial
separation feature of the rejected claim by the disclosure of the
‘stable fly height’ and the ‘passive fly height’ providing a
theoretical steady state value for the fly height.
Reply Br. 6.
We are not persuaded by the Appellants’ arguments.
“Adequate written description means that, in the specification, the
applicant must ‘convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (citing
VasCath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.1991)).
“When no such description can be found in the specification, the only thing
the PTO can reasonably be expected to do is to point out its nonexistence.”
Id. (citing In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996)). “In the context
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of the written description requirement, an adequate prima facie case must
therefore sufficiently explain to the applicant what, in the examiner's view,
is missing from the written description.” Id. The burden then shifts to the
Appellants to demonstrate where adequate written description can be found.
Id. at 1371.
With regard to claim 1, we find that the Examiner sufficiently
explained that the requirement of “nominal spatial separation” was missing
from the written description, thereby establishing a prima facie case for a
rejection due to lack of written description. See Final Act. 2-3 and 6-7. The
burden thus falls upon Appellants to demonstrate where adequate written
description can be found, or to provide persuasive evidence demonstrating
where “nominal spatial separation” is described in the Specification.
We appreciate that literal support for the claimed subject matter is not
necessary. Nevertheless, Appellants have not demonstrated that the original
disclosure would have reasonably conveyed to one skilled in the relevant art
that the inventors had possession of the newly claimed subject matter
including the disputed claim limitations. Appellants’ argument that written
description support exists is based on statements about how a person of
ordinary skill in the art would interpret certain clauses in the Specification,
and on a dictionary definition of “nominal” as meaning “theoretical.” App.
Br. 7-9. Appellants, however, offer no persuasive evidence supporting their
conclusions that a person of ordinary skill in the art would understand the
terms stable and passive in the Specification to have certain meanings, or
that a person of ordinary skill in the art would otherwise link these terms in
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the original Specification (stable and passive) with the requirement in
amended claim 1 (nominal/theoretical).2 Furthermore, we agree with the
Examiner that “conventionally ‘nominal’ does not have the same meaning as
‘stable’ or ‘passive,’” and Appellants “presented no evidence that the
referenced terms have a special meaning in the art.” Ans. 5.
Accordingly, we find that the Appellants have failed to provide
persuasive evidence that a person of ordinary skill in the art, in the context
of the claimed invention, would indeed recognize “nominal” to mean
theoretical, and would associate that requirement of the claims with the
disclosure of stable and passive fly heights in the Specification.
For these reasons, we affirm the Examiner’s rejection of claim 1 for
lack of written description. As claims 6, 34, and 35 are dependent on claim
1, these claims also include the “nominal spatial separation” requirement.
Therefore, for the same reasons, we also affirm the rejection of claims 6, 34,
and 35 for lack of written description.3

2 Instead, Appellants improperly contend that “[t]he Office has not
substantiated any evidence to the contrary; not shown any reason why the
skilled artisan would not recognize the notoriously apparent support that
Appellant has pointed to.” App. Br. 13.
3 In view of our affirmance of the Examiner’s rejection of claims 1, 6, 34,
and 35 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement with regard to “nominal spatial separation,”
we do not address the additional bases for the Examiner’s rejection of claims
1, 6, 34, and 35 under 35 U.S.C. § 112, first paragraph.
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Written Description – Claims 18 and 26
Independent claims 18 and 26 require, inter alia, “a slider having a
body with one side thereof sized in terms of a longitudinally directed length
of the body and a laterally directed width of the body, the slider defining a
fluid bearing surface spanning at least a portion of the side.” App. Br. 31,
32 (emphasis added). These claims were both added by amendment on
March 9, 2011, as part of a Request for Continued Examination. See
Response filed March 9, 2011.
The Examiner finds that the “original disclosure fails to support a
fluid bearing surface spanning at least a portion of the side.” Final Act. 4.
Appellants argue that support for this limitation can be found in
Figure 2 and the corresponding descriptions of that figure in the
Specification. App. Br. 16-17. Specifically, Appellants contend that Figure
2 depicts a portion of a slider body and that “the skilled artisan readily
ascertains that the slider body defines a fluid bearing surface, sometimes
referred to as an air bearing surface, against which the fluid currents impinge
with a force sufficient to fly the head over the disk surface.” Id. at 17.
The Appellants further contend that “[t]he Office has not substantiated any
evidence to the contrary; not shown any reason the skilled artisan would not
recognize the notoriously apparent support that Appellant[s] ha[ve] pointed
to.” Id. at 18.
In response, the Examiner finds that “[n]either the figure, nor the
specification show or describe any dimensions or shape of the head 200.”
Ans. 21. Nor is there any description of the sides of a slider, including a
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00512
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Appeal 2013-000512
Application 12/133,353

10
Appellants have not directed us to any evidence supporting the
arguments that a person of ordinary skill in the art would “readily ascertain[]
that the slider body defines a fluid bearing surface, sometimes referred to as
an air bearing surface.” App. Br. 17. Absent any such evidentiary support,
we find that Appellants have failed to meet their burden of demonstrating
that there is adequate written description support for the requirement in
claims 18 and 26 of a slider defining a fluid bearing surface spanning at least
a portion of the side.
For these reasons, we affirm the Examiner’s rejection of claims 18
and 26 for lack of written description. As claims 19-25 and 27-33 are
dependent on claims 18 and 26, respectively, these claims also include the
“fluid bearing surface” requirement. Therefore, we affirm the rejection of
claims 19-25 and 27-33 for lack of written description for the same reasons
discussed above.4

Anticipation
In response to the Examiner’s conclusion that claims 1, 6, and 18-35
are anticipated by Blachek (see Final Act. 6 (citing the “entire document,
especially Figures 1, 2, 4 and the related description and description at

4 In view of our affirmance of the Examiner’s rejection of claims 18 and 26
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement with regard to “fluid bearing surface,” we do not
address the additional bases for the Examiner’s rejection of claims 18-33
under 35 U.S.C. § 112, first paragraph.
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00512
/133,353
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Appeal 2013-000512
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12
(step 408) or activating a heating element (step 409) to protrude the
burnishing head toward the disk such that the head is brought into contact
with an irregularity to abrasively remove it. Id. at col. 5, ll. 49-58. Blachek
also teaches that “[i]f desired, the operation of the sequence 400 may be
enhanced in a number of ways. For example, during task 408
when the read bias current is boosted, the head 290 may be directed to
increase its burnishing action by shifting off-track, moving from side-to-
side.” Id. at col. 6, ll. 29-34.
Independent claim 1 requires “radially translating the burnishing
object relative to the work article to abrade a particle from the work article
by making initial contacting engagement by the cutting edge portion against
the particle while the burnishing object is being radially translated relative to
the work article.” Appellants characterize this requirement as “radially
translating the burnishing object when making the initial contacting
engagement with the particle being burnished.” App. Br. 22. Appellants
contend that Blachek fails to disclose this requirement because Blachek
teaches “making the initial contacting engagement with the particle, when
the head is not radially translating.” Id. at 23.
Appellants acknowledge that Blachek discloses that the burnishing
action may be “increased” by moving the head side-to-side, i.e., radially, but
argue that this only occurs “only after the head has already initially
contacted the particle being burnished.” Id. at 24.
It is the Examiner’s position that Blachek describes one embodiment
where “the head is translated (moved side-to-side), when the heater (read
Appeal 2013-000512
Application 12/133,353

13
bias) is activated/boosted [such that] the initial contact would be while the
head is moved side-to side (radial translating).” Ans. 33.
In the Reply Brief, Appellants maintain that Blachek teaches in step
406 that the head is “translationally fixed in a position over the track where
the asperity to be burnished is located,” and initial contact is made while the
head is “translationally fixed” after the read bias current in increased in step
408. Reply Br. 12-13. Appellants argue that a person of ordinary skill in
the art reading Blachek would understand that “boosting” the current
requires an additional step that occurs after the current has been increased in
step 408 and the initial contact has been made. Id.
The preponderance of evidence supports the Examiner’s position that
claim 1 is anticipated by Blachek. Blachek depicts a burnishing method,
depicted as sequence 400 in Figure 4, but expressly discloses that Figure 4 is
only “one example” of the claimed method. Blachek, col. 5, ll. 19-20.
Blachek further teaches that sequence 400 “may be enhanced in a number of
ways.” Id. at col. 6, ll. 29-30. One such enhancement includes increasing
burnishing action of the head by “shifting [the head] off-track, moving from
side-to-side.” Id. at col. 6, ll. 32-33. Appellants do not contest that this
shifting and moving describes radial movement. According to Blachek, this
radial movement occurs “during task 408” (id. at col. 6, l. 30), which is the
step resulting in initial contact. Therefore, we agree with the Examiner that
that Blachek, at column 6, lines 29-33, describes one embodiment where
“the head is translated (moved side-to-side), when the heater (read bias) is
Appeal 2013-000512
Application 12/133,353

14
activated/boosted [such that] the initial contact would be while the head is
moved side-to side (radial translating).” Ans. 33.
We are not persuaded by the Appellants’ argument that Blachek
discloses “boosting” the current only after, and separate from, the time when
the current is initially raised in step 408. Blachek describes this feature as an
“enhancement” that can take place “during” step 408, not as an additional
step, as Appellants argue.
Therefore, the preponderance of the evidence supports the Examiner’s
finding that Blachek discloses the requirement in claim 1 of “radially
translating the burnishing object relative to the work article to abrade a
particle from the work article by making initial contacting engagement by
the cutting edge portion against the particle while the burnishing object is
being radially translated relative to the work article.” As Appellants have
not raised any other arguments distinguishing claim 1 over Blachek, we
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102.
Additionally, because Appellants have not separately argued the
patentability of dependent claims 6, 34, and 35 in view of the Examiner’s §
102 rejection over Blachek, we sustain the Examiner’s rejection of claims 6,
34, and 35 under 35 U.S.C. § 102.

Claims 18 and 26
Claims 18 and 26 each require that the claimed burnishing head has a
slider and “a burnishing pad supported by the slider and sized to span less
than the width of the body.”
App
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00512
/133,353
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Appeal 2013-000512
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16
pads (since all of them would contact and burnish the
irregularity 245) and all of them shown as sized to span
less than the width of the body of the slider. All these
pads are shown as capable of being heated by the element
231 (when the read bias current is busted) and by the
heater 250 (when the heater is activated).
Ans. 34. As a result, the Examiner concludes that Blachek does teach a
burnishing pad that spans less than the width of the body of the slider. Id. at
35.
In the Reply Brief, Appellants contend that “neither Blachek’s FIG. 2
nor anything else in Blachek discloses the burnishing edge (lower right
chamfered comer) spanning less than the width of Blachek’s head.” Reply
Br. 14. Appellants maintain that “the width of Blachek’s head in FIG. 2
corresponds to the width of the data track it transfers data with, which
extends along a plane into the surface of the two-dimensional depiction,”
and that the Examiner’s conclusion regarding Figure 2 is “contrary to what
the skilled artisan readily ascertains from the clear disclosure of Blachek’s
FIG. 2.” Id.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of anticipation. See In re Warner, 379 F.2d 1011,
1016 (CCPA 1967). The Examiner, however, has not offered any factual
support for the conclusion that Figure 2 in Blachek depicts a slider having a
burnishing pad spanning less than the width of the slider body. Specifically,
the Examiner has not adequately described the orientation of the head in
Figure 2 to support the conclusion that any of the parts “which are readable
on the claimed pads” span less than the width of the body of the slider. Nor
Appeal 2013-000512
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17
has the Examiner offered any facts disputing Appellants contention that the
“width” in Figure 2 of Blacheck is orthogonal to the surface of the page.
Furthermore, we agree with Appellants that there is nothing in Blachek
suggesting that any of the parts the Examiner points to span less than the full
width of the body.
In view of the lack of sufficient factual support for the conclusion that
Figure 2 in Blachek depicts a slider having a burnishing pad spanning less
than the width of the slider body, we reverse the Examiner’s rejection of
claims 18 and 26 under 35 U.S.C. § 102 in view of Blachek. We likewise
reverse the rejections of dependent claims 19-25 and 27-33.

CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 18-
33 under 35 U.S.C. § 102, but affirm the rejection of claims 1, 6, 34, and 35
under 35 U.S.C. § 102, and affirm the rejection of claims 1, 6, and 18-35
under 35 U.S.C. § 112, first paragraph, for lack of adequate written
description.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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