Ex Parte Agarwal et al

Patent Trial and Appeal Board

Jun 20, 2018

12133353 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/133,353 06/04/2008
75635 7590 06/22/2018
Hall Estill Attorneys at Law (Seagate - MKM)
100 North Broadway
Suite 2900
Oklahoma City, OK 73102
FIRST NAMED INVENTOR
Shashi Bhushan Agarwal
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
STL3805 9497
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
danderson@hallestill.com
okcipdocketing@hallestill.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHASHI BHUSHAN AGARWAL, RUAN TANG,
and JING GUI
Appeal2017-002003
Application 12/133,353 1
Technology Center 1700
Before A VEL YN M. ROSS, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 18-22. We have jurisdiction. 35 U.S.C. § 6(b).
Oral argument was held on June 14, 2018. 2 We REVERSE.
1 According to Appellants, the real party in interest is Seagate Technology
LLC. Appeal Br. 2.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2017-002003
Application 12/133,353
STATEMENT OF THE CASE3
Appellants describe the invention as relating "to the recording, storage
and reading of magnetic data" and " [a] method and system for cleaning
and/or burnishing an article." Spec. Abstract, 1:7-8. Claim 18, reproduced
below with emphasis added to a key recitation, is illustrative of the claimed
subject matter:
18. A burnishing head, comprising:
a slider body;
a burnishing pad supported by the slider body, the
burnishing pad defining a cutting island;
and
a heating element selectively operable to protrude the
cutting island from the slider body.
Appeal Br. 7 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 18-22 as failing to comply with the written
description requirement of 35 U.S.C. § 112. Ans. 2--4.
Rejection 2. Claims 18-22 under 35 U.S.C. § 102 as unpatentable
over Blachek et al., US 5,880,899 (Mar. 9, 1999) ("Blachek"). Id. at 4--5.
Claims 24 and 36 are also rejected in the Final Office Action, but we
do not address those claims here because they were cancelled prior to
appeal. Ans. 6.
3 In this Decision, we refer to the Final Office Action dated September 21,
2015 ("Final Act."), the Appeal Brief filed May 20, 2016 ("Appeal Br."), the
Examiner's Answer dated September 23, 2016 ("Ans."), and the Reply Brief
filed November 23, 2016 ("Reply Br.").
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Application 12/133,353
ANALYSIS
Rejection 1. The Examiner rejects claims 18-22 as failing to comply
with the written description requirement of 35 U.S.C. § 112. Ans. 2--4. In
particular, the Examiner finds that the Specification does not support that the
burnishing pad defines a cutting island that is selectively intruded or that the
heating element is selectively operable or activates to protrude the cutting
island from the slider body. Ans. 4.
Pursuant to the written description requirement of 35 U.S.C. § 112,
the disclosure of the application relied upon must "reasonably convey[] to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written description
inquiry is a question of fact. Id.
Appellants argue that the recitations at issue are adequately supported
by the Specification. In particular, Appellants argue that Figure 2 of the
Specification depicts a plurality of cutting edges 210 that form cutting
islands ( or cutting faces) that protrude a predetermined height in response to
activation of the heater 220. Appeal Br. 3. Appellants emphasize the
Specification at 6:20-7:2 which states:
The burnish head 200 can include a heating element 220 which can be
embedded in the body of the head in addition to the cutting edges 210
on the slider. The passive fly height of the burnish head 200 remains
the same as the conventional media burnish head 200. Upon,
activation, the heater 220 in the slider body will make a controlled
part of the slider (i.e., the burnish pad) protrude from the slider body.
The protrusion can be shaped so that it protrudes a
predetermined height of the cutting faces or islands.
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Application 12/133,353
Id. ( emphasis added). The Examiner responds by maintaining that the
Specification only teaches that the burnishing pad is protruded by the heater
and that parts 210 of Figure 2 are merely cutting edges rather than the parts
that are selectively protruded. Ans. 9-10.
We are sympathetic to the Examiner's position because Appellants'
Specification is not a model of clarity. The preponderance of the evidence,
however, supports Appellants' position. Based upon the Specification
passage quoted above, it is reasonably clear that the heater is activated (in
other words, the heating element is selectively operable in the parlance of
claim 18) to make a controlled part of the slider protrude from the slider
body. The parenthetical of the passage's penultimate sentence-"(i.e. [in
other words], the burnish pad)"-indicates that the controlled part of the
slider that is protruded is the burnish pad. The final sentence refers to "the
protrusion." The protrusion refers back to the portion that is protruded-the
burnish pad. Thus, the evidence supports the Examiner's analysis insofar as
the Examiner finds that the burnishing pad ( or at least a portion of the
burnish pad) is protruded by the heater. Ans. 7.
The remaining questions are ( 1) whether the Specification teaches that
a cutting island, as recited by claim 11, is defined by the burnishing pad and
(2) whether the heating element protrudes the cutting island from the slider
body. The only reference to "island" in the Specification is in the final
sentence of the passage quoted above: "The protrusion can be shaped so that
it protrudes a predetermined height of the cutting faces or islands." Spec.
7: 1-2. Based on this sentence, the "island" must be similar to a "cutting
face" because "cutting face" and "island" are joined by an "or" indicating
the two structures are functionally interchangeable in this context. Because
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Appeal2017-002003
Application 12/133,353
the island is similar to a cutting face, the best reading of the sentence is that
the island's purpose is also cutting. Because the purpose of the island is
cutting, the best reading of this passage, as a whole, is that the protrusion
(i.e., the burnishing pad) can be shaped so that a predetermined height of a
cutting island protrudes when the heater is activated. This reading is
consistent with the recitations of claim 18, and the preponderance of the
evidence thus suggests that the Specification would reasonably convey to
one of skill in the art that the inventor had possession of the claimed subject
matter as of the filing date. Accordingly, we do not sustain the Examiner's
written description rejection.
Rejection 2. The Examiner rejects claims 18-22 as unpatentable over
Blachek. Ans. 4--5. Appellants presented no substantive argument
regarding this rejection in the Appeal Brief. Appeal Br. 5-6 (not providing
any reasoning as to why the Examiner erred in finding that Blachek teaches
the recited burnishing pad defining a cutting island). The Examiner,
however, raises new argument in the Answer. Compare Ans. 12 ("The
referenced islands are readable at least on a part in which read element 231
is embedded, a part in which a write element 239 is embedded and a part to
which a heater 250 contacts.") with Final Act. 6-8. We consider Appellants'
argument in the Reply Brief because it is responsive to the Examiner's new
argument. 3 7 C.F .R. § 41.41 ( explaining that Board will not consider
argument "not raised in the appeal brief' or "not responsive to an argument
raised in the examiner's answer").
Appellants argue that Blachek does not teach "a heating element
selectively operable to protrude the cutting island from the slider body" as
recited in claim 18. Reply Br. 5. In particular, Appellants argue that the
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Appeal2017-002003
Application 12/133,353
cutting of Blachek is performed with the chamfered, lower right-hand comer
of the apparatus depicted in Figure 2 (reproduced below) that cuts raised
irregularity 245. Id. at 6. Appellants argue that this chamfer is not an island.
Id.
Figure 2 of Blachek depicts a side cutaway diagram of a MR
(magnetoresistive) head and a magnetic data storage disk. Blachek 3:4--5.
Figure 2 depicts, for example, read/playback head 290, slider 235, surface
244 of magnetic disk 251, raised irregularity 245, and heating element 250.
Id. 4:6-5:5.
Appellants' argument is sufficient to identify error in the Examiner's
rejection. As explained above, the Specification indicates that a cutting
island in the context of claim 18 must be a protrusion that, upon activation of
the heater, protrudes from the slider body. Furthermore, the plain or
dictionary meaning of island, in this context, is "something resembling an
island esp. [especially] in its isolated or surrounded position" where the
"island" referred to in this definition is a geographic island, i.e., "a tract of
land surrounded by water and smaller than a continent." Merriam-Webster's
Collegiate Dictionary 663 (Merriam-Webster, Inc., 11th ed. 2007). Thus, the
recited "cutting island" is a structure that may be attached to other structure
(e.g., a slider, the remainder of the burnish pad, or the remainder of a head)
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Application 12/133,353
on one side (much like a geographic island is attached to the ocean floor on
one side) but must otherwise be isolated from another structure. For
example, an island could be a square protrusion comprising four cutting
faces (and having four cutting edges) as depicted in Appellants' Figure 2.
We agree with Appellants that the head 290 of Blachek depicted in
Figure 2 most likely cuts irregularities via the chamfer on the lower right of
head 290. As depicted in Figure 2, the chamfer is not an island because it
appears to be connected to the remainder of the head at least the top and left
sides. Thus, the chamfer is not a "cutting island" as that term has been
construed above. Accordingly, the Examiner has not adequately explained,
on the present record, how Blachek teaches "a heating element selectively
operable to protrude the cutting island from the slider body" as recited in
claim 18. We therefore do not sustain the Examiner's rejection of this claim.
Because claims 19-22 each depend from claim 18, we also do not sustain
the Examiner's rejection of those claims.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 18-22.
REVERSED
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