Ex Parte Biskeborn et al

Board of Patent Appeals and Interferences

Jan 27, 2012

10769271 (B.P.A.I. Jan. 27, 2012)

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.
10/769,271 01/30/2004 Robert Glenn Biskeborn IBM1P039/SJ0920030031US1 7862
50548 7590 01/30/2012
ZILKA-KOTAB, PC- IBM
P.O. BOX 721120
SAN JOSE, CA 95172-1120
EXAMINER
RENNER, CRAIG A
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
01/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT GLENN BISKEBORN and
JAMES HOWARD EATON
________________

Appeal 2009-009960
Application 10/769,271
Technology Center 2600
________________

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

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants invoke our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 2, 4, 6, 9-14, 18, and 22.1 We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appealed claims 1 and 22 are exemplary and read:
1. A tape head, comprising:
first and second beams each having a tape bearing surface, a face, a
recess in the tape bearing surface thereof, the faces of the beams
facing towards each other, wherein at least central regions of the faces
are spaced apart;
a first chip being positioned in the recess of the first beam; and
a second chip being positioned in the recess of the second beam;
wherein each chip has circuitry selected from a group consisting of
read elements, write elements, and combinations thereof, at least one
of the chips having read elements;
wherein a tape bearing surface of each chip is generally aligned with
the tape bearing surface of the associated beam;
wherein an end of each chip is generally aligned with the face of the
associated beam.
22. A tape head, comprising:
first and second beams each having a tape bearing surface, a face, a
recess in the tape bearing surface thereof, the faces of the beams
facing away from each other;
a first chip being positioned in the recess of the first beam; and
a second chip being positioned in the recess of the second beam;
wherein each chip has circuitry selected from a group consisting of
read elements, write elements, and combinations thereof;
wherein a tape bearing surface of each chip is generally aligned with
the tape bearing surface of the associated beam;

1 Claims 3, 5, 7, 8, 15-17, 19-21, 23, and 24 have been withdrawn.
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wherein an end of each chip is generally aligned with the face of the
associated beam.
Rejections
A. The Examiner under 35 U.S.C. § 102 rejected:
1. Claims 1, 2, 4, 6, 9, 12-14, 18, and 22 as anticipated by Sand (US
3,610,839; Oct. 5, 1971) (Final Action 4-7);
2. Claims 1, 4, 6, 13, and 22 as anticipated by Momata (US 4,695,909;
Sep. 22, 1987) (Final Action 7-10); and
3. Claim 22 as anticipated by Rumpler (US 6,577,470 B1; June 10,
2003) (Final Action 10-11).
B. The Examiner rejected claims 1, 2, 4, and 9-11, under 35 U.S.C. §
103(a), as obvious over Rumpler and Fields (US 4,685,005; Aug. 4, 1987)
(Final Action 11-13).
Appellants’ Contentions
1. Appellants pivotally contend that Sand is a deficient anticipation
reference because “chip” as recited in independent claims 1, 13, and
22 is not explicitly or inherently taught in the reference (App. Br. 12,
14; Reply Br. 3, 8).
2. Appellants pivotally contend that Momata is a deficient anticipation
reference because “chip” as recited in independent claims 1, 13, and
22 is not explicitly or inherently taught in the reference (App. Br. 15;
Reply Br. 10).
3. Appellants also contend that Rumpler is a deficient anticipation
reference because claim 22 recites structures not explicitly or
inherently taught in the reference, namely (i) first and second beams
having faces that face away from each other, and (ii) chips having
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tape bearing surfaces generally aligned with beam tape bearing
surfaces (App. Br. 16; Reply Br. 11-12).
4. Appellants contend the Examiner erred in rejecting claim 1 under §
103(a) because, alone or in combination, Rumpler and Fields fail to
teach or fairly suggest the recited chip tape bearing surface being
generally aligned with an associated beam tape bearing surface (App.
Br. 17; Reply Br. 15-16).

ANALYSIS
Anticipation Rejection over Sand
Appellants group rejected claims 1, 2, 4, 9, 12, and 22, and argue the
Examiner erred in rejecting independent claims 1 and 22 (App. Br. 11-13)
because Sand fails to teach the recited “chip” (see Appellants’ contention 1
supra). Specifically, Appellants contend that “one skilled in the art reading
the claims would interpret the term ‘chip’ as referring to an integrated circuit
or a small wafer of semiconductor material that forms the base for an
integrated circuit, as opposed to ‘a small piece’ as proposed by the
Examiner” (App. Br. 12). Further, Appellants contend that “[c]hips by any
definition are simply not found in Sand” (id.).
The Examiner does not dispute that Sand is silent concerning
disclosing any structure labeled a “chip.” However, the Examiner responds
that “the term chip has an established meaning in the art that does not
necessarily mean an integrated circuit or a small wafer of semiconductor
material that forms the base for an integrated circuit” (Ans. 13). The
Examiner references Yasuda (US 4,713,709; Dec. 15, 1987) as extrinsic
evidence and states, without identification to any disclosure in the reference,
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that Yasuda “supports the . . . interpretation of the term chip to mean a small
piece in the same field of endeavor and not an integrated circuit or a small
wafer of semiconductor material that forms the base for an integrated
circuit” (id.). We find the Examiner’s reasoning and conclusion for
construing the recited “chip” to be problematic.
Claim examination requires application of “the broadest reasonable
meaning of the [claim] words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see also Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“[W]here there
are several common meanings for a claim term, the patent disclosure serves
to point away from the improper meanings and toward the proper
meaning.”).
The chips covered by both of claims 1 and 22 are recited as having
“circuitry.” The Specification, we find, discloses that chip circuitry is
“formed by traditional thin film processing” on a thin film wafer (Spec.
10:1-4; see App. Br. 15). Based on this record and the direction from our
reviewing court, we disagree with the Examiner’s interpretation that the
recited chip is “not an integrated circuit or a small wafer of semiconductor
material that forms the base for an integrated circuit” (Ans. 13).
Accordingly, we agree with Appellants that a skilled artisan would interpret
the recited chip as an integrated circuit or a small wafer of semiconductor
material that forms the base for an integrated circuit, and, therefore, Sand is
deficient in anticipating claims 1 and 22.
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Appellants also group rejected claims 6, 13, 14, and 18, and argue,
inter alia, that the Examiner erred in rejecting independent claim 13 (App.
Br. 13-14) because Sand fails to teach the recited “chip” (see Appellants’
contention 1 supra). Appellants’ arguments are addressed supra and for the
reasons indicated supra we agree with Appellants’ contention that Sand is
deficient in anticipating claim 13.
For the foregoing reasons, we do not sustain the rejection of claims 1,
13, and 22 as anticipated by Sand, and we also do not sustain the rejection of
claims 2, 4, 6, 9, 12, 14, and 18 that are not separately argued.
Anticipation Rejection over Momata
Appellants group rejected claims 1, 4, 6, 13, and 22, and argue the
Examiner erred in rejecting independent claims 1, 13, and 22 (App. Br. 15)
because Momata fails to teach the recited “chip” (see Appellants’ contention
2 supra).
As with Sand, Appellants contend that “[c]hips are not found in
Momata” (App. Br. 15) and the Examiner does not dispute that Momata is
silent concerning disclosing any structure labeled a “chip” (see Ans. 14-15).
Appellants substantively assert the same arguments for why Momata is a
deficient anticipatory reference as are addressed supra for Sand and for the
same reasons indicated supra we agree with Appellants’ contention that
Momata also is deficient in anticipating claims 1, 13, and 22.
For the foregoing reasons, we do not sustain the rejection of claims 1,
13, and 22 as anticipated by Momata, and we also do not sustain the
rejection of claims 4 and 6.
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Anticipation Rejection over Rumpler
Appellants argue (App. Br. 16; Reply Br. 11-12) that the Examiner
erred in rejecting claim 22 because Rumpler fails to teach a recited first and
second beams having faces that face away from each other, and also recited
“chip[s]” having tape bearing surfaces generally aligned with beam tape
bearing surfaces (see Appellants’ contention 3 supra). Appellants, inter
alia, assert as conclusory attorney argument that:
The Examiner chose a broad interpretation of “aligned” to mean
brought into correct relative position thereto. However, this
broad interpretation does not make sense when read into the
claim: “wherein an end of each chip is generally aligned with
the face of the associated beam.” If the end of each chip were
generally brought into correct relative position with the face of
the associated beam, the invention would still not properly
function because the end of the chip must be aligned with the
face of the beam, sharing a common plane. Therefore, the
Examiner’s definition of “aligned” would render the invention
unsatisfactory for its intended purpose.
(App. Br. 16.)
The Examiner responds and identifies finding:
Rumpler does teach that the faces of the beams (110 and 160)
face away from each other, wherein an end of each chip (102 or
152) is generally aligned with the face of the associated beam
(as shown in Figures 2A and 3A, for instance). Note that the
term “aligned” does not necessarily import the limitation
“sharing the same plane,” but may be broadly construed to
merely mean brought into correct relative position thereto.
(Ans. 16.) Based on our review of the record, we agree with and adopt the
Examiner’s findings as identified above.
In part, we note that despite Appellants’ argument, claim 22 neither
recites “sharing a common plane” nor is such a limitation a part of the claim.
See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
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2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.”). We also
note that claim 22 broadly recites first and second beams having faces, but
does not recite identifications as to what beam faces are intended to be
identified or excluded. Accordingly, we agree with the Examiner that
Rumpler teaches the disputed claim 22 limitations.
We sustain the Examiner’s rejection of claim 22 as being anticipated
by Rumpler.
Obviousness Rejection over Rumpler and Fields
Appellants group rejected claims 1, 2, 4, and 9-11, and argue the
Examiner erred in rejecting independent claim 1 (App. Br. 17-18) because
Rumpler fails to teach or fairly suggest the claim 1 recited “wherein a tape
bearing surface of each chip is generally aligned with the tape bearing
surface of the associated beam” (see Appellants’ contention 4 supra).
Appellants also assert that Fields is relied on by the Examiner to teach that
read and write elements were known in the art, which does not overcome the
contended deficiency of Rumpler (id.).
The Examiner substantively relies on the response addressed supra for
why Rumpler anticipates claim 22 (Ans. 16), and we continue to agree with
the Examiner’s findings from Rumpler. Accordingly, we do not find
Rumpler deficient, and we, therefore, sustain the rejection of argued claim
1.2 Further, we sustain the rejection of claims 2, 4, and 9-11 that are not
separately argued.

2 It is noted that obviousness and anticipation rejections of independent
claims 1 and 22 over Rumpler have been affirmed. Because of this record,
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DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 9-11, and 22 is
affirmed, and the Examiner’s decision rejecting claims 6, 12-14, and 18 is
reversed.
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)(v).

AFFIRMED-IN-PART

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the Examiner’s attention is directed to the fact that independent claim 13
which recites similar limitations has not been rejected over Rumpler.