Ex Parte Bunch et al

Board of Patent Appeals and Interferences

Nov 5, 2010

11289930 (B.P.A.I. Nov. 5, 2010)

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.
11/289,930 11/30/2005 Richard Dale Bunch HSJ920050002US1 6910
45552 7590 11/05/2010
HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
11/05/2010 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 RICHARD DALE BUNCH, LINDEN JAMES CRAWFORTH,
EDUARDO PADILLA, and XIAO Z. WU
____________

Appeal 2009-007701
Application 11/289,930
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and MICHAEL
W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007701
Application 11/289,930

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STATEMENT OF THE CASE
Richard Dale Bunch et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Beaucage ’9323 (US Pub. No.
2005/0059323 A1; pub. Mar. 17, 2005) in view of Barr (US Patent No.
5,735,036; issued Apr. 7, 1998) and Beaucage ’1946 (US Pub. No.
2005/0191946 A1; pub. Sep. 1, 2005). We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a method of evaluating the quality of a
lapping plate.
Claim 1, sole independent claim, reproduced below, is representative
of the subject matter on appeal.
1. A method of evaluating the quality of
a lapping plate, the method comprising:
magnetically shielding at least one side of a
read sensor disposed within a slider and shielding
from particles associated with said lapping plate;
receiving information from said read sensor
that indicates the quality of a lapping plate while
the lapping plate is being used to lap said slider;
and
using a quality determiner configured to
process the information to evaluate the quality of
the lapping plate while the lapping plate is being
used to lap the slider and which is further
configured to determine when the quality of the
lapping plate has degraded beyond a threshold
value.

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DISCUSSION
Issue
The dispositive issue in this appeal is:
Whether a person having ordinary skill in the art would have been led
to combine the teachings of Beaucage ’9323, Barr, and Beaucage ’1946 in
such a way as to result in the claimed method of evaluating the quality of a
lapping plate while the lapping plate is being used to lap a slider.
Analysis
The Examiner found that Beaucage ’9323 teaches the broad concept
of receiving information concerning “the quality of a lapping plate” while
the lapping plate is being used to lap a workpiece and analyzing this
information to determine whether the lapping plate “has degraded beyond a
threshold value.” Ans. 3. The Examiner acknowledges the workpiece is not
a slider, but a specimen of slider material. Id. The Examiner found Barr
teaches a slider having magnetic shielding. Ans. 4. Thus, the Examiner
pairs the teachings of Beaucage ’9323 and Barr in order to conclude that it
would have been obvious to replace Beaucage ’9323’s specimen with an
actual slider having magnetic shielding. Id. The Examiner further
acknowledges Beaucage ’9323 fails to teach an “in-situ technique of
receiving information from a read sensor disposed within a slider during the
lapping process and using a quality determiner to determine from the
information received” whether to continue to lap. Id. Thus, the Examiner
found Beaucage ’1946 teaches this technique. Id. The Examiner then
proposes a person having ordinary skill in the art could have applied the “in-
situ technique of receiving information . . . from a read sensor disposed
within a slider during a lapping process and using a quality determiner, as
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taught by Beaucage et al. (’946), in the same way to the method of Beaucage
et al. (’323), and the results would have been predictable.” Id. When
responding to Appellants, the Examiner posited that “[t]he motivation being
that by using an in-situ technique productivity would be increased and the
method would provide finished workpieces of higher quality because worn
lapping plates would be immediately determined and discarded therefore the
examiner believes the rejection is proper and thus maintained.” Ans. 12.
Appellants replied with the argument that the Examiner’s reasons for
combining Beaucage ’9323 and Beaucage ’1946 are based on impermissible
hindsight. Reply Br. 5.
The Examiner’s proposed combination appears to be based on
impermissible hindsight. While Beaucage ’9323 provides a teaching of a
post-manufacture, pre-use quality control method for evaluating a lapping
plate, it is not evaluating the lapping plate while the plate is lapping a slider.
While Beaucage ’1946 provides a teaching of in-situ monitoring of the
lapping process and the status of the slider, i.e., is the slider sufficiently
lapped, it is not monitoring the lapping plate in-situ, but the slider. The
Examiner makes no finding or reasoning to establish that it would have been
obvious to monitor the lapping plate during the process of lapping a slider as
called for in the claim. Instead, the Examiner surmises a person having
ordinary skill in the art could have applied the in-situ technique taught in
Beaucage ’1946 “in the same way” to Beaucage ’9323 and “the results
would have been predictable.” Ans. 4. However, such a combination would
appear to suggest incorporating into the lapping plate monitoring process of
Beaucage ‘9323 a technique of monitoring the slider because that is the
technique taught in Beaucage ’1946, and not monitoring the lapping plate in-
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situ. Further, the Examiner’s alternative “motivation” to maintain the
rejection, higher quality workpieces and immediate disposition of worn
lapping plates, is what Appellants disclose in their Specification, but
couched differently. Compare Spec. 6 (fast feedback to the lapping process
and reduction in sensor damage) to Ans. 12. As such, we find the
Examiner’s proposed combination is not borne from any findings within the
prior art of record or reasoning with some rational underpinnings, but
instead is based on impermissible hindsight. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of
obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand . . . A rejection based on section 103
clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art.”).

CONCLUSION
A person having ordinary skill in the art would not have been lead to
combine the teachings of Beaucage ’9323, Barr, and Beaucage ’1946 in such
a way as to result in the claimed method of evaluating the quality of a
lapping plate while the lapping plate is being used to lap a slider.

DECISION
The decision of the Examiner to reject claims 1-19 is reversed.

REVERSED

Appeal 2009-007701
Application 11/289,930

6
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HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076