Ex Parte Chopra et al

Patent Trial and Appeal Board

Mar 25, 2014

11701038 (P.T.A.B. Mar. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MANOJ CHOPRA, ERIC W. FLINT,
JEFFREY P. GUNDER, VICTOR H. PEREZ, and
DOUG WILLIAMS
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Appeal 2011-008512
Application 11/701,038
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
JOHNNY A. KUMAR, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008512
Application 11/701,038

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to controlling bond pad migration in a direct
access storage device. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A slider assembly used in a direct access storage device,
said slider comprising:
a slider body comprising a substrate and a magnetic head;
a plurality of electrically conductive bond pads formed
on said slider body and extending from said slider body by a
specified dimension, said bond pads operable for electrically
coupling said magnetic head to a plurality of data transmission
lines wherein said bond pads protrude from said slider body a
distance in a range of four to six microns and wherein a
distance between adjacent bond pads is less than approximately
four microns; and
a rigid and electrically non-conductive material that
surrounds and abuts said bond pads, said non-conductive
material grown between and over said bond pads and then
partially removed until said bond pads are exposed, wherein
said specified dimension of said bond pads is maintained and
said material and said bond pads form a planar surface said
rigid and electrically non-conductive material configured to
decrease smearing of said bond pads.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Krause US 2004/0109258 A1 Jun. 10, 2004
Appeal 2011-008512
Application 11/701,038

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REJECTIONS
The Examiner made the following rejections:
Claims 1-5 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
Claims 1-5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krause.

ANALYSIS
35 U.S.C. § 112, Second Paragraph
The Examiner maintains that "[i]t is unclear what structural properties
of the electrically non-conductive material are meant by ['the configured to']
limitation." (Ans. 3).
The Examiner maintains:
The term "decrease" in claim 1 is a relative term which
renders the claim indefinite. The term "decrease" is not defined
by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in
the art would not be reasonably apprised of the scope of the
invention. It is unclear, with respect to what comparison device
the alleged invention is decreased.

(Ans. 3-4). Appellants maintain "it is clear that the term 'configured' refers
to the 'rigid and electrically non-conductive material', the structure (i.e.,
configuration) of which was already described in Claim 1." (App. Br. 8).
We agree with the Examiner that it is unclear what properties perform the
function of "configured to decrease smearing of said bond pads." Therefore,
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Application 11/701,038

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the claim language does not particularly point out and distinctly claim
Appellants' invention.
The Examiner additionally maintains the claim term "decrease" is not
defined in the claims or the Specification. Appellants identify no properties
to determine the relative degree. Appellants identify page 7 of the
Specification which identifies that the invention reduced smearing and bond
pad bridging. (App. Br. 9). Appellants further contend that one of ordinary
skill in the art would understand what "decrease smearing" would refer to,
but identifies no specific ranges or values. (App. Br. 9). We find
Appellants' citations to the Specification unavailing since at most the
Specification discloses the desired improvements rather than a means to
determine the scope of "decrease smearing." Therefore, the metes and
bounds of independent claim 1 have not been particularly pointed out and
distinctly claimed. Appellants have not shown error in the Examiner's
conclusion that independent claim 1 (and its dependent claims) does not
particularly point out and distinctly claim the invention.

35 U.S.C. §103
Appellants generally contend that "Krause fails to teach or suggest the
claimed features in the manner set forth in Appellants' Claims 1." (App. Br.
11). Appellants further contend that independent claim 1 recites "said bond
pads protrude from said slider body a distance in a range of four to six
microns." Appellants maintain that the Krause reference teaches that the
conductive studs are a minimum of 15 micrometers. (App. Br. 11).
Appellants further contend that the structure of the Krause conductive studs
is for stronger attachment (App. Br. 11-14) and that "the structure of
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Appellants' bond pads 160 coupled with the substrate does not include a seed
layer." (App. Br. 13). In response to Appellants arguments, the Examiner
has provided a convincing line of reasoning for the conclusion of
obviousness including numerous case citations regarding obviousness,
ranges, advantages, and process limitations. (Ans. 9-13).
We generally agree with the Examiner that there is a desire to reduce
the size of electronics and to further use less material. We agree with the
Examiner that the smaller bond pads would have been desirable and more
economical. We further find the process limitations recited in the apparatus
claim do not structurally change the claimed "slider assembly" to
differentiate the claimed apparatus and render the apparatus nonobvious over
the Krause reference.
We find Appellants do not directly respond to any of the Examiner's
points and case citations in the Examiner's line of reasoning for the
obviousness rejection. Therefore, Appellants do not show error in the
Examiner's conclusion of obviousness of the apparatus or "slider assembly"
recited in independent claim 1.
Appellants contend that the Krause reference relates to a different
problem "to solve the problem of conductive studs not being securely
attached to surrounding material." (Reply Br. 2). Appellants further
contend that the Examiner's general and continuous objective to miniaturize
components is overbroad." (Reply Br. 2-3). We disagree with Appellants as
discussed above and find that the semi-conductor technologies and computer
electronics technologies generally have the unstated desire/goal which
improves the economics of scale and operation of these consumer goods.
Therefore, we disagree with Appellants' general argument.
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Appellants contend that "Appellants' method of creating the bonding
pads 160 coupled with the substrate 302 and being surrounded by the
insulator 165 is completely different from Krause's method of creating its
conductive stud." (App. Br. 13-14; emphasis added). We find Appellants'
argument unavailing since Appellants' claimed invention is directed to a
“slider assembly” rather than the method of manufacture. Therefore,
Appellants' argument is unpersuasive of error.
Appellants further contend "for the reasons stated herein, Appellants
respectfully submit that the Krause teaches away from Appellants' Claim 1,
and that Appellants' Claim 1 is not rendered obvious under 35 U.S.C.
§103(a) by Krause." (App. Br. 14).  Our reviewing court guides that the
mere failure of a reference to mention alternatives known in the art does not
constitute a teaching away from using the known elements. See DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) ("A reference does not teach away […] if it merely expresses a
general preference for an alternative invention but does not 'criticize,
discredit, or otherwise discourage' investigation into the invention claimed.")
(citation omitted). Appellants have not identified where the Krause
reference criticizes, discredits, or otherwise discourages the claimed
invention. Therefore, Appellants' argument does not show error in the
Examiner's conclusion of obviousness.
Appellants further contend that "Appellants' Claim 1 specifically
describes a structure significantly different than that of Krause, having a
different function." (Reply Br. 3). We disagree with Appellants.
Appellants have not identified what claim "structure" is "significantly
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different". Therefore, Appellants' argument does not show error in the
Examiner's conclusion of obviousness.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-5 under 35 U.S.C.
§ 112.
The Examiner did not err in rejecting claims 1-5 under 35 U.S.C.
§ 103.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-5 are
affirmed.
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)(iv) .

AFFIRMED
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