Ex Parte Gage et al

Patent Trial and Appeal Board

Mar 24, 2016

13052603 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/052,603
64776 7590
HolzerIPLaw, P.C.
216 16th Street
Suite 1350
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
03/21/2011 Edward Charles Gage
03/28/2016
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.
STL 16398.00 6769
EXAMINER
ALUNKAL, THOMAS D
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
docket@holzeriplaw.com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD CHARLES GAGE, LIFU ZHOU,
MICHAEL ALLEN SEIGLER, WILLIAM ALBERT CHALLENER,
JAMES DILLON KIELY, and KAIZHONG GAO
Appeal2014-006619
Application 13/052,603 1
Technology Center 2600
Before JON M. JURGOVAN, JOHN F. HORVATH, and
KEVIN C. TROCK, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-24, which constitute all the
claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellants indicate the real party in interest is Seagate Technology LLC.
App. Br. 3.
Appeal2014-006619
Application 13/052,603
Invention
The claimed invention relates to a slider for heat assisted
magnetic recording including a thermal sensor for monitoring laser
power. Spec. Title.
Exemplary Claim
Exemplary claim 1 is reproduced below with disputed
limitations emphasized:
1. An apparatus comprising:
a light source;
a slider including a sensor having a resistance or voltage
that varies in response to temperature of the sensor, the sensor
being mounted to be heated by a portion of light emitted by the
light source; and
a controller controlling the light source in response to the
resistance or voltage of the sensor.
Rejections
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsumoto et al. (US 2008/0204916 Al, published Aug.
28, 2008) and Shimazawa et al. (US 2009/0040645 Al, published Feb. 12,
2009).
Claims 1-5, 8, 9, and 11 are provisionally rejected for non-statutory,
obviousness-type double patenting over claims 1-5, 9, and 11 of co-pending
Application No. 13/052,635.
ANALYSIS
With respect to independent claim 1, and similarly independent claims
14, 19, and 21, the Examiner finds Matsumoto teaches an apparatus
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Application 13/052,603
compnsmg:
a light source (Figure 5A, Element 27); a slider including a
sensor having a resistance or voltage that varies with temperature
of the sensor (Figure 2, Element 16 and Paragraph 0063 where
the surface temperature of the photodetector varies with
temperature), the sensor being mounted to be heated by a portion
of light emitted by the light source (Figure 2, Elements 1 and 2
and Paragraphs 0062-0063); and a controller controlling the light
source in response to the resistance or voltage of the sensor
(Figure 5A, Elements 27 and 32 and Paragraph 0063).
Final Act. 5, 7.
The Examiner also finds that Matsumoto does not teach a sensing
element that has resistance or voltage which varies in response to
temperature. Final Act. 5. The Examiner finds, however, that Shimazawa
discloses a thermally assisted magnetic head which includes a temperature
sensor that has a resistance that varies in response to temperature (Figure 4,
Element 260). Final Act. 5, 8. The Examiner also finds that Shimazawa
teaches that various types of temperature sensors may be used to detect heat
(i-f 122). Id.
The Examiner finds that it would have been obvious to one of ordinary
skill in the art at the time of the applicants' invention to modify the
apparatus of Matsumoto to include the resistance temperature sensor of
Shimazawa. Final Act. 6, 8. The Examiner finds that both Matsumoto and
Shimazawa are drawn to thermally assisted magnetic recording heads. Ans.
7. The Examiner finds the photodiode 16 of Matsumoto is used to detect the
intensity of light emitted from a semiconductor laser 25 (iT 62). Id. The
Examiner also finds the resistance thermometer 260 of Shimazawa is used to
detect the intensity of light emitted from laser diode 40 (iT 108). Id. The
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Examiner finds, therefore, that a photodiode and a resistance thermometer
are art recognized equivalents for performing the same intended function
(i.e., detecting the intensity of light from a light emitting device). Id.
The Examiner also finds that Shimazawa teaches that the use of a
photodiode (as in Matsumoto) to monitor a laser diode undesirably
complicates the structure. Ans. 7 (citing Shimazawa, i-f 8). The Examiner
finds, therefore, that Shimazawa's teaching of using a thin-film resistance
thermometer in place of the photodiode of Matsumoto to detect the intensity
of light emitted from a light source would provide the added benefit of
simplifying Matsumoto's structure. Final Act. 6; Ans. 7.
Appellants contend the Examiner erred rejecting the independent
claims because: 1) the Examiner asserted that a substitution of the
temperature sensor of Shimazawa for the photodetector of Matsumoto is a
matter of design choice; 2) the asserted modification of Matsumoto would
make Matsumoto inoperable for its intended purpose; 3) the proposed
combination of references does not teach a "sensor being mounted to be
heated by a portion of light emitted by the light source," as recited in claims
1 and 14; 4) the proposed combination of references does not teach
"exposing a thermal sensing element in a slider to a portion of light emitted
by a light source in the slider," as recited in claim 19; and 5) the proposed
combination of references does not teach a "sensor being heatable by a
portion of light emitted from the light source that is optically received by the
sensor," as recited in claim 21. App. Br. 5-15; Reply Br. 3-9.
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellants' arguments the Examiner has erred. We
disagree with Appellants' arguments and conclusions. We adopt as our
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Application 13/052,603
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken; and (2) the findings and the reasons set
forth in the Examiner's Answer. We concur with the conclusions reached by
the Examiner and further highlight specific findings and argument for
emphasis as follows.
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In identifying a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the prior art teachings, the Examiner must show some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
Appellants contend the Examiner erred because the combination of
Matsumoto and Shimazawa fails to teach a "sensor being mounted to be
heated by a portion of light emitted by the light source" as recited in
independent claim 1 and similarly recited in independent claims 14, 19, and
21. Appellants argue "[t]he temperature sensor of Shimazawa cited by the
Office appears to be a sensor that is configured to be embedded in a layer of
material," and that therefore, "Shimazawa's temperature sensor does not
enable a sensor that is mounted to be responsive to light." App. Br. 10, 11.
We disagree.
As noted above, the test for obviousness is not whether the features
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(temperature sensor) of a secondary reference (Shimazawa) may be bodily
incorporated into the structure of the primary reference (Matsumoto). The
Examiner finds, and we agree, the claims do not require that light emitted by
a light source be directly incident upon the sensor. Ans. 9. Rather, the
claims require that the sensor is mounted to be heated (either directly or
indirectly) by a portion of light emitted by the light source. Id. Appellants'
arguments are not persuasive of Examiner error.
Accordingly, we agree with the Examiner's finding that the
combination of Matsumoto and Shimazawa teaches a "sensor being mounted
to be heated by a portion of light emitted by the light source" as recited in
independent claim 1, and similarly recited in independent claims 14, 19, and
21.
Appellants also contend the Examiner erred rejecting the claims
because the Examiner asserted that the substitution of the temperature sensor
of Shimazawa for the photodetector of Matsumoto was a matter of design
choice. App. Br. 5-7; Reply Br. 3-5. We disagree.
As noted above, in identifying a reason that would have prompted a
person of ordinary skill in art to combine the references, the Examiner must
show some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness. The Examiner did just that. In
supporting the combination of Shimazawa and Matsumoto, the Examiner
found that Shimazawa's teaching of using a thin-film resistance thermometer
in place of the photodiode of Matsumoto to detect the intensity of light
emitted from a light source would provide an added benefit of simplifying
the structure. Final Act. 6; Ans. 7. One of the strongest rationales for
combining references is a recognition, expressly or impliedly in the prior art
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or drawn from a convincing line of reasoning, that some advantage or
expected beneficial result would have been produced by their combination.
In re Sernaker, 702 F.2d 989, 994--95 (Fed. Cir. 1983). Shimazawa's
identified benefit of simplifying the structure of Matsumoto by using a thin-
film resistance thermometer in place of a photo diode to detect the intensity
of light emitted from a light source is such an advantage. Appellants'
arguments, therefore, are not persuasive of Examiner error. Accordingly, we
sustain the Examiner's rejection of independent claims 1, 14, 19, and 21.
Appellants have not presented separate, substantive, persuasive
arguments with respect to claims 2-13, 15-18, 20, and 22-24. Therefore,
we sustain the Examiner's rejections of these claims. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
DECISION
We AFFIRM the Examiner's rejections of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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