Ex Parte Hong et al

Patent Trial and Appeal Board

Sep 10, 2013

11616717 (P.T.A.B. Sep. 10, 2013)

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.
11/616,717 12/27/2006 Ying Hong HSJ920060068US1 2974
50439 7590 09/11/2013
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
KIM, PAUL D
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
09/11/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YING HONG, MING JIANG,
MUSTAFA M. PINARBASI, and JOHN WESTWOOD
____________________

Appeal 2011-010344
Application 11/616,717
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/616,717

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to “methods of fabricating a read sensor
which involve using a chemical mechanical polishing (CMP) defined hard
bias and totally flat reader gap.” Spec. 1, ll. 7-8. Claims 1, 11, and 14 are
the independent claims on appeal. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A method for fabricating magnetic sensor
heads with flat reader gaps, the method
comprising:
defining a read sensor of a magnetic sensor
head by:
depositing a protective layer on sensor
layers of the magnetic sensor head;
patterning a track width masking structure
on the protective layer;
performing an etch process on the protective
layer exposed by the track width masking structure
to remove the sensor layers located within side
regions of the magnetic sensor head;
depositing an insulator layer;
depositing a hard bias layer on the insulator
layer, wherein the hard bias layer is deposited
within the side regions so that major surfaces of
the hard bias layer within the side regions extend
to a height above the protective layer on the sensor
layers of the magnetic sensor head to form an
overfill portion; and
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performing a chemical mechanical polishing
(CMP) process down to the protective layer on the
sensor layers to remove the overfill portion of the
hard bias layer within the side regions to planarize
the major surfaces of the hard bias layer within the
side regions.

REFERENCES
The Examiner relies upon the following prior art references:
Pinarbasi US 7,038,890 B2 May 2, 2006
Hong US 2007/0081279 A1 Apr. 12, 2007

REJECTIONS
The following rejections are before us on appeal:
I. Claims 1-20 stand 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 Appellants regard as the invention.
II. Claims 1-6, 9-11, 14-16, 19, and 20 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Hong.
III. Claims 7, 8, 12, 13, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hong and Pinarbasi.

ANALYSIS
Rejection I
The Examiner finds that the phrase “major surfaces of the hard bias
layer within the side regions” in independent claims 1, 11, and 14 is vague
and indefinite because there is no structural definition for such major
surfaces. Ans. 3. Appellants disagree with this finding, arguing that “one
skilled in the art understands what a ‘major surface’ is.” Br. 12. In support
of this argument, Appellants note that “Merriam-Webster online
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(www.merriam-webster.com) defines the word ‘major’ as ‘prominent or
significant in size’” and “defines the word ‘surface’ as ‘the exterior or upper
boundary of an object or body,’” such that “[t]o one skilled in the art, the
plain meaning of the ‘major surfaces of the hard bias layer in the side
regions’ clearly means the prominent or significant upper boundary of the
hard bias layer within the side regions.” Id.
We are not persuaded by Appellants’ argument. Prominent or
significant in size is only one common definition of “major.” The term is
also commonly defined as “prominent or significant in amount or degree,”
“greater in dignity, rank, importance, or interest,” and “notable or
conspicuous in effect or scope: CONSIDERABLE.” MERRIAM-WEBSTER
ONLINE DICTIONARY, (2013), http://www.merriam-webster.com, accessed
August 28, 2013.1 Given that Appellants’ Specification does not provide
any insight into how the claim language “major surface” should be
interpreted, we disagree that one of ordinary skill in the art would
necessarily consider the plain meaning of “major surface” to be limited to a
surface that is prominent or significant in size. For example, one of ordinary
skill in the art could equally consider a surface that performs an important
function to be a “major surface.” Furthermore, we disagree with Appellants’
assertion that “surface” necessarily refers to an upper boundary. The term
could refer to any exterior boundary.
In view of the above, the claim language “major surfaces of the hard
bias layer in the side regions” is amenable to two or more plausible claim

1 These definitions are believed to accurately reflect the meaning of “major”
at the time of the invention, i.e., as of the effective filing date of Appellants’
application.
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constructions, thereby rendering the claims indefinite. Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.”). We
accordingly sustain the rejection of claims 1-20 under 35 U.S.C. § 112,
second paragraph.
Rejection II
Appellants argue independent claims 1, 11, and 14 together and do not
present any separate arguments for the patentability of dependent claims 2-
10, 12, 13, and 15-20. Br. 7, 12. As such, we treat claims 1-6, 9-11, 14-16,
19, and 20 as argued as a single group and select independent claim 1 as the
representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011).
See also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011). Accordingly,
claims 2-6, 9-11, 14-16, 19, and 20 stand or fall with claim 1.
The Examiner finds that Hong discloses the method of claim 1 and
specifically finds that Figure 11 shows a hard bias layer 1102 “deposited
within the side regions to a height above the protective layer [in the form of
CMP stop layer 522] to form an overfill portion.” Ans. 4. The Examiner
maintains that any portion of the hard bias layer 1102 can be a major surface
thereof because there is no clear indication in the claim of “what and where
the major surface is.” Ans. 7.
Appellants argue that “the major surfaces of [Hong’s] hard bias layer
do not extend to a height above stop layer 522 in the side regions.” Br. 9.
However, this argument relies on the assumption that the “major surfaces”
of Hong’s hard bias layer 1102 must be the two horizontal surfaces in the
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side regions as depicted in Figure 11. Such assumption is not commensurate
in scope with claim 1. As noted supra, Appellants’ Specification does not
provide any guidance on interpreting the term “major surface” and there are
several general dictionary definitions of “major.” Thus, there are many
possible interpretations for the claim term “major surface,” including any
surface that is significant in size or function.
As seen in Figure 11, portions of Hong’s hard bias layer 1102 in the
side regions (i.e., on both sides of image transfer mask layer 524 and photo
mask 526) extend above the stop layer 522. While these portions are narrow
in the lateral direction, they have a significant vertical dimension as depicted
in Figure 11. These portions would also have a depth dimension (i.e., the
direction extending in and out of the page) that is very likely to be equal to
the depth of the horizontal surfaces of the hard bias layer 1102. By virtue of
their vertical and depth dimensions, these portions define vertical surfaces
that are significant in size2 and can thus be properly interpreted as “major
surfaces.” As such, Hong discloses a hard bias layer 1102 having major
surfaces that extend above the stop layer 522 in the side regions.
Appellants also argue that Hong does not disclose the claim 1 step of
“performing a chemical mechanical polishing (CMP) process down to the
protective layer on the sensor layers to remove the overfill portion of the
hard bias layer within the side regions to planarize the major surfaces of the
hard bias layer within the side regions.” Id. at 10. This argument is not
persuasive. Hong discloses performing a CMP process to remove material

2 Whether these vertical surfaces are greater in size than the horizontal
surfaces of the hard bias layer 1102 cannot be determined because of the cut-
away portions of Hong’s drawings. However, a surface does not have to be
the largest surface to be considered significant in size.
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extending above the stop layer 522, including the vertical portions of the
hard bias layer 1102. Hong, para. [0056]; fig. 12. This CMP process results
in the hard bias layer 1102 defining narrow upper surfaces on both sides of
the stop layer 522. These upper surfaces are planar surfaces that are also co-
planar with the upper planar surfaces of the stop layer 522, the insulation
layer 802, and the stop layers 1104. Hong, fig. 12. Therefore, Hong
discloses a CMP process that removes overfill to planarize the vertical
portions of the hard bias layer 1102 (i.e., “major surfaces”) within the side
regions. Appellants’ argument that “Hong cannot teach planarizing the hard
bias layer with CMP because stop layer 1104 is protecting the major
surfaces of the hard bias layer” (Br. 11) is not persuasive because it relies on
the erroneous assumption, discussed supra, that only the horizontal surfaces
of Hong’s hard bias layer 1102 can be “major surfaces.”
In view of the above, Appellants’ arguments do not apprise us of
error, and we sustain the rejection of claim 1, and of claims 2-6, 9-11, 14-16,
19, and 20 grouped therewith, as being anticipated by Hong.
Rejection III
Appellants do not present additional arguments for dependent claims
7, 8, 12, 13, 17, and 18 separate from those presented in connection with
independent claims 1, 11, and 14. Br. 12. Accordingly, for the reasons
discussed supra, we also sustain the rejection of claims 7, 8, 12, 13, 17, and
18 as unpatentable over Hong and Pinarbasi.

DECISION
We affirm the decision of the Examiner rejecting claims 1-20.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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