Ex Parte Lam et al

Board of Patent Appeals and Interferences

May 30, 2012

10903973 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/903,973 07/30/2004 Terence Tin-Lok Lam 15872.0072US01/HSJ9200302 5133
23552 7590 05/30/2012
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
KIM, PAUL D
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
05/30/2012 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 TERENCE TIN-LOK LAM, VLADIMIR NIKITIN,
CHANGQING SHI, and SAMUEL YUAN
____________________

Appeal 2010-006063
Application 10/903,973
Technology Center 3700
____________________

Before SALLY C. MEDLEY, STEPHEN C. SIU, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006063
Application 10/903,973

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7 and 9-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
The claims are directed to magnetic recording systems, and more
particularly to a method and apparatus for providing a write head having
well-defined, precise write head pole tips. (Spec. 1, ll. 5-7.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for making coplanar write head pole tips,
comprising:
forming a magnetic thin-film write head pole tip layer on
a planar wafer surface;
defining a first planar pole tip and a second planar pole
tip from the pole tip layer, a gap formed between the first planar
pole tip and the second planar pole tip defining a track width;
and
forming a read head having a first shield and a second
shield configured to form a gap therebetween that is parallel to
the gap formed between the first planar pole tip and the second
planar pole tip by forming the read gap perpendicular to the
first and second planar pole tip layers.
(Appeal Brief 13, Claims Appendix.1 )

THE REJECTIONS
I. The Examiner rejected claims 1-7 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point

1 Appeal Brief filed April 19, 2009, hereinafter “App. Br.” and Claims
App’x, respectively.
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Application 10/903,973

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out and distinctly claim the subject matter which applicant
regards as the invention. (Ans. 3. 2), 3)

II. The Examiner rejected claims 1, 3, and 9 under 35 U.S.C. §
102(b) as anticipated by Kamijima (US 6,289,578 B1, issued
September 18, 2001). (Ans. 3-4.)

III. The Examiner rejected claims 1, 3-7, and 9-12 under 35 U.S.C.
§ 102(e) as anticipated by Lo et al. (US 6,857,181 B2, issued
February 22, 2005). (Ans. 4-5.)

IV. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over either Kamijima or Lo and further in view of
Santini (US 6,678,117 B2, issued January 13, 2004). (Ans. 5-
6.)

ISSUE(S)
The dispositive issue(s) on appeal:
Whether the Examiner erred in finding that claims 1-7 are indefinite
under 35 U.S.C. § 112, second paragraph and that Kamijima discloses
forming a read gap perpendicular to the first and second planar pole tip
layers, as recited in the claims?

DISCUSSION
Rejection I (35 U.S.C. § 112, second paragraph)
Appellants do not present arguments regarding this rejection. (App.
Br. 5.) As such, we summarily affirm the Examiner’s rejection of claims 1-
7. See 37 C.F.R. § 41.37(c)(1)(vii) (arguments not made are considered

2 Examiner’s Answer, dated December 7, 2009, hereinafter “Ans.”
3 The Examiner had also rejected claims 9-12, but subsequently withdrew
the rejection as to claims 9-12 in the Answer as a result of Appellants’
amendment to claim 9. (Ans. 6).
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Application 10/903,973

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waived); MPEP § 1205.02 (“If a ground of rejection stated by the examiner
is not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).

Rejections II-IV
The Examiner found that Kamijima teaches the method for making
coplanar write head pole tips recited in the claims, including forming a read
gap perpendicular to the first planar pole tip and second planar pole tip
layers. (Ans. 3.) The Examiner reasoned that Appellants’ Figure 11e
depicts that only an end portion of the first and second pole tips (e.g., end
portion of layers 1130 and 1140) as perpendicular to the read gap, such that
the claims only require that a portion of the pole tip layers be perpendicular
to the read gap. (Ans. 8.) The Examiner found that because Figure 1 of
Kamijima depicts a front surface (or portions) of the first (212) and second
pole tips (222) as perpendicular to a side surface of the read gap (76, 78),
Kamijima meets the relationship between the read gap and the first and
second planar pole tip layers recited in the claims. (Ans. 8.)
Appellants argue that the claims do not merely recite that the read gap
is formed perpendicular to “portions” or sides of a pole tip layer. (Reply
Brief, dated February 8, 2010, hereinafter “Reply Br.” 3.) Appellants argue
that a read gap formed between a first and second shield would have been
understood by those skilled in the art to form a plane, and that the claims
require this plane to be perpendicular to the plane in which the pole tip
layers are formed. (App. Br. 7.)
In our view, one of ordinary skill in the art, when interpreting the
claims in light of the Specification would have understood that “forming the
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Application 10/903,973

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read gap perpendicular to the first and second planar pole tip layers” (as
recited in claim 1) requires forming the pole tip layers in a plane
perpendicular to the plane of the read gap, as depicted in Figure 11e. To
interpret the claims to merely require that a portion or end surface of the
pole tip layers be perpendicular to the read gap would render the claim
language meaningless, as a three-dimensional layer formed in a plane
perpendicular to the plane of the read gap will always have some end surface
or portion that is perpendicular to the pole tip layers. See Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950-51 (Fed. Cir. 2006) (noting that generally
a claim interpretation that renders claim limitations meaningless should be
avoided). Accordingly, because Kamijima discloses forming the read gap in
a plane parallel to the plane of the pole tip layers (Fig. 1), we agree with
Appellants that because Figure 6 of Kamijima depicts a read gap, or the gap
formed between first (31) and second (32) shields, as parallel to the first
(212) and second (222) pole tip layers, Kamijima fails to disclose forming a
read gap that is perpendicular to the first and second planar pole tip layers.
(App. Br. 7.).
Rejections III and IV also rely on the Examiner’s interpretation of
forming a read gap perpendicular to the first and second planar pole tip
layers, or similar language. (Ans. 3-6.) Accordingly, we reverse the
Examiner’s decision to reject all other claims subject to these rejections for
the deficiencies discussed supra.

CONCLUSION
Appellants have not sufficiently established that the Examiner erred in
finding that claims 1-7 are indefinite under 35 U.S.C. § 112, second
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paragraph but Appellants have sufficiently established that the Examiner
erred in finding that Kamijima discloses forming a read gap perpendicular to
the first and second planar pole tip layers, as recited in the claims.

DECISION
We summarily affirm the Examiner’s rejection of claims 1-7 under 35
U.S.C. § 112, second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention.
We reverse the Examiner’s rejection of claims 1, 3, and 9 under 35
U.S.C. § 102(b) as anticipated by Kamijima.
We reverse the Examiner’s rejection of claims 1, 3-7, and 9-12 under
35 U.S.C. § 102(e) as anticipated by Lo.
We reverse the Examiner’s rejection of claim 2 under 35 U.S.C. §
103(a) as unpatentable over either Kamijima or Lo and further in view of
Santini.
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).

AFFIRMED-IN-PART
rvb