Ex parte MOWRY

Board of Patent Appeals and Interferences

Apr 29, 1998

08198848 (B.P.A.I. Apr. 29, 1998)

Application for patent filed February 18, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GREGORY S. MOWRY

_____________
Appeal No. 97-1166
Application 08/198,8481
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1-22. An amendment
Appeal No. 97-1166
Application 08/198,848
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after final rejection was filed on October 30, 1995 and was
entered by the examiner. This amendment amended claims 1, 11 and
19, and cancelled claims 21 and 22. Therefore, this appeal is
directed to the rejection of claims 1-20.
The invention pertains to a magnetoresistive (MR) sensor
for reading information from the track of a magnetic storage
medium. Specifically, a giant MR element is provided which has
three electrical contacts spatially positioned along the
direction of the track. A first variable resistance current path
is established between the first and second contacts, and a
second variable resistance current path is established between
the first and third contacts. Magnetic information recorded on
the track passes the electrical contacts at different times and
causes the variable resistance of the current paths to change in
a measurable way.
Representative claim 1 is reproduced as follows:
1. A sensor for reading information from one of a
plurality of longitudinal tracks of a magnetic storage medium
moving underneath the sensor, the sensor comprising:
a slider having a side rail, the side rail having a
bottom surface, wherein the slider is arranged to position the
bottom surface of the side rail adjacent a first track of the
plurality of longitudinal tracks;
a giant magnetoresistive element positioned on the bottom
surface of the side rail;
Appeal No. 97-1166
Application 08/198,848
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first, second, and third electrical contacts spatially
positioned on the giant magnetoresistive element and along the
first track such that a first current path having a first
variable resistance is formed between the first and second
electrical contacts and a second current path having a second
variable resistance is formed between the first and third
electrical contacts; and
wherein a first magnetic field representing information
from the first track passes the first, second and third
electrical contacts at different times causing a change in the
first variable resistance in the first current path when the
first magnetic field becomes positioned substantially underneath
the first current path, and wherein the first magnetic field
causes a change in the second variable resistance in the second
current path when the first field becomes positioned
substantially underneath the second current path.
The examiner relies on the following references:
Garnier et al. (Garnier) 3,855,625 Dec. 17, 1974
Miura 4,179,720 Dec. 18, 1979
Mowry 4,851,944 July 25, 1989
Hitachi 0 490 327 June 17, 1992
(European Patent Application)
IBM, “Longitudinal Read Sensor For Magnetic Disks,” IBM Technical
Disclosure Bulletin, Vol. 33, No. 3B, August 1990, pages 209-211.
Claims 1-20 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers IBM in view of
Hitachi, Miura and Mowry with respect to claims 1-9, 19 and 20,
and adds Garnier with respect to claims 10-18.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for the
respective details thereof.
Appeal No. 97-1166
Application 08/198,848
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OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner's answers.
It is our view, after consideration of the record before
us, that the collective evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set
forth in claims 1-20. Accordingly, we reverse.
We consider first the rejection of claims 1-9, 19 and 20
under 35 U.S.C. § 103 as being unpatentable over IBM in view of
Hitachi, Miura and Mowry. These claims stand or fall together
[brief, page 5]. IBM is cited by the examiner as a conventional
form of MR element which is situated on the bottom surface of a
slider. Hitachi is cited only to support the position that giant
MR elements were conventional in the art. Miura is cited to show
that it was known to spatially place electrical contacts in the
Appeal No. 97-1166
Application 08/198,848
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direction of a magnetic track and to differentially compare
currents to monitor magnetic fields. Mowry is cited to show that
it was known to use three electrical contacts to divide an MR
element into separate variable resistance regions. The examiner
has explained why it would have been obvious to the artisan to
combine the teachings of IBM, Hitachi, Miura and Mowry to arrive
at the invention of claim 1 [answer, pages 4-8].
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
Appeal No. 97-1166
Application 08/198,848
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776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Appellant has addressed the Deere factual determinations
noted above, and appellant argues that the applied references,
whether considered singly or together, do not teach the
recitations of claim 1. Specifically, appellant argues that the
claimed spatial relationship of the three electrical contacts
along the magnetic track and the two current paths formed by a
magnetic field passing under the three contacts at different
times is not taught or suggested by the references cited by the
examiner [brief, pages 7-10]. The examiner responds that Mowry
is cited for the teaching of three electrical contacts and Miura
is cited for the current paths being established at different
times as the track moves [answer, pages 9-14]. Appellant
disputes that the teachings of the applied prior art would lead
to the claimed invention.
Appeal No. 97-1166
Application 08/198,848
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Miura is the only one of the applied references that is
concerned with monitoring variable resistance currents at
different spatial locations along the direction of a magnetic
track. Miura teaches two MR elements (11, 12) for developing
these variable currents. Each of the MR elements has two
electrodes for measuring the current through that MR element.
Thus, the currents in Miura flow within each MR element in a
direction which is perpendicular to the track direction. There
is no evidence that Miura desires or intends for current to flow
between the two MR elements in the direction of the track.
Therefore, there are no contacts in Miura which create a current
path which exists in the direction of the magnetic track.
The examiner has referred to Figure 5 of Miura as
suggesting such an arrangement of contacts. Figure 5 of Miura is
simply an electrical schematic of a bridge for electrically
combining the outputs of the MR elements. We fail to see how
such an electrical schematic can be suggestive of a physical
spatial relationship of the components depicted therein. In
fact, the artisan would recognize from Miura’s Figure 5 that a
current path is created only along each MR element 11 and 12 and
not between them. Since Miura teaches that each MR element is
spatially positioned perpendicular to the direction of the
Appeal No. 97-1166
Application 08/198,848
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magnetic track, there is clearly no current path in Miura which
spatially exists in the direction of the magnetic track.
The examiner also seems to suggest that the three contact
MR arrangement of Mowry, if substituted for Miura’s two contact
MR arrangement would result in the claimed invention. We do not
agree. In our view, Mowry would simply suggest to the artisan
that either one of the MR elements 11 and 12 of Miura could be
replaced by a three electrode MR element as taught by Mowry.
However, regardless of whether the Miura system uses a two
electrode MR element as shown therein or uses a three electrode
MR element as taught by Mowry, the variable current paths would
still flow only in a direction perpendicular to the track
direction and not in a direction along the magnetic track.
Since both independent claims 1 and 19 require the
presence of current paths which run spatially along the direction
of the magnetic track, and since none of the applied prior art
suggests such a current path despite the examiner’s assertions to
the contrary, the examiner has failed to present a case for the
obviousness of this claimed feature. Therefore, we do not
sustain the rejection of claims 1-9, 19 and 20.
We now consider the rejection of claims 10-18 under 35
U.S.C. § 103 as being unpatentable over IBM in view of Hitachi,
Appeal No. 97-1166
Application 08/198,848
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Miura and Mowry, and further in view of Garnier. These claims
stand or fall together [brief, page 5]. Appellant has presented
no additional arguments in support of the patentability of these
dependent claims. Since the additionally applied reference to
Garnier fails to overcome the deficiencies noted above in the
basic combination of references, the invention of dependent
claims 10-18 is also not suggested by the applied prior art.
Therefore, we also do not sustain the rejection of claims 10-18.
In summary, we have not sustained either of the
examiner’s rejections of the claims. Accordingly, the decision
of the examiner rejecting claims 1-20 is reversed.
REVERSED
Appeal No. 97-1166
Application 08/198,848
10
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Robert M. Angus
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