Ex Parte Nam et al

Board of Patent Appeals and Interferences

Jun 18, 2012

11285281 (B.P.A.I. Jun. 18, 2012)

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.
11/285,281 11/23/2005 Yun-woo Nam 21881-00-US 1423
73462 7590 06/18/2012
Hall Estill Attorneys at Law
(Seagate Technology LLC)
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
EXAMINER
VELEZ, ROBERTO
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
06/18/2012 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 YUN-WOO NAM and YONG-SU KIM
____________

Appeal 2010-005185
Application 11/285,281
Technology Center 2800
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-7, and 25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2010-005185
Application 11/285,281

2
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a probe head having a
high resolving ability and method of fabricating the same (Spec. ¶ [02]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A probe head comprising at least one sensor unit, the sensor
unit including:

a sensor which records or reads data on or from a
predetermined medium;

a first shield and a second shield disposed on opposite
sides of the sensor at a predetermined distance from each other;
and

a first intermediate layer and a second intermediate layer
respectively interposed between the sensor and the first shield,
and the sensor and the second shield,

wherein at least one of the first and second shields is
grounded,

wherein the probe head is one of a field effect transistor
probe head and an EFM probe head.

REFERENCES and REJECTIONS
The Examiner rejected claims 1, 2, and 7 under 35 U.S.C. § 103(a)
based upon the teachings of Mao (US Patent No. 6,396,668 BI, May 28,
2002), Okumura (US Patent No. 6,160,688, December 12, 2000) and
Appellants’ Admitted Prior Art (“AAPA”).
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) based upon
the teachings of Mao, Okumura, AAPA, and Asatani (US Patent No.
6,631,056 Bl, October 7, 2003).
Appeal 2010-005185
Application 11/285,281

3
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) based
upon the teachings of Mao, Okumura, AAPA, and Carr (US Patent
Application Publication No. 2002/0048824 Al, April 25, 2002).
The Examiner rejected claim 25 under 35 U.S.C. § 103(a) based upon
the teachings of Mao, Okumura, AAPA, and Dong (US Patent No.
6,515,573 Bl, February 4, 2003).

ANALYSIS
The Examiner finds Mao, Okumura and AAPA suggest claims 1, 2,
and 7 of Appellants’ invention (Ans. 3-5).
Appellants address this rejection with respect to claim 1 and contend
Mao is directed to magnetic heads reading magnetic media, and therefore
there is no motivation to use an FET or EFM probe head for magnetic media
(Br. 8). Further, Appellants assert, the Examiner has provided no evidence
that it was “conventional in the art to read magnetic media with FET or EFM
probe heads” (Br. 9). We do not agree.
We adopt the Examiner’s findings as our own (Ans. 9-11). Further,
the Examiner has cited Onogi as evidence that Mao’s probe head (a
magneto-resistive device) is compatible with an FET probe head (see Onogi,
paragraph [0016]; Ans. 11). Appellants have not rebutted this finding.
Thus, for the reasons found by the Examiner, claims 1, 2, and 7 are obvious
over Mao, Okumura, and AAPA.
With respect to claim 3, Appellants contend Asanti has shield films
mutually connected “only during an intermediary step of manufacturing”
and are “disconnected during the final processing” (Br. 10). We do not
agree with Appellants. We agree with the Examiner and adopt the
Appeal 2010-005185
Application 11/285,281

4
Examiner’s findings as our own (Ans. 11-12). Additionally, we find the
claim is not so limited as to when the shield films are mutually connected,
only that they are mutually connected. Thus, we conclude claim 3 would
have been obvious over Mao, Okumura, AAPA, and Asanti.
With respect to claims 5, 6, and 25, Appellants have provided no
arguments other than to state these claims are patentable for the same
reasons as claim 1 (Br. 11). Since claim 1 was found obvious over the cited
references, we conclude claims 5, 6, and 25 would have been obvious over
Mao, Okumura, AAPA, and Carr or Dong.

DECISION
The Examiner’s decision rejecting claims 1-3, 5-7, and 25 is 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)(2010).

AFFIRMED

peb/pgc