Ex parte OHASHI

Board of Patent Appeals and Interferences

May 19, 1998

07840276 (B.P.A.I. May. 19, 1998)

Application for patent filed February 24, 1992. 1
According to appellant, this application is a continuation-in-
part of Application 07/707,439 filed May 28, 1991, now abandoned,
which is a continuation of Application 07/316,834 filed February
28, 1989.
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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(2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KEISHI OHASHI
____________
Appeal No. 95-0800
Application 07/840,2761
____________
ON BRIEF
____________
Before and THOMAS, FLEMING and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
10, which constitute all the claims remaining in the application.
Appeal No. 95-0800
Application 07/840,276
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Claim 1 reads as follows:
1. A thin film magnetic head which comprises 2n (n
being an integer of not less than 1) spiral patterns formed by a
selective plating method, n spiral patterns out of the 2n spiral
patterns being connected in series so that a first connecting
terminal and an intermediate connecting terminal are formed to
thus give a first coil, the remaining n spiral patterns out of
the 2n spiral patterns being connected in series so that one end
thereof is connected to the intermediate connecting terminal and
the other end serves as a second connecting terminal to thus give
a second coil, wherein the 2n spiral patterns are formed on n
layers and each layer has two spiral patterns formed on the same
layer, one of which is a component of the first coil and the
other of which is a component of the second coil.

The Examiner’s Answer cites the following prior art:
Romankiw et al. (Romankiw) 4,295,173 Oct. 13, 1981
Takahashi 4,416,056 Nov. 22, 1983
Jones, Jr. et al. (Jones) 4,713,711 Dec. 15, 1987
OPINION
The claims stand rejected under 35 U.S.C. § 102 as
anticipated by Takahashi and under 35 U.S.C. § 103 as
unpatentable over Jones in view of Romankiw.
Anticipation by Takahashi
Appellants argue that Takahashi does not have “two
spiral patterns formed on the same layer” as recited in the
claims. The examiner argues that one “layer” may be broadly
interpreted to include multiple layers that are partially in the
same plane. We agree with appellants.
Appeal No. 95-0800
Application 07/840,276
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Claims undergoing examination are given their broadest
reasonable interpretation consistent with the specification, and
limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. Cir. 1985) (in banc).
In the present case, the examiner’s interpretation of
“layer” is broader than is reasonable. Therefore, we will not
sustain this rejection.
Obviousness over Jones in view of Romankiw
The examiner says that one of skill in the art would
have been motivated by Romankiw to make each of Jones’ coils
bifilar to provide a more balanced center tap. However, Jones’
center tap is between upper and lower windings, not within a
single winding.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992).
In this case, we are not convinced that the examiner
has established such a suggestion. Therefore, this rejection
will not be sustained.
Appeal No. 95-0800
Application 07/840,276
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NEW GROUNDS OF REJECTION UNDER 37 CFR § 1.196(B)
Claims 1, 3-5, and 7-10 are hereby rejected under 35
U.S.C. § 102 as anticipated by Romankiw. With n = 1, these
claims cover a one-layer bifilar winding such as disclosed by
Romankiw in Figure 1B.
CONCLUSION
The examiner’s rejections of Claims 1-10 are not
sustained. A new ground of rejection is entered against Claims
1, 3-5, and 7-10.
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or a showing
of facts relating to the claims so
Appeal No. 95-0800
Application 07/840,276
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rejected, or both, and have the matter
reconsidered by the examiner, in which
event the application will be remanded
to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon
the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED - 37 CFR § 1.196(B)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-0800
Application 07/840,276
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Sughrue, Mion, Zinn, Macpeak
& Seas
2100 Penn. Ave., N.W.
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