Ex Parte Sasaki et al

Patent Trial and Appeal Board

Apr 27, 2017

13035219 (P.T.A.B. Apr. 27, 2017)

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.
13/035,219 02/25/2011 Yoshitaka SASAKI 148750 2373
759025944
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
05/01/2017 EXAMINER
WATKO, JULIE ANNE
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
05/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITAKA SASAKI, HIROYUKIITO, KAZUKI SATO, and
ATSUSHIIIJIMA
Appeal 2015-006051
Application 13/035,219
Technology Center 2600
Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
SCOTT BAIN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—6. Claims App’x. We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing was conducted on April 20, 2017.
We reverse.
Invention
The disclosed and claimed invention on appeal “relates to a magnetic
head for perpendicular magnetic recording that is used for writing data on a
recording medium by means of a perpendicular magnetic recording system,
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Application 13/035,219
and more specifically, to a magnetic head for perpendicular magnetic
recording that includes a sensor for detecting contact with a recording
medium.” (Spec. 1,11. 7—11).
Representative Claim
1. A magnetic head for perpendicular magnetic recording,
comprising:
a medium facing surface that faces a recording medium;
a read head unit;
a write head unit disposed forward of the read head unit
along a direction of travel of the recording medium;
first and second heaters that generate heat for causing the
medium facing surface to protrude in part;
an expansion layer that expands with the heat generated
by the first and second heaters and thereby makes part of the
medium facing surface protrude;
a sensor that detects contact of the part of the medium
facing surface with the recording medium; and
a nonmagnetic part made of a nonmagnetic material and
disposed around the expansion layer and the sensor, wherein:
the read head unit includes a read element that reads data
written on the recording medium, and first and second read
shield layers that are disposed such that the read element is
interposed therebetween;
the write head unit includes:
a coil that produces a magnetic field corresponding to
data to be written on the recording medium;
a main pole that has an end face located in the medium
facing surface, allows a magnetic flux corresponding to the
magnetic field produced by the coil to pass, and produces a
write magnetic field for writing the data on the recording
medium by means of a perpendicular magnetic recording
system;
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a write shield made of a magnetic material and having an
end face located in the medium facing surface;
a gap part made of a nonmagnetic material and disposed
between the main pole and the write shield; and
a first return path section made of a magnetic material;
the end face of the write shield includes a first end face
portion located forward of the end face of the main pole along
the direction of travel of the recording medium;
the first return path section includes: a yoke layer located
backward of the main pole along the direction of travel of the
recording medium; a first coupling part that couples the yoke
layer and the write shield to each other; and a second coupling
part that is located away from the medium facing surface and
couples the yoke layer and the main pole to each other;
the expansion layer, the sensor, and the nonmagnetic part
are located between the read head unit and the write head unit;
[L] the first and second heaters are located at positions
other than between the read head unit and the write head unit,
the positions being such that the expansion layer, the sensor,
and the nonmagnetic part are interposed between the first and
second heaters',
no heater is present between the read head unit and the
write head unit; and
the expansion layer has a thermal conductivity and a
linear thermal expansion coefficient higher than those of the
nonmagnetic part.
(Contested limitation L bracketed and emphasized).
Rejection
Claims 1—6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Kanaya et al. (US
8,199,431 B2; iss. June 12, 2012) (hereinafter “Kanaya”) in view of Araki et
al. (US 2010/0165517 Al; pub. July 1, 2010) (hereinafter “Araki”).
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ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We find Appellants’ arguments persuasive for the reasons
discussed infra. We highlight and address specific findings and arguments
for emphasis in our analysis below.
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
We decide the following issue presented in this appeal:
Issues: Under § 103, did the Examiner err by finding the cited
combination of Kanaya and Araki would have taught or suggested contested
limitation L:
the first and second heaters are located at positions other
than between the read head unit and the write head unit, the
positions being such that the expansion layer, the sensor, and the
nonmagnetic part are interposed between the first and second
heaters[J
within the meaning of claim 1? 1
The ultimate issue of obviousness is a question of law that turns upon
four underlying factual determinations: (1) the scope and content of the prior
art, (2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) objective indicia of
nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17—18 (1966),
as reaffirmed by KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In
KSR, the Supreme Court further guides that “the combination of familiar
1 We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416.
We find the dispositive question in this appeal is whether the
Examiner provided sufficient evidence to establish the obviousness of the
claimed structural arrangement of components: “such that the expansion
layer, the sensor, and the nonmagnetic part are interposed between the
first and second heaters, as required by the language of claim 1.
(Emphasis added). The question of obviousness in this appeal turns upon
the Graham factors, and in particular, Graham factor 4: “objective indicia of
nonobviousness.”
Regarding Graham factors (1) (the scope and content of the prior art),
and (3) {the differences between the claimed invention and the prior art), the
Examiner does not rely on the secondary Araki reference for teaching or
suggesting contested limitation L. {See Final Act. 5). Nor does the Examiner
find contested limitation L is taught or suggested by Kanaya:
As recited in claim 1, Kanaya et al. [is] silent regarding first and
second heaters, and the first and second heaters are located at
positions other than between the read head unit and the write
head unit, the positions being such that the expansion layer, the
sensor, and the nonmagnetic part are interposed between the first
and second heaters.
(Final Act. 6).
Instead of providing specific evidence to reject contested limitation L,
the Examiner is guided by In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It
is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.”). The
Examiner further notes there is no invention in relocating known parts,
when the functioning of the apparatus is not changed by the relocation,
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citing In reJapikse, 181 F.2d 1019, 1023 (CCPA 1950) (“As to that
limitation is was held that there would be no invention in shifting the starting
switch disclosed by Cannon to a different position since the operation of the
device would not thereby be modified.”).
In the presumptive absence of any evidence of “objective indicia of
nonobviousness” (Graham factor 4, e.g., unexpected results, long felt but
unmet need, and/or evidence of commercial success, inter alia), the
Examiner finds “the recited numbers and locations of [the claimed] heaters
were predictable at the time of Applicant’s disclosure.” (Final Act. 6)
(emphasis added).
The Examiner further reasons that “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was made to arrive at
the recited number and locations of heaters in the head of Kanaya,” based on
the rationale that “one of ordinary skill in the art would have had reason to
try any number of heaters within the range of numbers of heaters known in
the art,” citing in support, Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1322 (Fed. Cir. 2004). (Final Act. 6) (emphasis added). The
Examiner additionally finds “to arbitrarily select a location absent any
change in functioning whatsoever due to the relocation [was] notoriously
well known in the art.” (Id.) (emphasis added).
Declaration under 37 C.F.R. §1.132
Subsequent to the Final Action (mailed May 28, 2014), a Declaration
under 37 C.F.R. §1.132, was filed attesting to an “unexpected discovery”
(1 6) regarding the use of two heaters. The Declaration was filed on
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October 17, 2014, by the first named inventor (Yoshitaka Sasaki). The
Examiner addresses the Declaration in the Answer (4):
although Appellant's affidavit purports to establish that
independent adjustment of 2 heaters causes 2 independent
quantities of protrusion, which “makes it possible that” a read
distance could be optimized for reading during a read operation
and that a write distance could be optimized for writing during a
write operation, it is noted by the Examiner that independent
adjustment of heaters is not recited in the claims, and that
independent optimization of read and write distance is not recited
in the claims. Although the claims are interpreted in light of the
specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d
1057 (Fed. Cir, 1993).
We note it is uncontested in the record that Kanaya only teaches a
single heater. See e.g., Figs. IB, 1C, Fig. 2, heater 8; see also, col. 6,1. 37,
col. 7,1. 27. Thus, we find Graham factors: (1) the scope and content of the
prior art, and (3) the differences between the claimed invention and the prior
art, are clear and uncontested in the record.
Appellants note in the principal Brief:
the present application explains that the inventors were able to
increase the accuracy in the control of the amount of protrusion
of part of the medium facing surface and the protruding shape
thereof by using two heaters instead of one heater (see, e.g.,
specification, page 43, lines 16-19). There is no recognition in
the art of this unexpected result (i.e., increase in accuracy of
controlling the protruding part) from the addition of a heater
and the positioning of the heaters, as supported in more detail
in the Rule 132 Declaration (see Rule 132 Declaration,
paragraphs 10 and 11).
(App. Br. 8).
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Turning to the Declaration under 37 C.F.R. § 1.132, we note
numbered paragraph 6:
6. The pending claims are directed to the unexpected
discovery that a magnetic head with two heaters, instead of the
single heater described in Kanaya, can improve the accuracy
of the control of the amount of the protrusion of a medium
facing surface of the magnetic head that faces the recording
medium.
The Declarant further states, inter alia:
7. As discussed in the specification of the present application
at page 28, lines 19-21, “The protruding shape of the medium
facing surface 2 can be controlled somewhat by adjusting the
respective magnitudes of the currents passed through the heaters
82 and 92 independently.”
9. By adjusting the respective magnitudes of the currents
passed through the two heaters independently, it becomes
possible to control the shape of the medium facing surface so
that the distance from the read head unit to the surface of the
recording medium and the distance from the write head unit to
the surface of the recording medium can be controlled
independently of each other.
19. According to Kanaya, since there is provided only one
heater, it is not possible to control the shape of the medium
facing surface so that the distance from the read head unit to the
surface of the recording medium and the distance from the write
head unit to the surface of the recording medium can be
controlled independently of each other. Consequently, the
above-described advantages achieved by the structure and
arrangement recited in the claims could not be expected or
obtained from the structure of Kanaya.
20. Kanaya's magnetic head has only one heater. Thus,
even if the magnitude of the electric current passed through the
heater is changed to vary the amount of heat to be generated by
the heater, it can only change the amount of protrusion of the
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most protruded portion of the medium facing surface. Kanaya's
magnetic head is obviously unable to control the amount of
protrusion of the portion of the medium facing surface
corresponding to the read head unit and the amount of
protrusion of the portion of the medium facing surface
corresponding to the write head unit independently of each
other.
(Emphasis added).
Although we must be cautious of self-serving declarations by named
inventors, 2 we find the Declaration (||7—8) is supported by citations to
specific portions of the Specification, and also by accurate descriptions
(Dec. H5, 6, 19, 20) of the teachings of Kanaya. We have fully considered
the Declaration and the inventor’s statements therein as evidence of
secondary considerations to be weighed as Graham factor (4): objective
indicia of nonobviousness.
We particularly note that contested limitation L of claim 1 requires
more than a mere duplication of heaters (“located at positions other than
between the read head unit and the write head unit. . . .”). The language
of claim 1 specifically requires a particular structural arrangement of
components located between the heater components:
[L] “the first and second heaters are located at positions other
than between the read head unit and the write head unit, the
positions being such that the expansion layer, the sensor, and
the nonmagnetic part are interposed between the first and
second heaters.” (emphasis added).
2 See Reese v. Hurst, 661 F.2d 1222, 1239 (CCPA 1981) (discussing the
weight given to self-serving declarations made by an Appellant in an
interference proceeding).
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Regarding evidence of secondary considerations (such as unexpected
results), our reviewing court provides guidance:
“For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a nexus
between the evidence and the merits of the claimed invention.”
Wyersv. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)
(quotation omitted). Where the offered secondary consideration
actually results from something other than what is both claimed
and novel in the claim, there is no nexus to the merits of the
claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d
1358, 1369 (Fed.Cir.2011) (“If commercial success is due to an
element in the prior art, no nexus exists.”); Ormco Corp., 463
F.3d at 1312 (“[I]f the feature that creates the commercial
success was known in the prior art, the success is not pertinent.”);
In re Woodruff, 919 F.2d 1575, 1578 (Fed.Cir.1990).
In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
The Examiner finds there is no nexus between the Declaration
evidence and the merits of the claimed invention, emphasizing that
“independent adjustment of heaters is not recited in the claims, and that
independent optimization of read and write distance is not recited in the
claims.” (Ans. 4).
However, we find the advantage proffered by the inventor of
independent adjustment of heaters (Declaration || 19—20) and the
associated “unexpected discovery that a magnetic head with two heaters
. . . can improve the accuracy of the control of the amount of the protrusion
of a medium facing surface of the magnetic head that faces the recording
medium” (Declaration | 6), is only possible with at least two heaters,
which are expressly recited as “first and second heaters” in claim 1. The
Examiner has shown a single heater is present in Kanaya: “a heater 8 that
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generates heat for causing the medium facing surface to protrude in part (see
especially Fig. IB);” (Final Act. 2).
Contrary to the Examiner’s findings (Ans. 4), we find the purported
advantages and unexpected results set forth in the Declaration have a direct
nexus to the claimed invention, which expressly requires two heaters, with a
specific structural arrangement “such that the expansion layer, the sensor,
and the nonmagnetic part are interposed between the first and second
heaters.” (Claim 1). Therefore, we find the Declarant sufficiently
establishes “a nexus between the evidence and the merits of the claimed
invention.” Wyers, 616 F.3d at 1246.
To discredit the Declaration, all the Examiner needs to show is a prior
art reference with two heaters, structurally arranged with the interposed
components, as claimed. Cf Woodruff, 919 F.2d at 1578 (“[I]f the feature
that creates the commercial success was known in the prior art, the success
is not pertinent.”). Here, the Examiner has not found a reference depicting
two heaters, structurally arranged as claimed. (Claim 1). 3
Even if arguendo, we accorded no weight to the Declaration evidence
of unexpected results, and even if duplication of heaters “at positions other
than between the read head unit and the write head unit” (claim 1) would
have arguendo been a mere duplication of parts, and therefore obvious to
try, and would have resulted in predictable results (two heaters instead of
one), we find what is clearly missing from the evidence provided by the
Examiner is the claimed structural arrangement of components located
3 When questioned during the oral hearing, Appellants’ representative stated
that he was unaware of any prior art with the two heater arrangement as
recited in contested limitation L of Appellants claim 1.
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between the two heater components: [L] “the first and second heaters are
located at positions other than between the read head unit and the write
head unit, the positions being such that the expansion layer, the sensor,
and the nonmagnetic part are interposed between the first and second
heaters.” (Claim 1) (emphasis added).
Although we recognize that the structure of an individual component
does not change when the component is moved to a different location (such
as the switch in Japikse, 181 F.2d at 1023), on this record, the Examiner has
not shown the claimed structural arrangement of components recited in
contested limitation L of claim 1 would have been obvious.
Nor has the Examiner established in the record why an artisan of
ordinary skill in the art, having knowledge of Kanaya and Araki (and with
no prior knowledge of Appellants’ Specification and claims), would have
been motivated to arrange the components found in the prior art in the
manner required by contested limitation L of claim 1. Thus, regarding
Graham factor (2), the level of ordinary skill in the art, we find the
Examiner has not established that an artisan of ordinary skill in the art,
having knowledge of the cited prior art, would have possessed a sufficient
level of skill to independently arrive at Appellants’ claimed improvement. 4
4 In determining the level of skill in the art, various factors may be
considered, including “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)).
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Conclusion
For the reasons discussed above, we find all four Graham factors
weigh against the Examiner’s legal conclusion of obviousness for claim 1:
(1) the scope and content of the prior art, (2) the level of ordinary skill in the
art, (3) the differences between the claimed invention and the prior art, and
(4) objective indicia of nonobviousness.
Accordingly, for the reasons argued by Appellants in the Briefs, as
discussed above, we find a preponderance of the evidence does not support
the Examiner’s legal conclusion of obviousness for claim 1.
Without any specific evidence of record to show the claimed
structural arrangement of components recited in contested limitation L of
claim 1, we are constrained on this record to reverse the Examiner’s
rejection under § 103 of independent claim 1, and the §103 rejection of
claims 2—6 which depend therefrom.
DECISION
We reverse the Examiner’s decision rejecting claims 1—6 under 35
U.S.C. § 103(a).
REVERSED
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