Ex Parte Tondra

Patent Trial and Appeal Board

Nov 13, 2014

12284989 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK C. TONDRA
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Appeal 2012-003982
Application 12/284,989
Technology Center 3700
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Before: MICHAEL W. KIM, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1–8 under 35 U.S.C. § 102(e) as anticipated by Hsiao
(U.S. 6,570,739 B2 issued May 27, 2003). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2012-003982
Application 12/284,989

2
THE INVENTION

Appellant’s invention relates to a method for fabricating a
ferromagnetic thin-film based magnetic field detection system. Spec. 2, ¶ 8.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.

l. A method for fabricating a ferromagnetic thin-film based
magnetic field detection system, said method comprising:
forming a substrate having a portion thereof supporting a
magnetic field sensor at a selected location;
depositing a channel base material on at least a portion of
said substrate and over said magnetic field sensor; and
forming an opening adjacent to said selected location in said
channel base material through a processing surface
thereof that is offset from said substrate more than is said
magnetic field sensor and such that said magnetic field
sensor correspondingly responds to selected changes
appearing in magnetic fields that occur in said opening.

OPINION
Anticipation of Claim 1
The Examiner finds that Hsiao discloses all of the limitations of
claim 1. Ans. 4–5. The Examiner finds that the limitation in claim 1
directed to the magnetic field sensor responding to changes in magnetic
fields that occur in the opening is satisfied by Hsiao’s disclosure of a
computer hard drive read-write head. Id. Particularly, the Examiner finds
that Hsiao’s read head comprising sensor 122 reads data from the disk and
that such reading of data satisfies the limitation in claim 1 directed to
responding to changes in magnetic fields that occur in the claimed opening.
Id.
Appeal 2012-003982
Application 12/284,989

3
Appellant traverses the Examiner’s rejection by arguing that Hsiao’s
read head sensor cannot respond directly to fields occurring in the opening
in the Hsiao write head because it is magnetically shielded from the write
head. App. Br. 6. In response, the Examiner concedes that Hsiao’s shield
126 would probably prevent sensor 122 from directly sensing a magnetic
field in material 138. Ans. 6. Nevertheless, the Examiner states that the
claim does not require the sensor to directly sense the magnetic fields
appearing in the opening. Ans. 6. The Examiner’s position is that changes
in the magnetic fields “occur” in the opening at the point in the time that
data is written by the write head to the disk. Ans. 9. Subsequently, when
the data is read by Hsiao’s sensor, the sensor senses the magnetic pattern
written to the disk, which corresponds to the changes in the magnetic field
that occurred at the previous point in time when the data was written to the
disk. Id. According to the Examiner, the claim language is satisfied because
the same magnetic field (data) that was written by the write head
corresponds to the magnetic field (data) that is sensed by the read head. Id.
The dispute between Appellant and Examiner boils down to a
question of claim construction. Appellant construes the claim language
regarding sensing magnetic fields that “occur” as being limited to sensing a
change in a magnetic field as it occurs in real time. See App. Br. 4. The
Examiner construes the claim language more broadly such that the change in
the magnetic field can occur at one point in time and the sensing of such
change can take place at some indeterminate, but later time. Ans. 6. In
other words, Appellant limits the claim language to directly sensing the
magnetic field change in real time and the Examiner allows for the magnetic
Appeal 2012-003982
Application 12/284,989

4
field change to be sensed indirectly and subsequent to the point in time when
the change in the magnetic field occurred.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see
also In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007).
Claim terms generally are given their ordinary and customary meaning, as
understood by a person of ordinary skill in the art, in the context of the entire
patent disclosure. Translogic, at 1257.1
Turning to the Specification, paragraphs ¶¶ 91, 92, and 93, and
accompanying Figure 28 describe and depict a magnetic detector based
assay sample solution analysis system. An inlet capillary 53 is inserted in
inlet chamber 52 that can be connected to a syringe to supply sample
solution for analysis. Id. ¶ 91. Constant pressure applied to a connected
syringe containing the sample solution induces fluid flow through the
capillary to inlet reservoir 50. Id. at ¶ 92. The fluid flows through an inlet
channel 54 to an analysis pool 55 over magnetoresistors 34 of the magnetic
field detector bridge circuit. Id. The Specification then explains that: “After
the detection of any magnetic fields associated with the sample solution the
solution travels on to an outlet channel 56” and, eventually, the sample
solution exits through outlet capillary 60. Id. (emphasis added).
Hsiao discloses a magnetic read/write head for a hard disk drive.
Hsiao, Abstract. Hsiao element 122 is a read head element that is disposed
between first and second read head shields. Id. Fig. 3, col. 3, ll. 44–46.

1 Citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
Appeal 2012-003982
Application 12/284,989

5
Figures 3 through 21 of Hsiao depict the sequential depositing and etching
of material to create a magnetic write head. Id. col. 3, l. 39 – col. 5, l. 54.
The Examiner finds that Hsiao’s write head writes data to a disk and
the read head comprising sensor 122 later reads this data. Ans. 5. The
Examiner interprets this subsequent reading of data as satisfying the claim
language in claim 1 directed to responding to changes in the magnetic field
that occur in the opening. Id.
The Examiner concedes that Hsiao’s shield 126 would probably
prevent the sensor 122 from directly sensing a magnetic field in material
138. Ans. 6. Nevertheless, the Examiner posits that the claim does not
require the sensor to directly sense the magnetic fields appearing in the
opening. Id. According to the Examiner, the claim language is satisfied
because the sensor indirectly produces a response that corresponds to the
fields that were generated by coil 202 in the opening at a prior point in time
when data was written to the disk.
In our view, the Examiner’s construction of what it means for the
magnetic field sensor to “correspondingly respond” to changes in a magnetic
field that “occurs” in the opening is unreasonably over broad. Hsiao’s
read/write head basically is used to store binary data on the magnetic storage
medium of hard disk drive. We do not believe that a person of ordinary skill
in the art would equate the writing and reading of binary data to a disk drive
as corresponding to the direct sensing of magnetic fields as taught in
Appellant’s disclosure. A person of ordinary skill in the art at the time of
the invention reading the claims in view of and in the context of Appellant’s
entire disclosure, would understand the claim language to require the sensing
of magnetic field changes in real time.
Appeal 2012-003982
Application 12/284,989

6
For the foregoing reasons, we do not sustain the Examiner’s
anticipation rejection of claim 1.
Anticipation of Claims 2–8

Claims 2–8 depend, directly or indirectly, from claim 1. Clms. App’x.
The Examiner’s rejection of these claims suffers from the same infirmity
that we have identified above with respect to claim 1. Thus, for the same
reasons discussed above with respect to claim 1, we do not sustain the
rejection of claims 2–8.

DECISION
The decision of the Examiner to reject claims 1–8 is reversed.

REVERSED

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