Ex Parte Yoon

Board of Patent Appeals and Interferences

Mar 7, 2012

11408722 (B.P.A.I. Mar. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/408,722 04/21/2006 Taeyong Yoon HSJ920050111US1 9777
45552 7590 03/07/2012
HITACHI C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
THOMAS, LUCY M
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
03/07/2012 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 TAEYONG YOON
____________________

Appeal 2010-000843
Application 11/408,722
Technology Center 2800
____________________

Decided:
____________________

Before DEBRA K. STEPHENS, GREGORY J. GONSALVES, and BRUCE
R. WINSOR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000843
Application 11/408,722

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
According to Appellant, the invention relates to a bulk erase tool. The
bulk erase tool includes a first polarity top main magnet, a first polarity
bottom main magnet, a second polarity top main magnet and a second
polarity bottom main magnet. The bulk erase tool also includes a first
polarity cancel magnet at each of the second polarity top and the second
polarity bottom main magnets. Additionally, the bulk erase tool also
includes one second polarity cancel magnet at each of a portion the first
polarity top and the first polarity bottom main magnets. The first polarity
top main magnet, the first polarity bottom main magnet, the second polarity
top main magnet and the second polarity bottom main magnet reduce the
bulk erase tool field strength at a first portion of the bulk erase tool.
(Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A bulk erase tool comprising:
a top bulk erase magnet assembly comprising:
a first polarity main erase top magnet, having a second
polarity top cancel magnet at a portion thereof; and
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a second polarity main erase top magnet, having a first
polarity top cancel magnet at a portion thereof; and
a bottom bulk erase magnet assembly comprising:
a first polarity main erase bottom magnet, having a
second polarity bottom cancel magnet at a portion thereof;
and
a second polarity main erase bottom magnet having a
first polarity bottom cancel magnet at a portion thereof, said
first polarity top and bottom cancel magnets and said second
polarity top and bottom cancel magnets for reducing the bulk
erase tool field strength at said first portion of said bulk erase
tool.

Prior Art
Serizawa US 6,594,099 B2 Jul. 15, 2003

Objections
The Drawings are objected to under 37 C.F.R. 1.83(a) for failing to
show every feature specified in the Claims. The Drawings are objected to
under 37 C.F.R. 1.83(a) because they fail to show the polarities of the
magnets 310, 320, 325, 315, and the directions of the flux lines in Figure 3A
as described in the Specification. The Drawings are objected to under 37
C.F.R. 1.83(b) for being incomplete. (App. Br. 7).
Appellant presented the argument regarding the objection of drawings
under 37 C.F.R. § 1.83(a) and 1.83(b) (App. Br. 8-10). Notwithstanding
Appellant’s arguments, the objections relate to petitionable subject matter
under 37 C.F.R § 1.181 and therefore, this matter is not before us since we
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lack jurisdiction over petitionable matters. See, e.g., MPEP § 706.01 (“[T]he
Board will not hear or decide issues pertaining to objections and formal
matters which are not properly before the Board.”); see also MPEP § 1201
(“The Board will not ordinarily hear a question that should be decided by the
Director on petition….”).

Rejections
(1) Claims 1, 8, and 15 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
(2) Claims 1-20 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Serizawa.

ISSUE 1
35 U.S.C. § 112, second paragraph: claims 1, 8, and 15
Appellant argues the Specification clearly shows the features at issue
in the Figures and Specification (App. Br. 11). Further, Appellant contends
it is well known magnets have two poles and thus, if one is oriented in a first
polarity, the second must be oriented in the opposite orientation (id.). As a
result, according to Appellant, logic dictates the orientation of magnets with
respect to one another (Reply Br. 3).
In response, the Examiner maintains that given the recitation of first
polarity top and bottom main magnets, second polarity top and bottom main
magnet, first and second polarity cancel magnets, and such, it is unclear as to
the orientation of the orientation of the magnetic poles of the magnets (Ans.
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8-9). This confusion, according to the Examiner, is due to three-dimensional
space and the various orientations the magnetic poles could be (id.).

Issue 1: Has the Examiner erred in concluding that independent
claims 1, 8, and 15 are being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention?

ANALYSIS
A patent specification must “conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. This requirement
is satisfied where “one skilled in the art would understand the bounds of the
claim when read in light of the specification . . . .” Exxon Research & Eng’g
Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). We agree with
the Examiner’s conclusion (Ans. 8-9) that given the claim recitation, the
claim subject matter to which Appellant regards as the invention is
indefinite. Appellant’s invention as recited in independent claims 1, 8, and
15, does not recite structural relationships between the various magnets. As
a result, it is unclear what the relationship is between the various magnets
and how they interact. Therefore, we conclude the invention as recited in
claim 1 and commensurately recited in claims 8 and 15 is indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention.
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Accordingly, the Examiner did not err in concluding the invention as
recited in claims 1, 8, and 15 is indefinite under 35 U.S.C. § 112, second
paragraph.

ISSUE 2
35 U.S.C. § 102(a): claims 1-20
Appellant argues their invention is not anticipated by Serizawa (App.
Br. 14-15). Appellant contends the plate members 120 and 121 of Serizawa
are not needed to reduce the adverse effects of leaked magnetic flux since if
the claimed features were anticipated, the adverse effects would have
already been reduced (Reply Br. 4).

Issue 2: Has the Examiner erred in finding Serizawa discloses the
invention as recited in independent claim 1?

ANALYSIS
Based upon Appellant’s arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1-20. (See App. Br.
14-15). We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
Initially we note the phrase “for reducing the bulk erase tool field
strength at said first portion of said bulk erase tool” recited in independent
claim 1is a statement of intended use. A statement of intended use cannot
distinguish over a prior art apparatus that discloses all the recited limitations
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and is capable of performing the recited function. See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). We note that “[a]n intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often … appear
in the claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
Appellant claims a bulk erase tool. No function of the bulk erase tool
or any portion thereof is recited. Nor is any relationship between the top and
bottom main magnets recited.
Therefore, the recited “for reducing the bulk erase tool field strength
at said first portion of said bulk erase tool” is a statement of intended use.
Based upon our review of the record and to the extent that we
understand the scope of the claim in light of the indefiniteness as discussed
above, we find Appellant has failed to present substantive arguments
supported with specific factual evidence of sufficient character and weight to
persuade us of error regarding the Examiner’s findings of fact. Indeed,
Appellant has, for example, underlined limitations in the recited claim
without providing any explanation as to why the portions of Serizawa cited
by the Examiner and the Examiner’s findings are in error (see App. Br. 13).
Accordingly, Appellant has not persuaded us that the Examiner erred
in finding Serizawa discloses the invention as recited in independent claim 1
and commensurately recited in independent claims 8 and 15. Dependent
claims 2-7, 9-14, and 16-20 fall with their respective independent claims.
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Therefore, the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 102(a) for anticipation by Serizawa.
DECISION
The Examiner’s rejection of claims 1, 8, and 15 under
35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention is affirmed.

The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 102(a) as
being anticipated by Serizawa 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

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