Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species I (Figures 2A, 2B, 5A-6) (corresponding to the elected (product) claims 1-8 and 13-20) in the reply filed on August 31, 2026, is acknowledged.
The Examiner notes, that dependent claims 8 and 20 are drawn to non-elected Species III (Figs. 7A-7B), since the elected Species I does not include the support member as having “a fourth media facing surface adapted to facing moving magnetic tape” (e.g., 730b as depicted in Figs. 7A, 7B). Elected Species I ((Figures 2A, 2B, 5A-6) discloses a support member as having only a single media facing surface 230.
As such, in addition to the method claims 9-12 being withdrawn, product claims 8 and 20 are also withdrawn as being directed to a non-elected species, there being no allowable generic claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 12, 2023 is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the information disclosure statement has been considered by the examiner.
Drawings
The drawings were received on June 12, 2023. These drawings are accepted.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 5 and 17 are objected to because of the following informalities:
(i) With regard to claim 5 (line 2) and claim 17 (lines 2-3), the term “second bank of transducer” should be changed to the term --second bank of transducers--.
Appropriate correction is required.
Examiner Comments
The Examiner has cited particular columns and line numbers, paragraphs, or figures in the reference(s) as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant, in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biskeborn et al. (US 8,264,793 B2).
As per claim 1, Biskeborn et al. (US 8,264,793 B2) discloses a device for data storage on storage media, comprising: a head (e.g., see Fig. 17) having: a support member (e.g., 1104) having a first media facing surface (e.g., uppermost surface of (1104) that faces a magnetic tape) adapted to face moving media; and a wafer chiplet (e.g., 1000) disposed on the support member (e.g., 1104) and having head transducers formed in the chiplet and adapted to at least one of read data from and write data to media moving past the head transducers (e.g., see, inter alia, col. 1, ll. 7-9; col. 2, l. 62 through col. 3, l. 7; col. 4, l. 63 through col. 5, l. 4); abstract - “Each chip has circuitry selected from a group consisting of read elements, write elements, and combinations thereof. A tape bearing surface of each chip is generally aligned with the tape bearing surface of the associated beam. Also, an end of each chip is generally aligned with the face of the associated beam. Where closures are used, this eliminates the need to aligning the closure to skiving edges of the beam”), the wafer chiplet further having a second media facing surface (e.g., see Fig. 17, the uppermost surface of chiplet (1000) that faces the magnetic tape) adapted to face moving media.
As per claim 2, wherein the head is a tape head (e.g., see Fig. 1; 100 - see Fig. 1; col. 4, ll. 3-9), and the media is magnetic tape (e.g., 106 – see Fig. 1; col. 4, ll. 3-9) and is adapted to move in a linear direction (left-to-right or right-to-left direction in Figs. 1 and 17), wherein the support member (1104) and the wafer chiplet (1000) each have lateral widths in a lateral direction (perpendicular to the aforementioned tape linear direction) transverse to the tape linear direction and wherein the lateral width of the chiplet (1000) is less than the lateral width of the support member. (1104) See, inter alia, Fig. 17; col. 6, ll. 17-31.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Biskeborn et al. (US 8,264,793 B2) in view of Brown et al. (US 11,087,786 B1).
See the description of Biskeborn et al. (US 8,264,793 B2), supra.
As per claim 3, Biskeborn et al. (US 8,264,793 B2) remains silent with regard to wherein the device is for use with tape head actuators adapted to cause lateral motion of the tape head relative to the magnetic tape, in a lateral direction transverse to the tape linear direction, and over a predetermined range of tape head and magnetic tape relative lateral motion, wherein the wafer chiplet has a lateral width in a lateral direction transverse to a tape linear direction and wherein the lateral width of the chiplet is less than the predetermined range of tape head and magnetic tape relative lateral motion.
Such features, however, are known in the art.
As just one example, Brown et al. (US 11,087,786 B1) discloses an analogous magnetic tape head, in the same field of endeavor as Biskeborn et al. (US 8,264,793 B2), wherein, as per claim 3, Brown et al. (US 11,087,786 B1) expressly discloses wherein the corresponding device is for use with tape head actuators (e.g., 310, 315) adapted to cause lateral motion of the tape head (e.g. 410 – Fig. 4B) relative to the magnetic tape (Fig. 4B), in a lateral direction transverse to the tape linear direction, and over a predetermined range of tape head (410) and magnetic tape relative lateral motion, wherein, the head bar (410) has a lateral width in a lateral direction transverse to a tape linear direction and wherein the lateral width of the head bar (410) is less than the predetermined range of tape head and magnetic tape relative lateral motion. See Fig. 4B.
Given the express teachings and motivations, as espoused by Brown et al. (US 11,087,786 B1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the chiplet of Biskeborn et al. (US 8,264,793 B2) with the tape head actuators adapted to cause lateral motion of the tape head relative to the magnetic tape, in a lateral direction transverse to the tape linear direction, and over a predetermined range of tape head and magnetic tape relative lateral motion, wherein the wafer chiplet has a lateral width in a lateral direction transverse to a tape linear direction and wherein the lateral width of the chiplet is less than the predetermined range of tape head and magnetic tape relative lateral motion, as suggested and taught by Brown et al. (US 11,087,786 B1), in order to advantageously provide a head with less mass, enabling faster response time to move the head via the actuator, to access portions of the magnetic tape in a much quicker and more efficient manner. See col. 7, ll. 34-47 of Brown et al. (US 11,087,786 B1).
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claims 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Biskeborn et al. (US 8,264,793 B2) in view of Lakshmikumaran et al. (US 8,958,175 B1).
See the description of Biskeborn et al. (US 8,264,793 B2), supra.
As per claim 4, Biskeborn et al. (US 8,264,793 B2) remains silent with regard to wherein the chiplet has a third media facing surface adapted to face moving magnetic tape, wherein the third media facing surface is a curved surface positioned intermediate the first media facing surface of the support member, and the second media facing surface of the chiplet.
Such features, however, are known in the art.
As just one example, Lakshmikumaran et al. (US 8,958,175 B1) discloses an analogous magnetic tape head, in the same field of endeavor as Biskeborn et al. (US 8,264,793 B2), wherein, as per claim 4, Lakshmikumaran et al. (US 8,958,175 B1) expressly discloses a corresponding chiplet (300, 300’, 300’’) that has a corresponding third media facing surface (e.g., 318, 318’, 324, 324’, etc.) adapted to face moving magnetic tape (e.g., 200), wherein the third media facing surface (e.g., 318, 318’, 324, 324’, etc.) is a curved surface (e.g., see Fig. 4c; col. 9, ll. 23-41), which when combined with Biskeborn et al. (US 8,264,793 B2), would be positioned intermediate the first media facing surface of the support member (1104 of Biskeborn et al. (US 8,264,793 B2)), and the second media facing surface of the chiplet (uppermost surface of (1104) of Biskeborn et al. (US 8,264,793 B2)).
Given the express teachings and motivations, as espoused by Lakshmikumaran et al. (US 8,958,175 B1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the chiplet of Biskeborn et al. (US 8,264,793 B2) with the curved third media facing surface, in the manner provided for in claim 4, as taught by Lakshmikumaran et al. (US 8,958,175 B1), in order to advantageously eliminate “contact between the tape head and portions of the tape not currently being read and/or written reduces friction between the tape and the tape head and facilitates control of tape head lateral positioning, tape tension, and tape speed.” See abstract of Lakshmikumaran et al. (US 8,958,175 B1).
As per claim 6, the combination of Lakshmikumaran et al. (US 8,958,175 B1) to Biskeborn et al. (US 8,264,793 B2), in the manner set forth above, would thus yield wherein the first media facing surface (e.g., uppermost surface of (1104) that faces a magnetic tape of Biskeborn et al. (US 8,264,793 B2)) defines a first plane, the second media facing surface (e.g., uppermost surface of (1000) that faces a magnetic tape of Biskeborn et al. (US 8,264,793 B2)) defines a second plane offset from the first plane (Fig. 17 of Biskeborn et al. (US 8,264,793 B2)), and the third media facing surface (e.g., 318, 318’, 324, 324’, etc. of Lakshmikumaran et al. (US 8,958,175 B1)) is curved (Fig. 4c of Lakshmikumaran et al. (US 8,958,175 B1)) to transition from the second plane to the first plane.
As per claim 7, Biskeborn et al. (US 8,264,793 B2) further discloses wherein the support member (1104) is a U-shaped member (see Fig. 11; col. 5, ll. 14-27) which defines a lateral axis and wherein the curved shape of the third media facing surface (of Lakshmikumaran et al. (US 8,958,175 B1) as applied to Biskeborn et al. (US 8,264,793 B2)) is a surface which is curved both in a direction parallel to the U-shaped member lateral axis and in a direction transverse to the U-shaped member lateral axis. See Figs. 4c, 5a, 5c of Lakshmikumaran et al. (US 8,958,175 B1).
Regarding the limitation that the surface referenced in claim 7 is a “polished surface,” the following is noted: the limitation “polished surface” is considered a product-by-process limitation.
The product by process limitations are directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17(footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessman, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al, 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process limitations or steps, which must be determined in a “product by process” claim limitation, and not the patentability of the process limitations. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product-by-process” claim limitation or not. Note that the applicant has the burden of proof in such cases, as the above case law makes clear.
The final product limitation derived from the claimed “process limitation” of “polished surface” fails to result in a structural difference between the disclosure of Lakshmikumaran et al. (US 8,958,175 B1) (as applied to Biskeborn et al. (US 8,264,793 B2)) and the claimed product, at least at it applies to the product limitation(s) “gleaned” from the process limitation(s). As such, Lakshmikumaran et al. (US 8,958,175 B1) is seen to meet this limitation as it applies to the patentability of the final structure.
Additionally, as per claim 7, although Biskeborn et al. (US 8,264,793 B2) remains silent regarding the composition of the conventional U-shaped member (beam) as being formed of a ceramic, Official notice is taken that U-shaped members formed of ceramics used in magnetic tape heads, are notoriously old and well-known in the art.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to provide the composition of the “wafer stock” material of the U-beam of Biskeborn et al. (US 8,264,793 B2) as being made of ceramic, in order to advantageously provide an inexpensive and durable piece of support material, which is easily manufactured to provide such U-beam support structures, as is well-known, established and appreciated in the art.
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Biskeborn et al. (US 8,264,793 B2) in view of Biskeborn et al. (US 2008/0137235 A1).
See the description of Biskeborn et al. (US 8,264,793 B2), supra.
As per claim 5, Biskeborn et al. (US 8,264,793 B2) remains silent with regard to wherein the support member defines a center, wherein the tape head has a first bank of transducers and a second bank of transducer and wherein the chiplet is disposed on the support member so that the first bank of transducers of the tape head is centered on the support member and the second bank of transducers is offset from the center of the support member.
Such features, however, are known in the art.
As just one example, Biskeborn et al. (US 2008/0137235 A1) discloses an analogous magnetic tape head, in the same field of endeavor as Biskeborn et al. (US 8,264,793 B2), wherein, as per claim 5, Biskeborn et al. (US 2008/0137235 A1) discloses a tape head which has a first bank of transducers (e.g., group 4A – see, inter alia, Fig. 6) and a second bank of transducers (e.g., group 4B and/or 4C – see, inter alia, Fig. 6) and wherein the chiplet is disposed on a corresponding support member so that the first bank of transducers (4A) of the tape head is centered on the support member and the second bank of transducers is offset from the center of the support member – see Figs. 6, 11-13.
Given the express teachings and motivations, as espoused by Biskeborn et al. (US 2008/0137235 A1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the chiplet of Biskeborn et al. (US 8,264,793 B2) with the tape head having a first bank of transducers and a second bank of transducer and wherein the chiplet is disposed on the support member so that the first bank of transducers of the tape head is centered on the support member and the second bank of transducers is offset from the center of the support member, as expressly taught by Biskeborn et al. (US 2008/0137235 A1), in order to advantageously provide a group or array of transducers that can be utilized for tape dimensional expansions and/or contractions of the tape media – see abstract of Biskeborn et al. (US 2008/0137235 A1).
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Biskeborn et al. (US 8,264,793 B2) in view of Brown et al. (US 11,087,786 B1).
As per claim 13, Biskeborn et al. (US 8,264,793 B2) discloses a tape drive (drive for moving the tape (106) over the tape head (100) – Fig. 1; col. 1, ll. 40-45) for data storage on magnetic tape (106), comprising: a tape head (e.g., see Fig. 17) having a support member (e.g., 1104) having a first media facing surface (e.g., uppermost surface of (1104) that faces a magnetic tape) adapted to face moving magnetic tape (106) and a wafer chiplet (e.g., 1000) disposed on the support member (1104) and having tape head transducers formed in the chiplet and adapted to at least one of read data from and write data to magnetic tape moving past the tape head transducers (e.g., see, inter alia, col. 1, ll. 7-9; col. 2, l. 62 through col. 3, l. 7; col. 4, l. 63 through col. 5, l. 4); abstract - “Each chip has circuitry selected from a group consisting of read elements, write elements, and combinations thereof. A tape bearing surface of each chip is generally aligned with the tape bearing surface of the associated beam. Also, an end of each chip is generally aligned with the face of the associated beam. Where closures are used, this eliminates the need to aligning the closure to skiving edges of the beam”), the wafer chiplet (1000) further having a second media facing surface e.g., see Fig. 17, the uppermost surface of chiplet (1000) that faces the magnetic tape) adapted to face moving magnetic tape.
Moreover, as per claim 14, Biskeborn et al. (US 8,264,793 B2) discloses wherein the support member (1104) and the wafer chiplet (1000) each have lateral widths in a lateral direction (perpendicular to the aforementioned tape linear direction) transverse to the tape linear direction and wherein the lateral width of the chiplet (1000) is less than the lateral width of the support member. (1104) See, inter alia, Fig. 17; col. 6, ll. 17-31.
As per claim 13, Biskeborn et al. (US 8,264,793 B2) remains silent with regard to providing linear actuators configured to move the magnetic tape in a linear direction past the tape head; and lateral actuators configured to cause lateral motion of the tape head relative to the magnetic tape, in a lateral direction transverse to the tape linear direction.
Such features, however, are known in the art.
As just one example, Brown et al. (US 11,087,786 B1) discloses an analogous magnetic tape head, in the same field of endeavor as Biskeborn et al. (US 8,264,793 B2), wherein, as per claim 13, Brown et al. (US 11,087,786 B1) expressly discloses wherein the corresponding device includes linear actuators (e.g., motors for driving the tape reels (110) to cause linear movement of the magnetic tape (115) over the tape head (e.g., 320, 410)) configured to move the magnetic tape in a linear direction past the tape head (e.g., 320, 410); and lateral actuators (e.g. 310, 315) configured to cause lateral motion of the tape head (e.g., 320, 410) relative to the magnetic tape, in a lateral direction transverse to the tape linear direction.
As per claim 15, Brown et al. (US 11,087,786 B1) further wherein the tape head actuators (e.g., 310, 315) adapted to cause lateral motion of the tape head (e.g. 410 – Fig. 4B) relative to the magnetic tape (Fig. 4B), in a lateral direction transverse to the tape linear direction, and over a predetermined range of tape head (410) and magnetic tape relative lateral motion, wherein, the head bar (410) has a lateral width in a lateral direction transverse to a tape linear direction and wherein the lateral width of the head bar (410) is less than the predetermined range of tape head and magnetic tape relative lateral motion. See Fig. 4B.
Given the express teachings and motivations, as espoused by Brown et al. (US 11,087,786 B1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the linear actuators configured to move the magnetic tape in a linear direction past the tape head; and lateral actuators configured to cause lateral motion of the tape head relative to the magnetic tape, in a lateral direction transverse to the tape linear direction, as taught by Brown et al. (US 11,087,786 B1), to the device of Biskeborn et al. (US 8,264,793 B2), in order to advantageously provide a head with less mass, enabling faster response time to move the head via the actuator, to access portions of the magnetic tape in a much quicker and more efficient manner. See col. 7, ll. 34-47 of Brown et al. (US 11,087,786 B1).
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claims 16, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Biskeborn et al. (US 8,264,793 B2) in view of Brown et al. (US 11,087,786 B1), as applied to claim 13, and further in view of Lakshmikumaran et al. (US 8,958,175 B1).
See the description of Biskeborn et al. (US 8,264,793 B2), supra.
As per claim 16, Biskeborn et al. (US 8,264,793 B2)/ Brown et al. (US 11,087,786 B1) remains silent with regard to wherein the chiplet has a third media facing surface adapted to face moving magnetic tape, wherein the third media facing surface is a curved surface positioned intermediate the first media facing surface of the support member, and the second media facing surface of the chiplet.
Such features, however, are known in the art.
As just one example, Lakshmikumaran et al. (US 8,958,175 B1) discloses an analogous magnetic tape head, in the same field of endeavor as Biskeborn et al. (US 8,264,793 B2)/ Brown et al. (US 11,087,786 B1), wherein, as per claim 16, Lakshmikumaran et al. (US 8,958,175 B1) expressly discloses a corresponding chiplet (300, 300’, 300’’) has a corresponding third media facing surface (e.g., 318, 318’, 324, 324’, etc.) adapted to face moving magnetic tape (e.g., 200), wherein the third media facing surface (e.g., 318, 318’, 324, 324’, etc.) is a curved surface (e.g., see Fig. 4c; col. 9, ll. 23-41), which when combined with Biskeborn et al. (US 8,264,793 B2), would be positioned intermediate the first media facing surface of the support member (1104 of Biskeborn et al. (US 8,264,793 B2)), and the second media facing surface of the chiplet (uppermost surface of (1104) of Biskeborn et al. (US 8,264,793 B2)).
Given the express teachings and motivations, as espoused by Lakshmikumaran et al. (US 8,958,175 B1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the chiplet of Biskeborn et al. (US 8,264,793 B2) with the curved third media facing surface, in the manner provided for in claim 16, as taught by Lakshmikumaran et al. (US 8,958,175 B1), in order to advantageously eliminate “contact between the tape head and portions of the tape not currently being read and/or written reduces friction between the tape and the tape head and facilitates control of tape head lateral positioning, tape tension, and tape speed.” See abstract of Lakshmikumaran et al. (US 8,958,175 B1).
As per claim 18, the combination of Lakshmikumaran et al. (US 8,958,175 B1) to Biskeborn et al. (US 8,264,793 B2), in the manner set forth above, would thus yield wherein the first media facing surface (e.g., uppermost surface of (1104) that faces a magnetic tape of Biskeborn et al. (US 8,264,793 B2)) defines a first plane, the second media facing surface (e.g., uppermost surface of (1000) that faces a magnetic tape of Biskeborn et al. (US 8,264,793 B2)) defines a second plane offset from the first plane (Fig. 17 of Biskeborn et al. (US 8,264,793 B2)), and the third media facing surface (e.g., 318, 318’, 324, 324’, etc. of Lakshmikumaran et al. (US 8,958,175 B1)) is curved (Fig. 4c of Lakshmikumaran et al. (US 8,958,175 B1)) to transition from the second plane to the first plane.
As per claim 19, Biskeborn et al. (US 8,264,793 B2) further discloses wherein the support member (1104) is a U-shaped member (see Fig. 11; col. 5, ll. 14-27) which defines a lateral axis and wherein the curved shape of the third media facing surface (of Lakshmikumaran et al. (US 8,958,175 B1) as applied to Biskeborn et al. (US 8,264,793 B2)) is a surface which is curved both in a direction parallel to the U-shaped member lateral axis and in a direction transverse to the U-shaped member lateral axis. See Figs. 4c, 5a, 5c of Lakshmikumaran et al. (US 8,958,175 B1).
Regarding the limitation that the surface referenced in claim 19 is a “polished surface,” the following is noted: the limitation “polished surface” is considered a product-by-process limitation.
The product by process limitations are directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17(footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessman, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al, 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process limitations or steps, which must be determined in a “product by process” claim limitation, and not the patentability of the process limitations. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product-by-process” claim limitation or not. Note that the applicant has the burden of proof in such cases, as the above case law makes clear.
The final product limitation derived from the claimed “process limitation” of “polished surface” fails to result in a structural difference between the disclosure of Lakshmikumaran et al. (US 8,958,175 B1) (as applied to Biskeborn et al. (US 8,264,793 B2)) and the claimed product, at least at it applies to the product limitation(s) “gleaned” from the process limitation(s). As such, Lakshmikumaran et al. (US 8,958,175 B1) is seen to meet this limitation as it applies to the patentability of the final structure.
Additionally, as per claim 19, although Biskeborn et al. (US 8,264,793 B2) remains silent regarding the composition of the conventional U-shaped member (beam) as being formed of a ceramic, Official notice is taken that U-shaped members formed of ceramics used in magnetic tape heads, are notoriously old and well-known in the art.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to provide the composition of the “wafer stock” material of the U-beam of Biskeborn et al. (US 8,264,793 B2) as being made of ceramic, in order to advantageously provide an inexpensive and durable piece of support material, which is easily manufactured to provide such U-beam support structures, as is well-known, established and appreciated in the art.
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Biskeborn et al. (US 8,264,793 B2) in view of Brown et al. (US 11,087,786 B1), as applied to claim 13, and further in view of Biskeborn et al. (US 2008/0137235 A1).
See the description of Biskeborn et al. (US 8,264,793 B2)/ Brown et al. (US 11,087,786 B1), supra.
As per claim 17, Biskeborn et al. (US 8,264,793 B2)/ Brown et al. (US 11,087,786 B1) remains silent with regard to wherein the support member defines a center, wherein the tape head has a first bank of transducers and a second bank of transducer and wherein the chiplet is disposed on the support member so that the first bank of transducers of the tape head is centered on the support member and the second bank of transducers is offset from the center of the support member.
Such features, however, are known in the art.
As just one example, Biskeborn et al. (US 2008/0137235 A1) discloses an analogous magnetic tape head, in the same field of endeavor as Biskeborn et al. (US 8,264,793 B2)/ Brown et al. (US 11,087,786 B1), wherein, as per claim 17, Biskeborn et al. (US 2008/0137235 A1) discloses a tape head which has a first bank of transducers (e.g., group 4A – see, inter alia, Fig. 6) and a second bank of transducers (e.g., group 4B and/or 4C – see, inter alia, Fig. 6) and wherein the chiplet is disposed on a corresponding support member so that the first bank of transducers (4A) of the tape head is centered on the support member and the second bank of transducers is offset from the center of the support member – see Figs. 6, 11-13.
Given the express teachings and motivations, as espoused by Biskeborn et al. (US 2008/0137235 A1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the chiplet of Biskeborn et al. (US 8,264,793 B2) with the tape head having a first bank of transducers and a second bank of transducer and wherein the chiplet is disposed on the support member so that the first bank of transducers of the tape head is centered on the support member and the second bank of transducers is offset from the center of the support member, as expressly taught by Biskeborn et al. (US 2008/0137235 A1), in order to advantageously provide a group or array of transducers that can be utilized for tape dimensional expansions and/or contractions of the tape media – see abstract of Biskeborn et al. (US 2008/0137235 A1).
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Citation of Prior or Relevant Art on enclosed PTO-892
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited art made of record (see the enclosed PTO-892), not applied to the rejection of the claims, supra, each disclose aspects of the claimed invention, including wherein tape heads include chiplets and supporting u-beam supports, to provide magnetic recording tape devices. See PTO-892.
The best prior art has been applied to the claimed invention (see the rejection of the claims on the applied prior art, supra). However, if Applicant chooses to amend the claims in a manner to obviate the applied prior art, as noted in the rejection, supra, the Applicant is advised to not only carefully review the applied prior art for all it teaches and/or suggests, but also the cited prior art of record in order to obviate any potential rejections based on potential amendment(s); by doing so, compact prosecution on the merits can be enhanced.
Conclusion
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/WILLIAM J KLIMOWICZ/Primary Examiner, Art Unit 2688
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