DETAILED ACTION
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 . 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee
set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since
this application is eligible for continued examination under 37 CFR 1.114, and the
fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed
on 20 April 2026 has been entered.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21 and 23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, “wherein the sidewalls and the trailing edge of the probe tip are equally spaced from the trailing shield,” as set forth in claims 21 and 23, was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 22, 24 and 27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
a. In line 3 of claim 22, it is indefinite as to whether “the side portions” refers to those set forth in line 11 of independent claim 1, or those set forth in line 2 of claim 22.
b. In line 3 of claim 24, it is indefinite as to whether “the side portions” refers to those set forth in line 13 of independent claim 8, or those set forth in line 2 of claim 24.
c. In lines 3-4 and 5 of claim 27, it is indefinite as to whether each instance of “the probe head” refers to that set forth in line 2 of independent claim 25, or that set forth in line 3 of claim 27.
d. In line 4 of claim 27, it is indefinite as to whether the “trailing shield” is the same as that set forth in line 3 of independent claim 25, or if this “trailing shield” is in addition to that set forth in line 3 of independent claim 25.
e. In line 4 of claim 27, it is indefinite as to whether “the probe tip” refers to that set forth in line 3 of independent claim 25, or that set forth in line 4 of claim 27.
f. In line 6 (twice) of claim 27, it is indefinite as to whether each instance of “the magnetic tape” refers to that set forth in line 2 of independent claim 25, or that set forth in line 3 of claim 27.
g. In line 6 of claim 27, it is indefinite as to whether the “magnetic particle layer” is the same as that set forth in lines 2-3 of independent claim 25, or if this “magnetic particle layer” is in addition to that set forth in lines 2-3 of independent claim 25.
h. In line 7 of claim 27, it is indefinite as to whether the “soft magnetic underlayer” is the same as that set forth in line 3 of independent claim 25, or if this “soft magnetic underlayer” is in addition to that set forth in line 3 of independent claim 25.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22 and 24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
a. In lines 1-4 of claim 22, “the trailing shield including side portions extending adjacent to the sidewalls of the probe tip, wherein a length between the sidewalls of the probe tip is greater than a length of each of the side portions of the trailing shield” fails to further limit “the trailing shield including side portions extending adjacent to the sidewalls of the probe tip, and a length between the sidewalls of the probe tip is greater than twice a length of each of the side portions of the trailing shield” set forth in lines 11-13 of independent claim 1.
b. In lines 1-4 of claim 24, “the trailing shield including side portions extending adjacent to the sidewalls of the probe tip, wherein a length between the sidewalls of the probe tip is greater than a length of each of the side portions of the trailing shield” fails to further limit “the trailing shield including side portions extending adjacent to the sidewalls of the probe tip, and a length between the sidewalls of the probe tip is greater than twice a length of each of the side portions of the trailing shield” set forth in lines 13-15 of independent claim 8.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1, 5, 7, 8, 12, 14, 15, 22, 24, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Mallary (US 4,907,113) in view of Sekiguchi et al. (US 2019/0378540).
With respect to claims 1, 5, 7 and 22, Mallary (US 4,907,113) teaches a medium storage apparatus (see lines 7-12 in column 1, for instance) comprising a probe head (includes 12 in FIGS. 1 and 2, for instance) for writing data by perpendicular recording (see the abstract, for instance, i.e., “The head can be utilized for… perpendicular recording”) on a magnetic medium including a soft underlayer (see lines 7-12 in column 1, for instance), the probe head including a probe tip (P1) and a trailing shield (26) adjacent to the probe tip (as shown in FIG. 2, for instance); the probe tip including a leading edge, a trailing edge, and sidewalls (as shown in FIG. 2, for instance), wherein the sidewalls are oriented at a right angle to the leading edge (as shown in FIG. 2, for instance); and the trailing shield including side portions extending adjacent to the sidewalls of the probe tip (as shown in FIG. 2, for instance), and a length between the sidewalls of the probe tip is greater than twice a length of each of the side portions of the trailing shield (as shown in FIG. 2, for instance) [as per claim 1]; wherein the trailing shield has a thickness in the range of 50 nm to 500 nm (see lines 34-35 in column 2, for instance, i.e., “shield 26 is thin, having a thickness of approximately three microinches”, which corresponds to 76.2 nm and is a value within the claimed range) [as per claim 5]; wherein the probe tip includes an end surface that is rectangular in shape (as shown in FIG. 2, for instance) [as per claim 7]; and the trailing shield including side portions extending adjacent to the sidewalls of the probe tip (as shown in FIG. 2, for instance), wherein a length between the sidewalls of the probe tip is greater than a length of each of the side portions of the trailing shield (as shown in FIG. 2, for instance) [as per claim 22].
With respect to claims 8, 12, 14, 15 and 24, Mallary (US 4,907,113) teaches a medium storage system (see lines 7-12 in column 1, for instance) comprising a probe head (includes 12 in FIGS. 1 and 2, for instance) for writing data by perpendicular recording (see the abstract, for instance, i.e., “The head can be utilized for… perpendicular recording”) on a magnetic medium (see lines 7-12 in column 1, for instance), the probe head including a probe tip (P1) and a trailing shield (26) positioned in close proximity to the probe tip (as shown in FIG. 2, for instance); wherein the probe tip includes including a leading edge, a trailing edge, and sidewalls (as shown in FIG. 2, for instance), wherein the sidewalls are oriented at a right angle to the leading edge (as shown in FIG. 2, for instance); and the trailing shield including side portions extending adjacent to the sidewalls of the probe tip (as shown in FIG. 2, for instance), and a length between the sidewalls of the probe tip is greater than twice a length of each of the side portions of the trailing shield (as shown in FIG. 2, for instance) [as per claims 8 and 15]; wherein the trailing shield has a thickness in the range of 50 nm to 500 nm (see lines 34-35 in column 2, for instance, i.e., “shield 26 is thin, having a thickness of approximately three microinches”, which corresponds to 76.2 nm and is a value within the claimed range) [as per claim 12]; wherein the probe tip includes an end surface that is rectangular in shape (as shown in FIG. 2, for instance) [as per claim 14]; and the trailing shield including side portions extending adjacent to the sidewalls of the probe tip (as shown in FIG. 2, for instance), wherein a length between the sidewalls of the probe tip is greater than a length of each of the side portions of the trailing shield (as shown in FIG. 2, for instance) [as per claim 24].
With respect to claims 25 and 27, Mallary (US 4,907,113) teaches a medium storage apparatus (see lines 7-12 in column 1, for instance) comprising a probe head (includes 12 in FIGS. 1 and 2, for instance) for writing data by perpendicular recording (see the abstract, for instance, i.e., “The head can be utilized for… perpendicular recording”) on a magnetic medium including a soft underlayer (see lines 7-12 in column 1, for instance), the probe head including a probe tip (P1) and a trailing shield (26) adjacent to the probe tip (as shown in FIG. 2, for instance); the probe tip including a leading edge, a trailing edge, and sidewalls (as shown in FIG. 2, for instance), wherein the sidewalls are oriented at a right angle to the leading edge (as shown in FIG. 2, for instance); and the trailing shield includes side portions extending adjacent to the sidewalls of the probe tip and a central portion between the side portions (as shown in FIG. 2, for instance), and a length between the sidewalls of the probe tip extends at least 75% of a length of the central portion of the trailing shield (as shown in FIG. 2, for instance) [as per claim 25]; wherein the apparatus is a component of a medium storage system further comprises a probe head (includes 12 in FIGS. 1 and 2, for instance) for writing data by perpendicular recording (see the abstract, for instance, i.e., “The head can be utilized for… perpendicular recording”) on a magnetic medium (see lines 7-12 in column 1, for instance), the probe head including a probe tip (P1) and a trailing shield (26) positioned in close proximity to the probe tip (as shown in FIG. 2, for instance) [as per claim 27].
Mallary (US 4,907,113), however, remains silent as to the magnetic medium being a “magnetic tape including a magnetic particle layer and a soft magnetic underlayer” as per claims 1, 5, 7, 22, 25 and 27, or a “magnetic tape comprising a magnetic particle layer and a soft magnetic underlayer positioned on a substrate” as per claims 8, 12, 14, 15, 24 and 27, and the system further comprising “a tape transport mechanism for transporting the magnetic tape past the probe head; and a supply of the magnetic tape” as per claims 8, 12, 14, 15, 24 and 27, “wherein the tape transport mechanism transports the magnetic tape in a direction of travel from the leading edge to the trailing edge of the probe tip, and wherein the sidewalls of the probe tip are parallel to the direction of travel” as per claim 15.
Sekiguchi et al. (US 2019/0378540) teach that a magnetic tape (10/110, see FIGS. 5 and 8, for instance) comprising a magnetic particle layer (115, see paragraph [0167], for instance, i.e., “recording layer 115 is preferably a granular magnetic layer containing a Co-based alloy. This granular magnetic layer includes ferromagnetic crystal particles containing a Co-based alloy and nonmagnetic particle boundaries (nonmagnetic material) that surround the ferromagnetic crystal particles”) and a soft magnetic underlayer (112) positioned on a substrate (111) is a notoriously old and well known magnetic medium configuration.
Sekiguchi et al. (US 2019/0378540) further teach a system (see FIG. 5, for instance) further comprising a tape transport mechanism (includes 33 and 34, for instance) for transporting a magnetic tape (10) past a probe head (36), and a supply (10A) of the magnetic tape, wherein the tape transport mechanism transports the magnetic tape in a direction of travel from a leading edge (i.e., the edge closest to supply cartridge 10A) to a trailing edge (i.e., the edge closest to take-up reel 32) of a probe tip of the probe head, in the same field of endeavor for the purpose of increasing storage capacity by enabling data storage and/or retrieval over an entire length of the magnetic tape.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have had the magnetic medium of Mallary (US 4,907,113) be a magnetic tape including a magnetic particle layer and a soft magnetic underlayer, or a magnetic tape comprising a magnetic particle layer and a soft magnetic underlayer positioned on a substrate, as taught/suggested by Sekiguchi et al. (US 2019/0378540), and to have had the system of Mallary (US 4,907,113) further comprise a tape transport mechanism for transporting the magnetic tape past the probe head, and a supply of the magnetic tape, wherein the tape transport mechanism transports the magnetic tape in a direction of travel from the leading edge to the trailing edge of the probe tip, as taught/suggested by Sekiguchi et al. (US 2019/0378540), whereby the sidewalls of the probe tip of Mallary (US 4,907,113) would be parallel to the direction of travel. The rationale is as follows:
One of ordinary skill in the art would have been motivated to have had the magnetic medium of Mallary (US 4,907,113) be a magnetic tape including a magnetic particle layer and a soft magnetic underlayer, or a magnetic tape comprising a magnetic particle layer and a soft magnetic underlayer positioned on a substrate, as taught/ suggested by Sekiguchi et al. (US 2019/0378540) since such is a notoriously old and well known magnetic medium configuration, and selecting a known magnetic medium configuration on the basis of its suitability for the intended use is considered to be within the level of ordinary skill in the art.
One of ordinary skill in the art would have been motivated to have had the system of Mallary (US 4,907,113) further comprise a tape transport mechanism for transporting the magnetic tape past the probe head, and a supply of the magnetic tape, wherein the tape transport mechanism transports the magnetic tape in a direction of travel from the leading edge to the trailing edge of the probe tip, as taught/suggested by Sekiguchi et al. (US 2019/0378540), whereby the sidewalls of the probe tip of Mallary (US 4,907,113) would be parallel to the direction of travel since such increases storage capacity by enabling data storage and/or retrieval over an entire length of the magnetic tape.
Claims 6, 13, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mallary (US 4,907,113) in view of Sekiguchi et al. (US 2019/0378540) as applied to claims 1 and 8 above, and further in view of Nakamura et al. (US 2004/0106009).
Mallary (US 4,907,113) in view of Sekiguchi et al. (US 2019/0378540) teach/ suggest the apparatus/system as detailed in paragraph 10, supra, wherein Mallary (US 4,907,113) additionally teaches that the trailing shield covers the sidewalls and trailing edge of the probe tip (as shown in FIG. 2, for instance), wherein the trailing shield has a length (as shown in FIG. 2, for instance) [as per claims 6 and 13]; and wherein the probe tip operates to provide shingled tracks having a width (as shown in FIG. 2, for instance, i.e., corresponding to the width of P1) [as per claims 16 and 17].
Mallary (US 4,907,113), however, further remains silent as to the length being “in the range of 50 nm to 2000 nm” as per claims 6 and 13, and the width being “no greater than 500 nm” as per claim 16, or “no greater than 250 nm” as per claim 17.
Nakamura et al. (US 2004/0106009) teach that a shield length of 2 µm, i.e., 2000 nm (see paragraph [0067], for instance, i.e., “shield 137 was… 2 µm in length”) and a track width of 160 nm (see paragraph [0067], for instance, i.e., “main pole width 160 nm”) are well within the level of ordinary skill in the art. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have had the length in Mallary (US 4,907,113) be in the range of 50 nm to 2000 nm and the width in Mallary (US 4,907,113) be no greater than 500 nm or no greater than 250 nm, as taught/suggested by Nakamura et al. (US 2004/0106009). The rationale is as follows:
One of ordinary skill in the art would have been motivated to have had the length in Mallary (US 4,907,113) be in the range of 50 nm to 2000 nm and the width in Mallary (US 4,907,113) be no greater than 500 nm or no greater than 250 nm, as taught/ suggested by Nakamura et al. (US 2004/0106009) since such are well within the level of ordinary skill in the art as evidenced by Nakamura et al. (US 2004/0106009).
Claims 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Mallary (US 4,907,113) in view of Sekiguchi et al. (US 2019/0378540) as applied to claims 1 and 8 above, and further in view of Das et al. (US 4,935,832).
Mallary (US 4,907,113) in view of Sekiguchi et al. (US 2019/0378540) teach/ suggest the apparatus as detailed in paragraph 10, supra. Mallary (US 4,907,113), however, further remains silent as to the sidewalls and the trailing edge of the probe tip being “equally spaced from the trailing shield.”
Das et al. (US 4,935,832) teach that sidewalls and a trailing edge of a probe tip (P1, see Fig. 15, for instance) being equally spaced from a trailing shield (32) is a notoriously old and well known probe head configuration. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have had the sidewalls and the trailing edge of the probe tip of Mallary (US 4,907,113) be equally spaced from the trailing shield as taught/suggested by Das et al. (US 4,935,832). The rationale is as follows:
One of ordinary skill in the art would have been motivated to have had the sidewalls and the trailing edge of the probe tip of Mallary (US 4,907,113) be equally spaced from the trailing shield as taught/suggested by Das et al. (US 4,935,832) since such is a notoriously old and well known probe head configuration, and selecting a known probe head configuration on the basis of its suitability for the intended use is considered to be within the level of ordinary skill in the art.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. This includes Das (US 5,075,956), Mallary (US 5,103,553), and Das et al. (US 5,111,352), which each individually teaches a data storage apparatus with one or more head shielding configurations.
Allowable Subject Matter
Claims 26, 28 and 29 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments filed 20 April 2026 with respect to claims 1, 5-8, 12-17, 22, 24, 25 and 27 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 20 April 2026 with respect to claims 21 and 23 have been fully considered but they are not persuasive.
With respect to the rejection of claims 21 and 23 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, the “Applicant respectfully submits that at least paragraphs [0015]-[0016] of the specification and original claims 3-4 provide adequate support to satisfy 35 U.S.C. 112(a) with respect to claims 21 and 23, and reasonably convey to one of ordinary skill that at the time of application was filed, the inventor(s) had possession of the claimed invention.”
This argument, however, is not found to be persuasive as the referenced sections merely set forth that “the trailing edge of the probe tip is spaced apart from the trailing shield a distance in the range of 20 nm to 50 nm” and that “the sidewalls of the probe tip are spaced apart from the trailing shield a distance in the range of 20 nm to 50 nm.” They do not reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention, i.e., “wherein the sidewalls and the trailing edge of the probe tip are equally spaced from the trailing shield.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Craig A. Renner whose telephone number is (571) 272-7580. The examiner can normally be reached Monday-Friday 9:00 AM - 7:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571) 270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG A. RENNER/Primary Examiner, Art Unit 2688
Prosecution Insights