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 .
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on December 18, 2024, December 19, 2025, and January 30, 2026, are in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the information disclosure statements have been considered by the examiner.
Drawings
The drawings were received on December 18, 2024. These drawings are accepted.
Specification
The disclosure is objected to because of the following informalities:
(i) The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Appropriate correction is required.
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.
Election/Restrictions
Applicant’s election without traverse of Species I (Figures 1-7) in the reply filed on February 17, 2026, is acknowledged.
Claims 1-10 are currently considered to encompass the elected Species.
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 1-5, 7, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inoue et al. (US 2014/0368954 A1).
As per claim 1, Inoue et al. (US 2014/0368954 A1) discloses a disk device (e.g., 1) comprising: a magnetic disk (e.g., 4); a magnetic head (e.g. 11) configured to read and write information from and to the magnetic disk (4); a flexure (e.g., 22) on which the magnetic head (11) is mounted, the flexure (22) including a first outer surface (e.g., uppermost surface(s) of (63 and/or (63a) and/or (70) and/or the portion of (89) in direct contact with the lowermost portion of (80) and the corresponding right side including (72) and/or (63) as depicted in Fig. 8), a first pad (e.g., 131 - see Fig. 8) on the first outer surface, and a second pad (e.g., 141) on the first outer surface apart from the first pad (131) in a first direction (e.g. left-to-right as depicted in Fig. 8) along the first outer surface; a piezoelectric element (e.g., 80) including a second outer surface (e.g., outermost peripheral surfaces of (80) as depicted in Fig. 8) facing the first outer surface, a first electrode (e.g., including portion (81) - see, inter alia, paragraph [0062]) on the second outer surface, and a second electrode (e.g., including a portion of (82)) on the second outer surface apart from the first electrode in the first direction (see Fig. 8); a conductive, first bonding material (e.g., leftmost (90) as depicted in Fig. 8 - see, inter alia, paragraph [0066]) that bonds the first pad (131) and the first electrode (81); a conductive, second bonding material (e.g., rightmost (90) as depicted in Fig. 8 - see, inter alia, paragraph [0066]) that bonds the second pad (141) and the second electrode (82); and a protrusion (e.g., 89) provided on the flexure (22), located at least partially between the first bonding material (e.g., leftmost (90) as depicted in Fig. 8) and the second bonding material (e.g., rightmost (90) as depicted in Fig. 8), and protruding from the first outer surface - see Fig. 8.
As per claim 2, wherein the flexure (22) includes a metal plate (e.g., 40 - see, inter alia, paragraph [0054]), a first insulating layer (e.g., 63 - see, inter alia, paragraph [0057]), a second insulating layer (e.g., 60a - see, inter alia, paragraphs [0063, 0064]) located between the metal plate (40) and the first insulating layer (63), and a conductive layer (e.g., 87/131 and 88/141 - see, inter alia, paragraph [0063]) located between the first insulating layer (63) and the second insulating layer (60a) (see Fig. 8), the conductive layer includes the first pad (131) and the second pad (141), the first insulating layer (63) with a first hole (e.g., hole into which (131) extends -63a) and a second hole (e.g., hole into which (141) extends -63b) has a first surface (e.g., outermost surface of (63) over (131)) to which the first hole is open to expose the first pad (131) (see Fig. 8), the first surface being included in the first outer surface (see Fig. 8), and a second surface (e.g., outermost surface of (63) over (141)) to which the second hole (63b) is open to expose the second pad (141), the second surface being included in the first outer surface (see Fig. 8), the protrusion (89) has an end surface (e.g., portion of (89) that is in direct contact with (80) as depicted in Fig. 8) that faces the second outer surface and is closer to the second outer surface than the first surface and the second surface - Fig. 8.
As per claim 3, wherein the protrusion (89) includes a first protrusion (portion of (89) contacting (80)) located between the first electrode (e.g., including portion (81) - see, inter alia, paragraph [0062]) and the second electrode (e.g., including a portion of (82)) in the first direction and protruding from the first outer surface (e.g., uppermost surface(s) of (63 and/or (6a) and/or (70) and/or the portion of (89) in direct contact with the lowermost portion of (80) and the corresponding right side including (72) and/or (63) as depicted in Fig. 8).
As per claim 4, wherein the protrusion (89) includes a second protrusion (portion of (89) contacting (80)) located between the first pad (131) and the second pad (141) in the first direction and protruding from the first outer surface (e.g., uppermost surface(s) of (63 and/or (6a) and/or (70) and/or the portion of (89) in direct contact with the lowermost portion of (80) and the corresponding right side including (72) and/or (63) as depicted in Fig. 8). .
As per claim 5, wherein of the flexure (22), the end surface (e.g., portion of (89) that is in direct contact with (80) as depicted in Fig. 8) is closest to the piezoelectric element (80).
As per claim 7, wherein in a direction orthogonal to the first outer surface, a distance between the first surface and the end surface is constant - note the end surface is that portion of (89) which is in contact with (80), and as such, this interpretation meets claim 11, wherein the first surface is one of, e.g., uppermost surface(s) of (63 and/or (6a) and/or (70) and/or the portion of (89) in direct contact with the lowermost portion of (80) and the corresponding right side including (72) and/or (63) as depicted in Fig. 8.
As per claim 9, wherein the first bonding material (e.g., leftmost (90) as depicted in Fig. 8) and the second bonding material (e.g., rightmost (90) as depicted in Fig. 8) are conductive adhesives (e.g., see paragraphs [0066-0067]), and at least one of the first bonding material and the second bonding material is attached to the protrusion (89) - see Fig. 8.
As per claim 10, wherein the flexure (22) includes a first connection (e.g., 87) on which the first pad (131) is placed, and a second connection (e.g. 88) on which the second pad (141) is placed, the second connection (88) being spaced apart from the first connection (87) in the first direction, the first connection (87) and the second connection (88) are separated from each other with a gap (see gap in Fig. 8, proximate (34)), and the piezoelectric element (80) is located to cover the gap in a direction orthogonal to the first outer surface - see Fig. 8.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (US 2014/0368954 A1).
See the description of Inoue et al. (US 2014/0368954 A1), supra.
As per claim 8, although Inoue et al. (US 2014/0368954 A1) remains silent regarding wherein the protrusion (89) is longer than the piezoelectric element (80) and extends across both ends of the piezoelectric element in a second direction along the first outer surface and orthogonal to the first direction, given the teachings and suggestions of Inoue et al. (US 2014/0368954 A1), it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed, to simply provide the protrusion (89) as longer than the piezoelectric element (80) and extending across both ends of the piezoelectric element in a second direction (e.g., widthwise direction) along the first outer surface and orthogonal to the first direction, in order to adequately secure the actuator element (31) as much as possible by simply increasing its size in the widthwise direction, thus increasing the surface area by which the joint portion J1/J2 can be "secured to the meta base." See paragraph [0065] of Inoue et al. (US 2014/0368954 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 and 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,211,528 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims 1-11 of U.S. Patent No. 12,211,528 B2.
More specifically, the limitations of claim 1 of the instant application including:
"A disk device comprising: a magnetic disk; a magnetic head configured to read and write information from and to the magnetic disk; a flexure on which the magnetic head is mounted, the flexure including a first outer surface, a first pad, and a second pad apart from the first pad in a first direction along the first outer surface; a piezoelectric element including a second outer surface facing the first outer surface, a first electrode on the second outer surface, and a second electrode on the second outer surface apart from the first electrode in the first direction; a conductive, first bonding material that bonds the first pad and the first electrode; a conductive, second bonding material that bonds the second pad and the second electrode; and a protrusion provided on the flexure, located at least partially between the first bonding material and the second bonding material, and protruding from the first outer surface," are all found in claim 1 and claim 11 of U.S. Patent No. 12,211,528 B2 (cf. claim 1 of the instant application, and claim 1 and claim 11 of U.S. Patent No. 12,211,528 B2.
As such, since the language of claim 1 of the instant application is readily found in claims 1 and 11 of U.S. Patent No. 12,211,528 B2, claim 1 of the instant application is anticipated by claims 1 and 11 of U.S. Patent No. 12,211,528 B2.
Moreover, claim 1 of the instant invention is broader in scope, i.e., the entire scope of the reference claim(s) fall(s) within the scope of the examined claim (and the other rejected claims, as noted, infra). In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. Therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP 804.
A patent to a genus would, necessarily, extend the rights of a species or sub-species should the genus claims of the instant application issue after the after the species or subgenus. Therefore, in this type of obvious-type double patenting situation, a Graham analysis of the type required in an Obviousness-Type Double Patenting situation is not required.
Claim 2 of the instant application corresponds to claim 1 (lines 31-39) and claim 2 of U.S. Patent No. 12,211,528 B2; Claim 3 of the instant application corresponds to claim 3 of U.S. Patent No. 12,211,528 B2; the limitations of claim 4 of the instant application correspond to claim 4 of U.S. Patent No. 12,211,528 B2; Claim 5 of the instant application corresponds to claim 5 of U.S. Patent No. 12,211,528 B2; Claim 7 of the instant application corresponds to claim 6 of U.S. Patent No. 12,211,528 B2; Claim 8 of the instant application corresponds to claim 7 of U.S. Patent No. 12,211,528 B2; Claim 9 of the instant application corresponds to claim 8 of U.S. Patent No. 12,211,528 B2; Claim 10 of the instant application corresponds to claim 10 of U.S. Patent No. 12,211,528 B2.
It is noted that a divisional patent application resulting from an Examiner-imposed restriction requirement cannot later be rejected on the grounds of nonstatutory obviousness-type double-patenting in light of the parent application pursuant to the safe harbor provisions of 35 U.S.C. § 121. However, with regard to double patenting, § 121 will not apply to remove the parent as a reference where the principle of consonance is violated. Consonance requires that the line of demarcation between the "independent and distinct inventions" that prompted the restriction requirement be maintained. Though the claims may be amended, they must not be so amended as to bring them back over the line imposed in the restriction requirement. Where that line is crossed the prohibition of the third sentence of Section 121 does not apply. Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579 (Fed. Cir. 1991); see also Gerber Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688 (Fed. Cir. 1990).
In the instant case, the applicant has presented clams 1-5 and 7-10 which were generic claims in the parent application (17/942,954 - now U.S. Patent No. 12,211,528 B2), and the line of demarcation as set forth in the restriction requirement mailed July 13, 2023 (in parent application 17/942,954) resides in claim 6 of the instant application when compared with withdrawn claims of the parent application (17/942,954 - now U.S. Patent No. 12,211,528 B2).
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,243,567 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claim 1 of U.S. Patent No. 12,243,567 B2.
More specifically, the limitations of claim 1 of the instant application including:
"A disk device comprising: a magnetic disk; a magnetic head configured to read and write information from and to the magnetic disk; a flexure on which the magnetic head is mounted, the flexure including a first outer surface, a first pad, and a second pad apart from the first pad in a first direction along the first outer surface; a piezoelectric element including a second outer surface facing the first outer surface, a first electrode on the second outer surface, and a second electrode on the second outer surface apart from the first electrode in the first direction; a conductive, first bonding material that bonds the first pad and the first electrode; a conductive, second bonding material that bonds the second pad and the second electrode; and a protrusion provided on the flexure, located at least partially between the first bonding material and the second bonding material, and protruding from the first outer surface," are all found in claim 1 of U.S. Patent No. 12,243,567 B2 (cf. claim 1 of the instant application, and claim 1 of U.S. Patent No. 12,243,567 B2.
As such, since the language of claim 1 of the instant application is readily found in claim 1 of U.S. Patent No. 12,243,567 B2, claim 1 of the instant application is anticipated by claim 1 of U.S. Patent No. 12,243,567 B2.
Moreover, claim 1 of the instant invention is broader in scope, i.e., the entire scope of the reference claim(s) fall(s) within the scope of the examined claim (and the other rejected claims, as noted, infra). In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. Therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP 804.
A patent to a genus would, necessarily, extend the rights of a species or sub-species should the genus claims of the instant application issue after the after the species or subgenus. Therefore, in this type of obvious-type double patenting situation, a Graham analysis of the type required in an Obviousness-Type Double Patenting situation is not required.
Claim 2 of the instant application corresponds to claim 1 (lines 31-51) of U.S. Patent No. 12,243,567 B2.
Claims 1-5 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8-11 of copending Application No. 18/985,671 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims 1, 3-5, 8-11 of copending Application No. 18/985,671 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
More specifically, the limitations of claim 1 of the instant application are all found in claim 1 of copending Application No. 18/985,671 (reference application) (cf. claim 1 of the instant application with claim 1 of copending Application No. 18/985,671 (reference application)). That is, lines 1-20 of claim 1 of copending Application No. 18/985,671 (reference application) are identical to lines 1-26 of claim 1 of the instant application.
As such, since the language of claim 1 of the instant application is readily found in claim 1 of copending Application No. 18/985,671 (reference application), claim 1 is anticipated by claim 1 of copending Application No. 18/985,671 (reference application).
Moreover, claim 1 of the instant invention is broader in scope, i.e., the entire scope of the reference claim(s) fall(s) within the scope of the examined claim (and the other rejected claims, as noted, infra). In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. Therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP 804.
A patent to a genus would, necessarily, extend the rights of a species or sub-species should the genus claims of the instant application issue after the after the species or subgenus. Therefore, in this type of obvious-type double patenting situation, a Graham analysis of the type required in an Obviousness-Type Double Patenting situation is not required, albeit certainly, one could readily be applied.
Claim 2 of the instant application corresponds to claim 1 (lines 20-35) of copending Application No. 18/985,671 (reference application); Claim 3 of the instant application corresponds to claim 3 of copending Application No. 18/985,671 (reference application); Claim 4 of the instant application corresponds to claim 4 of copending Application No. 18/985,671 (reference application); Claim 5 of the instant application corresponds to claim 5 of copending Application No. 18/985,671 (reference application); Claim 7 of the instant application corresponds to claim 8 of copending Application No. 18/985,671 (reference application); Claim 8 of the instant application corresponds to claim 9 of copending Application No. 18/985,671 (reference application); Claim 9 of the instant application corresponds to claim 10 of copending Application No. 18/985,671 (reference application); Claim 10 of the instant application corresponds to claim 11 of copending Application No. 18/985,671 (reference application)
Allowable Subject Matter
Claim 6 is tentatively objected to as being dependent upon a rejected base claim, but, pending an updated search, amendments or arguments presented by the Applicant and considered by the Examiner in reply to this office communication, would be favorably considered if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 piezoelectric microactuators are used to drive a head slider, and wherein underlying terminal pads disposed thereunder, on the flexure, include structures to minimize the overflow of conductive adhesives
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William J Klimowicz whose telephone number is (571)272-7577. The examiner can normally be reached Monday-Thursday, 8:00AM-6PM, ET.
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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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/WILLIAM J KLIMOWICZ/ Primary Examiner, Art Unit 2688