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 with traverse of Group I (claims 1-19) and Species I in the reply filed on June 10, 2026 is acknowledged.
As set forth, bellow, the Examiner has withdrawn the restriction requirement regarding the Election of Species.
Regarding the restriction between Groups I and II, the Applicant's traversal is based on the allegation that the claimed "solder weldment" in the product claim, must include a solder that is reflowed.
The Examiner notes, that claim 1 is drawn to a product.
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.
Furthermore, a "solder weldment" does not necessarily require a solder reflow. In wave soldering, molten solder contacts the electrical pads directly. No separate reflow step is required. In hand soldering with a soldering iron, the solder melts and flows onto the terminals. A separate reflow step is not required.
The Examiner notes that if the Applicant includes all the limitations of an allowed product claim into a method claim, rejoinder will be considered.
The requirement between Groups I and II is still deemed proper and is therefore made FINAL.
Election of Species Rejoinder
The election of species restriction requirement, dated April 22, 2026, has been reconsidered by the Examiner, based upon a consideration of the art uncovered made during the course of the examination process. More concretely, the Examiner has determined (after examination of the application on the merits) that the scope of the prior art (exclusive to the Double Patenting rejection, infra) fails to teach, suggest, or otherwise render obvious, the elected species claims. The Species restriction is withdrawn (rejoinder) based upon the allowance of generic claims 1 and 14 (pending the filing of a Terminal Disclaimer).
The method claim 20 is still withdrawn since it does not include all the limitations of allowed claims 1 or 14.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 11, 2025 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 March 11, 2025. 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.
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 Objections
Claims 4, 8, 9, and 13 are objected to because of the following informalities/needed corrections:
(i) With regard to claim 4 (line 1), then term "wherein the solder weldment" should be changed to the term --wherein the at least one solder weldment-- in order to maintain claim language consistency with preceding claim language.
(ii) With regard to claims 8 and 9, the recitation "wherein the angle is not less than 0 degrees and not greater than 90 degrees" (claim 8) must be amended to recite --wherein the angle is greater than 0 degrees and not greater than 90 degrees" and claim 9 "wherein the angle is not less than 0 degrees and not greater than 30 degrees" must be amended to recite --wherein the angle is greater than 0 degrees and not greater than 30 degrees."
The original specification of the parent application (SN 18/360,594, now U.S. Patent No. 12,260,886), only provides support for wherein the "angle θ is greater than 0 degrees and less than, or equal to, 90 degrees. For example, the angle θ is less than 30 degrees in some implementations." Emphasis added. See paragraph [0066] of the parent application and the current application. Claims 8 and 9, as currently drafted, include an angle of zero degrees (”wherein the angle is not less than 0 degrees"), for which there is no support in the current specification and for which there is no support in the parent application.
The Examiner notes that the instant application (SN 19/076,557) is a Continuation application and not a Continuation-In-Part application.
(iii) With regard to claim 13 (line 1), then term "wherein the solder weldment" should be changed to the term --wherein the at least one solder weldment-- in order to maintain claim language consistency with preceding claim language.
Appropriate correction is required.
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 1-4 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of commonly owned U.S. Patent No. 12,260,886 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 1-19 of commonly owned U.S. Patent No. 12,260,886 B2.
More specifically, the limitations of claim 1 of the instant application are all found in claim 1 of commonly owned U.S. Patent No. 12,260,886 B2.
As per independent claim 1 of the instant application, U.S. Patent No. 12,260,886 B2 claims a magnetic storage device, comprising: a magnetic disk; a carriage arm rotatably movable relative to the magnetic disk; a suspension arm co-movably fixed to the carriage arm, wherein the suspension arm comprises: a slider attachment side; and at least one first electrical contact pad on the slider attachment side; a slider co-movably fixed to the suspension arm, wherein the slider comprises: a base having a side; and at least one second electrical contact pad attached to the side of the base, and comprising: a first portion on the side of the base; and a second portion protruding from the first portion away from the side at an angle with respect to the first portion; at least one solder weldment directly coupled to the at least one first electrical contact pad and the at least one second electrical contact pad; and a read-write head coupled to the base. See claim 1 of U.S. Patent No. 12,260,886 B2.
As per independent claim 14 of the instant application, commonly owned U.S. Patent No. 12,260,886 B2 also claims a read-write head assembly for a magnetic storage device, comprising: a suspension arm, wherein the suspension arm comprises: a slider attachment side; and at least one first electrical contact pad on the slider attachment side; a slider co-movably fixed to the suspension arm, wherein the slider comprises: a base having a side; and at least one second electrical contact pad attached to the side of the base, and comprising: a first portion on the side of the base; and a second portion protruding from the first portion away from the side at an angle with respect to the first portion; at least one solder weldment directly coupled to the at least one first electrical contact pad and the at least one second electrical contact pad; and a read-write head coupled to the base.
As such, since the language of claim 1 and claim 14 of the instant application are readily found in claims 1 and 14, respectively, of commonly owned U.S. Patent No. 12,260,886 B2, claims 1 and 14 are anticipated by claims 1 and 14 of commonly owned U.S. Patent No. 12,260,886 B2.
Moreover, claims 1 and 14 of the instant invention are 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 lines 12-18 of claim 1 of commonly owned U.S. Patent No. 12,260,886 B2.
Claim 3 of the instant application corresponds to lines 24-30 of claim 1 of commonly owned U.S. Patent No. 12,260,886 B2.
As per claim 4 of the instant application, see claim 4 of commonly owned U.S. Patent No. 12,260,886 B2.
Allowable Subject Matter
Claims 5-13 and 15-19 are 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.
Reasons for allowance will be provided at the time prosecution on the merits is closed and a Notice of Allowability is issued, when all outstanding matters, including informalities, objections, rejections, and prior art - including any future prior art references cited by the Examiner and/or Applicant, have been fully addressed, in response to this office action.
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 any rejection of the claims, supra, each disclose aspects of the claimed invention, including the structure of electrical bonding pads on slider ends surfaces and corresponding suspension arm surfaces.
However, none of the art cited discloses, teaches or suggest (alone or in combination, the emphasized elements of the allowed claims, as noted above.
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
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