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 1-15) and Species IV (claims 1-7) in the reply filed on August 16, 2024, is acknowledged.
The Applicant alleges that the elected species (Species IV - Figure 9) reads on claims 1-15. It is noted, however, that independent claim 8 (and claims dependent thereon) does not encompass Species IV (Fig. 9), but Fig. 11 (Species VI). See, inter alia, the claim limitation, lines 8-10 of claim 8, reciting " (c) a spin preserving (SP) layer having a first portion adjoining the MP trailing side and a second portion contacting the WS bottom surface." Emphasis in bold italics added.
Species IV (Fig. 9) has only one SP layer (element 6 in Fig. 9), which clearly is not "adjoining the MP trailing side." Such a limitation appears to read on Fig. 11 (non-elected Species VI). As such claim 8-15 are withdrawn as being directed to a non-elected species.
The traversal is on the ground(s) that the "process claims necessarily use the product and vice versa. The field of search must necessarily cover both the process class/subclass/group/subgroup G11B5/3163 and/or Y10T29/49032, and product class class/subclass/group/subgroup G11B5/235, in addition to other related classes and subclasses, to provide a complete and adequate search."
The Examiner disagrees, noting that the product as claimed can be made by another and materially different process such as a process not requiring the sequential steps set forth in the process claims; moreover, the specific steps of limiting the portion removal and/or location of the depositing steps to certain claimed areas during the process of manufacturing, is not required in the product claims; additionally, the claimed "depositing" and removing steps are encompassed by and include, within their scope, the particular method steps disclosed by the Applicant within the disclosure; however, other undisclosed and uncontemplated method steps not within the scope of the disclosure include method steps such as, but not limited to: vacuum deposition and/or plating deposition and/or chemical vapor deposition and/or plasma enhanced chemical vapor deposition and/or physical vapor deposition and/or reactive ion etching and/or wet etching and/or chemical mechanical polishing and/or surface abrading and/or thermal ablation and/or non-sequential method steps.
Additionally, the Applicant opines "increased costs applicant would be forced to bear if all species are separately examined," and "the field of search must necessarily cover all species, in addition to other related Classes and subclasses, to provide a complete and adequate search."
This is not found persuasive because the Examiner’s position remains that each of the various disclosed species define mutually exclusive characteristic of a spin injection magnetic recording structure as evidenced by the representation of each species with a different set of figures. A search for one of these mutually exclusive characteristics is not coextensive with a search for other mutually exclusive characteristics and therefore searching for all mutually exclusive characteristics could not be done without serious burden to the Examiner. It is noted, as previously set forth in the Election of Species Requirement (mailed on June 18, 2024) that upon the allowance of a claim that is generic to multiple species, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 30, 2026
Specification
The disclosure is objected to because of the following informalities:
(i) With regard to page 1 (line 3), after the term "18/359,436 filed on 7/26/23" the following should be inserted--and now issued as U.S. Patent 12,322,419--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 7 is 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.
The following phrase(s) lack clear antecedent basis within the claim(s), i.e., either the particularly recited passage fails to be properly introduced prior to its appearance at that point in the claim or the structure recited in the passage is not an inherent part of or component of the previously recited structure:
(i) Claim 7 (line 3), "the slider".
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.
Claim 2 is 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.
Claim 2 recites "The SIAMR structure of claim 1 wherein the SP layer has a backside at a height greater than the WS TH." It is noted, however, that claim 1 (from which claim 2 depends) already sets forth that the SP layer has "a back side at a height greater than the WS TH" (see lines 11-12 of claim 1). As such, claim 2 fails to further limit the subject matter of the claim 1, from which it depends.
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.
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 use of spin killing layers and spin preserving layers, to influence the gradient at a write gap within PMR systems.
However, none of the art cited discloses, teaches or suggest (alone or in combination), the elements of the allowed claims.
Allowable Subject Matter
Claims 1, 3-6 are tentatively considered allowable over the art of record, pending an updated search, amendments or arguments presented by the Applicant and considered by the Examiner in reply to this office communication.
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.
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 on (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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