Appeal No. 2003-0323
Application 09/268,088
and Dill in the manner suggested by the examiner. We find that Cohen teaches using organic
insulation layers for planarization (Cohen, col. 16, ll. 64-65) and that the insulation layers
between the bottom magnetic yoke arm 20 and the top magnetic yoke arm 28 are all organic
insulation layers (Cohen, col. 18, ll. 40-44). We do not see how the planarized inorganic coil
insulation layer 216 of Dill would be beneficial relative to the planarized organic insulating
layers already present in Cohen for forming subsequent coil layers. Indeed, in Fig. 2, Cohen
teaches forming another coil layer 36A on top of the planarized insulation layer 25, while Dill
teaches no such additional coil layers. The examiner points to a passage in Dill stating that the
common flat surface of the second pole tip 318, the coil layer 330 and the write coil insulation
layer 332 form a common flat surface that is important for subsequent construction of the second
pole piece. (Dill, col. 9, ll. 53-57.) However, this statement does not provide motivation to
substitute the inorganic write coil insulation layer of Dill for the organic insulation layer in a
write head that uses a single upper pole layer such as Cohen. We find that the examiner has
failed to establish that a person of ordinary skill in the art would have been motivated to replace
the organic insulation layer 37 and winding 32B of Cohen with the inorganic coil insulation layer
216 of Dill. See In re Rouffet, 149 F.3d at 1357, 47 USPQ2d at 1459 (“hindsight” is inferred
when there is no explanation of the specific understanding or principle within the knowledge of a
skilled artisan that would have motivated one without knowledge of the claimed invention to
make the combination). Accordingly, we reverse the grounds of rejection advanced on appeal
because the examiner has not established a prima facie case of obviousness of the thin film write
head structure encompassed by the appealed claims.
We note that Desserre, relied upon by the examiner in the rejection of claims 6 through 9
and 31, does not remedy the deficiency discussed above with regard to the combination of Cohen
and Dill.
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