Ex Parte Fujii et al

Patent Trial and Appeal Board

Aug 29, 2017

13758104 (P.T.A.B. Aug. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/758,104 02/04/2013 Hideo FUJII 411529US99/masa 1387
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
08/31/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEO FUJII and YOKO SHIDA
Appeal 2017-0004531
Application 13/758,104
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision rejecting claims 1—4 and 7—22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, “[t]he real party in interest in this appeal is
Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.).” Appeal Brief dated
June 20, 2016 (“Br”), at 2.
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Application 13/758,104
The claimed subject matter is directed to a thermal diffusion control
film for use in hard disk drives for heat-assisted magnetic recording. Spec.
11. The Appellants disclose that Ag is suitable for a thermal diffusion
control film. Spec. | 5. However, “an Ag thin film generally has a high
average surface roughness Ra of several nanometers or more and easily
undergoes a change in its film structure, such as grain growth and surface
roughening, by heating.” Spec. 1 6. The Appellants disclose that a change
in film structure upon heating is not desirable in heat-assisted magnetic
recording applications because a distance between a magnetic head and a
magnetic recording medium must remain very small for device functionality.
Spec. 1 6. Thus, the Appellants disclose:
[A] novel Ag alloy thermal diffusion control film for use in a
magnetic recording medium for heat-assisted magnetic
recording, which, even when the heat hysteresis during forming
a recording layer is increased to about 600 °C which is higher
than that in the related art, has excellent surface smoothness and
is able to ensure very excellent heat resistance.
Spec. 111.
The Ag alloy thermal diffusion control film comprises:
Nd: more than 0 atomic % and 1.0 atomic % or less;
Bi: more than 0 atomic % and 0.1 atomic % or less; and
Si: more than 0.05 atomic % and 3 atomic % or less.
Spec. 112.
According to the Appellants:
Si is an element which is the most unique to the present
invention and is an element which is useful for providing both
high thermal conductivity after high-temperature heat hysteresis
and high surface smoothness after high-temperature heat
hysteresis. That is, Si is an element contributing to an
enhancement of the surface smoothness (reduction of Ra) both
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Application 13/758,104
immediately after deposition and after high-temperature heat
hysteresis. The foregoing effect tends to be enhanced with an
increase of the Si amount. However, when Si is added in
excess, the thermal conductivity tends to decrease both
immediately after deposition and after high-temperature heat
hysteresis. Therefore, in particular, it is preferable to
appropriately control the Si amount in relation with the Nd
amount such that the desired characteristics are exhibited.
Spec. 138.
Claim 1 is reproduced below from the Claims Appendix of the Appeal
Brief. The limitation at issue is italicized.
A thermal diffusion control film, comprising an Ag alloy
comprising Nd, Bi, and Si,
wherein the thermal diffusion control film has a surface
roughness of 2.0 nm or less after a vacuum heat treatment at
650°Cfor 10 seconds.
Br. 20.
The claims on appeal stand rejected as follows:
(1) claims 1, 2, 7—13, 15—19, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Tauchi et al.;2
(2) claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Tauchi in view of Nakai et al.;3 and
(3) claims 1—4 and 7—22 under 35 U.S.C. § 103(a) as unpatentable
over Takagi et al.4
2 US 2004/0028912 Al, published February 12, 2004 (“Tauchi”).
3 JP 2011-108328, dated June 2, 2011 (“Nakai”).
4 US 2005/0238839 Al, published October 27, 2005 (“Takagi”).
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Application 13/758,104
B. DISCUSSION
1. Rejections (1) and (2)
The Examiner finds Tauchi discloses an Ag alloy thermal diffusion
film comprising 0.005 to 0.40 at% Bi and 0.1 to 2 at% Nd. Non-Final Act.
2—3 (citing Tauchi 133).5 The Examiner finds the film has a surface
roughness of less than 1 nm. Non-Final Act. 2 (citing Tauchi 1169).
Tauchi also describes a prior art Ag alloy having improved corrosion
resistance that comprises at least one element selected from Al, Au, Cu, Co,
Ni, Ti, V, Mo, Mn, Pt, Si, Nb, Fe, Ta, Hf, Ga, Pd, Bi, In, W and Zr in an
amount of 0.5 to 5% to Ag. Tauchi | 62; see also Non-Final Act. 2—3 (citing
Tauchi | 62). The Examiner apparently concludes that it would have been
obvious to add Si to Tauchi’s Ag alloy thermal diffusion film6 and finds that
the amounts of Nd, Bi and Si in Tauchi’s modified film overlap the claimed
amounts of Nd, Br and Si. Non-Final Act. 3.
As for the limitation in claim 1 that “the thermal diffusion control film
has a surface roughness of 2.0 nm or less after a vacuum heat treatment at
650°Cfor 10 seconds,” the Examiner concludes that the limitation is a
process limitation. Non-Final Act. 3. The Examiner finds that “it is not
readily apparent that the process of making the claimed product imparts any
structural or functional characteristics that is [sic] distinct from the product
of the prior art.” Non-Final Act. 3.
5 Non-Final Office Action dated January 26, 2016.
6 See Br. 7 (contending that “the examiner alleged that it would have been
obvious to use 0.5 to 5% Si in the Ag base alloy of Tauchi”).
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Application 13/758,104
The Appellants argue that the surface roughness recited in claim 1 “is
a structural property of the thermal diffusion control film”7 8and is a measure
of the film’s heat resistance. Br. 8. The Appellants argue:
Tauchi does not disclose or suggest such a property of its
film. Paragraph [0169][8] of Tauchi describes a surface
roughness of less than 1 nm both before and after a “high-
temperature high-humidity test (temperature 80°C, humidity
90% RH, retention time 48 hours).” However, this is not as
stringent a test of high-temperature heat resistance as the
vacuum heat treatment at 650°C for 10 seconds recited in
instant claim 1. See, e.g., at || [0009]-[0010].
Br. 9.
In response, the Examiner maintains that “[c]ase law holds that a
material and its properties, such as roughness, are inseparable.” Ans. 5
(citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)).
In an attempt to show that surface roughness is not an inherent
property of a film having amounts of Nd, Bi, and Si within the ranges
disclosed by the Appellants, the Appellants direct our attention to
Comparative Examples 6—8 in Table 1 of the Appellants’ Specification. Br.
11—12; see also Spec. 18. Table 1 reports the surface roughness of fourteen
films (i.e., Nos. 1—14) after vacuum heat treatment. The amounts of Nd, Bi,
7 The Appellants disclose that Ra was calculated from a measured value in
an area of 3 pm x 3 pm using an atomic force microscope. Each of a thin
film after vacuum heat treatment at 650°C for 10 seconds was measured.
Spec. 1 56; see also Spec. 1 57 (describing vacuum heat treatment).
8 Tauchi paragraph 169 reports the results for Examples 1—5. The
Appellants argue that Tauchi does not disclose any examples comprising Ag,
Bi,Nd, and Si. Br. 7, 10.
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Application 13/758,104
and Si in Comparative Examples 6—8 are within the ranges of the
Appellants’ Ag alloy thermal diffusion control film.9
The Appellants argue that:
These comparative Examples 6-8 . . . demonstrate that
the surface roughness property recited in claim 1 is not an
inherent property of an Ag-alloy film containing Bi, Nd and Si.
That is, comparative Examples 6-8 each involved an Ag-alloy
film containing Bi, Nd and Si, but these films did not have a
surface roughness of 2.0 nm or less after a vacuum heat
treatment at 650°C for 10 seconds.
Br. 12.
We interpret claim 1 as reciting a property of the claimed film, i.e.,
surface roughness. That is, claim 1 is limited to a thermal diffusion control
film that has a surface roughness of 2.0 nm or less after a vacuum heat
treatment at 650°C for 10 seconds and comprises an Ag alloy comprising
Nd, Bi, and Si. Br. 20. Comparative Examples 6—8 show that the claimed
surface roughness is not exhibited in all Ag alloys having amounts of Nd, Bi,
and Si within the ranges disclosed (Spec. 112) and claimed (e.g., claim 2)
by the Appellants. Moreover, the amounts of Nd, Bi, and Si in Comparative
Examples 7 and 8 fall within the ranges of Nd, Bi, and Si, respectively, in
Tauchi’s modified film. Thus, a preponderance of the evidence of record
9 The composition of the film in Comparative Example 6 is 0.07 at% Bi,
0.25 at% Nd, and 0.32 at% Si, the composition of the film in Comparative
Example 7 is 0.06 at% Bi, 0.25 at% Nd, and 0.70 at% Si, and the
composition of the film in Comparative Example 8 is 0.05 at% Bi, 0.24 at%
Nd, and 0.94 at% Si. Spec. 18. The Appellants disclose that the Ag alloy
thermal diffusion control film comprises more than 0 atomic % and 1.0
atomic % or less Nd, more than 0 atomic % and 0.1 atomic % or less Bi, and
more than 0.05 atomic % and 3 atomic % or less Si. Spec. 112; see also
Appellants’ claim 2.
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Application 13/758,104
does not support a finding that Tauchi’s modified film has a surface
roughness as recited in claim 1. For that reason, the § 103(a) rejection of
claims 1,2, 7—13, 15—19, and 22 based on Tauchi is not sustained.
The Examiner does not rely on Nakai to cure the deficiencies in the
rejection of claim 1. See Non-Final Act. 3^4; Ans. 3.10 Therefore, the
§ 103(a) rejection of claims 3 and 4 based on the combination of Tauchi and
Nakai is not sustained.
2. Rejection (3)
The Examiner finds Takagi discloses a heat treated Ag alloy thermal
conductive film comprising 0.1—2 at% Nd, 0.005-0.40 at% Bi, and 0.05—5
at% Si. Non-Final Act. 4 (citing Takagi Tflf 13—23, 35—37 and the
Examples). “Since the amounts of Nd, Bi and Si in Takagi. . . overlap the
claimed amounts of Nd, Bi and Si,” the Examiner concludes that “a prima
facie case of obviousness exists.” Non-Final Act. 4. The Examiner does not
find that Takagi discloses that the film has a surface roughness as claimed.
The Examiner, however, finds that “since Takagi. . . teach[es] a same or
substantially the same heated Ag alloy film as instantly claimed, the claimed
toughness [sic, roughness] would be expected in Takagi.”* 11 Non-Final Act.
4.
The Appellants point out that Takagi Sample No. 56 is an Ag-based
film having a composition of 0.1% Bi, 2% Si, and 0.4% Nd. Br. 15 (citing
10 Examiner’s Answer dated September 6, 2016.
11 The Examiner also concludes that the vacuum heat treatment condition
recited in claim 1 is a process limitation. Non-Final Act. 4. For the reasons
discussed above, the Examiner’s interpretation of claim 1 is erroneous.
However, for reasons discussed, infra, the Examiner’s error is harmless.
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Application 13/758,104
Takagi 1113). Thus, in contrast to Tauchi, Takagi describes a specific
example of an Ag film wherein the amounts of each of Bi, Si, and Nd are
within the Appellants’ claimed ranges (see Appellants’ claims 2, 8, 9, 12,
and 13).
Relying on a Declaration of Hideo Fujii dated February 24, 2015,
included in the Evidence Appendix, the Appellants argue that “a surface
roughness of 2.0 nm or less after a vacuum heat treatment at 650°C for 10
seconds is not an inherent property of the films of Takagi.” Br. 15—16.
In Table 2 of the Hideo Fujii Declaration, the surface roughness of
films made from Ag—0.35Bi—0.2Nd—Z sputtering targets is reported, wherein
Z is a variable element that includes Ge, Zn, Sn, and In. Decl. 113. Takagi,
however, discloses that the film in Takagi Sample No. 56 includes Si.12
Because the evidence relied on by the Appellants does not include the film
in Takagi Sample No. 56, the Appellants have failed to show that the surface
roughness recited in claim 1 is not an inherent property of that film.13 For
that reason, the § 103(a) rejection of claims 1, 2, 8, 9, 12, and 13 based on
Takagi is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of claims 3, 4, 7, 14, 15, 17, and 19-22. Therefore, the
12 See Takagi 1133 (reporting that the “Change in average surface
roughness, nm” for Sample No. 56 is 0.3 nm and the “Heat resistance” is
evaluated as “A”); Takagi 1 81 (disclosing that a sample having an excellent
heat resistance is evaluated as “A”).
13 See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and
prior art products are identical or substantially identical, the PTO can require
an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of the claimed product).
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Application 13/758,104
§ 103(a) rejection of claims 3, 4, 7, 14, 15, 17, and 19-22 based on Takagi is
also sustained.
As for claims 10, 11, 16, and 18, the Appellants argue that the
Examiner has not articulated a basis for finding these claims are not
commensurate in scope with the evidence of unexpected results. Br. 18.
To the contrary, the Examiner finds “the claim is not limited to any
specific alloys in the specification.” Ans. 8. That is, the claims on appeal
are broader than the Appellants’ showing of unexpected results. In that
regard, we note that the film in Comparative Example 8 comprises amounts
of Bi, Si, and Nd within the ranges recited in claims 10, 11, and 16, but has
an Ra after vacuum heat treatment of 2.2 nm. See Spec. 18, Table 1. The
Appellants do not explain, in any detail, why the difference between the Ra
of the claimed film (i.e., 2.0 nm) and the Ra of the film in Comparative
Example 8 (2.2 nm) amounts to an “unexpected” result.14 We also note that
the Appellants do not compare the claimed film to the film in Takagi Sample
No. 56 comprising Ag-0.1% Bi—2% Si—0.4% Nd, which arguably is the
closest prior art. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
On balance, a preponderance of the evidence supports the Examiner’s
conclusion of obviousness. Therefore, the § 103(a) rejection of claims 10,
11, 16, and 18 based on Takagi also is sustained.
14 See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a
showing of “unexpected results” to be probative evidence of non­
obviousness, the applicant must establish that the difference between the
results obtained through the claimed invention and those of the prior art
would not have been expected by one skilled in the art at the time of
invention).
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C. DECISION
The Examiner’s decision rejecting claims 1,2, 7—13, 15—19, and 22
under 35 U.S.C. § 103(a) as unpatentable over Tauchi is reversed.
The Examiner’s decision rejecting claims 3 and 4 under 35 U.S.C.
§ 103(a) as unpatentable over Tauchi in view of Nakai is reversed.
The Examiner’s decision rejecting claims 1—4 and 7—22 under 35
U.S.C. § 103(a) as unpatentable over Takagi is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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