Ex Parte Hirayama et al

Patent Trial and Appeal BoardJan 8, 2013

12061518 (P.T.A.B. Jan. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/061,518 04/02/2008 Yoshiyuki Hirayama HIT1P495A/HJP920040106US2 8636 50535 7590 01/09/2013 ZILKA-KOTAB, PC- HIT P.O. BOX 721120 SAN JOSE, CA 95172-1120 EXAMINER CHAU, LINDA N ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 01/09/2013 PAPER 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. PTOL-90A (Rev. 04/07) 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOSHIYUKI HIRAYAMA, IKUKO TAKEKUMA, and ICHIRO TAMAI ____________ Appeal 2011-010544 Application 12/061,518 Technology Center 1700 ____________ Before MARK NAGUMO, GEORGE C. BEST, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL The named inventors (collectively “Appellant”) appeal under 35 U.S.C. § 134 from the final rejection of claims 21-29 directed to a perpendicular magnetic recording medium and magnetic recording/ reproducing apparatus. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-010544 Application 12/061,518 2 STATEMENT OF THE CASE Claim 21 is illustrative of the subject matter on appeal: 21. A perpendicular magnetic recording medium comprising a substrate, and arranged in order thereon, at least a soft magnetic layer, an intermediate layer, a magnetic recording layer, and a protective layer, wherein the magnetic recording layer is a single layer and has a granular structure composed of a multiplicity of columnar grains and an oxide-containing grain boundary layer, wherein the granular structure is in columnar form in which the columnar grains continuously extend from an interface with the intermediate layer to another interface with the protective layer, and wherein the columnar grains have such shapes that, assuming that the columnar grains are each divided equally into two portions in a film thickness direction thereof, one portion adjacent to the protective layer is larger in diameter than the other portion adjacent to the intermediate layer. THE REJECTIONS Appellant seeks our review of the following rejections, which we refer to by number in our analysis: Rejection 1: Claims 21-29 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over co-pending Application Serial No. 11/258,532 in view of Koda (US 2004/0185308 A1 published Sept. 23, 2004); Rejection 2: Claims 21-22 and 28 stand rejected under 35 U.S.C. § 102(b) as anticipated by Koda; Rejection 3: Claim 23 stands rejected under 35 US.C. § 103(a) as unpatentable over Koda in view of Takahashi (US 2003/0219631 A1 published Nov. 27, 2003); Rejection 4: Claims 24-27 and 29 stand rejection under 35 U.S.C. § 103(a) as unpatentable over Koda in view of Takahashi and in further view of Hirayama (US 2004/0038083 A1 published Feb. 26, 2004). Appeal 2011-010544 Application 12/061,518 3 ANALYSIS Rejection One: Obviousness-type double patenting Claims 21-29 are provisionally rejected on the ground of non- statutory obviousness-type double patenting over co-pending Application Serial No. 11/258,532 in view of Koda.1 Ans. 4.2 Appellant raises no substantive arguments contesting this rejection. App. Br. 10. Therefore, we summarily affirm Rejection One. Rejection Two: Anticipation of claims 21-22 and 28 by Koda Appellant argues claims 21-22 and 28 as a group. App. Br. 11. We select claims 21 and 22 as representative of the group. Claim 28 stands or falls with claims 21 and 22. 37 C.F.R. § 41.37(c)(1)(vii). Having carefully considered each of Appellant’s arguments, we agree with the Examiner that claims 21 and 22 are anticipated by Koda. We affirm Rejection Two for the reasons stated on pages 5 and 8-9 of the Answer, adding the following for emphasis only. Appellant contends that “Koda’s magnetic recording layer has two separately-formed layers” having “different oxide contents.” App. Br. 12 (citations omitted). The nub of Appellant’s argument is that “the grains in the lower layer of [Koda’s] multi-layered recording layer would extend only from the underlayer to the next layer in the multi-layered recording layer, not to an interface with an overlying protective layer.” App. Br. 12; see claim 21. 1 Application Serial No. 11/258,532 is the subject of a decision mailed simultaneously herewith in Appeal No. 2011-010405. 2 Our analysis refers to the Examiner’s Answer mailed November 9, 2010 (“Ans.”), the Appeal Brief filed August 16, 2010 (“App. Br.”), and the Reply Brief filed January 5, 2011 (“Reply Br.”). Appeal 2011-010544 Application 12/061,518 4 The Examiner finds that Koda discloses “a single magnetic recording layer (5)” that is comprised of sub-layers (5a-5b), and that each sub-layer is made of “the exact same material but with different oxide concentrations as claimed.” Ans. 8 (citing Koda Fig. 1 and ¶ [0059]; claim 1 (specifying a magnetic recording layer “divided into two portions” having different oxide contents)). The Examiner further finds that Koda’s sub-layers (5a-5b) “are formed of the same sputtering methods” and “the same conditions of gas pressure and input electric power.” Id. at 9 (citing Koda ¶¶ [0059-0060]). In the Examiner’s view, Koda depicts two sub-layers (5a-5b) in Figure 1 “to illustrate the different oxide concentrations in the magnetic layer (5), which reads on instant claim 22.” Id. A magnetic layer having two portions that differ by oxygen content, such as the layer (5) depicted in Koda at Figure 1, is covered by claim 22, which depends from claim 21, and which specifies that the magnetic recording layer is “divided into two portions” that differ by “oxygen content.” Furthermore, Koda discloses that “the crystalline orientation of the entire recording layer is improved owing to the growth of the crystal grains of the magnetic layer stacked on the lowermost layer by using the crystal grains as the cores for the crystal growth.” Koda ¶ [0023]. This disclosure supports the Examiner’s finding that, “due to the crystal growth connection between” the sub-layers (5a-5b), Koda’s “grains are continuous” as required by claims 21 and 22. Ans. 9. Appellant comes forward with no persuasive argument or evidence suggesting that Koda’s magnetic layer (5), which is divided into sub-layers (5a-5b) having different oxide contents, differs in any meaningful way from the magnetic layer of claim 22, which is “divided into two portions” that Appeal 2011-010544 Application 12/061,518 5 differ by “oxygen content.” Claim 22; see In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where “claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). On this record, we affirm Rejection Two. Rejection Three: Unpatentability of claim 23 over Koda in view of Takahashi Regarding Rejection Three, Appellant relies on the same arguments raised as to Rejection Two. App. Br. 13-14. We affirm Rejection Three for the reasons stated above regarding Rejection Two. Rejection Four: Unpatentability of claims 24-27 and 29 over Koda in view of Takahashi and in further view of Hirayama Appellant argues claims 24-27 and 29 as a group but includes a paragraph separately arguing the patentability of claim 25. App. Br. 14-16. We select claim 24 as representative of the group, and discuss claim 25 as necessary to fully address Appellant’s arguments. Claims 26-27 and 29 stand or fall with claim 24. 37 C.F.R. § 41.37(c)(1)(vii). Appellant challenges the Examiner’s finding that Hirayama discloses the claim 24 limitation “wherein the intermediate layer includes two or more layers, and wherein, among the two or more layers, a layer which is located immediately beneath the magnetic recording layer has a granular-structure composed of a multiplicity of grains and an oxide-containing grain boundary layer.” App. Br. 15 (quoting claim 24). Specifically, Appellant argues that, in the layer immediately below the magnetic layer, “Hirayama appears to disclose metallic islands formed above an oxygen containing layer,” much Appeal 2011-010544 Application 12/061,518 6 like “cookies on a baking sheet.” Id. (citing Hirayama ¶ [0017]) (emphasis omitted). Figure 1 of Hirayama is reproduced below: Figure 1 is a schematic diagram showing a cross-sectional structure of perpendicular magnetic recording media according to Hirayama’s invention. The Examiner finds that “Hirayama does teach the structure as claimed,” because Hirayama’s “metallic islands (15) . . . are considered the grains, and oxygen containing layer (14) . . . is considered to be oxide- containing grain boundary layer.” Ans. 10 (numerical references to Appeal 2011-010544 Application 12/061,518 7 Hirayama’s Figure 1 added). Hirayama describes the oxide-containing grain boundary layer as follows: “[T]he metallic intermediate layer containing oxygen functions to form clear crystal grain boundaries formed of oxides on the oxygen-containing layer left around the island-shaped metallic layer including a plurality of isolated island structures, and these crystal grain boundaries function to promote magnetic isolation of the crystal grains in the [magnetic] recording layer.” Hirayama ¶ [0022]. This disclosure supports the Examiner’s further finding “that the oxygen-containing layer” in Hirayama “has an effect of preventing adjacent crystal grains from being united to each” other and, thus, “acts as a segregant or a grain boundary” between the grains of the magnetic recording layer. Ans. 10 (citing Hirayama ¶ [0017]). In reply, Appellant merely repeats arguments stated in the Appeal Brief, coming forward with no persuasive argument or evidence demonstrating error in the Examiner’s findings. Reply Br. 6. Appellant’s argument that Hirayama teaches away from “oxide- containing boundaries in the uppermost intermediate layer (i.e., surrounding the metallic islands)” is unconvincing. App. Br. 15 (citing Hirayama ¶ [0017]). As explained above, Hirayama makes plain that “the oxygen- containing layer left around the island-shaped metallic layer” comprises “crystal grain boundaries” that “function to promote magnetic isolation of the crystal grains in the [magnetic] recording layer.” Hirayama ¶ [0022]. On this record, Hirayama’s “cookies on a baking sheet” configuration, Reply Br. 6, meets the limitations of claim 24 requiring an “intermediate layer” that “includes two or more layers, and wherein, among the two or more layers, a layer which is located immediately beneath the magnetic Appeal 2011-010544 Application 12/061,518 8 recording layer has a granular-structure composed of a multiplicity of grains and an oxide-containing grain boundary layer.” Claim 24; Ans. 6, 10-11. Appellant further argues that Takahashi fails to disclose an “oxygen containing layer” that is located “immediately beneath the magnetic recording layer” as specified in claim 25. App. Br. 16. The Examiner, however, does not rely on Takahashi for this feature of claim 25. Ans. 7, 10- 11 (relying on Hirayama for an oxygen-containing intermediate layer located immediately beneath the magnetic recording layer) (citations omitted). One cannot show nonobviousness by attacking references individually, where the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). On this record, we affirm Rejection Four. CONCLUSION For the above reasons, we affirm the rejections of claims 21-29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED cam