Ex Parte Kanbe et al

Patent Trial and Appeal BoardOct 24, 2018

13574932 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/574,932 07/24/2012 23373 7590 10/26/2018 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Tetsuya Kanbe 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Ql41389 5480 EXAMINER CHAU,LISAN ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 10/26/2018 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TETSUY A KANBE, ATSUSHI HASHIMOTO, and TAKA YUKI FUKUSHIMA Appeal2018-000419 Application 13/574,932 Technology Center 1700 Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1, 3-5, and 10.3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 In this Decision, we refer to the Specification filed July 24, 2012 ("Spec."), Non-Final Office Action dated March 4, 2016 ("Non-Final Act."), the Final Office Action dated August 26, 2016 ("Final Act."), the Appeal Brief filed May 17, 2017 ("Br."), and the Examiner's Answer dated October 2, 2017 ("Ans."). 2 Appellants identify the real party in interest as Showa Denko, K.K. Br. 2. 3 Claims 6-9 are withdrawn from consideration by the Examiner for being directed to non-elected subject matter. Final Act. 2. Appeal2018-000419 Application 13/574,932 The claims on appeal are directed to a thermally assisted magnetic recording medium and a magnetic recording and reproducing device. Spec. ,r 1. Claim 1, reproduced below from the Claims Appendix with emphasis to highlight the key disputed limitation, is illustrative of the claims on appeal. 1. A thermally assisted magnetic recording medium having a structure in which a first magnetic layer and a second magnetic layer are formed on a substrate in this order, wherein the first magnetic layer has a granular structure containing a FePt alloy having a Llo structure, a CoPt alloy having a Llo crystal lattice structure or a Co Pt alloy having a L 11 crystal lattice structure, and at least one material for causing grain boundary segregation selected from the group consisting of Si02, Ti02, Cr203, Ab03, Ta20s, Zr02, Y203, Ce02, MnO, TiO, ZnO, and MgO,; and wherein the first magnetic layer includes a decreased- content area of which the content of the material for causing grain boundary segregation is continuously and gradually decreased towards the second magnetic layer. Br. 11 (Claims App.) (emphasis added). REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1: Claims 3 and 4 under 35 U.S.C. Â§ 112, second paragraph, as indefinite (Ans. 2); and Rejection 2: Claims 1, 3-5, and 10 under 35 U.S.C. Â§ I03(a) as unpatentable over Mukai (US 2006/0222902 Al, published October 5, 2006) in view of Kanda et al. (JP 2005141825, published June 2, 2005) ("Kanda") and Rorie et al. (JP 2008159177 A, published July 10, 2008) ("Rorie") (Ans. 2). 2 Appeal2018-000419 Application 13/574,932 Rejection 1 - Indefiniteness DISCUSSION The Examiner finds that claims 3 and 4 are indefinite because there is insufficient antecedent basis for "the fixed content area" limitation. Final Act. 3. Appellants do not present arguments contesting the Examiner's rejection of claims 3 and 4 under 35 U.S.C. Â§ 112, second paragraph. See generally Br. 5-10. Consequently, Appellants have waived any argument of error, and we summarily sustain the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("If an appellant fails to present arguments on a particular issue -- or, more broadly, on a particular rejection -- the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection."), and Manual of Patent Examining Procedure (MPEP) Â§ 1205.02 (9th ed., August 2017) ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer."). Rejection 2 - Obviousness Appellants argue claims 1, 3, and 4 separately. Br. 5-10. We address each claim in tum below. Claim 1 The Examiner finds that Mukai teaches the structure of claim 1 's thermally assisted magnetic recording medium. Final Act. 4 ( citing Mukai 3 Appeal2018-000419 Application 13/574,932 ,r,r 80, 82, 120, 121, 169; Figs. 15, 20). The Examiner finds that Mukai teaches that its first magnetic layer comprises many sub layers (3 51-3 5n), where in each sublayer the content of the material for causing grain boundary segregation is gradually decreased towards the second magnetic layer. Final Act. 4 (citing Mukai ,r 120). The Examiner finds that Mukai's teaching reads on claim 1 's limitation that "the first magnetic layer includes a decreased-content of the material for causing grain boundary segregation is continuously and gradually decreased towards the second magnetic layer." Final Act. 4--5. Appellants argue that Mukai does not disclose, teach, or suggest that the material in its first magnetic layer for causing grain boundary segregation is continuously and gradually decreased towards the second magnetic layer as recited in claim 1. Br. 6. Appellants contend that because Mukai' s first magnetic layer includes sub layers, the content of the material for causing grain boundary segregation is decreased step-wise, as shown in Figures 2 to 4 of the present application, not decreased continuously and gradually as shown in Figures 11 to 16 of the present application. Br. 5---6. Appellants' argument is not persuasive of reversible error. During prosecution, an applicant's claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As the Examiner correctly explains, Appellants' Specification does not define "continuously and gradually decreased" as requiring a specific slope or shape. Ans. 3. To the contrary, Appellants' Specification discloses that the material for causing grain boundary segregation is lowered continuously or in a step-by-step manner. Spec. ,r,r 22, 56. Thus, we discern no reversible error in the Examiner's 4 Appeal2018-000419 Application 13/574,932 interpretation that the phrase "continuously and gradually decreased" in claim 1 does not exclude a step-wise decrease in the material for causing grain boundary segregation. Appellants admit that Mukai teaches that the content of the material in its first magnetic layer for causing grain boundary segregation is decreased step-wise. Br. 5; see also Mukai ,r 120 (disclosing the concentrations of the material for causing grain boundary segregation (i., the non-soluble phases of the first magnetic layer) are decreased in the direction from the first magnetic layer 35 1 to the nth magnetic layer 35n (i.e., towards the second magnetic layer)). Thus, we are not persuaded of reversible error in the Examiner's finding that Mukai teaches that the material in its first magnetic layer for causing grain boundary segregation is "continuously and gradually decreased towards the second magnetic layer" as required by claim 1. Ans. 3. Accordingly, we sustain theÂ§ 103(a) rejection of claim 1 over Mukai, Kanda, and Rorie. Because claims 5 and 10 depend from claim 1, and are not argued separately (see Br. 5-10), we also sustain theÂ§ 103(a) rejection of those claims over Mukai, Kanda, and Rorie. Claim 3 Claim 3, is reproduced below from the Claims Appendix. Br. 11 (Claims App.). 3. The thermally assisted magnetic recording medium according to Claim 1, wherein the percentage of the thickness of the fixed-content area in the total thickness of the first magnetic layer is 70% or less. 5 Appeal2018-000419 Application 13/574,932 Appellants contend that a variable must be recognized as contributing to a specific result before it can be acknowledged as prima facie obvious to determine the optimum or workable range of the variable. Br. 7. Appellants argue that Mukai does not teach, suggest, or even recognize the advantageous effect of the thickness of the fixed-content area in the total thickness of the first magnetic layer being 70% or less. Id. Appellants' argument is not persuasive of reversible error. Because the range for the percentage of the thickness of a fixed-content area in the total thickness of the first magnetic layer recited in claim 3 includes 70%, the Examiner interprets claim 3 as not requiring a fixed content area. Ans. 5. We discern no reversible error in the Examiner's claim interpretation. Accordingly, we sustain the Examiner'sÂ§ 103(a) rejection of claim 3. Claim 4 Claim 4, is reproduced below from the Claims Appendix. Br. 11 (Claims App.). 4. The thermally assisted magnetic recording medium according to Claim 1, wherein the content of the material for causing grain boundary segregation in the fixed-content area is 30% by volume or more. As with claim 3, Appellants contend that a variable must be recognized as contributing to a specific result before it can be acknowledged as prima facie obvious to determine the optimum or workable range of the variable. Br. 8. Appellants argue that Mukai does not teach, suggest, or even recognize the advantageous effect of the content of the material for causing grain boundary segregation in the fixed-content area is 30% by volume or more. Id. 6 Appeal2018-000419 Application 13/574,932 Appellants' argument is not persuasive of reversible error. The Examiner acknowledges that Mukai is silent about the volume percentage of the grain boundary segregation in the fixed-content area. Non-Final Act. 5. To account for this difference, the Examiner relies on Rorie. Id. Rorie, like Mukai, teaches a magnetic recording medium with a magnetic layer that includes magnetic particles, Fe alloy (FePt), and a non-magnetic material consisting of an oxide, Si 0 2, for causing boundary segregation. Rorie, Abstract, ,r 20; see also Non-Final Act. 5. Rorie further teaches that the content of the oxide in the magnetic layer is preferably in a range of 40% to 90% by volume to control the crystal grain diameter of the magnetic particles in the magnetic layer. Id. ,r 20. Thus, a preponderance of the evidence supports the Examiner's finding that one of ordinary skill in the art would have been led to modify Mukai' s first magnetic layer based on Rorie to include 30% by volume or more of the material for causing grain boundary segregation "to control the grain diameter and produce small and uniform magnetic grains" of FePt in the first magnetic layer. Non-Final Act. 5. Accordingly, we sustain the Examiner'sÂ§ 103(a) rejection of claim 4. DECISION The rejection of claims 3 and 4 under 35 U.S.C. Â§ 112, second paragraph, is affirmed. The rejection of claims 1, 3-5 and 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Mukai, Kanda, and Rorie, is affirmed. 7 Appeal2018-000419 Application 13/574,932 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8