Ex Parte Ng et al

Patent Trial and Appeal BoardMar 18, 2013

11606584 (P.T.A.B. Mar. 18, 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. 11/606,584 11/30/2006 INV001Wei Beng Ng 450111-05908 8123 7590 03/19/2013 William S. Frommer, Esq. FROMMER LAWRENCE & HAUG LLP 745 Fifth Avenue New York, NY 10151 EXAMINER RICKMAN, HOLLY C ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 03/19/2013 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WEI BENG NG, TAKEHISA ISHIDA, and HIROYUKI OKITA ____________ Appeal 2012-001189 Application 11/606,584 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, MICHAEL P. COLAIANNI, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-4, 13, and 14. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A magnetic structure comprising a substrate and at least one layer of magnetic material deposited on the substrate, the magnetic material containing 45-95 atomic % cobalt, 0.5-50 atomic % platinum, 0.5-20 atomic % tungsten, and 0.5-10 atomic % phosphorus. Appeal 2012-001189 Application 11/606,584 2 The Examiner relies upon the following references as evidence of obviousness: Takeda et al. (Takeda) 5,626,973 May 6, 1997 Chen et al. (Chen) 5,851,688 Dec. 22, 1998 Tamura et al. (Tamura) US 2003/0156451 Aug. 21, 2003 Appellants’ claimed invention is directed to a magnetic structure comprising a magnetic material containing the recited amounts of cobalt, platinum, tungsten, and phosphorus. Appealed claims 1-4 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Takeda in view of Chen. Claims 13 and 14 stand rejected under 35 U.S.C. §103(a) as being unpatentable over the stated combination of references further in view of Tamura. Appellants do not separately argue any particular claim on appeal. Nor have Appellants presented a separate, substantive argument against the Examiner’s separate § 103 rejection of the dependent claims 13 and 14. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of applied prior art. Accordingly, we will sustain the Examiner’s rejections for the reasons set forth in the Answer, and we add the following primarily for emphasis. There is no dispute that Takeda, like Appellants, discloses a magnetic alloy comprising cobalt, platinum, and tungsten. As recognized by the Examiner, Takeda does not expressly disclose that the alloy may also Appeal 2012-001189 Application 11/606,584 3 contain the presently claimed phosphorus. However, as noted by the Examiner, Takeda teaches that the magnetic alloy may be a quaternary one containing a fourth element, and Chen teaches that cobalt-platinum-based alloys are benefited by including low solubility elements such as phosphorus. According to Chen, the presence of phosphorus in a cobalt- platinum-based alloy enhances the preferential segregation and destruction of intergranular exchange interaction (col. 4, ll. 16-24). Accordingly, based on the collective teachings of Takeda and Chen, we fully concur with the Examiner that it would have been obvious for one of ordinary skill in the art to select phosphorus as a fourth element in the quaternary alloy of Takeda containing cobalt, platinum, and tungsten. We agree with the Examiner that one of ordinary skill in the art would have had a reasonable expectation of success in obtaining an effective magnetic material by incorporating phosphorus in the alloy of Takeda. Appellants submit “nothing has been found in Takeda that discloses a quaternary alloy with the composition of Co-Pt-W-fourth alloy” (Prin. Br. 6, 4th para.). However, this argument does not address the thrust of the Examiner’s rejection. Takeda discloses that the magnetic material may be a quaternary alloy and it is the Examiner’s position that it would have been obvious to select phosphorus as the fourth element in Takeda’s quaternary alloy. We are also not persuaded by Appellants’ argument that Takeda’s list of elements that may be used to form a quaternary alloy does not include phosphorus. As pointed out by the Examiner, Takeda’s list of elements is followed by the disclosure “and so on, as long as they do not destroy the Appeal 2012-001189 Application 11/606,584 4 perpendicular magnetization property of the layer” (col. 4, ll. 48-50). The Examiner notes that Chen teaches that phosphorus and silicon are equivalents in cobalt-platinum-based alloys and, therefore, one of ordinary skill in the art would have had a reasonable expectation of substituting phosphor for the silicon of Takeda. As also noted by the Examiner, Appellants have presented no evidence that the inclusion of phosphorus would destroy the perpendicular magnetization property of Takeda’s magnetic material. Appellants’ argument to this extent is without factual support. Appellants also submit that Chen teaches that only low solubility elements may be used in order to get a very low media noise without seriously affecting the other recording performance parameters and that tungsten is not a low solubility element. However, Appellants provide no evidence that tungsten is not a low solubility element other than pointing out that tungsten is not included in the group of elements listed by Chen. Appellants’ argument concludes that it would not have been obvious to include tungsten in the colbalt-platinum alloy of Chen but, as stressed by the Examiner, the issue on appeal is the obviousness of adding phosphorus to the alloy of Takeda, and not adding tungsten to the alloy of Chen. As a final point, we note that Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner is affirmed. Appeal 2012-001189 Application 11/606,584 5 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)(iv). AFFIRMED cam