Ex Parte Oh et al

Patent Trial and Appeal Board

Mar 23, 2018

11869811 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/869,811 10/10/2007
73462 7590 03/27/2018
Hall Estill Attorneys at Law
(Seagate Technology LLC)
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
FIRST NAMED INVENTOR
Hoon-sang Oh
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.
21673-10-US 3725
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
danderson@hallestill.com
okcipdocketing@hallestill.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte HOON-SANG OH,
TAE-HYO LEE, and BYUNG-KYU LEE 1
Appeal2017-003710
Application 11/869,811
Technology Center 1700
Before MICHAEL P. COLAIANNI, JULIA HEANEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Seagate Technology
LLC. Appeal Br. 1.
Appeal2017-003710
Application 11/869,811
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
34--50, 52, and 53. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to a perpendicular magnetic
recording medium with an increased perpendicular coercivity while a
perpendicular magnetic anisotropy is minimally sacrificed (Spec. i-f 14;
claim 34 ).
Claim 34 is illustrative:
34. An apparatus comprising:
a substrate;
a first nonmagnetic underlayer supported by the substrate having a
first thickness,
a first surface roughness, and a selected material composition;
a second nonmagnetic underlayer deposited on the first nonmagnetic
under layer
and having the same selected material composition as the first
nonmagnetic underlayer, the second nonmagnetic layer having
a second thickness less than the first thickness and a second
surface roughness greater than the first surface roughness,
the first thickness in a range from 25 nm to 35 nm, the selected
material composition comprising Pd or an alloy thereof; and
a recording layer deposited in contact with the second nonmagnetic
underlayer.
Appellants appeal the following rejections:
1. Claims 39--41, 43, and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen (US 2004/0247945 Al, published Dec. 9,
2004).
2. Claim 42 is rejected 35 U.S.C. § 103(a) as unpatentable over Chen in
view ofNolan (US 2004/0253485 Al, published Dec. 16, 2004).
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Application 11/869,811
3. Claims 34--38, 44, 46-48, 50, 52, and 53 are rejected under
35 U.S.C. § 103(a) as unpatentable over Chen in view of Shimosato
(US 2004/0018390 Al, published Jan. 29, 2004).
4. Claim 49 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chen in view of Shimosato and Nolan.
FINDINGS OF FACT & ANALYSIS
REJECTION (1): Claim 39
Appellants argue claim 39 only with regard the first rejection (Br. 8).
Accordingly, claims 40, 41, 43, and 45 will stand or fall with our analysis of
the rejection of claim 39.
The Examiner's findings and conclusions regarding Chen are located
on pages 2 to 4 of the Final Office Action. The Examiner finds that Chen
teaches the subject matter of claim 39 except for the thickness of the first
nonmagnetic layer in a range from 25 to 3 5 nm and the thickness of the
second nonmagnetic layer greater than 5 nm with the total combined
thickness of the first and second nonmagnetic underlayers being about 40
nm or less (Final Act. 2-3). The Examiner determines that it would have
been obvious that Chen's first nonmagnetic underlayer is 25 to 35 nm and
the second nonmagnetic underlayer is 10 nm, where the total combined
thickness is less than 40 nm, because the thickness of the first and second
nonmagnetic layers disclosed by Chen overlap with the ranges claimed
(Final Act. 3). The Examiner finds that overlapping ranges are prima facie
obvious (Final Act. 3).
Appellants argue that Chen does not disclose the relative thicknesses
of the respective layers and the thicknesses claimed by Appellants produce
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Application 11/869,811
unexpected results in the coercivity, squareness and saturation magnetization
levels of the material (Br. 9-10). Appellants cite to Figures 8A to 8B,
Figures 6A to 6C and paragraphs 58-61, 74, and 85 of the Specification as
showing unexpected results (Br. 10).
Appellants do not dispute the ranges for the two layers overlap (Br. 9).
Although Appellants argue that Chen does not discuss the relative thickness
of the layers, the Examiner finds that Chen exemplifies in Table 1 that the
total thickness of layers 4A and 4B equals less than 40 nm (i.e., 33 nm)
(Ans. 3). The overlapping ranges of the discrete layer thicknesses coupled
with the total layer thickness being less than 40 nm would have rendered
obvious selecting any of the thicknesses that overlap the first and second
layer thicknesses with the total thickness being less than or equal to 40 nm.
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.").
The Examiner correctly finds that the evidence cited on page 10 of the
Specification (e.g., Figures 8A and 8B; i-fi-158---61, 71, 74, 85-86) is based
upon deposited Ru layers only and does not use Pd containing layers (Ans.
4 ). As the Examiner finds, the showing is not commensurate in scope with
the claims that either include any type of material for the nonmagnetic
underlayer (claim 39) or are directed to Pd-containing alloys (claims 34, 44).
The Examiner also finds that Appellants' evidence only compares
conventional embodiments that use a single deposited Ru underlayer
while failing to compare with the closest prior art, Chen, that deposits two
underlayers (Ans. 4).
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Appeal2017-003710
Application 11/869,811
Moreover, Appellants' argument that the particular thicknesses for the
first and second layers recited in the claims are critical and yield unexpected
results is undermined by Appellants' disclosure that the thicknesses of the
first and second underlayers may vary as long as the characteristics of the
perpendicular magnetic recording medium that are required in the present
invention are secured (Spec. i-f 62). Appellants also disclose that the total
thickness may be 40 nm or more. Id. The Specification further discloses that
the thickness of the layer in contact with the perpendicular recording
medium is greater than any other layers of the multilayer underlayer (Spec.
i-f 62). This disclosure appears to contradict Appellants' allegation of
criticality with regard to claim 39 where the first layer (i.e., the layer not in
contact with the perpendicular recording medium) may be thicker than the
second layer (i.e., the layer in contact with perpendicular recording
medium). Appellants have not carried their burden of establishing
unexpected results.
On this record, we affirm the Examiner's§ 103 rejection over Chen.
REJECTIONS (2) AND (4) : Claims 42 and 49
The Examiner's findings and conclusions regarding Chen and Nolan
are located on page 5 of the Final Office Action. The Examiner finds that
Chen does not teach that the magnetic recording material (MRM) excludes a
soft magnetic layer or that the first nonmagnetic underlayer is in contact
with the substrate (Final Act. 5, 8). The Examiner finds that Nolan discloses
a perpendicular recording medium that does not require a soft magnetic
underlayer. Id. The Examiner concludes that it would have been obvious to
modify Chen's medium to exclude a soft magnetic underlayer since Nolan
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Application 11/869,811
discloses that recording is possible without a soft magnetic layer. (Final Act.
5, 9).
Appellants argue that Chen teaches that the soft magnetic layer
imparts desirable properties to the recording material such that a person of
ordinary skill in the art would not have had a reasonable expectation of
success in eliminating the magnetically soft underlayer 2 from Chen (Br.
11-12; 18). Appellants contend that Nolan's magnetic recording medium is
sufficiently different from Chen because Nolan's recording medium may
exclude the soft magnetic layer and any interlayers (Br. 12). Appellants
contend that the Examiner engaged in impermissible hindsight (Br. 12).
Although Chen's embodiments use a soft magnetic recording layer,
Chen's disclosure recognizes that use of the soft magnetic layer is
"typically" used (Chen i-f 10). Chen discloses perpendicular magnetic
recording media include simply depositing magnetic recording material on a
substrate (Chen i-f 3). Chen also discloses that the document only focuses on
preferred embodiments, but other combinations are possible (Chen i-f 114).
Even though Chen may disclose that the soft magnetic layer imparts certain
desirable features, eliminating the soft magnetic layer and its corresponding
function would have been obvious where those properties are not needed or
desired. Indeed, Nolan, like Chen, teaches a perpendicular magnetic
recording medium that may or may not include a soft magnetic layer.
Accordingly, the Examiner has established that the combined
teachings of Chen and Nolan, as a whole, would have included embodiments
where the soft magnetic layer is eliminated and the magnetic material is
deposited on the substrate. We find that the Examiner has provided a
definition of substrate on page 7 of the Answer. In that definition, the
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Examiner finds that the broadest reasonable interpretation of substrate
includes a support such that any layer below Chen's nonmagnetic underlayer
is considered to be a substrate, whether it be a soft magnetic under layer or
an adhesion layer (Ans. 7). Appellants do not contest or otherwise show
reversible error in the Examiner's claim construction (no Reply Brief
was filed).
REJECTION (3): Claims 34 and 44
The Examiner's findings regarding Chen and Shimosato are located
on pages 5 to 8 of the Final Office Action.
Appellants argue that claim 34 requires that the first and second
nonmagnetic underlayers are made of the same material composition that
is made of Pd or an alloy thereof (Br. 13, 15). Appellants contend that
Shimosato teaches using two underlayers of differing composition where the
top underlayer is amorphous and the bottom underlayer is crystalline (Br. 13,
15). Appellants contend that Shimosato 's teaching that the crystalline
underlayer may include Pd fails to teach making both the top and bottom
underlayer the same Pd alloy composition (Br. 13, 15). Appellants contend
that the layer that includes Pd in Shimosato is a magnetic layer in
contravention of the claim language (Br. 13-14, 15).
Contrary to Appellants' arguments, the Examiner is not suggesting to
substitute Shimosato 's amorphous and crystalline layers for the first and
second underlayer in Chen. Rather, the Examiner finds that Chen teaches
using two crystalline underlayers, and Shimosato teaches a Pd-containing
composition is a known material for forming crystalline underlayers in
perpendicular magnetic recording medium (Ans. 9). Indeed, Chen teaches
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that the material for its crystalline interlayers2 may be selected from several
nonmagnetic materials, but Chen does not state that the layers 4A and 4B
must be different compositions (i-f 99). Chen teaches that the interlayers may
be Ru materials (i-f 110, Table V). In other words, the teachings of the
references as a whole would have suggested having two crystalline
interlayers made of the same material which would have included
Shimosato 's crystalline Pd alloy interlayer material.
On this record, we affirm the Examiner's§ 103 rejection over Chen in
view of Shimosato.
DECISION
The Examiner's decision 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)(l ).
ORDER
AFFIRMED
2 Chen's interlayers correspond to the claimed underlayers.
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