Ex Parte Oh et alDownload PDFPatent Trial and Appeal BoardMar 23, 201811869811 (P.T.A.B. Mar. 23, 2018) Copy Citation 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). 2 Appeal2017-003710 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 3 Appeal2017-003710 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). 4 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 5 Appeal2017-003710 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 6 Appeal2017-003710 Application 11/869,811 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 7 Appeal2017-003710 Application 11/869,811 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. 8 Copy with citationCopy as parenthetical citation