SEAGATE TECHNOLOGY LLC

Patent Trials and Appeals BoardDec 29, 2021

2021000178 (P.T.A.B. Dec. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/073,411 03/17/2016 Yuhang Cheng 0430.070700US00 5230 75742 7590 12/29/2021 MRG/Seagate c/o Mueting Raasch Group 111 Washington Ave. S., Suite 700 Minneapolis, MN 55401 EXAMINER BUTCHER, BRIAN M ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 12/29/2021 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): ptodocketing@mrgs.com randi.j.walz@seagate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUHANG CHENG, MICHAEL SEIGLER, and SCOTT FRANZEN Appeal 2021-000178 Application 15/073,411 Technology Center 2600 Before ELENI MANTIS MERCADER, JUSTIN BUSCH, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 8, 9, 13, 15, 16, 18 and 19, which are all of the pending claims remaining in the application that have not been 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Seagate Technology LLC. Appeal Br. 2. Appeal 2021-000178 Application 15/073,411 2 withdrawn. Appeal Br. 5; Claim App. 1–5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter generally relates to an overcoat on an air bearing surface, such as used in heat assisted magnetic recording. Spec. ¶¶ 2, 9. Appellant describes that the combination of light absorption and media back heating may increase the possibility of direct contact, or diffusion from the peg tip to the disk. Id. ¶¶ 9–11. Appellant’s claimed invention applies a low thermal conductivity overcoat to minimize or prevent thermal transformation into the peg of the near field transducer. Independent claim 1 is illustrative: 1. A device having an air bearing surface (ABS), the device comprising: a write pole; a near field transducer (NFT) comprising a peg and a disc, wherein the peg is at the ABS of the device; an overcoat, the overcoat comprising: a low thermal conductivity layer, the low thermal conductivity layer comprising fused silica (SiO2), yttria stabilized zirconia (YSZ), cerium oxide (CeO2), nickel oxide (NiO), thorium oxide (ThO2), tantalum oxide (TaO), zirconium oxide (ZrO2), or combinations thereof that has a thermal conductivity of not greater than 5 W/mK, wherein the overcoat functions to minimize or even prevent thermal transformation into the peg of the NFT. Claims App. 1. Claim 13 recites a device having similar limitations; dependent claims 2, 8, 9, 15, 16, 18 and 19 incorporate the limitations of either claim 1 or claim 13. Id. at 2–5. Appeal 2021-000178 Application 15/073,411 3 REFERENCES Name Reference Date Cheng et al. (“Cheng”) US 2014/0376350 A1 Dec. 25, 2014 Gokemeijer et al. (“Gokemeijer”) US 2015/0037613 A1 Feb. 5, 2015 REJECTION Claims 1, 2, 8, 9, 13, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 103 as being obvious over the combination of Cheng in view of Gokemeijer. OPINION Appellant argues that the combination of Cheng and Gokemeijer lacks sufficient rationale to support a finding of obviousness. Appeal Br. 9–10. The Examiner finds Cheng to teach the device of claim 1, including an overcoat having a low thermal conductivity layer, in which the thermal conductivity is not greater than 5 W/mK, except for teaching any of the specifically recited materials having that conductivity. Final Act. 2–3 (citing Cheng ¶¶ 34, 36). The Examiner finds Gokemeijer to teach an overcoat layer from TaO2, such that the combination teaches the claimed invention having a “TaO” layer. Id. at 3. The Examiner finds that one of ordinary skill in the art would have found it obvious to use one of the claimed layers as an overcoat layer in Cheng, “because one having ordinary skill in the art would want to provide a layer that is thermally stable.” Id. at 3 (citing “Paragraph [0028], Lines 14–16”). Appellant argues that this explanation is based entirely on the reasoning of Cheng and does not relate to the materials of Gokemeijer, or why those materials would be used to modify Cheng. Appeal Br. 10. In the Appeal 2021-000178 Application 15/073,411 4 Reply Brief, Appellant further alleges that Cheng relates to gas barrier layers, not overcoat layers, and there is no reason given to support altering gas barrier layers with materials used for overcoat layers. Reply Br. 2 (stating that this argument had been previously raised in “previous responses”). With respect to the rationale for combining the references, the Examiner cites to “Paragraph [0028], Lines 14−16,” but did not specify which reference is being cited. Final Act. 3. Gokemeijer at that section states, “Tantalum oxides, on the other hand, are very stable, even at these high temperatures and will not leave the writer un-protected.” The Examiner appears to confirm that this is the section providing the rationale to combine, later stating the advantage for the combination is that “thermal stability is desired to at least protect a writer in the art for a near field transducer write device.” Ans. 3. Viewed in this manner, the Examiner relies on Gokemeijer’s teaching of an advantage to using the tantalum oxide of Gokemeijer as an overcoat layer, i.e., thermal stability that protects a writer. We agree that this provides a reason to combine Gokemeijer’s overcoat with Cheng’s writer. With respect to Appellant’s argument that Cheng relates to a gas barrier layer and not an overcoat layer, we are unpersuaded. First, this argument was not first raised in the Appeal Brief. Regardless of whether this argument was raised earlier during prosecution, our rules are clear that any argument not raised in the Appeal Brief may not be raised in the Reply Brief, unless that argument is responsive to an argument raised the Examiner’s Answer or good cause is shown. 37 C.F.R. § 41.41(b)(2). Appellant does not point to any argument in the Answer, or other good Appeal 2021-000178 Application 15/073,411 5 cause, that would permit the gas barrier argument to be considered under our rules. Accordingly, we do not consider such argument in deciding this appeal. To any extent that this argument is based on the Appeal Brief’s discussion of the Examiner’s reason to combine, Appellant has not provided persuasive reasoning why Gokemeijer’s teaching of a particular overcoat with its advantages would not be combined with Cheng even if Cheng allegedly does not teach an overcoat layer, per se. We further note that Cheng states, “[t]he gas barrier can be considered part of an overcoat structure.” Cheng ¶ 15. CONCLUSION For the above-described reasons, we affirm the Examiner’s obviousness rejection of claims 1, 2, 8, 9, 13, 15, 16, 18, and 19. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 8, 9, 13, 15, 16, 18, 19 103 Cheng, Gokemeijer 1, 2, 8, 9, 13, 15, 16, 18, 19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED