Ex Parte Bian et al

Board of Patent Appeals and Interferences

Jul 31, 2007

10903064 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte XIAOPING BIAN,
MARY FRANCES DOERNER,
JAMES A. HAGAN, TIM MINVIELLE,
MOHAMMAD TAGHI MIRZAMAANI,
ADAM DANIEL POLCYN and KAI TANG
____________

Appeal 2007-2256
Application 10/903,064
Technology Center 1700
____________

Decided: July 31, 2007
____________

Before THOMAS A. WALTZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1-7, which are the only claims
pending in this application. We have jurisdiction pursuant to 35 U.S.C. § 6.
Appeal 2007-2256
Application 10/903,064

According to Appellants, the invention is directed to a magnetic thin
film disk with a circumferentially textured glass substrate, a layer of CrTi
deposited on the substrate, a seed layer of RuAl over the layer of CrTi where
the seed layer has a B2 crystallographic structure, an underlayer over the
seed layer, and at least one magnetic layer with an Mrt orientation ratio
greater than one and a crystallographic orientation with c-axis in-plane for
longitudinal recording (Br. 5). Independent claim 1 is illustrative of the
invention and a copy of this claim is reproduced below:
1. A magnetic thin film disk comprising:

a circumferentially textured glass substrate structure;

a layer of CrTi deposited on the substrate;

a seed layer of RuA1 with a B2 crystallographic structure over the
layer or CrTi;

an underlayer over the seed layer; and

at least one magnetic layer over the underlayer, the magnetic layer
having an Mrt orientation ratio greater than one and having a
crystallographic orientation with c-axis in-plane for longitudinal recording.

The Examiner has relied on the following prior art references as
evidence of obviousness:
Shimizu US 2003/0091868 A1 May 15, 2003
Lee US 2003/0134153 A1 Jul. 17, 2003

ISSUES ON APPEAL
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lee in view of Shimizu (Answer 3).
2
Appeal 2007-2256
Application 10/903,064

Appellants contend that Lee and Shimizu are “non-analogous” in that
Lee’s teachings are for a longitudinal magnetic recording medium while the
teachings of Shimizu relate to a perpendicular magnetic recording medium,
which Shimizu teaches is incompatible with longitudinal recordings (Br. 7).
Appellants contend that Lee is directed to the same general type of
magnetic medium as Appellants, but, in contrast, the concept of Mrt being
higher in the circumferential direction makes no sense for the perpendicular
oriented media of Shimizu (Br. 8).
Appellants contend that Shimizu does not teach that CoTi is
equivalent to RuAl, just that both have a B2 crystallographic structure (Br.
8-9). Appellants further contend that the layer under the RuAl or CoTi of
Shimizu is not CrTi as required by Appellants’ claims, but a quite different
layer, and one of ordinary skill in the art would not look to perpendicular
recording media for compatible substitutions of material (Br. 9).
The Examiner contends that Lee and Shimizu are analogous art, both
directed to magnetic recording media (Answer 4). The Examiner further
contends that one of ordinary skill in this art would have a reason and an
expectation of success in substituting one B2 crystallographic material
(RuAl) for another (CoTi) as an underlayer in a magnetic recording medium
(Answer 4).
Accordingly, the issues presented from the record in this appeal are as
follows: (1) are Lee and Shimizu non-analogous art?; and (2) if not, has the
Examiner identified reasons that would have prompted a person of ordinary
skill in this art to substitute one B2 crystallographic structure material for
another?
3
Appeal 2007-2256
Application 10/903,064

We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore, we
AFFIRM the sole ground of rejection presented in this appeal essentially for
the reasons stated in the Answer, as well as those reasons set forth below.

OPINION
We determine the following factual findings from the record in this
appeal:
(1) Lee discloses a longitudinal magnetic recording medium having a
circumferentially textured glass substrate, a CrTi layer, a CoTi
seed layer, a Cr alloy underlayer, and a magnetic layer having an
orientation ratio greater than 1 (Answer 3; see Lee, Abstract; Fig.
2; and ¶¶ [0013] through [0016]);
(2) Lee teaches that the CrTi layer is a seed layer that is used to isolate
the later deposited films from the substrate, thus allowing the
following CoTi layer to be deposited onto the CrTi layer without
being adversely impacted by the substrate; and the CoTi layer is
an underlayer having a B2 crystal structure used to enhance the
coercivity and Mrt value of the later deposited magnetic films by
orienting the crystal growth (¶¶ [0025] and [0027]);
(3) Shimizu discloses a magnetic recording medium including a non-
magnetic substrate, a soft magnetic undercoat film, an orientation-
regulating undercoat film, an orientation-regulating film, a
perpendicular magnetic film where the easy-magnetization axes
4
Appeal 2007-2256
Application 10/903,064

are mostly oriented vertically, and a protective film (Abstract; Fig.
5; ¶¶ [0007], [0016], [0027], [0028], [0036], and [0112]);
(4) Shimizu teaches that the soft magnetic undercoat film is provided
for causing the perpendicular magnetic film to be magnetized in a
direction perpendicular to the substrate (¶ [0055]), that the
orientation-regulating film is provided for regulating the crystal
orientation and crystal grain size of the perpendicular magnetic
film (¶¶ [0098] and [0099]), and, in one embodiment, an
orientation-regulating undercoat film is provided between the soft
magnetic undercoat film and the orientation-regulating film (¶
[0177]);
(5) Shimizu teaches that the material for the orientation-regulating
undercoat film may be a material having a B2 structure, with
examples including AlRu and CoTi (¶¶ [0178], [0179], and
[0180]); and
(6) Shimizu teaches another embodiment where a longitudinal
undercoat film, with easy-magnetization axes oriented in a
longitudinal direction, is added between the substrate and the soft
magnetic undercoat film (¶ [0188]; Fig. 7).
Determination that a reference is from non-analogous art is two-fold;
first, we decide if the reference is within the field of Appellants’ endeavor; if
it is not, we proceed to determine whether the reference is reasonably
pertinent to the particular problem with which Appellants were involved.
See In re GPAC, 57 F.3d 1573, 1577, 35 USPQ2d 1116, 1120 (Fed. Cir.
1995). An express suggestion to substitute one equivalent for another need
5
Appeal 2007-2256
Application 10/903,064

not be present to render such substitution obvious. See In re Fout, 675 F.2d
297, 301, 213 USPQ 532, 536 (CCPA 1982). Under 35 U.S.C. § 103, the
factual inquiry into obviousness requires a determination of: (1) the scope
and content of the prior art; (2) the differences between the claimed subject
matter and the prior art; (3) the level of ordinary skill in the art; and (4)
secondary considerations. See Graham v. John Deere of Kansas City,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). The analysis supporting
obviousness should be made explicit and should “identify a reason that
would have prompted a person of ordinary skill in the art to combine the
elements” in the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct.
1727, 1731, 82 USPQ2d 1385, 1389 (2007).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellants’ arguments. As shown by Appellants’
Specification, their field of endeavor is magnetic thin film media
(Specification 1:12). We determine that Shimizu is from the same field of
endeavor, namely it is directed to a magnetic recording medium (¶ [0002]).1
Appellants’ argument that perpendicular and longitudinal recording media
are non-analogous is not persuasive. Perpendicular and longitudinal
magnetic recording media may only differ by a minute amount of oriented
axes (Shimizu, ¶¶ [0003] and [0005]), and Shimizu teaches the use of both
perpendicular and longitudinal films in one embodiment (see factual finding
(6) listed above). Therefore, we determine that perpendicular and

1 Appellants admit that Lee is analogous art (Br. 8).
6
Appeal 2007-2256
Application 10/903,064

longitudinal magnetic recording media are merely two different species in
the same field of endeavor.
As shown by factual findings (1) and (2) listed above, we determine
that Lee discloses every limitation of claim 1 on appeal except for the seed
layer being RuAl (see Answer 3). As shown by factual finding (2) listed
above, we determine that Lee further teaches that the CoTi underlayer may
have a B2 crystallographic structure. As shown by factual findings (3) and
(4) listed above, we determine that Shimizu discloses a similar magnetic
recording film to that disclosed by Lee, with an underlayer separating the
substrate from the orientation-regulating undercoat film. As shown by
factual finding (5) listed above, we determine that this orientation-regulating
undercoat film is disclosed as having a B2 crystal structure, and is
exemplified as including RuAl and CoTi as equivalents. As shown by
factual finding (4) listed above, we determine that Shimizu teaches that the
function of the soft magnetic undercoat film is to cause the perpendicular
magnetic film to be magnetized in a direction perpendicular to the substrate.
Thus, we determine that one of ordinary skill in this art would have known
that the orientation-regulating undercoat would not be concerned with the
direction of the easy-magnetization axes but would have been effective to
orient the crystal structure of above-deposited layers, which is the same
function accomplished by the CoTi layer in Lee (see factual finding (2)
listed above). Accordingly, we determine that it would have been well
within the ordinary skill in this art to use equivalent materials with B2
crystallographic structure, as taught by Shimizu, for the CoTi B2 structure
7
Appeal 2007-2256
Application 10/903,064

material disclosed by Lee, to accomplish the function of orienting the crystal
growth of above-deposited layers.
For the foregoing reasons and those stated in the Answer, we affirm
the sole ground of rejection in this appeal. The decision of the Examiner 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)(1)(iv).
AFFIRMED

cam

G. Marlin Knight
P. O. Box 1320
Pioneer, CA 95666

8