Ex Parte Wong

Board of Patent Appeals and Interferences

Jun 10, 2004

09584765 (B.P.A.I. Jun. 10, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BUNSEN Y. WONG
__________
Appeal No. 2004-1144
Application No. 09/584,765
__________
ON BRIEF
__________
Before GARRIS, WALTZ, and DELMENDO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 18-62
which are all of the claims remaining in the application.
The subject matter on appeal relates to a magnetic recording
medium comprising a substrate and a seedlayer which includes a
ternary or quaternary intermetallic alloy. In the appealed
claims, this intermetallic alloy is defined either as having an
Appeal No. 2004-1144
Application No. 09/584,765
2
A2 lattice structure (e.g., see independent claims 18 and 48) or
as having a particular composition (e.g., see independent claim
33). This appealed subject matter is further illustrated by
independent claims 18 and 33 as well as dependent claims 41, 44
and 47 which read as follows:
18. A magnetic recording medium, comprising:
a substrate;
a seedlayer deposited on the substrate, wherein the
seedlayer includes a ternary or quaternary intermetallic alloy
with an A2 lattice structure that contacts the substrate;
a chromium or chrome alloy underlayer deposited on the
seedlayer; and
a cobalt or cobalt alloy magnetic layer deposited on the
underlayer.
33. A magnetic recording medium, comprising:
a substrate of NiP or ceramic glass;
a seedlayer deposited on the substrate, wherein the
seedlayer includes a ternary or quaternary intermetallic alloy
that contacts the substrate, the intermetallic alloy does not
contain nickel below 35 atomic percent, the intermetallic alloy
does not contain Al below 35 atomic percent, the intermetallic
alloy does not contain Al above 65 atomic percent, the
intermetallic alloy does not contain Ti above 65 atomic percent,
and the intermetallic alloy does not contain a NiAlCo ternary
alloy;
a chromium or chrome alloy underlayer deposited on the
seedlayer; and
a cobalt or cobalt alloy magnetic layer deposited on the
underlayer.
Appeal No. 2004-1144
Application No. 09/584,765
1 As correctly indicated on page 3 of the answer, the
examiner’s objections to certain claims involve petitionable
rather than appealable subject matter. See, for example, the
Manual of Patent Examining Procedure (MPEP) § 706.01(rev. 1, Feb.
2003). Accordingly, we will not consider or further comment upon
the appellant’s arguments (e.g., see pages 7 and 8 of the brief)
concerning these claim objections.
3
41. The magnetic recording medium of claim 33, wherein the
intermetallic alloy has the form CoTiXY, Co + X is between 35 to
65 atomic percent, Ti + Y is between 65 to 35 atomic percent, X
is an element selected from the group consisting of Co, Fe, Cu,
Mn, V, and Zn, and Y is an element selected from the group
consisting of Nb, Ta, Hf, Zr, Zn, Ag, Au, Pt, and Pd.
44. The magnetic recording medium of claim 33, wherein the
intermetallic alloy contains Ni and Al within 10 atomic percent
of one another.
47. The magnetic recording medium of claim 33, wherein the
intermetallic alloy does not contain Al.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Suzuki et al. (Suzuki) 6,174,598 Jan. 16, 2001
(filed May 11, 1998)
Shin et al. (Shin) 6,228,515 May 8, 2001
(filed Oct. 20, 1998)
Lambeth et al. (Lambeth) 6,248,416 Jun. 19, 2001
(filed Nov. 10, 1997)
The issues before us on this appeal are raised by the
following rejections.1
Claims 41, 44 and 47 are rejected under the second paragraph
of 35 U.S.C. § 112 for failing to particularly point out and
Appeal No. 2004-1144
Application No. 09/584,765
2 We observe that the examiner’s written description
rejection has been applied against independent claim 33 but not
against all of the claims which depend therefrom. In the future,
the examiner should bear in mind that dependent claims typically
are affected by written description issues which are present in
their parent claims. See Ex parte Ohshiro, 14 USPQ2d 1750, 1754
(Bd. Pat. App. & Int. 1990).
4
distinctly claim the subject matter which the appellant regards
as his invention.
Claims 29, 32, 33,2 44, 47, 59 and 62 are rejected under the
first paragraph of 35 U.S.C. § 112 as containing subject matter
which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession
of the claimed invention.
Claims 18-25, 27, 28, 30, 31, 33-40, 42, 43, 45, 46, 48-55,
57, 58, 60 and 61 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Lambeth, and claims 26, 29,
32, 56, 59 and 62 are correspondingly rejected over these
references and further in view of Shin.
The appealed claims have been separately grouped by the
appellant in the manner indicated on page 6 of the brief. We
will separately consider these separately grouped claims to the
extent that they also have been separately argued. See Ex parte
Appeal No. 2004-1144
Application No. 09/584,765
5
Schier, 10 USPQ2d 1016, 1018 (Bd. Pat. App. & Int. 1991) and 37
CFR § 1.192(c)(7)(2002).
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the appellant
and by the examiner concerning the above noted rejections.
OPINION
We will sustain both of the examiner’s section 112
rejections as well as his section 103 rejection of claims 33-40,
42, 43, 45 and 46. However, we will not sustain the other
section 103 rejections advanced on this appeal. Our reasons are
set forth below.
We first consider the section 112, second paragraph,
rejection. Here the inquiry is whether the rejected claims set
out and circumscribe a particular area with a reasonable degree
of precision and particularity. In assessing this issue, the
definiteness of the language employed must be analyzed, not in a
vacuum but, always in light of the teachings of the prior art and
of the particular application disclosure as it would be
interpreted by one possessing an ordinary level of skill in the
pertinent art. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
Appeal No. 2004-1144
Application No. 09/584,765
3 Under the examiner’s above noted theory, these dependent
claims also could have been objected to under 37 CFR § 1.75(c)
for failing to further limit parent claim 33.
6
In applying these legal principles, the examiner has
determined that dependent claims 41, 44 and 47 offend the second
paragraph of section 112 because they exclude nickel and/or
aluminum from the intermetallic alloy recited therein whereas
parent independent claim 33 requires both nickel and aluminum to
be present in the intermetallic alloy defined thereby.3 That is,
the examiner has interpreted the claim 33 language in light of
the appellant’s specification disclosure as requiring the
presence of nickel and aluminum in the claimed intermetallic
alloy as more fully explained in the answer (e.g., see the
paragraph bridging pages 14 and 15). Certainly, this claim
interpretation is reasonable and consistent with the subject
specification (cf. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983)), and the appellant does not contend
otherwise with any reasonable specificity. Instead, the
appellant’s sole response to the examiner’s claim interpretation
analysis is to quote the language of claim 33 and to then state
without embellishment or explanation that “claim 33 does not
require [Ni or Al]” (brief, pages 9 and 10).
Appeal No. 2004-1144
Application No. 09/584,765
7
On the record before us, the examiner has established a
prima facie case for his claim 33 interpretation and
correspondingly for the section 112, second paragraph, rejection
based thereon. In contrast, the appellant has offered no
rationale at all in support of his conclusory statement that
claim 33 does not require nickel or aluminum. Under these
circumstances, it is our determination that the examiner has made
a prima facie case of unpatentability which the appellant has
failed to successfully rebut with argument or evidence of
patentability. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Therefore, we hereby sustain the examiner’s section 112,
second paragraph, rejection of claims 41, 44 and 47.
Concerning the section 112, first paragraph, rejection, the
test for determining compliance with the written description
requirement is whether the original disclosure conveys with
reasonable clarity to those skilled in the art that the
applicant, as of the filing date sought, was in possession of the
invention defined by the rejected claims. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed.
Cir. 1991). With specific regard to the negative claim
limitations criticized by the examiner, the issue is whether
Appeal No. 2004-1144
Application No. 09/584,765
8
these limitations introduce new concepts relative to the original
disclosure and thus violate the written description requirement.
See In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA
1973) and Ex parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983).
According to the examiner, the independent claim 33 negative
limitation “the intermetallic alloy does not contain a NiAlCo
ternary alloy” offends the written description requirement by
introducing new concepts into the appellant’s original
disclosure. In response, the appellant presents the following
argument on page 9 of the brief:
The specification discloses a seedlayer that
contain numerous ternary and quaternary intermetallic
alloys that do not contain a NiAlCo ternary alloy at
page 2, lines 5-23. Moreover, the specification lists
six compounds (Co10Ni40Al40Ti10, Ni48Al44Nb8, Cr10Ni40Al40Mo10,
Ni48Al42Nb12, Ni40Al50Ti10, and Ni40Al40Mo20) that do not
contain a NiAlCo ternary alloy at page 4, lines 19-20.
This argument is unpersuasive. As fully explained in the
answer, the negative limitation under review is not descriptively
supported merely because the subject specification discloses
specific seedlayer embodiments which do not contain a NiAlCo
ternary alloy. This is due to the fact that the limitation
introduces new concepts beyond these specific seedlayer
embodiments. The new concepts include the particular seedlayer
intermetallic alloys which are not the ternary alloy excluded by
Appeal No. 2004-1144
Application No. 09/584,765
9
claim 33 but which also are not specifically disclosed in the
appellant’s specification. There is simply nothing in the
specification which would reasonably convey to those skilled in
the art that the appellant was in possession of such particular
intermetallic alloys as of the application filing date.
Similar criticisms and arguments have been made by the
examiner and the appellant concerning the negative limitations
recited in dependent claims 29, 32, 44, 47, 59 and 62. For
reasons analogous to those set forth above and in the answer, the
appellant’s arguments do not persuade us of error on the
examiner’s part in rejecting these claims under the first
paragraph of section 112.
In light of the foregoing, we also hereby sustain the
examiner’s section 112, first paragraph, rejection of claims 29,
32, 33, 44, 47, 59 and 62 for failing to satisfy the written
description requirement of the statute.
As for the section 103 rejection of independent claim 33 and
certain of the claims which depend therefrom, the appellant
argues that Suzuki contains no teaching or suggestion of an
intermetallic alloy which contains aluminum above 2 atomic
percent much less which contains at least 35 atomic percent
aluminum as required by the rejected claims. This argument is
Appeal No. 2004-1144
Application No. 09/584,765
4 We commend the examiner’s considerable efforts to explain
the manner in which Suzuki’s sometimes inapt disclosure would
(continued...)
10
based on Suzuki’s disclosure of a generic intermetallic alloy
formula which includes the expression “Ni50Al” (e.g., see lines
36 and 56 in column 2). On the other hand, the examiner urges
that this expression, though inapt, would have been understood by
those skilled in this art as referring to intermetallic alloys
which contain equal amounts of Ni and Al, that is, Ni50Al50.
In support of his position, the examiner points out that
Suzuki’s intermetallic alloys are formed by adding various
elements to the prior art alloy AlNi which indisputably contains
equal amounts of Al and Ni (e.g., see lines 6-42 in column 2).
As more fully explained in the answer, the examiner’s position is
further supported by the fact that the lattice constant disclosed
by Suzuki for Ni50Al (e.g., see lines 18-19 in column 6 and lines
20-21 in column 7) is exactly the same as the lattice constant
for NiAl (e.g., see lines 26-27 in column 13 of Lambeth). This
position is additionally supported by the fact that Suzuki also
has used inapt nomenclature in defining other aspects of his
intermetallic alloys (e.g., see the examiner’s discussion on page
12 of the final Office action mailed April 30, 2002 as Paper No.
14).4
Appeal No. 2004-1144
Application No. 09/584,765
4(...continued)
have been interpreted by those skilled in this art.
11
On the record before us, the examiner has established a
prima facie case in support of his proposition that an artisan
with ordinary skill would have interpreted the “Ni50Al”
disclosure of Suzuki as describing alloys which contain equal
amounts of Ni and Al. Significantly, the appellant has provided
this record with no extrinsic evidence such as a declaration by
one skilled in this art (e.g., the appellant himself) in rebuttal
to the rationale and evidence proffered by the examiner. Under
these circumstances, it is our determination that the weight of
argument and evidence before us favors interpreting the Suzuki
disclosure in the manner proposed by the examiner.
This leads us to the ultimate determination that the
examiner has established a prima facie case of unpatentability
with respect to independent claim 33 and the rejected claims
which depend therefrom which the appellant has failed to
successfully rebut with argument and/or evidence of
patentability. See In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. In summary, therefore, we likewise hereby sustain the
examiner’s section 103 rejection of claims 33-40, 42, 43, 45 and
Appeal No. 2004-1144
Application No. 09/584,765
12
46 as being unpatentable over Suzuki in view of Lambeth for the
reasons set forth above and in the answer.
In his corresponding rejection of the remaining independent
claims 18 and 48, the examiner states that:
Lambeth et al. teach that materials possessing either
an A2 or B2 crystal lattice structure[] are known body
centered cubic or body centered cubic derivative
structures and materials possessing either an A2 or B2
crystal lattice structure are functionally equivalent
in terms of their use as seed/underlayers for magnetic
recording media [answer, pages 7-8].
and concludes that:
[i]t would therefore have been obvious to one of
ordinary skill in the art at the time of the
appellant’s invention to modify the device of Suzuki
. . . to use a NiAlM-alloy seed layer possessing an A2
crystal lattice structure, since both an A2 crystal
lattice structure and a B2 crystal lattice structure
are known functional equivalents in terms of
seed/underlayers possessing lattice constants suitable
for Co-alloy magnetic films [answer, page 8].
We cannot agree with this obviousness conclusion.
As an initial matter, we emphasize that components which are
functionally or mechanically equivalent are not necessarily
obvious in view of one another. See In re Scott, 323 F.2d 1016,
1019, 139 USPQ 297, 299 (CCPA 1963). Also see In re Flint, 330
F.2d 363, 367-68, 141 USPQ 299, 302 (CCPA 1964). In this
instance, we are persuaded that Lambeth’s indication of
equivalency between A2 and B2 structures would not have suggested
Appeal No. 2004-1144
Application No. 09/584,765
13
modifying Suzuki’s underlayer alloy so as to possess the here
claimed A2 structure rather than a B2 structure.
This is because the applied references do not support the
examiner’s implicit supposition that an artisan would have
reasonably expected Lambeth’s indication of equivalency for his
recording medium environment as applicable to the recording
medium environment of Suzuki. In this regard, we observe that
the environment of Lambeth involves highly oriented layers having
particular structures (e.g., hexagonal close packed, face
centered cubic as well as body centered cubic structures) in
order to achieve patentee’s desiderata (e.g., see the Abstract,
lines 38-68 in column 12, lines 1-40 in column 13, the paragraph
bridging columns 26 and 27 as well as lines 8-25 in column 27).
These aspects of Lambeth’s recording medium do not appear to have
reasonably specific relevancy to the recording medium of Suzuki.
Thus, the fact that an A2 as well as a B2 structure may be
acceptable for use by Lambeth would not have suggested
acceptability for use in Suzuki’s recording medium. This
viewpoint is reinforced by the fact that the AlNi underlayer,
which Suzuki seeks to improve by adding various elements thereto,
is explicitly disclosed by patentee as having a B2 structure
(e.g., see lines 6-28 in column 2). In the context of Suzuki’s
Appeal No. 2004-1144
Application No. 09/584,765
14
recording medium, the aforenoted disclosure evinces an
expectation of success for using a B2 structure whereas no such
expectation exists for using an A2 structure for the reasons
previously explained.
In light of the foregoing, we consider the applied
references inadequate to establish a prima facie case of
obviousness with respect to independent claims 18 and 48 as well
as with respect to the claims which depend therefrom. We cannot
sustain, therefore, the examiner’s section 103 rejection of
claims 18-25, 27, 28, 30, 31, 48-55, 57, 58, 60 and 61 as being
unpatentable over Suzuki in view of Lambeth. Moreover, because
the Shin reference fails to supply the deficiencies discussed
above, we also cannot sustain the section 103 rejection of claims
26, 29, 32, 56, 59 and 62 as being unpatentable over Suzuki in
view of Lambeth and further in view of Shin.
The decision of the examiner is affirmed-in-part.
Appeal No. 2004-1144
Application No. 09/584,765
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Thomas A. Waltz ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2004-1144
Application No. 09/584,765
16
David M. Sigmond
Maxtor Corporation
Bldg. 2405, Room B159
2452 Clover Basin Drive
Longmont, CO 80503