11035564 (B.P.A.I. Oct. 30, 2009)

Ex Parte Benning et al

Board of Patent Appeals and InterferencesOct 30, 2009

11035564 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FREDERICK PAUL BENNING, JAMES A. HAGAN, STEVEN L. MAYNARD, DAVID C. PAURUS, DOUGLAS HOWARD PILTINGSRUD, and JON EDWARD PODOLSKE ____________ Appeal 2009-002020 Application 11/035,564 Technology Center 2600 ____________ Decided: October 30, 2009 ____________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and PETER F. KRATZ, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: Appeal 2009-002020 Application 11/035,564 1. A disk substrate for use in a data storage device, the disk substrate comprising: substrate material having a surface roughness of less than 2 Å; the substrate material being selected from a group consisting of glass, ceramic, and glass-ceramic; and the substrate material having essentially no surface colloidal particle contamination even though the surface of the substrate material was in contact with a colloidal slurry containing colloidal particles during a process for superfinishing the surface of the substrate material and was not subsequently subjected to a cleaning process that utilized etching or micropolishing or cleaning polish etch, or a combination thereof, to remove colloidal particles contaminants therefrom. The Examiner relies upon the following reference as evidence of obviousness (Ans. 3): Sakaguchi 6,316,062 B1 Nov. 13, 2001 Appellants’ claimed invention is directed to a disk substrate having a surface roughness of less than 2 Å. The substrate may be glass, ceramic, or glass-ceramic. The claims recite that the substrate material was in contact with a colloidal slurry during a process for superfinishing the surface of the substrate. The claims also recite that the substrate material was not subjected to a cleaning process that employed etching or micropolishing or cleaning polish etch to remove colloidal particles after the superfinishing process. According to Appellants, only through the use of their self-cleaning colloidal slurry, which contains a surfactant, is it possible to achieve a glass, ceramic or glass-ceramic disk substrate having a surface roughness less than 2 Å. Appealed claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sakaguchi. 2 Appeal 2009-002020 Application 11/035,564 We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer. There is no dispute that Sakaguchi discloses a data storage disk comprising a glass substrate that may have a surface roughness of less than 2 Å. In particular, Sakaguchi discloses that the substrate may comprise glass and have a surface roughness in the range of 1-20 Å (see col. 9, ll. 37-45). Hence, based on the referenced disclosure, we find no error in the Examiner’s legal conclusion that it would have been obvious for one of ordinary skill in the art to prepare a disk substrate comprising a glass material having a roughness of the presently claimed less than 2 Å. Contrary to arguments made by Appellants, it is not necessary for a finding of obviousness that Sakaguchi teaches that the surface of the material was in contact with a colloidal slurry containing colloidal particles during a process for superfinishing the surface of the substrate material and was not subsequently subjected to a cleaning process that utilized etching or micropolishing, as recited in the appealed claims. As emphasized by the Examiner, the process recitations in the product-by-process claims on appeal do not further define the structure of the product. The appealed claims define nothing more than a disk substrate of glass, ceramic, or glass-ceramic having a surface roughness of less than 2 Å. Appellants contend that Sakaguchi “does not disclose how its non- magnetic substrate is obtained”, thereby suggesting that the reference is 3 Appeal 2009-002020 Application 11/035,564 inoperable (App. Br. 13, second para.). However, it is axiomatic that a U.S. patent is presumed to be operable and Appellants shoulder the burden of establishing otherwise with objective evidence. However, as noted by the Examiner, Appellants have proffered no such evidence which demonstrates that one of ordinary skill in the art would be unable to make a glass substrate having a surface roughness of 1 Å as disclosed by Sakaguchi. Indeed, Appellants acknowledge that it was known in the art to use a colloidal slurry to obtain a glass substrate having a surface roughness of less than 2 Å, but a cleaning process utilizing etching, microetching, etc. is necessary to remove the colloidal particles from the glass surface. Therefore, rather than provide evidence that one of ordinary skill in the art would be unable to make a glass substrate having a surface roughness of less than 2 Å, as disclosed by Sakaguchi, Appellants provide argument that one of ordinary skill in the art would be able to make the Sakaguchi glass substrate by utilizing conventional etching, microetching, and/or cleaning polish etch. Again, we emphasize that the claim recitation that the substrate material was not subsequently subjected to a cleaning process does not serve to distinguish the claimed product from the product of the prior art, notwithstanding that the claimed product may be made by a different process. In conclusion, based on the foregoing, the Examiner’s decision rejecting the appealed claims 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) (2008). AFFIRMED 4 Appeal 2009-002020 Application 11/035,564 ssl IBM CORPORATION INTELLECTUAL PROPERTY LAW DEPT. 917 3605 HIGHWAY 52 NORTH ROCHESTER, MN 55901 5