Ex Parte DAI et al

Patent Trial and Appeal Board

Mar 30, 2017

12186596 (P.T.A.B. Mar. 30, 2017)

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.
12/186,596 08/06/2008 QING DAI HSJ920080093US1 1479
125275 7590 03/30/2017
Alleman Hall McCoy Russell & Tuttle LLP/HGST
806 SW Broadway
Suite 600
Portland, OR 97205
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
03/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QING DAI, XING-CAI GUO, DAN SAYLOR KERCHER,
BRUNO MARCHON, and MIKE SUK
Appeal 2016-000897
Application 12/186,596
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
November 14, 2014 decision finally rejecting claims 1, 4—8, 10-12, and 15—19
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real parties in interest as Samsung Electronics Co.,
Ltd., and Samsung Austin Semiconductor, L.P. (Appeal Br. 4).
Appeal 2016-000897
Application 12/186,596
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a method for planarizing media disk
surfaces with a polymer solution (Abstract). In the claimed method, a disk with
a topography having peaks and valleys is dipped into a polymer solution
containing a solvent and a lubricant and soaking it for several minutes
(Abstract). The method further specifies that the lubricant is accumulated in the
peaks with about 1 nm in thickness, and a recession of lubricant from the valleys
as less than 3 nm (Spec. 121). This is illustrated in FIG. 1, which shows
recession 17 (the recession of the lubricant from the valley) and accumulations
on top of pillars 15:
17
JjL
FIG. 1
FIG. 1 is a schematic side view of disk topography that has been processed with
a method in accordance with the invention of the application on appeal.
Details of the claimed invention are set forth in Claim 1, as reproduced
below from the Claims Appendix (emphasis added):
1. A method of planarizing a media disk, comprising:
(a) providing a disk having a surface with topography
including peaks and valleys;
(b) preparing a polymer solution comprising a solvent
and a lubricant with nonfimctionalized end groups, wherein the
lubricant is present in the solvent at a concentration of 1 % by
weight;
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Application 12/186,596
(c) soaking the disk in the polymer solution for at least
several minutes;
(d) accumulating the lubricant on the peaks within about
1 nm in thickness, and a recession of lubricant from the valleys
at less than 3 nm in thickness', and
(f) removing the disk from the polymer solution such that
the topography on the surface is planarized by a layer of the
lubricant on the surface.
REJECTIONS2
I. Claims 1, 4, 6—8, 10-12, and 16—19 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Ma3 in view of Stimiman.4
II. Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ma in view of Stimiman, and further in view of Lewis.5
DISCUSSION
Appellants do not argue any of the claims separately (see, Appeal Br.
8—11). Accordingly, we limit our discussion to the rejection of claim 1.
Appellants argue that the cited art does not render obvious step (d) in
which “a recession of lubricant from the valleys at less than 3 nm in
thickness” is created (Appeal Br. 9).
2 Claims 8 and 17 were rejected in the Final Action as failing to comply with
the written description requirement of 35 U.S.C. § 112, first paragraph (Final
Act. 2—3). This rejection was withdrawn by the Examiner and is not,
therefore, on appeal (Ans. 2).
3 Ma et al., US 6,673,429 Bl, issued January 6, 2004.
4 Stimiman et al, US 6,680,079, issued January 20, 2004.
5 Lewis, US 6,099,762, issued August 8, 2000.
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Appeal 2016-000897
Application 12/186,596
The Examiner construes the term “recession” as meaning the distance
between the upper surface of the applied lubricant and the depth of any
valleys in the lubricant layer, based on the requirement that the entire surface
be “planarized” in step (d) of the claim, which means that no “dip” below the
surface of the media would be possible (Ans. 2). Appellants, by contrast,
argue that recession means the distance between the disk surface and the top
of the lubricant layer in the valley (Appeal Br. 9—10). Because the claim
specifically recites that the “recession” is “from the valleys,” we agree that
Appellants’ construction is the broadest reasonable construction of the term.
This construction is also consistent with the Specification, which teaches
recession 17 of less than 3 nm from the peaks or pillars is separate from
accumulation on top of the pillars (see Spec. 131). The Examiner’s
construction would require a recitation that the distance between the peak and
the valley of the lubricant was less 3 nm.
The Examiner finds that Ma is silent on the height of the recession, but
that Ma teaches using a conventional media disk, as does Appellants’
invention, and also teaches a thickness of the lubricant layer which overlaps
with that of the claim (Final Act. 6, citing Ma, 7:30—37). The Examiner
further finds that Ma teaches controlling the amount of lubricant in the applied
film and that achieving desirable lubricant retention and replenishment
abilities are crucial, and that Stimiman teaches applying lubricant to achieve a
planar surface (Final Act. 6, citing Ma, 2:23—25 and 2:36—37). Therefore,
according to the Examiner:
It would have been prima facie obvious to one of ordinary skill
in the art at the time the invention was made to optimize the
amount of lubricant applied to the peaks and valleys of the
media disk, in the method of Ma and Stimiman, as is suggested
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Application 12/186,596
by Ma and Stimiman in order to have a controlled thickness and
obtain the desirable lubricant retention and replenishment
abilities to ensure good wear durability and in such an
optimization would have arrived at applicants’ claimed range.
(Final Act. 6).
Appellants argue that while Ma discloses a thickness of the lubricant
over a peak which overlaps with the claimed thickness, it provides no
teachings with regards to the thickness of the recession (Appeal Br. 9).
Appellants further argue that in order for the valley to be essentially fully
filled by lubricant, it has to contain an amount of lubricant which “is a
multitude over that [which] Ma teaches” (i.e. less than 2 nm) (Appeal Br. 10).
Finally, Appellants argue that to the extent that the Examiner is relying on the
recession amount as a result-effective variable, such a reliance is improper
because neither Ma nor Stimiman recognize recession as a result-effective
variable {id.).
Appellants’ argument is not persuasive. As explained by the Examiner,
Stimiman explicitly teaches that the time of submergence of the disk in the
solution can be optimized to achieve a desired coating thickness (Stimiman
7:35—39), and also that the goal of its process is to planarize the disk
(Stimiman, Claim 1). According to the Examiner, planarization, which is
clearly suggested by Stimiman, necessarily results in a recession depth of
zero, which would meet the claim limitation.
Appellants have not provided a sufficient explanation of why the
Examiner’s finding that the planarized surface taught by Stimiman would not
achieve the claimed recession value from step (d) of the claimed method.
Appellants argue that “planarization is still possible [even if the recession
value is high] since there is a 1 nm thick coating on the peaks of the disk
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Application 12/186,596
which may serve as a source to fill the dip” and that, therefore “planarization
of the lubricant is not impossible” (Reply Br. 2, emphasis in original).
However, as explained by the Examiner, the combined prior art suggests
optimizing the amount of time necessary to achieve both a desired thickness
and planarization. Appellants have not shown that their claimed soaking
times are critical to achieving the desired level of planarization, and that the
recited recession depth would not result from that optimized soaking time.
CONCLUSION
We AFFIRM the rejection of claims 1, 4, 6—8, 10—12, and 16—19
under 35 U.S.C. § 103(a) as being unpatentable over Ma in view of
Stimiman.
We AFFIRM the rejection of claims 5 and 15 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Ma in view of Stimiman, and
further in view of Lewis.
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).
AFFIRMED
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