Ex Parte Imai et al

Patent Trial and Appeal Board

Mar 16, 2018

12733420 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121733,420 05/26/2010
23995 7590 03/20/2018
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Kunihiro Imai
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FEC-280NP 2094
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
firm@rabinberdo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIHIRO IMAI, TAKAKO MATSUMOTO,
TAKESHI WAT AN ABE, AKIRA FURUTA, KAZUHIRO KUSAKA WA,
and MASAMI KURODA
Appeal2017-006725
Application 12/733,420 1
Technology Center 1700
Before LINDA M. GAUDETTE, MONTE T. SQUIRE and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner's rejection of claims 5, 6, 9, 10, 12, and 15-31 2 under 35 U.S.C.
§ 102(b). App. Br. 3 10.
1 Appellants identify Fuji Electric Co., Ltd. as the real party in interest.
App. Br. 3.
2 After briefing was completed in this Appeal, the Examiner issued an
Advisory Action dated March 13, 2017 indicating the allowability of claims
9, 12, 20, and 25. Thus, we treat this appeal as directed to claims 5, 6, 10,
15-19, 21-24, and 26-31.
3 Our opinion refers to Appellants' Corrected Appeal Brief dated May 20,
2016.
Appeal2017-006725
Application 12/733,420
We have jurisdiction under 35 U.S.C. § 6.
We affirm-in-part.
BACKGROUND
The subject matter on appeal concerns specific lubricants used in the
lubricant layer of a magnetic recording medium. Spec. 4 3--4.
Independent claim 5 is illustrative of the subject matter on appeal, and
is copied below with key limitations at issue in this appeal italicized:
5. In a magnetic recording medium for use in repeated
thermally assisted recording including a nonmagnetic substrate
on which are provided at least a magnetic layer, a protective
layer, and a lubricant layer comprised of a lubricant, the
improvement comprising:
providing, as the lubricant, a material that is effective for
repeated thermally assisted recording at temperatures between
150°C and 200°C, and that has a chemical formula represented
by general formula (1 ), (2), or (3) as follows,
Ri -(CF 2CF 20 )r-( CF 20 )q-R2 ( 1)
where p and q are mutually independent positive integers,
(2)
where r is a positive integer, and
F-( CFCF 20 )s-CFR4 (3)
I I
CF3 CF3
where s is a positive integer,
wherein substituents Ri, R2, R3, and ~ in terminal
portions of the lubricant are orgamc groups, one of the
4 Our opinion refers to the Substitute Specification filed March 1, 2010.
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Appeal2017-006725
Application 12/733,420
substituents R1 and R2, as well as the substituents R3 and Ri
consist of aliphatic or aromatic hydrocarbons or fluoride
derivatives thereof, a plurality of functional groups, and one or
more ether oxygen atoms,
wherein the aliphatic or aromatic hydrocarbons or
fluoride derivatives thereof include from three to twelve carbon
atoms, the plurality of functional groups are spaced apart by a
shortest distance of three atoms or more, and the plurality of
functional groups are selected from among hydroxy groups,
carboxyl groups, aldehyde groups, thiol groups, and sulfo
groups,
wherein the lubricant has a molecular weight ranging
between 500 and 10,000, and
wherein the lubricant layer has an amount of volatilization
of less than 10% of an initial film thickness when the magnetic
layer is heated to temperatures between l 50°C and 200°C during
repeated thermally assisted recording.
App. Br. 18-19 (emphasis added).
OPINION
We affirm the anticipation rejection as to claims 5, 6, 10, 15-17, 23,
24, and 26-31, but reverse the anticipation rejection as to claims 18, 19, 21,
and 22.
The Examiner rejects claims 5, 6, 10, 15-19, 21-24, and 26-31 under
pre-AIA 35 U.S.C. § 102(b) as anticipated by Bums, 5 as evidenced by
Ahner. 6 Final Act. 2--4. Relevant to this appeal, the Examiner finds that
Bums' Figure 3(b) discloses the recited lubricant. Final Act. 3; Ans. 3-5.
Bums' Figure 3 (b) is depicted below:
5 Bums et al., US 2007/0060487 Al, published March 15, 2007.
6 Ahner et al., US 2006/0177705 Al, published August 10, 2006.
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Appeal2017-006725
Application 12/733,420
Figure 3(b)
yH2fHCH20C~~~CH2oyH2CH1CH2
OHOH OH OH
.Z· = -CF20i(CF2CF20)n, .. (CF20)nJ-CF2-
Bums' Figure 3 (b) illustrates the molecular structure of Z-Tetraol.
Bums i-f 11.
Appellants advance three contentions to support their position that the
Examiner erred in finding that Bums anticipates the rejected claims. First,
Appellants contend that Bums' lubricant includes both terminal and non-
terminal functional groups, while the claims preclude such non-terminal
functional groups. App. Br. 12-15. Next, Appellants argue that Bums
teaches against lubricants having only terminal functional groups. Id. at 15.
Finally, Appellants assert that the spacing between Bums' functional groups
is less than the recited "three atoms or more." Id. at 15-16.
Claims 5, 6, 10, 15-17, 23, 24, and 26-31
Appellants argue all claims subject to the anticipation rejection as a
group. App. Br. 10-16. Therefore, we select claim 5 and decide the appeal
of claims 5, 6, 10, 15-17, 23, 24, and 26-31 on the basis of this claim alone.
37 C.F.R. § 41.37(c)(l)(iv).
After considering Appellants' arguments, we are left unpersuaded that
Appellants have identified reversible error in the Examiner's rejection of
claim 5. In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011).
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Appeal2017-006725
Application 12/733,420
First, we discern no persuasive merit in Appellants' contention that
the claimed lubricants "do not and cannot have non-terminal functional
groups," such that they are distinguishable over Bums' lubricant. App. Br.
15. Here, Appellants' argument is based upon a misplaced reliance on the
phrase "terminal portion" recited in claim 5 vis-a-vis Bums' disclosure of
terminal and non-terminal functional groups in its lubricant compound.
Significantly, Appellants have not explained how merely identifying the
recited multi-component "R" substituent as being located in a "terminal
portion" of the lubricant compound structurally distinguishes claim 5 over
the compound disclosed in Bums' Figure 3(b ).
As acknowledged by Appellants (App. Br. 14), claim 5 recites a
chemical formula requiring, in terminal portions of the lubricant, where
"one of the substituents Ri and R2, as well as the substituents R3 and R4
consist of' three components: 1) a hydrocarbon moiety of three to twelve
carbon atoms, 2) a plurality of functional (e.g., hydroxy) groups, and (3) one
or more ether oxygen atoms, where the plurality of functional groups
contained within the "R" substituent are spaced apart by at least a distance
of three atoms. Formula (2), recited in claim 5, is shown below.
(2)
As shown in formula (2), above, the substituent R3 is located at the
terminal (i.e., end) portion of the lubricant compound. As set forth in claim
5, R3 contains a C3-C12 hydrocarbon moiety containing multiple functional
groups, such as hydroxy groups, and at least one ether oxygen atom. Such
5
Appeal2017-006725
Application 12/733,420
R3 substituent, for example, could be represented by the structure shown
below:
The R3 substituent shown above necessarily contains a non-terminal
functional (i.e., hydroxy) group because of the required spacing between the
functional groups (i.e., "a shortest distance of three atoms or more.")
Accordingly, the recited "R" substituents, though located in the
"terminal portion" of the lubricant according to formulae ( 1 ), (2), and (3),
allows (if not requires) functional groups to be non-terminally substituted on
the hydrocarbon moiety, as does Bums' compound disclosed in Figure 3(b).
Appellants' argument fails to identify error in the Examiner's finding (Final
Act. 3) that Bums discloses a perfluoropolyether (PFPE) compound that falls
within the scope of claim 5.
Appellants' contention (App. Br. 15) that the disclosure of Bums
teaches against having only terminal functional groups is also unpersuasive
because "whether a reference 'teaches away' from the invention is
inapplicable to an anticipation analysis." Celeritas Techs. Ltd. v. Rockwell
Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (citation omitted).
We also find Appellants' argument (App. Br. 15-16) regarding the
required spacing between the functional groups of Bums' compound
illustrated in Figure 3(b) unpersuasive. Claim 5 requires that "one of the
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Appeal2017-006725
Application 12/733,420
substituents R 1 and R2 ... [have] a plurality of functional groups ... spaced
apart by a shortest distance of three atoms or more." App. Br. 18-19.
Appellants have not challenged the Examiner's well-reasoned response to
Appellants' argument regarding the required spacing. Ans. 5---6.
Specifically, the Examiner identifies two functional groups on one side of
the compound illustrated in Bums' Figure 3 (b) that are spaced apart by three
atoms, including the carbon atoms to which they are bonded. Because
Appellants do not contest the Examiner's response, and because we discern
no error in the Examiner's calculation of the spacing between the identified
hydroxy groups, we are not persuaded by this argument with respect to claim
5.
Therefore, for the reasons expressed herein, as well as for the reasons
provided by the Examiner in the Final Action and in the Answer, we sustain
the anticipation rejection of claim 5, as well as claims 6, 10, 15-17, 23, 24,
and 26-31 not separately argued by Appellants.
Claims 18, 19, 21, and 22
Although claims 18, 19, 21, and 22 are not separately argued by
Appellants, we separately consider the rejection of these claims sua sponte,
and reverse the Examiner's rejection of them. Whereas independent claim 5
requires only "one of the substituents Ri and R2 ... [to have] a plurality of
functional groups ... spaced apart by a shortest distance of three atoms or
more," independent claim 18 requires both R 1 and R2 to have such a
plurality of functional groups spaced apart in this manner. App. Br. 20-21.
The Examiner relies on Bums' Figure 3(b) as an anticipatory disclosure of
the subject matter encompassed by claim 18. Final Act. 3. The compound
illustrated in Figure 3(b) does not, however, appear to contain the recited
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Appeal2017-006725
Application 12/733,420
spacing between the functional (i.e., hydroxy) groups on the left side of the
molecule. Bums Fig. 3(b ); Ans. 6.
Because the Examiner has not established that Bums discloses a
compound meeting this limitation of independent claim 18, we reverse this
rejection as to claim 18 and its dependent claims 19, 21, and 22.
DECISION
The Examiner's decision to reject claims 5, 6, 10, 15-17, 23, 24, and
26-31 is affirmed.
The Examiner's decision to reject claims 18, 19, 21, and 22 is
reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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