Ex Parte Jiang et al

Board of Patent Appeals and Interferences

Apr 19, 2010

11151626 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte MING JIANG, NING SHI, SUE SIYANG ZHANG, and YI
ZHENG

Appellants
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Appeal 2010-001328
Application 11/151,626
Technology Center 1700
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Decided: April 19, 2010
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Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and
RICHARD TORCZON, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellants’ claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appellants’ application is directed to methods of making thin-film
magnetic recording heads for magnetic disk drive systems. (Spec. 1).
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The Examiner relied on U.S. Patent Application Publication
2004/0106295, which was published June 3, 2004 (“Cyrille”). The
Examiner also relied on Voevodin, et al., “Architecture of Multilayer
Nanocomposite Coatings with Super-Hard Diamond-Like Carbon Layers for
Wear Protection at High Contact Loads,” 203-204 Wear, 516-27 (1997)
(“Voevodin”).
Claims 1-27 were rejected under 35 U.S.C. § 103(a) over Cyrille and
Voevodin. Appellants do not argue for the separate patentability of any of
these rejected claims. We focus on claim 1 in our review. See 37 C.F.R.
§ 41.37(c)(1)(vii).
II. FINDINGS OF FACT
1. Appellants’ claim 1 recites:
A method of fabricating thin-film magnetic recording heads, the
method comprising:
depositing a layer of feature material for a feature of a thin-film
magnetic recording head; and
depositing at least two sets of alternating layers of an adhesion
material and Diamond-Like Carbon (DLC) material to form a
protective coating on the feature.

(App. Br. 9, Claims App’x).
2. Appellants’ specification teaches that thin-film recording heads
are typically fabricated on ceramic substrate wafers. (Spec. p. 1, ll. 18-20).
3. Cyrille relates to making a microelectric device with alternating
films of electrically resistive material and polish resistant layers comprising
DLC deposited on a wafer. (Cyrille ¶¶ [0011] and [0017]).
4. Appellants’ specification provides that “features” on thin-film
recording heads include any critical element, such as a read element, a write
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element, a heater, or other elements (Spec. p. 8, ll. 25-28), and Appellants do
not dispute that the electrically resistive material of Cyrille is a “feature”
within the scope of claim 1.
5. Cyrille teaches that the goal of the polish resistance layer is to
minimize the erosion rate of the surface. (Cyrille ¶ [0049]).
6. Cyrille does not teach depositing at least two sets of alternating
layers of adhesion material and DLC, as required in claim 1.
7. Voevodin teaches that the cohesion strength of DLC as a
coating on surfaces is improved with multiple stacks of metal/DLC
nanolayers. (Voevodin 525-26).
8. The Examiner finds, and Appellants do not dispute, that the
metal of the stacks in Voevodin is encompassed by the “adhesion material”
recited in Appellants’ claim. (Ans. 4).
9. Voevodin teaches that multilayer DLC coatings are
advantageous for wear protection. (Voevodin 526).
III. ISSUE
Would it have been obvious for those of skill in the art to make a
fabricating thin-film magnetic recording head using multiple alternating
layers of adhesion material and DLC?
IV. ANALYSIS
Appellants claim a method of fabricating thin-film magnetic recording
heads in which a layer of feature material is deposited and at least two sets
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of alternating layers of adhesion material and DLC material are deposited.
(FF1 1).
Cyrille teaches fabricating microelectric devices on wafers (FF 2)
with alternating films of electrically resistive material and polish resistant
layers comprising DLC. (FF 3). Cyrille teaches that the purpose of the
polish resistance layer is to minimize the erosion rate of the surface of the
device. (FF 5). Cyrille fails to teach multiple sets of the layers. (FF 6).
Voevodin solves the problem of minimizing the erosion rate on a
surface by increasing the cohesion strength of DLC with multiple stacks of
metal/DLC nanolayers. (FF 7). Voevodin reports that multilayer DLC
coatings are advantageous for wear protection. (FF 9). Those of skill in the
art would have had a reason to modify the method taught in Cyrille by using
two or more layers of adhesion material and DLC material to minimize
erosion and increase wear protection, as taught in Voevodin.
Appellants argue that Voevodin relates only to permanent wear
protection on steel and that it teaches away from temporary DLC protection
layer taught in Cyrille. (App. Br. 8). The Examiner responds that those of
skill in the art would have understood Voevodin to teach that multi-layering
DLC coatings are useful in a variety of situations to improve wear rates on
surfaces. (Ans. 8). Neither the Examiner nor Appellants cite to Cyrille,
Voevodin, or other supporting evidence, making it difficult for us to evaluate
either’s position. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1250 (Fed. Cir. 2008) (quoting United States v. Dunkel, 927 F.2d 955,

1 “FF” indicates Finding of Fact.
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956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in
briefs.”)).
However, we do not read Voevodin as limited to permanent protection
on steel. While Cyrille refers to steel as an example (see, e.g., Voevodin
abstract (“These negative effects are especially pronounced when the
coatings are applied to relatively soft substances, such as steel.”)), the
purpose of the investigations reported therein are stated more generally (see
id., p. 517: “The objective of this study is to develop conceptual designs for
DLC-based multilayer coatings for wear protection at high (above 1 GPs)
contact pressures. These designs are based on theoretical understandings
and experimental verification of fundamental mechanisms which could be
used to increase the toughness of wear resistant coatings with super-hard
DLC layers.”). Furthermore, we do not find discussion of permanent wear
protection coatings on steel in contrast to temporary protection on other
surfaces in the Summary and Conclusions section of Voevodin. (See
Voevodin 525-26 (e.g. “The study demonstrated how the potential of super-
hard DLC coatings for wear protection can be multiplied by the
developments of multilayer designs.”). Appellants have not explained how
the teachings in Voevodin are restricted to permanent protection on steel.
Nor have Appellants explained why the teachings of permanent wear
protection in Voevodin would discourage those in the art from applying
them to the teachings of Cyrille. See In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.”). Accordingly, we
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are not persuaded by Appellants’ arguments that the Examiner’s reasons for
combining the references were in error.
Appellants also argue that the teachings of Voevodin are not pertinent
to the problem addressed by their application because the contact pressures
of the temporary protective coatings discussed in Appellants’ specification
are significantly lower than the permanent coatings shown in Voevodin.
(App. Br. 8). According to Appellants, Voevodin addresses the problems of
a high contact load environment, while the pending application addresses the
problems of a low contact load environment. (App. Br. 8). Appellants do
not cite support for their assertions about the comparative contact pressures.
“Argument of counsel cannot take the place of evidence lacking in the
record.” Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977).
Furthermore, Appellants’ claims are not limited to low contact load
environments and even were the claims so limited, Appellants have not
directed us to evidence showing that one skilled in the art would not have
looked to Voevodin for low contact load environments. See KSR Int’l v.
Teleflex, Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose [in the specification] controls.”). Accordingly, we are not
persuaded by Appellants’ argument.
V. CONCLUSION
It would have been obvious for those of skill in the art to make a
fabricating thin-film magnetic recording heads using multiple alternating
layers of adhesion material and DLC. Accordingly, the Examiner did not err
in rejecting claim 1 under 35 U.S.C. § 103(a) over Cyrille and Voevodin.
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VI. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1-27 under 35 U.S.C. § 103(a) over Cyrille and
Voevodin is AFFIRMED.
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
AFFIRMED
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