Ex Parte Li et al

Patent Trials and Appeals Board

Apr 29, 2019

14055640 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/055,640 10/16/2013
73462 7590 05/01/2019
Hall Estill Attorneys at Law
(Seagate Technology LLC)
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
FIRST NAMED INVENTOR
Pengcheng Li
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.
STL17823 6680
EXAMINER
CHAU,LISAN
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
danderson@hallestill.com
okcipdocketing@hallestill.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PENGCHENG LI, BIN LU, THOMAS P. NOLAN,
LI-LIEN LEE and JAI-YOUNG KIM
Appeal2018-004515
Application 14/055,6401
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS,
and JEFFREY R. SNAY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant's invention is generally directed to perpendicular data
recording systems wherein a magnetic sequence is written to a recording
structure of a medium with magnetic domains having magnetization in a
direction generally perpendicular to the surface of the medium. (Spec. 2).
1 Seagate Technology LLC., is the Appellant and the real party in interest.
Appeal2018-004515
Application 14/055,640
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. An apparatus comprising:
a substrate;
a recording layer supported by the substrate and
comprising a granular magnetic recording layer, a continuous
magnetic recording layer, and an oxide gradient layer, the
granular magnetic recording layer comprising a first material
having a first oxide content, and the oxide gradient layer
disposed between the respective granular magnetic recording
layer and the continuous magnetic recording layer, the oxide
gradient layer comprising a third material having a second oxide
content that is greater than zero and less than the first oxide
content; and
a non-magnetic grain boundary continuously extending
from the granular magnetic recording layer through the oxide
gradient layer into, but not completely through, the continuous
magnetic recording layer, the continuous magnetic recording
layer comprising a second material having nominally no oxide
content other than the non-magnetic grain boundary.
The following rejections are presented for our review.
I. Claims 3, 16 and 21 are rejected under 35 U.S.C. § l 12(a) as failing to
comply with the written description requirement. 2
II. Claim 12 is rejected under 35 U.S.C. § l 12(b) as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention.
2 The Examiner has withdrawn the rejection of independent claim 1. (Ans.
4). The Examiner's rejection specifically address only claims 3, 16 and 21.
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Application 14/055,640
III. Claims 1-9, and 13-15 are rejected under 35 U.S.C. § 103(a) as obvious
over Kanbe et al. 3 (WO 2011/093233 Al, Aug. 4, 2011) ("Kanbe"), and
Saito et al. (US 2011/0311841 A 1, published Dec. 22, 2011) ("Saito"), Suess
(US 2010/0062286 Al, published Mar. 11, 2010), and Sakawaki (US
2006/0204791 Al, published Sept. 14, 2006).
IV. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as obvious over
Kanbe, Saito, and Suess.
V. Claims 12, 16-23 are rejected under 35 U.S.C. § 103(a) as obvious over
Kanbe, Saito and Sakawaki.
We AFFIRM.
OPINION
Rejections under 35 U.S.C. § l l 2(a)
(written description)
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the
initial burden of establishing that the original application disclosure as a
whole would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter at the time the instant
application was filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172, 1175-76
(Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262-64 (CCPA
1976)); In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
3 The Examiner cites and references US 2012/0300600 Al, published Nov.
29, 2012, as an English language equivalent for this reference (Final Act. 9).
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Application 14/055,640
Claim 3
The Examiner determines the original application disclosure as filed
does not reasonably convey to those skilled in the art that the inventors had
possession of an additional different oxide material in its granular magnetic
recording layer. (Final Act. 7).
Appellant has failed to explain the reasons they believe that the
rejection is inappropriate. (See generally Briefs).
On pages 5-7 of the Brief, Appellant only addresses the rejection of
claims 16 and 21 for appeal. Hence, Appellant has failed to address the
Examiner's rejection of claim 3. Appellant has therefore waived the right
for further appellate review of this rejection. The Board will generally not
reach the merits of any issues not contested by the Appellant. See
37 C.F.R. § 41.37(c)(l)(iv) ("[A]ny arguments or authorities not included in
the appeal brief will be refused consideration by the Board for purposes of
the present appeal."); Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) ( the Board may treat arguments the Appellant
failed to make for a given ground of rejection as waived); In re Watts, 354
F.3d 1362, 1368 (Fed. Cir. 2004).
Claims 16 and 21
The Examiner determined the original application disclosure as filed
does not reasonably convey to those skilled in the art that the inventors had
possession of "the grain boundaries continuously extending from the
granular magnetic recording layer into, but not completely through, the
oxide gradient layer" as required by claim 16 and wherein the "exchange
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Appeal2018-004515
Application 14/055,640
tuning layer comprises a fourth magnetic material" as required by claim
Claim 21. (Final Act. 7) ( emphasis omitted).
Appellant argues the disputed claim language has support in the
specification. Appellant specifically states:
It appears that the Examiner is focusing on the language
of the specification that describes the exchange tuning layer as
"operates to control exchange" "by adjusting the magnetic
moment and concentration of magnetic atoms." See Advisory
Action mailed 7/19/17, pg. 3. In yet, the ordinary artisan would
clearly understand that a layer of material can only "operate"
and "adjust" via its material properties. Hence, the ordinary
artisan would appreciate that the exchange tuning layer can
only control exchange and adjust the magnetic moment and
concentration of magnetic atoms between adjacent layers by
having a different magnetic moment and concentration of atoms
that those adjacent layers, which is recited in claim 16.
The confusion of the Examiner as to the exchange tuning
layer is present with regard to the tuning layer's material
composition recited in claim 21. See Office Action mailed
3/23/17, pg. 7-8. The ordinary artisan would find explicit
support for the tuning layer comprising a fourth magnetic
material in FIG. 7 and page 8, ln. 10-13 where the exchange
tuning layer (212) is present and adjusts the magnetic moment
between adjacent layers. Indeed, the ordinary artisan would be
stumped as how a physically present layer that explicitly
controls magnetic exchange coupling and magnetic moment
cannot comprise any other than a magnetic material.
(App. Br. 6-7).
Appellant's arguments and evidence lack persuasive merit. We agree
with the Examiner that the Specification does not explicitly disclose its
exchange tuning layer comprising a magnetic material. Appellant has not
refuted the Examiner's evidence that the thickness of the tuning layer as well
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Application 14/055,640
as the materials (nonmagnetic) forming the layer can control the exchange
coupling between two magnetic layers. (Ans. 7-8; see generally Reply Br.).
Appellant has also not pointed out where the Specification discloses the
tuning layer comprises magnetic material.
Accordingly, we affirm the rejections under 35 U.S.C. § l 12(a) for the
reasons presented by the Examiner and given above.
Re} ection under 3 5 U.S. C. § 112 (b)
We REVERSE.
"[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.'" Ex parte McAward,
No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir.
2014)). The language in 35 U.S.C. § 112, second paragraph, "of
'particular[ i ty ]' and 'distinct[ ness ]' indicates[] claims are required to be cast
in clear-as opposed to ambiguous, vague, indefinite-terms." Packard,
751 F.3d at 1313. The Examiner bears the initial burden of establishing that
the original application disclosure as a whole would not have reasonably
conveyed to those skilled in the art that the inventors had possession of the
claimed subject matter at the time the instant application was filed. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane); In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996) (citing In
re Wertheim, 541 F.2d 257, 262-64 (CCPA 1976)); In re Wright, 866 F.2d
422, 425 (Fed. Cir. 1989).
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Application 14/055,640
The Examiner determined claim 12 is indefinite because it is unclear
how can the grain boundaries continuously extend between layers when
there is an interposing layer in-between as shown in Fig. 7.
Appellant argues "the ordinary artisan would logically understand the
boundaries of the claims as continuously passing from the granular layer
(210) to and through the oxide gradient layer (214), which in FIG. 7 would
involve extending through the intervening exchange tuning layer." (App.
Br. 7).
We agree with Appellant that a person of ordinary skill in the art
would have recognized the claim language continuously passing from the
granular layer to and through the oxide gradient layer would have included
extending through an intervening exchange tuning layer. The Examiner has
not adequately explained why a person of ordinary skill in the art would not
have recognize the term "continuously" would have included intervening
layers.
Accordingly, we reverse the rejection under 35 U.S.C. § l 12(b) for
the reasons presented by Appellant and given above.
Prior Art Rejections of Claims 1-234
We REVERSE.
The Examiner found Kanbe teaches the claimed invention except the
claimed grain boundaries extending into but not completely through, the
continuous magnetic recording layer. (Ans. 10).
4 Our discussion applies to independent claims 1 and 16.
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Appeal2018-004515
Application 14/055,640
The Examiner specifically states:
Kanbe et al. thus teaches its granular magnetic recording layer
comprising a first material having a first oxide content (0-4 nm thick
data points shown in Fig. 3), the oxide gradient layer comprising a
third material having a second oxide content that is greater than zero
and less than the first oxide content ( 4-6 nm thick data points shown
in Fig. 3), and a continuous magnetic recording layer comprising a
second material having nominally no oxide content other than a non-
magnetic grain boundary ( 6-10 nm thick data points shown in Fig. 3)
(Figs. 1-5 and 10-12, [0006], [0052], [0057], and [0068]).
While Kanbe et al. teaches a grain boundary in the granular
magnetic recording layer, oxide gradient layer, and partially in the
continuous magnetic recording layer (Fig. 3), Kanbe et al. does not
explicitly teach a non-magnetic grain boundary continuously
extending.
However, Saito et al. teaches a magnetic recording medium
comprising multiple magnetic recording layers with grains and grain
boundaries continuously extending in its recording structure (Fig. 2-4
and 6; [0076]). It would have been obvious to one of ordinary skill in
the art at the time of the invention was made to have Kanbe et al.' s
non-magnetic grain boundary continuously extending in order to
improve signal to noise ratio [007 6].
(Final Act. 10-11).
Addressing independent claim 16 in addition to relying on Kanbe and
Saito, the Examiner found Sakawaki teaches an exchange tuning layer
between two granular magnetic recording layers. The Examiner concluded
it would have been obvious to incorporate an exchange tuning layer directly
between Kanbe's granular layer and oxide gradient layer in order to control
the magnetic grain size and obtain a desirable signal/noise ratio (Final Act.
16; Fig. 8 ,i,i 118 and 119).
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Appeal2018-004515
Application 14/055,640
Appellant argues Kanbe, Saito, Suess, and Sakawaki fail to support a
prima facie case of obviousness because the Examiner has not provided any
logical teaching of the claimed grain boundary terminating in the continuous
magnetic recording layer. (App. Br. 10). Appellant argues Kanbe Fig. 3
does not correspond to a multilayer recording structure as required by the
claimed invention. (Reply Br. 2) ( citing ,i,i 27 and 73).
We agree with Appellant that Kanbe Fig. 3 shows a grain boundary
terminating in the first layer of a recording structure. (Kanbe ,i 27). This
evidence is insufficient to teach a recording structure having a grain
boundary extending through a first magnetic recording layer and gradient
layer into a continuous magnetic recording layer, as required by the claimed
invention. The Examiner has failed to explain how the showing regarding a
single layer would have suggested modifying a recording structure having a
grain boundary extending through a first magnetic recording layer and
gradient layer into a continuous magnetic recording layer, as required by the
claimed invention. The addition of Sakawaki for teaching the obviousness
of including an exchange tuning layer between two granular magnetic
recording layers does not address Kanbe' s failure to describe or suggest a
recording structure having a grain boundary extending through multiple
layers as required by independent claim 16.
For the foregoing reasons, we determine that the Examiner's
conclusion of obviousness is not supported by facts. "Where the legal
conclusion [ of obviousness] is not supported by facts it cannot stand."
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we reverse the Examiner's rejection of independent
claims 1 and 16 for the reasons presented by Appellant and given above.
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Application 14/055,640
We likewise reverse the Examiner's decision to reject dependent claims
2-15 and 1 7-23 since these rejections are premised on the Examiner's
unsupported combination of Kanbe and Saito. We need not reach whether
the Examiner's reliance on other references in addition to Kanbe and Saito
for the rejection of the dependent claims was supported by the evidence of
record because the base combination Kanbe and Saito cannot stand.
ORDER
The rejection of claims 3, 16, and 21 rejected under 35 U.S.C.
§ l 12(a) as failing to comply with the written description requirement is
affirmed.
The rejection of claim 12 rejected under 35 U.S.C. § l 12(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventors regards as the invention is
reversed.
The rejections under 35 U.S.C. § 103(a) of claims 1-23 are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED-IN-PART
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