Ex Parte MATSUMOTO et al

Patent Trial and Appeal Board

Sep 13, 2018

14705684 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/705,684 05/06/2015
56000 7590 09/17/2018
PATTERSON & SHERIDAN, L.L.P. / HGST
24 GREENWAY PLAZA
SUITE 1600
HOUSTON, TX 77046
FIRST NAMED INVENTOR
Takuya MATSUMOTO
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.
H20141212US1 4923
EXAMINER
BUTCHER, BRIAN M
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
09/17/2018 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):
PSDocketing@pattersonsheridan.com
P AIR_eofficeaction@pattersonsheridan.com
sversteeg@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUY A MATSUMOTO,
VIJAY PRAKASH SINGH, and BARRY C. STIPE
Appeal 2018-003566
Application 14/705,684 1
Technology Center 2600
Before ROBERT E. NAPPI, MARC S. HOFF and JOHN D. HAMANN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appellants' invention is a heat assisted magnetic recording head,
including a near-field transducer comprising an antenna including a first
portion made of a first material and a second portion made of a second
material. The second material is selected from a group consisting of Pt, Pd,
B, and Re, and alloys of Pt, Pd, and Re.
1 The real party in interest is Western Digital Technologies, Inc. App. Br. 3.
Appeal 2018-003566
Application 14/705,684
Claim 1 is exemplary of the claims on appeal:
1. a main pole;
a waveguide;
a heat assisted magnetic recording head, comprising:
a near-field transducer disposed between the main pole
and the waveguide,
wherein the near-field transducer comprises an antenna,
wherein the antenna includes a first portion made of a first
material and a second portion made of a second material,
wherein the second portion is a layer embedded in the first
portion, wherein the second material is selected from a group
consisting of Pt, Pd, B, and Re, and alloys of Pt, Pd and Re; and
a thermal shunt coupled to the antenna, wherein the first portion is in
contact with the thermal shunt, wherein the thermal shunt comprises a
conductive material.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Wessel
Zhao
US 2014/0376342 Al
US 2015/0131417 Al
Dec. 25, 2014
May 14, 2015
Claims 1-19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Wessel and Zhao.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed August 25, 2017), the Reply Brief ("Reply Br.," filed
February 15, 2018), and the Examiner's Answer ("Ans.," mailed January 12,
2018) for their respective details.
ISSUE
Does the claimed Markush group "consisting of Pt, Pd, B, and Re, and
alloys of Pt, Pd, and Re" exclude boron nitride (BN)?
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Appeal 2018-003566
Application 14/705,684
PRINCIPLES OF LAW
A Markush group is a listing of specified alternatives of a group
in a patent claim, typically expressed in the form: a member
selected from the group consisting of A, B, and C. Therefore,
"if 'wherein R is a material selected from the group consisting
of A, B, C and D" is a proper limitation then 'wherein R is A,
B, C or D' shall also be considered proper." In re Harnisch, 631
F.2d 716,724 [206 USPQ 300] (CCPA 1980) (containing an
Appendix describing Patent Office practice). It is well known
that "members of the Markush group are ... alternatively usable
for the purposes of the invention." In re Driscoll, 562 F.2d
1245, 1249 [195 USPQ 434] (CCPA, 1977). Moreover, "[a]
Markush group, incorporated in a claim, should be 'closed,' i.e.
it must be characterized with the transition phrase 'consisting
of,' rather than 'comprising' or 'including."' Stephen A.
Becker, Patent Applications Handbook §2: 17 (9th ed. 2000).
Thus, "members of the Markush group are used singly." See
Meeting Held to Promote Uniform Practice In Chemical
Divisions, 28 J. Pat. & Trademark Off. Soc'y 849, 852 (1946)
(listing practices approved by the primary examiners of the
USPTO's chemical group).
Abbott Laboratories v. Baxter Pharmaceutical Products Inc., 334 F.3d 1274,
1284 (Fed. Cir. 2003).
If a patentee desires mixtures or combinations of the members of the
Markush group, the patentee would need to add qualifying language while
drafting the claim. See Meeting Held to Promote Uniform Practice In
Chemical Divisions, supra, at 852 (citing examples of qualifying language
such as: "and mixtures thereof' and "at least one member of the group").
Thus, without expressly indicating the selection of multiple members of a
Markush grouping, a patentee does not claim anything other than the plain
reading of the closed claim language.
Abbott Laboratories, 334 F.3d at 1284.
Use of the transitional phrase "consisting of' to set off a patent claim
element creates a very strong presumption that that claim element is closed"
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Appeal 2018-003566
Application 14/705,684
and therefore "exclude [ s] any elements, steps, or ingredients not specified in
the claim." Multilayer Stretch Cling Film Holdings Inc., v. Berry Plastics
Corp., 831 F.3d 1350, 1358(??) (Fed. Cir. 2016), citing AFG Indus., Inc. v.
Cardinal JG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001).
ANALYSIS
Each of the four pending independent claims ( 1, 12, 16, and 18)
recites an antenna having a second portion made of a second material, the
second material "selected from a group consisting of Pt, Pd, B, and Re, and
alloys of Pt, Pd, and Re."
The Examiner finds that Zhao teaches a near-field transducer antenna
including a diffusion barrier structure made of boron nitride. Final Act. 3;
Zhao ,r 27. The Examiner finds that boron nitride ("BN") corresponds to the
materials listed in the claimed Markush group because "the compound BN
includes boron." Final Act. 3. The Examiner maintains, in the Answer, that
"the claim language does to (sic, not) exclude the claimed 'second material'
from including other elements not found in the 'group' as claimed." Ans. 3-
4.
The Examiner erred in applying the law of Markush groups. The use
of the transitional phrase "consisting of' creates a strong presumption that
the claim element is closed and excludes elements, steps, or ingredients not
specified in the claim. Multilayer Stretch Cling Film Holdings, 831 F.3d at
13 5 8. If Appellant meant to include mixtures of combinations of the
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Appeal 2018-003566
Application 14/705,684
members of the Markush group, Appellants would have needed to add
qualifying language. See Abbott Labs., 334 F.3d at 1284. 2
No such qualifying language is included in the claims under appeal.
A structure made of boron would correspond to the claim limitation at issue;
a structure made of boron nitride, however, does not. We agree with
Appellant that Zhao does not disclose a transducer made of one of the
materials included in the claimed Markush group.
We conclude that the Examiner erred in rejecting claims 1-19 under
35 U.S.C. § 103(a) as unpatentable over Wessel and Zhao. We do not
sustain the rejection.
CONCLUSIONS
The claimed Markush group "consisting of Pt, Pd, B, and Re, and
alloys of Pt, Pd, and Re" excludes boron nitride (BN).
ORDER
The Examiner's decision to reject claims 1-19 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
2 For example, we observe that Appellants specifically claimed "alloys of Pt,
Pd, and Re." However, Appellants specifically omitted boron from the
"alloys" subsection of the Markush group.
5