Ex parte Nakatani et al.

Board of Patent Appeals and Interferences

Feb 17, 1998

07804013 (B.P.A.I. Feb. 17, 1998)

Application for patent filed December 9, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RYOICHI NAKATANI,
MASAHIRO KITADA and
YUZURU HOSOE
_____________
Appeal No. 95-1626
Application 07/804,0131
______________
HEARD: February 3, 1998
_______________
Before JERRY SMITH, BARRETT and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-1626
Application 07/804,013
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-45, which constitute
all the claims in the application. A first amendment after
final rejection was filed on May 24, 1994 but was denied entry
by the examiner. A second amendment after final rejection was
filed contemporaneously with the appeal brief and was entered
as the result of a decision on petition [Paper #24].
The disclosed invention pertains to a magnetoresistive
(MR) element. The MR element of the invention is comprised of
a multilayer film having ferromagnetic and nonferromagnetic
layers layered on each other. A particular feature of the
invention relates to the manner in which a magnetic bias field
is applied to the MR element to give the element desired
properties.
Representative claims 1 and 4 are reproduced as
follows:
1. A magnetoresistive element, comprising a
multilayer film having ferromagnetic layers and
nonferromagnetic layers layered on each other, wherein a
nonferromagnetic layer is formed on the multilayer film, a
permanent magnet layer is formed on the nonferromagnetic
layer, on the multilayer film, and a bias field generated by
said permanent magnet layer is applied to the multilayer film.
Appeal No. 95-1626
Application 07/804,013
3
4. A magnetoresistive element, comprising a
multilayer film having ferromagnetic layers and
nonferromagnetic layers layered on each other, wherein an
angle between a hard axis direction of the multilayer film and
a direction for detecting an external magnetic field to be
detected by the magnetoresistive element is 10E or less when
no bias field is applied to the multilayer film.

The examiner relies on the following reference:
T. Shinjo et al. (Shinjo), “Large Magnetoresistance of Field-
Induced Giant Ferrimagnetic Multilayers,” Journal of The
Physical Society of Japan, Vol. 59, No. 9, Sept. 1990, pages
3061-3064.
Claims 1-45 stand rejected under 35 U.S.C. § 112,
first and second paragraphs, as being based on an inadequate
disclosure and/or for failing to particularly point out and
distinctly claim the invention. Claims 1-3 and 6-45 also
stand rejected under 35 U.S.C. § 101 as being directed to an
inoperative invention and, therefore, lacking utility.
Finally, claims 1-45 stand further rejected under 35 U.S.C. §
103. As evidence of obviousness the examiner offers Shinjo
taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
Appeal No. 95-1626
Application 07/804,013
4
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner's answers.
It is our view, after consideration of the record
before us, that the disclosure in this application describes
the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. We are also of the view that
the claims particularly point out the invention in a manner
which also complies with 35 U.S.C. § 112. We are further of
the view that the claims are properly directed to an operative
invention and, therefore, possess the disclosed utility.
Finally, we are of the view that the evidence relied upon and
the level of skill in the particular art would not have
suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in claims 1-3, 5-25, 28, 34 and
Appeal No. 95-1626
Application 07/804,013
5
36-45, however, the prior art would have suggested the
obviousness of the invention as set forth in claims 4, 26, 27,
29-33 and 35. Accordingly, we affirm-in-part.
1. The rejection of claims 1-45 under
the first and second paragraphs of 35
U.S.C. § 112 [answer, pages 3-6].
The examiner has formulated this rejection in
paragraphs labeled A) to H), and appellants have responded to
the rejection in the same manner. Therefore, we will also
consider the positions of the examiner and appellants in
paragraphs labeled to be consistent with their use by the
parties.
A) The examiner argues that there is no structure to
provide the bias field of claims 1-5 or the current of claim
3. The examiner also questions how a bias field is applied to
the multilayer when the source is a layer of the film.
Appellants respond that the bias field of claim 1, for
example, is a permanent magnet mounted on the multilayer.
Appellants also indicate how the various bias fields and
currents arise in the multilayer device. We agree with
appellants for the reasons given by them. We see no lack of
clarity caused by the source of the bias field being either
Appeal No. 95-1626
Application 07/804,013
6
attached to the MR element or as one of the layers thereof.
Either way, a bias field can be applied to the multilayer MR
element. In addition, we note that the bias field is applied
by a permanent magnet in claim 1. The bias field is applied
by a current flowing in the nonferromagnetic metal layer in
claim 3. It does not matter how the current was generated for
claim definiteness. Claim 5 specifically recites a means for
applying a bias field. Thus, the scope of the claims is not
rendered indefinite by the recitation of a bias field or of a
current.
B) The examiner questions whether an external magnetic
field is required in claims 4 and 5. With respect to claim 4,
we agree with appellants that it simply recites the
relationship between hard axis direction of a multilayer film
and an external magnetic field to be detected by the MR
element. With respect to claim 5, the specification makes it
clear that the bias field changes the characteristics of the
MR element such as by attaching a permanent magnet thereto,
whereas the magnetic field to be detected refers to an
externally applied magnetic field. The scope of these claims
is clear when they are read in light of the specification.
Appeal No. 95-1626
Application 07/804,013
7
C) The examiner argues that the direction in claim 2
is unclear and indefinite. We do not agree. Claim 2 simply
recites that the bias field which is applied by the permanent
magnet should be smaller than the field strength of the MR
element at maximum resistance, and that the direction of the
bias field is inverse to the direction of magnetization of the
permanent magnet. These directions being inverse are clear as
shown by the sketch attached to the reply brief. The
permanent magnet causes a magnetic field to exist in the
layers which is in the reverse direction of the magnetic field
within the magnet itself.
D) The examiner asserts that it is unclear how a
nonferromagnetic layer can be magnetoresistive as recited in
claim 14. As appellants point out, however, claim 14 does not
make this recitation. Claim 14 recites two different MR
elements each of which is layered with ferromagnetic and
nonferromagnetic layers. Thus, it is each of the MR elements
which are magnetoresistive, not a nonferromagnetic layer by
itself. E) The examiner asserts that the
source of the voltage and output of claims 14, 24, 34 and 44
is unclear because there is no structure recited to generate
Appeal No. 95-1626
Application 07/804,013
8
these parameters. Claim 14 recites that a difference in
voltage between the two MR elements is caused by currents
flowing therein. It does not matter for definiteness how
these currents are generated. All that matters is that
currents flowing in the MR elements produce different voltages
measurable by the MR elements. The scope of these claims is
not made indefinite by not reciting the source of the currents
flowing in the MR elements.
F) The examiner argues that it is not clear how a
permanent magnet or nonferromagnetic layer is formed through
the nonferromagnetic layer as in claim 3, for example. Claim
3 does not recite that a permanent magnet is formed through a
nonferromagnetic layer. Claim 3 recites that a
nonferromagnetic metal layer is formed through a
nonferromagnetic insulating layer in a manner that causes a
current flowing in the metal layer to induce a bias field
which is applied to the multilayer film. The specification
makes it clear how these two nonferromagnetic layers are made
to effect the desired result. Therefore, we see no merit in
the examiner’s position on this point.
Appeal No. 95-1626
Application 07/804,013
9
G) The examiner asserts that the nonferromagnetic
layers of claim 3 are unclear and indefinite. We agree with
appellants’ response that it is clear that a current flows in
the metal layer which induces a bias field which is applied to
the multilayer film. We find nothing indefinite in this
recitation.
H) The examiner questions whether the permanent magnet
layer of claim 1 is the same as the ferromagnetic layer. The
ferromagnetic layers are described as forming part of the
multilayer film. The permanent magnet is recited as being
formed on a nonferromagnetic layer which is formed “on the
multilayer film.” Thus, it is clear that the permanent magnet
is different from any of the ferromagnetic layers which
comprise the multilayer film in claim 1.
In summary, we have found no merit in any of the
examiner’s findings of lack of clarity and indefiniteness.
Therefore, we do not sustain the rejection of all the claims
under 35 U.S.C. § 112.
2. The rejection of claims 1-3 and 6-
45 under 35 U.S.C. § 101 [answer,
pages 6-7].
Appeal No. 95-1626
Application 07/804,013
10
This rejection is based on the examiner’s belief that
the invention as disclosed is inoperative and therefore lacks
utility. More particularly, the examiner asserts that a bias
can only refer to a voltage, and the permanent magnet of claim
1 cannot generate a bias voltage. The examiner also asserts
that the sources of voltage and current in claims 3 and 14
appear to be within the multilayer film with no external
sources which violates the laws of thermodynamics.
With respect to the first point raised by the
examiner, the specification of this application makes it clear
that the whole invention is based on the generation of a
magnetic bias field in an MR element multilayer film. The
examiner’s finding that a bias must be a voltage and cannot be
a magnetic field is unwarranted by the record in this case.
When the appealed claims use the term bias field, it is clear
that they are referring to a magnetic bias field. There is
nothing inoperative in the recitation of such a bias field.
With respect to the second point raised by the
examiner, claim 3 recites that a current flowing in a
nonferromagnetic metal layer of an MR element induces a bias
field which is applied to the multilayer film. We see no
Appeal No. 95-1626
Application 07/804,013
11
reason why the claim must recite where or how these currents
were created. It does not matter what the source of the
current is as it forms no part of the invention. There is no
question that a current flowing in a device of the type
recited will induce a magnetic bias in the MR element.
Therefore, there is no violation of the laws of thermodynamics
as asserted by the examiner.
Since we find the invention of the appealed claims to
be fully operative, we do not sustain the rejection of the
claims as lacking utility.
3. The rejection of claims 1-45 under
35 U.S.C. § 112, first paragraph, for
the reasons set forth in the
objections to the specification
[answer, pages 7-8].
The answer includes a second brief rejection of the
claims under 35 U.S.C. § 112 as failing to provide an enabling
disclosure. The examiner asserts that the disclosure does not
set forth any structure which would provide an output,
voltage, current or voltage difference. However, the
specification describes how currents generated in the MR
element create measurable differences in the output voltage of
the element. We fail to see why the person skilled in this
Appeal No. 95-1626
Application 07/804,013
12
art would be unable to make and use the invention based on
this disclosure.
With respect to the examiner’s observation that the
specification as originally filed does not support the bias
field to be generated by a permanent magnet layer, we are of
the view that the description of a permanent magnet forming
part of the mutilayer element on pages 20-22 of the
specification clearly establishes that the inventors were in
possession of the claimed invention as of the filing date of
this application. Therefore, we do not sustain this separate
rejection of the claims under the first paragraph of 35 U.S.C.
§ 112.
4. The rejection of claims 1-45 under
35 U.S.C. § 103 as being unpatentable
over the teachings of Shinjo [answer,
pages 8-10].
With respect to independent claim 1, the examiner
argues that Shinjo has the same layers as appellants’
invention so that the same bias field is inherently present.
The examiner also calls the cobalt layer (the hard component)
of Shinjo a permanent magnet. The cobalt layer is clearly not
a permanent magnet because Shinjo notes that the magnetization
Appeal No. 95-1626
Application 07/804,013
13
of the hard component changes with increase of the magnetic
field [page 3062, 2nd column]. In fact, there is nothing in
Shinjo which can be called a permanent magnet. Since claim 1
clearly recites a permanent magnet layer, and since Shinjo
does not suggest any permanent magnet be attached to the
multilayer element, the examiner has failed to establish a
prima facie case of the obviousness of claim 1. The examiner
has not addressed the obviousness of attaching a permanent
magnet to the MR element of Shinjo. Therefore, we do not
sustain the prior art rejection of independent claim 1. Since
claims 2, 6-13 and 15 depend from claim 1, we also do not
sustain the rejection of these claims.
With respect to independent claim 3, the examiner
argues that the Shinjo layers are the same as the claimed
invention and that it appears that some mixture of insulating
layer and metal layer is formed. The examiner concludes that
any difference between the invention of claim 3 and Shinjo is
the result of the process of making the MR element and cannot
give patentability to the claimed product. Claim 3 recites
that a nonferromagnetic metal layer is formed through a
nonferromagnetic insulating layer so that a current flowing in
Appeal No. 95-1626
Application 07/804,013
14
the nonferromagnetic metal layer induces a bias field which is
applied to the multilayer film. Although Shinjo teaches
alternating ferromagnetic layers with nonferromagnetic layers,
Shinjo suggests nothing about the nonferromagnetic layers
being both metal and insulating and connected in the claimed
manner. The examiner’s conclusion that the structure of claim
3 is the same as the Shinjo structure is not supported by the
facts of record. Thus, we also do not sustain the prior art
rejection of independent claim 3. Since claims 16-23 and 25
depend from claim 3, we also do not sustain the prior art
rejection of these claims.
With respect to independent claim 4, the examiner
asserts that the Shinjo MR element is the same as the claimed
element, and that the discovery of a new property cannot
impart patentability to the element itself. Claim 4 recites a
multilayer element which has a property regarding the angle
between a hard axis direction and a direction for detecting an
external magnetic field to be detected by the MR element.
Unlike our discussion of the art rejection of claims 1 and 3
above, claim 4 does not recite any additional component of the
MR element which creates this property. In the absence of any
Appeal No. 95-1626
Application 07/804,013
15
recited element in claim 4 in addition to the ferromagnetic
and nonferromagnetic layers, we are unable to see how the
structure of claim 4 patentably distinguishes over the Shinjo
multilayer element. Appellants have not pointed to any
specific structure recited in claim 4 which patentably
distinguishes claim 4 from the MR element of Shinjo.
Therefore, we sustain the prior art rejection of independent
claim 4. Since claims 29, 30 and 33 are grouped with claim 4,
we also sustain the prior art rejection of these claims.
With respect to dependent claims 26 and 27, appellants
argue that the examiner has not addressed the claimed
different ferromagnetic layers. However, Shinjo clearly
teaches that his MR element is made from mixed ferromagnetic
layers of a nickel alloy and cobalt. These layers are known
to have different coercive forces and different anisotropic
magnetic fields. Therefore, we sustain the prior art
rejection of claims 26 and 27. With respect to dependent
claims 31 and 32, these claims recite the same ferromagnetic
layers as claims 26 and 27 but add a recitation of the angle
between the easy axis directions and the ferromagnetic layers.
The angle recitation of these claims does not add a structural
Appeal No. 95-1626
Application 07/804,013
16
limitation which is not present in the Shinjo device.
Therefore, we also sustain the prior art rejection of claims
31 and 32.
With respect to dependent claim 28, appellants argue
that Shinjo fails to address the limitation of a permanent
magnet as recited in the claim. As we noted in our discussion
of claim 1 above, we agree that Shinjo does not suggest the
use of a permanent magnet, and the examiner has not addressed
the obviousness of modifying the Shinjo MR element to have a
permanent magnet. Therefore, we do not sustain the rejection
of claim 28. With respect to dependent claim 35, appellants
argue that Shinjo does not suggest the claimed lattice
mismatch between the ferromagnetic and nonferromagnetic
layers. The examiner responds that the Shinjo MR element and
the claimed MR element would inherently have the same lattice
structure. We agree. Appellants’ disclosure makes it clear
that the amount of lattice mismatch to a known ferromagnetic
layer is a function of the composition of the nonferromagnetic
layer. That is, Table 3 of the specification notes that a
nonferromagnetic layer of Cu causes a lattice mismatch of
1.77%. Since Shinjo teaches that the nonferromagnetic layers
Appeal No. 95-1626
Application 07/804,013
17
of his device are made from Cu and the ferromagnetic layers
are of the same composition as the claimed invention, the
examiner is correct to conclude that the lattice mismatch in
Shinjo would be the same as in appellants’ invention.
Therefore, we sustain the rejection of claim 35.
With respect to independent claim 5, the examiner
again argues that the Shinjo composition is the same as the
claimed invention regardless of the properties set forth in
the claim. Claim 5 recites a means for applying a bias field
to the multilayer film so that a specific property is
realized. The last paragraph of 35 U.S.C. § 112 mandates that
a means in a claim must be construed to cover the
corresponding structure described in the specification and
equivalents thereof. The means for applying a bias field to
the multilayer film is described in the specification as being
one or more of a permanent magnet, a shunt bias or an
inductive field with current. Each of these bias means
requires structure apart from the ferromagnetic and
nonferromagnetic layers of the MR element itself. Shinjo only
discusses the procedure of applying an external magnetic field
to the MR element. Shinjo offers no suggestion of applying a
Appeal No. 95-1626
Application 07/804,013
18
bias field to the MR element using a structure of the type
disclosed or an equivalent thereof. Once again, the
examiner’s conclusion that the Shinjo element inherently has
the properties recited in the claim is pure speculation and is
not supported by the record in this case. Thus, we do not
sustain the prior art rejection of independent claim 5. Since
claims 36-43 and 45 depend from claim 5, we also do not
sustain the prior art rejection of these claims.
With respect to independent claim 14, the examiner
asserts that the Shinjo MR element must operate in the same
manner as the claimed invention. Claim 14 recites that there
are two MR elements forming an MR device which has specific
claimed properties. Shinjo only discusses a single MR
element. The examiner has not addressed the obviousness of an
MR device having two MR elements as recited in claim 14.
Thus, the examiner has again failed to establish a prima facie
case of the obviousness of claim 14. Therefore, we do not
sustain the prior art rejection of independent claim 14.
Since claims 24, 34 and 44 depend from claim 14, we also do
not sustain the rejection of these claims.
Appeal No. 95-1626
Application 07/804,013
19
In conclusion, we have not sustained any of the
examiner’s rejections of claims 1-45 under 35 U.S.C. § 112 or
§ 101. The rejection of claims 1-45 under 35 U.S.C. § 103 has
been sustained with respect to claims 4, 26, 27, 29-33 and 35,
but has not been sustained with respect to claims 1-3, 5-25,
28, 34 and 36-45. Therefore, the decision of the examiner
rejecting claims 1-45 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 95-1626
Application 07/804,013
20
MICHAEL R. FLEMING )
Administrative Patent Judge )
FAY, SHARPE, BEALL, FAGAN,
MINNICH & McKEE
104 E. Hume Avenue
Alexandria, VA 22301