Ex Parte Nolan et alDownload PDFPatent Trial and Appeal BoardOct 31, 201814229750 (P.T.A.B. Oct. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/229,750 03/28/2014 105639 7590 Rimon Law - SEA GA TE 2479 E. Bayshore Road Suite 210 Palo Alto, CA 94303 11/02/2018 FIRST NAMED INVENTOR Thomas P. Nolan 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. 10-3772-10-US 6231 EXAMINER CHAU,LISAN ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): S VDocketing@Rimonlaw.com Kailey.Gardner@Rimonlaw.com J ustin.Zahrt@Rimonlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS P. NOLAN, LI TANG, YONG-CHANG FENG, ZHONG (STELLA) WU, SAMUEL D. HARKNESS, HANS J. RICHTER, and YOUFENG ZHENG Appeal2018---000889 Application 14/229,750 Technology Center 1700 Before: JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and JEFFREY R. SNAY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 1 This Decision includes citations to the following documents: Specification filed March 28, 2014 ("Spec."); Final Office Action mailed January 25, 2017 ("Final Act."); Appeal Brief filed June 19, 2017 ("Appeal Br."); Examiner's Answer mailed October 4, 2017 ("Ans."); and Reply Brief filed November 6, 2017 ("Reply Br."). Appeal2018---000889 Application 14/229,750 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 21--40. (Appeal Br. 5.) We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We REVERSE. THE INVENTION Appellant states that the invention relates to an improved perpendicular magnetic recording media. (Spec. ,r 1.) Claim 21, as reproduced from the Claims Appendix, below is representative: 21. An apparatus, comprising: a magnetically soft underlayer (SUL), wherein the SUL has a thickness from about 1 nm to 40 nm; an interlayer stack overlying the SUL, wherein the interlayer stack comprises a seed layer of an fee material; and a perpendicular magnetic recording layer overlying the interlayer stack, wherein the thickness of the SUL in combination with a distance of the SUL from the perpendicular recording layer is sufficient to increase a perpendicular component of a magnetic field corresponding to a magnetic transducer head at an angle approaching 45°. (Appeal Br. 20, Claim Appendix.) 2 Appellant/ Applicant is Seagate Technology, LLC, which is identified as the real party in interest. (Appeal Br. 3.) 2 Appeal2018---000889 Application 14/229,750 REJECTIONS The Examiner rejected claims under 35 U.S.C. § I03(a) as follows: 1. Claims 21-23, 25, 26, and 31-33 as obvious over Chen et al. (US 2004/024795 Al; pub. December 9, 2004, hereinafter "Chen") in view of Uwazumi et al. (US 2003/0064253 Al; published April 3, 2003, hereinafter "Uwazumi"), and Honda et al. (US 5,851,643; issued December 22, 1998, hereinafter "Honda"); 2. Claims 24, 27-30, and 34--40 as obvious over Chen, Uwazumi, Honda, and Futamato et al. (JP P2001-I55322 A, published August 6, 2001) hereinafter "Futamato"); 3 and 3. Claims 21--40 as obvious over Chen, Uwazumi, Honda, and Futamato. (Final Act. 5-15.) DISCUSSION We limit our discussion to independent claims 21, 26, and 31, which is sufficient for disposition of this appeal. Regarding claim 21, the Examiner found that Chen discloses an apparatus comprising a magnetically soft underlayer (SUL) having a thickness of about 50 nm and an interlayer stack overlying the SUL. (Final Act. 5, 10-11.) Regarding the interlayer stack thickness recited in claim 26, the Examiner found that the combination of thicknesses in Chen's interlayer structure 4' of about 50 nm, and about 5 nm of spacer layer 3A reads on Appellant's endpoint for the interlayer stack thickness of about 56 nm. 3 Citations to US 2007/0037018 Al published February 15, 2007, identified by the Examiner as the English language equivalent. (Final Act. 9.) 3 Appeal2018---000889 Application 14/229,750 (Final Act. 6, 11-12 ( citing Chen i-fi-f90, 94 ). ) The Examiner relied on Ortho- McN eil Pharm., Inc. v. Caraco Pharm. Labs, Ltd., 476 F.3d 1321 (Fed. Cir. 2007) to establish the limits of the term "about." (Id. 5---6.) The Examiner found that "giving the broadest reasonable interpretation of the term 'about', the range[ s] [ of SUL thickness and interlayer stack thickness] taught by [Chen] overlaps in scope with the claimed range[s]." (Id. 5---6, 11.) The Examiner determined also that it would have been obvious to one of ordinary skill in the art to have adjusted the thickness of the SUL as well as the interlayer stack to within the ranges recited in the claims because the thickness of these layers can impact the overall magnetic properties and function of the medium, and as such thickness is a results effective variable. (Id. at 6-7, 11-12.) Regarding the SUL thickness, the Examiner found also that Futamoto discloses 10-100 nm thick SUL in a magnetic recording medium, and determined that it would have been obvious to have optimized the thickness of the SUL to 40 nm to promote recording efficiency. (Id. at 12.) Regarding the interlayer stack thickness, the Examiner found also that Uwazumi discloses spacer layers in the range of 5 nm or more and that it would have been obvious to have optimize the thickness of Chen's spacer layer to control the crystal alignment and improved magnetic characteristics of the magnetic layer particularly in view of the knowledge in the art that the thickness of a layer can impact magnetic properties of the medium. (Final Act. 7; Uwazumi ,r,r 29, 31.) The Examiner found that Honda teaches a perpendicular magnetic recording medium with a ring-type magnetic transducer head applying a magnetic field of about 0-45°. (Id. at 7, 13.) The Examiner determined that 4 Appeal2018---000889 Application 14/229,750 it would have been obvious to one of ordinary skill in the art to use a ring- type magnetic transducer head in order to effectively write/record data into Chen's perpendicular magnetic recording medium. (Id. at 8, 13.) Regarding claim 21, Appellant contends that Chen, Uwazumi, and Honda do not teach that the SUL has a thickness between 1 nm to 40 nm as recited in the claim. (Appeal Br. 12-13.) Appellant makes similar arguments as to claim 26. (Appeal Br. 14.) Appellant contends also that because Chen discloses the use of a single-pole recording/retrieval transducer head and the strong preference for the use thereof, one of ordinary skill in the art would have had no motivation to substitute a ring- type magnetic transducer head for a single-pole recording/retrieval transducer head in Chen to arrive at the subject matter of the claims. (Appeal Br. 15-16.) Regarding Futamoto, Appellant contends that Futamoto does not remedy the deficiencies of Chen, Uwazumi, and Honda. (Appeal Br. 17 .) Claim 21 At the outset, we agree with Appellant, that on this record, the Examiner did not provide sufficient rational underpinning to support the position that the SUL thickness disclosed in Chen of "about 50 nm" reads on an SUL of "40 nm" as recited in claim 21. In particular, we agree with Appellant, that in relying on Ortho-McNeil Pharm., Inc. to establish the limits of the term "about" the Examiner has not considered the context of Chen as it relates to the thickness of the SUL as explained in the present Specification. 5 Appeal2018---000889 Application 14/229,750 The Specification describes in one embodiment, that in order to "increase a perpendicular component of a magnetic field corresponding to a magnetic transducer head at an angle approaching 45°" as recited in each of the independent claims, the "thin SUL" alters the magnetic field from the transducer head. (Spec. ,r 50.) As to independent claim 21, the Specification describes the thickness of the SUL as from about 1 to about 40 nm thick. (Spec. ,r 43.) In discussing conventional perpendicular magnetic recording systems, the present Specification acknowledges that SULs having a thickness from about 50 to about 300 nm are disclosed in the prior art. (Spec. ,r 38.) Chen discloses the thickness of the SUL to be about 50 to about 400 nm, which is used in conjunction with conventional single-pole recording/retrieval transducer heads in perpendicular recording systems and is consistent with the conventional range disclosed in the Specification. (Chen ,r,r 89, 112.) Thus, because the Specification expressly discusses and distinguishes conventional SUL thicknesses from the "thin SUL" required in independent claims 21, we are of the view that the range "about 1 nm to 40 nm" as recited in claim 21 cannot reasonably be read to include Chen's disclosed thickness of "about 50 nm." The Examiner's additional rationale that modifying the thickness of the SUL in Chen would have been obvious because such thickness is a known results effective variable additionally lacks rationale underpinning. That is, the Examiner acknowledged that Chen does not disclose applying a magnetic field at an angle approaching 45°, and although the Examiner relies on Honda for the use of a ring-type magnetic transducer head applying a magnetic field of about 0-45° (Final Act. 6-8), neither Chen nor Honda provide any indication that adjusting the thickness of the SUL layer to 6 Appeal2018---000889 Application 14/229,750 within the range in claim 21 would have been recognized to impact the magnetic properties to increase the perpendicular component of the magnetic field as required in claim 21. Regarding Futamato, we agree with Appellant that Futamoto does not remedy the deficiencies discussed above with respect to Chen and Honda. Futamoto discloses a perpendicular magnetic recording medium including three SUL layers for use with a single pole magnetic head. (Futamoto ,r,r 2, 8, 11, Fig. 1, Ref. No. 13, 15, 17.) As discussed above, the Examiner points to thickness of the SUL in Futamoto located underneath a perpendicular magnetization film in order to satisfy the thickness recited in claim 21. (Final Act. 12; Futamoto ,r,r 15, 16, Fig. 1 Ref. No. 17.) However, the arrangement of layers in Futamoto is different than in Chen, such that it is unclear why one of ordinary skill in the art would have looked to the particular thickness of SUL underneath the perpendicular magnetization film in Futamoto to inform the thickness of the SUL in Chen. ( Compare Chen Fig. 3 with Futamoto Fig. 1.) In this regard, the other SUL layers in Futamato have thicknesses on the order of the conventional SULs discussed in the Specification and Chen, on the order of 50 nm. (Futamoto ,r,r 31, 61, Fig. 1, Ref. No. 13, 15.) Thus, on this record, the Examiner's rejection relying on Futamoto for thicknesses of SUL layers recited in the claims is not based on sufficient rational underpinnings. Uwazumi is relied upon for optimizing the thickness of Chen's spacer layer (Final Act. 7) and also does not remedy the deficiencies of Chen, Honda, and Futamato. 7 Appeal2018---000889 Application 14/229,750 Claim 26 Claim 26 is similar to claim 21, but instead of reciting the thickness of the SUL layer, recites an interlayer stack thickness of "from about 56 nm to about 200 nm." Claim 26 recites "wherein a thickness of the SUL in combination with a distance of the SUL from the perpendicular layer corresponding to the thickness of the interlayer stack is sufficient to increase a perpendicular component of a magnetic field corresponding to a magnetic transducer head at an angle approaching 45° ." The Examiner's rejection of claim 26 likewise lacks sufficient rational underpinnings. That is, the Examiner has not provided sufficient support based on the evidence of record for the position that one of ordinary skill in the art, in adjusting the thickness of the SUL layer in combination with the interlayer stack thickness would have recognized the effect on the perpendicular component of a magnetic field corresponding to a magnetic transducer head as a result effective variable. In this regard, the Specification describes that a greater perpendicular component with a ring- type transducer head may be obtained "by positioning the SUL at a much greater distance ... than in conventional perpendicular media." (Spec ,r 37.) The Specification describes that "the use of interlayer stacks 5' with thicknesses as great as about 200 nm, as described above, enables obtainment of performance advantages (e.g., use of ring-type magnetic transducer heads) with perpendicular media designs including thicker, higher Mgt product SUL's 4'." (Spec. ,r 46 (emphasis omitted).) As argued by Appellant, the thicknesses of Chen's interlayer structure 4' (from about 4 to about 50 nm) and spacer layer 3A (from about 1 to about 5 nm) combined, range from 5-55 nm consistent with Chen's preference for 8 Appeal2018---000889 Application 14/229,750 single pole magnetic transducer heads. (Appeal Br. 15; Chen ,r,r 90, 94.) Chen's ranges, therefore, only potentially overlap at the lower end point of the range for the interlayer stack recited in claim 26 of about 56 nm. As discussed above, there is insufficient rationale to render obvious the SUL thickness of about 1 to 40 nm recited in the claims. Because the Specification describes that larger thicknesses of the interlayer structure layer are used with thicker SUL layers, on the order of 200 nm, there is insufficient rationale to support the position that the perpendicular component of a magnetic field corresponding to a magnetic transducer hear at an angle approaching 45° would be increased by combining the interlayer stack thicknesses of about 55 nm with SUL layers having conventional thicknesses as disclosed in Chen. As discussed above, there is no recognition in the prior art of record that the combination of SUL thickness and interlayer stack thickness would have been recognized as a result effective variable to increase the perpendicular component of the magnetic field as required in claim 26. The Examiner's reliance on Uwazumi does not remedy this deficiency as Uwazumi discloses that "[t]he thickness of the nonmagnetic alignment control layer 2 can be at least 3 nm, more preferably 5 nm or more for controlling the crystal alignment of the seed layer 3." (Uwazumi ,r 31 (emphasis omitted).) Uwazumi does not relate such thicknesses to the perpendicular component of a magnetic field and it is unclear whether such thicknesses would be of the magnitude necessary to increase such a perpendicular component of a magnetic field in conjunction with the thicknesses of the SUL layer disclosed in Chen. As a result, Uwazumi does 9 Appeal2018---000889 Application 14/229,750 not provide sufficient evidence to support the rationale for rejecting claim 26. Claim 31 Claim 3 1 recites "a means for increasing a perpendicular component of a magnetic field corresponding to a magnetic transducer head at angle approaching 45°." Appellant points to paragraph 50 of the Specification as providing support for this limitation. (Appeal Br. 9.) The Examiner does not provide any interpretation of this limitation in the course of rejecting the claims. (See generally Final Act. and Ans.) By use of the phrase "means for increasing a perpendicular component of a magnetic field," we are of the view that Appellant intended to invoke 35 U.S.C. § 112, 6th paragraph,4 as we do not understand this phrase to have a sufficiently definite meaning as the name for structure. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). Therefore, we interpret Appellant's claim 31 as limited to the structures expressly provided for in the Specification for increasing a perpendicular component of a magnetic field and equivalents thereof. See In re Lonardo, 119 F.3d 960,967 (Fed. Cir. 1987) (Holding that the Board correctly interpreted the claim element "means for releasably securing" as limited to a sandal with a cut-out heel portion when the specification provided that 4 The '750 Application claims to be a continuation of application 11/448,770, filed June 8, 2006. Accordingly, we refer to the pre-AIA statute. 10 Appeal2018---000889 Application 14/229,750 "[ a ]ny suitable means may be used to secure the device to the leg and foot of the patient. For example, ... use of a soft leather sleeve or sandal."). The Specification describes that a greater perpendicular component with a ring-type transducer head may be obtained "by fabricating the perpendicular media with a much thinner SUL than utilized in conventional perpendicular media, or by positioning the SUL at a much greater distance ... than in conventional perpendicular media." (Spec ,r 37 .) The Specification describes that in order to provide a greater perpendicular component, the magnetic field from the transducer head is "altered by the thin SUL 4' of the present invention." (Spec ,r,r 42, 50 (emphasis omitted).) The Specification describes that the SUL comprises a layer of a material 1 to about 40 nm thick and is vertically spaced apart by about 5 to 200 nm from the lower edge of the overlying perpendicular magnetic recording layer, which is a "key feature of the present invention." (Spec. ,r,r 43, 46, and 55.) In view of the above disclosure, we interpret the structure corresponding to the "means for increasing a perpendicular component." recited in claim 31 to be the combination of the thickness of the SUL layer, which may be between 1 and 40 nm, and the distance from the perpendicular recording layer corresponding to a thickness of the interlayer stack between 5 and 2 00 nm. As a result of this claim interpretation, we are of the view that based on this record, the Examiner did not provide sufficient rational underpinnings to support the position that claim 31 would have been obvious for the reasons discussed above with respect to claims 21 and 26. That is, the Examiner has not provided sufficient support for the position that one of ordinary skill in the art, in adjusting the thickness of the SUL layer in 11 Appeal2018---000889 Application 14/229,750 combination with the interlayer stack thickness would have recognized the effect on the perpendicular component of a magnetic field corresponding to a magnetic transducer head as a result effective variable. Accordingly, we reverse the Examiner's rejections of the claims because the Examiner has not provide sufficient rational underpinnings to support the rejections of independent claims 21, 26, and 31 as obvious over Chen, Honda, and Uwazumi (Rejection 1) or Chen, Honda, Uwazumi, and Futamoto (Rejection 3). We reverse the Examiner's rejection of the dependent claims as set forth in Rejection 2, which adds Futamoto to the combination of prior art in Rejection 1 in order to reject certain dependent claims, for the same reasons with respect to Rejections 1 and 3. DECISION We reverse the Examiner's decision rejecting claims 21--40. REVERSED 12 Copy with citationCopy as parenthetical citation