Ex Parte Nolan et al

Patent Trial and Appeal Board

Oct 31, 2018

14229750 (P.T.A.B. Oct. 31, 2018)

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.)
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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.)
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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
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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.
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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
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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.
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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
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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
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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.
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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
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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
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