Ex Parte Pitcher et al

Patent Trial and Appeal Board

Feb 23, 2018

14013320 (P.T.A.B. Feb. 23, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/013,320 08/29/2013 Philip George Pitcher 430.17855010 4648
75742 7590
MRG/Seagate
c/o Mueting, Raasch & Gebhardt, P.A.
P.O. Box 581336
Minneapolis, MN 55458-1336
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
ptodocketing @ mrgs .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP GEORGE PITCHER, RICHARD T. GREENLEE, and
SAMI C. ANTRAZI
Appeal 2017-006509
Application 14/013,320
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a method of forming a layer. Claim 1 illustrates the
subject matter on appeal and is reproduced below:
1 Appellant is the Applicant, Seagate Technology, LLC, which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed October 31,
2016 (“App. Br.”),2.
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Application 14/013,320
1. A method of forming a layer, the method comprising:
providing a feedstock, the feedstock comprising a first
component and a second component;
ionizing at least part of the feedstock thereby forming a plasma,
wherein the plasma comprises constituents selected from:
the first component, derivatives of the first component,
ions of the first component, ions of derivatives of the first
component, the second component, derivatives of the
second component, ions of the second component, ions
of derivatives of the second component, or combinations
thereof, and
wherein the individual identities, individual ratios, total
quantities, or any combination thereof of the first and
second component in the feedstock can modulate the
makeup of the plasma;
forming a beam from the plasma; and
forming a layer having an average thickness from sub-
o
monolayer to about 20 A thick from the beam,
wherein the layer includes at least some portion of at
least the first or the second component.
App. Br. 9 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered May 17, 2016 (“Final Act.”), and maintains the rejections in
the Examiner’s Answer entered January 11, 2017 (“Ans.”):
I. Claims 1-5, 10-12, and 16-18 under 35 U.S.C. § 103 as
unpatentable over Veerasamy et al. (US 5,858,477, issued January 12,
1999);
II. Claims 6, 7, 9, 13-15, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Veerasamy in view of Mahoney et al. (US 6,086,962,
issued July 11, 2000); and
III. Claim 8 under 35 U.S.C. § 103 as unpatentable over Veerasamy
in view of Rabalais et al. (US 4,822,466, issued April 18, 1989).
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1-20 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Office Action, Answer, and below.
Rejection I
Appellant argues claims 1-5, 10-12, and 16-18 together on the basis
of independent claims 1,10, and 16, which Appellant argues as a group.
App. Br. 5-7. Therefore, we select claim 1 as representative, and decide the
appeal as to claims 1-5, 10-12, and 16-18 based on claim 1 alone.
37C.F.R. §41.37(c)(l)(iv).
Veerasamy discloses a thin film or protective layer “for use in the
production of magnetic recording media, as well as integrated circuits,
optics, machine tools, and a wide variety of additional industrial
applications.” Col. 1,11. 17-22; col. 2,11. 63-67. Veerasamy discloses that
“these coatings are smooth and continuous (pinhole-free) at very low
thicknesses, and provide a durable protective layer when deposited to a
thickness of less than 75 A, preferably being less than 50 A thick.” Col. 8,
11. 32-36. Veerasamy discloses that the protective layer is “ultrasmooth and
continuous at thicknesses of less than about 75 A, and will provide durable
recording media even at thicknesses of less than about 50 A.” Col. 4,11. 37-
40. Veerasamy also discloses that the protective layer is “generally in the
range between about 30 A and 70 A, which will allow the disk to meet
recording media industry durability and stiction test requirements.” Col. 8,
11. 48-50.
Veerasamy discloses that forming a layer utilizing deposition rates of
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between 2 and 12 A /sec and deposition times of between about 6 and 30 sec
provides a protective layer sufficient for recording media, and the Examiner
finds that these disclosures and would have suggested thicknesses within the
claimed range, such as about 12 A (a deposition rate of 2 A/sec for 6 sec).
Ans. 5-6; Veerasamy col. 12,11. 5-10. The Examiner concludes that the
method of claim 1 “would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention if the overlapping
portion of the thickness range disclosed by Veerasamy was selected because
overlapping ranges have been held to be a prima facie case of obviousness.”
Final Act. 3 (citing In re Wertheim, 541 F.2d 257 (CCPA 1976)).
Appellant argues that one of ordinary skill in the art would have
understood that as layers become thinner, they become non-continuous or
include pinholes that degrade performance. App. Br. 5. Appellant points
out that Veerasamy discloses that the layers described in the reference “are
smooth, and continuous (pinhole-free) at very low thicknesses, and provide a
durable protective layer. . .” Id. Appellant contends that “[t]he ‘range’
referred to by the [Examiner], ‘less than 50 A thick’ therefore must have a
lower limit” even though not explicitly indicated in the particular sentence of
Veerasamy where this range is discussed. Id. Appellant contends that the
“broadest range that Veerasamy can reasonably be considered as disclosing
is 30 A to 50 A,” and Veerasamy therefore does not disclose or suggest a
layer having a thickness from sub-monolayer to about 20 A2, as recited in
claim 1. App. Br. 5-7.
However, as discussed above, Veerasamy explicitly discloses that the
2 Appellant’s Specification indicates that a “sub-monolayer” thickness is a
thickness “less than a monolyer of the material.” ^ 75.
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protective layer described in the reference is ultrasmooth and continuous at
thicknesses of less than about 75 A, and provides a durable protective layer
at a thickness of less than 75 A, preferably less than 50 A. It is well-settled
that even a slight overlap between a prior art range and a claimed range
establishes a prima facie case of obviousness of the claimed range. In re
Peterson, 315 F.3d 1325, 1329-330 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of obviousness .
. . .”). Accordingly, Veerasamy’s disclosure of a layer having a thickness of
less than 50 A renders the layer having a thickness of sub-monolayer to
about 20 A recited in claim 1 prima facie obvious.
In addition, as also discussed above, Veerasamy discloses that the
layer described in the reference can be used for a wide variety of industrial
applications, including production of magnetic recording media, integrated
circuits, optics, and machine tools. Although the less than 50 A layer
thickness disclosed in Veerasamy must have a lower limit as Appellant
points out, one of ordinary skill in the art would have understood that the
lower thickness limit would vary with specific applications, and one of
ordinary skill in the art would have determined a thickness that would suit a
particular desired purpose. In view of Veerasamy’s disclosure of a layer
having a thickness of less than 50 A that is ultrasmooth, continuous
(pinhole-free), and durable, one of ordinary skill in the art reasonably would
have understood that although Veerasamy discloses that a protective layer
thickness of between about 30 A and 70 A allows a disk to meet recording
media industry durability and stiction test requirements, a thickness of less
than 30 A, such as about 20 A as recited in claim 1, would be suitable for
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other applications. Contrary to Appellant’s arguments, the broadest range
disclosed (and suggested) in Veerasamy is therefore not 30 A to 50 A.
Appellant further argues that Veerasamy’s statement that the
protective layer “is generally in the range [of] between about 30 A and 70 A,
which will allow the disk to meet recording media industry durability and
stiction test requirements” would have led one of ordinary skill in the art “to
think that anything below 30 A would not in fact be useful for the recording
media industry,” which is evidenced by Veerasamy’s experimental examples
where the thinnest layer made was 40 A ±10. App. Br. 6. Appellant argues
that Veerasamy thus teaches away from a thickness of less than 30 A. Id.
However, we note initially that Veerasamy’s disclosures are not
limited to the experimental examples referred to by Appellant, and the
entirety of Veerasamy’s disclosures must be evaluated for what they would
have fairly suggested to one of ordinary skill in the art. In re Fracalossi,
681 F.2d 792, 794 n.l (CCPA 1982) (A prior art reference’s disclosure is not
limited to its examples.); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of
the disclosures in a prior art reference “must be evaluated for what they
fairly teach one of ordinary skill in the art.”).
The “mere disclosure of alternative designs does not teach away.” In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also Meiresonne v.
Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that
‘merely expresses a general preference for an alternative invention but does
not criticize, discredit, or otherwise discourage investigation into’ the
claimed invention does not teach away.” (quoting Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Rather, teaching away
requires “clear discouragement” from implementing a technical feature. In
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reEthicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Veerasamy’s disclosure that a protective layer thickness of between
about 30 A and 70 A allows a disk to meet recording media industry
durability and stiction test requirements does not criticize or discredit, and
would not have otherwise discouraged, one of ordinary skill in the art from
forming a layer having a thickness of less than 30 A for applications other
than recording media, in view of Veerasamy’s disclosure of the suitability of
thickness of less than 50 A for protective layers used in a wide variety of
industrial applications. Accordingly, contrary to Appellant’s arguments,
Veerasamy does not teach away from a layer thickness of less than 30 A.
Appellant argues that Veerasamy’s disclosure of deposition times of
between about 6 and 30 seconds “are noted with respect to the deposition
rate range of about 8 to 9 A per second, not the broader range of between 2
and 12 A per second,” and Appellant contends that this interpretation of
Veerasamy’s disclosures is “evidenced by the Experimental portion of
Veerasamy.” Reply Br. 2-3.
The entirety of the disclosure at issue in Veerasamy relied upon by the
Examiner for suggesting a layer thickness of 12 A (discussed above) states:
Carbon deposition rates of between 2 and 12 A per second can
be provided by plasma beam source deposition methods within
the above operating ranges, ideally being between about 8 and 9
A per second to provide the highest quality films. Deposition
times of between about 6 and 30 seconds are generally used at
these rates to provide a sufficient protective coating for magnetic
recording media.
Col. 12,11. 5-11. The phrase “these rates” in this disclosure reasonably
refers to both rates of between 2 and 12 A and rates of between about 8 and
9 A per second, and the experimental examples cited by Appellant do not
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definitively clarify how one of ordinary skill in the art would have
interpreted this phrase by virtue of exemplifying, rather than limiting,
Veerasamy’s invention. Regardless of how one of ordinary skill in the art
would have understood the above disclosure in Veerasamy, as discussed
above, Veerasamy’s disclosure of a layer having a thickness of less than 50
A that is ultrasmooth, continuous (pinhole-free), and durable renders the
layer having the range of thicknesses recited in claim 1 prima facie obvious.
Because Appellant does not demonstrate the criticality of the recited range,
Appellant’s arguments are unpersuasive of reversible error in the Examiner’s
rejection. App. Br. 5-7; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (indicating that in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.). We accordingly sustain the Examiner’s rejection of claims
1-5, 10-12, and 16-18 under 35 U.S.C. § 103.
Rejections II and III
To address these rejections, Appellant relies on the arguments made
for Rejection I (discussed above), and argues that the additional reference
applied in Rejection II (Mahoney) fails to cure the deficiencies of
Veerasamy.3 App. Br. 7. Because we are unpersuaded of reversible error in
the Examiner’s rejection of claim 1 for the reasons discussed above,
Appellant’s position as to these rejections is also without merit.
3 Appellant does not address the additional reference applied in Rejection III
(Rabalais). App. Br. 7.
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DECISION
We affirm the Examiner’s rejections of claims 1-20 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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