Ex Parte SAITO et al

Patent Trial and Appeal Board

Sep 11, 2018

14514303 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/514,303 10/14/2014 CHIYOSAITO
146019 7590 09/13/2018
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
035905-5001 9933
EXAMINER
LIN,JAMES
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIYO SAITO,
TOKICHIRO SATO, and TAKENORI KAJIWARA
Appeal2017-011173
Application 14/514,303
Technology Center 1700
Before GEORGE C. BEST, DONNA M. PRAISS and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-11. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appeal2017-011173
Application 14/514,303
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method for manufacturing a magnetic disk
comprising: a magnetic recording layer formation step of
forming at least a granular magnetic recording layer on a disk
substrate; and an auxiliary recording layer formation step of
forming an auxiliary recording layer on the magnetic recording
layer, wherein the auxiliary recording layer containing 0.1 to 3
mol% oxygen is formed in the auxiliary recording layer
formation step.
Appellant1 requests review of the following rejections from the
Examiner's Final Office Action (App. Br. 5):
I. Claims 1-3 and 5-11 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Sonobe (WO 2008/099859 Al, published
August 21, 2008, and relying on US 2010/0021768 Al to Sonobe, published
January 28, 2010, as the English equivalent) and Kawada (US 2004/0110034
Al, published June 10, 2004).
II. Claim 4 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Sonobe, Kawada, and Ayama (US 2010/0028560 Al,
published February 4, 2010).
Appellant presents arguments for claims 1 and 5, but does not present
separate arguments for claims 2, 3, 6-11, and separately rejected claim 4.
See generally App. Br. Accordingly, we select independent claim 1 as
representative of the subject matter before us on appeal. Claims 2--4 and 6-
11 stand or fall with claim 1. Claim 5 will be addressed separately.
1 WD MEDIA, LLC is the Applicant/ Appellant and is also identified as the
real party in interest. App. Br. 2.
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Application 14/514,303
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejections of claims 1--4
and 6-11 for the reasons presented by the Examiner. However, we
REVERSE the Examiner's prior art rejection of claim 5 for the reasons
presented by Appellant. We add the following for emphasis.
Claims 1--4 and 6--11
We AFFIRM.
Claim 1 is directed to a method for manufacturing a magnetic disk
comprising an auxiliary recording layer containing 0.1 to 3 mol% oxygen.
According to the Specification, such an auxiliary recording layer reduces
noise in a magnetic disk comprising a granular structure. Spec. 3, 5.
The Examiner finds Sonobe discloses a method for manufacturing a
magnetic disk by forming at least a granular magnetic recording layer on a
disk substrate and forming an auxiliary recording layer on the magnetic
recording layer. Final Act. 2-3. The Examiner finds Sonobe is silent as to
the oxygen content of the auxiliary recording layer. Id. at 3. The Examiner
finds Kawada discloses the use of an oxide in the amount of 1-15 mol % on
a recording layer of a magnetic disk to make a perpendicular magnetic
recording medium having high recording density and excellent read-write
characteristics, with lower media noise. Final Act. 3; Kawada Abst., ,r,r 6-9.
The Examiner determines that it would have been obvious to a person
having ordinary skill in the art to modify the auxiliary recording layer of
Sonobe by adding oxygen for the reasons given by Kawada. Final Act. 3.
Appellant argues that the claimed invention results in improved bit
error rates and there is no evidence demonstrating that the bit error rates may
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Application 14/514,303
equate to high recording density or read-write characteristics. App. Br. 10.
Appellant further argues that Kawada does not require oxygen and, thus,
Kawada is silent as to whether ( or how) the oxygen content in its magnetic
layer would affect the high recording density or read-write characteristics.
Id.
We are unpersuaded of Examiner error. Appellant's argument is
premised on the prior art addressing a different problem than the one
addressed by the invention. However, the reason or motivation to modify
the reference may often suggest what the inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggests the combination to achieve the same advantage or result
discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (motivation question arises in the context of the general problem
confronting the inventor rather than the specific problem solved by the
invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not
see the identical problem addressed in a prior art reference to be motivated
to apply its teachings."). Moreover, the Specification discloses that the
invention is directed to reducing noise in the magnetic disk as represented by
the bit error rate data through the addition of oxygen to the auxiliary
recording layer. Spec. 2-3 and 28-29. Kawada is also directed to reducing
noise in magnetic disks through the addition of oxygen to one of the
magnetic recording layers. Kawada ,r,r 4, 6-9. Thus, Appellant has not
adequately established that the claimed invention and Kawada do not
address the same problem.
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Application 14/514,303
Appellant argues that data summarized on page 28 of the
Specification show unexpected results in improved bit error rates for the
claimed oxygen content compared to Sonobe as the closest prior art. App.
Br. 6-10. Appellant's contention of unexpected results is based on the
disclosed auxiliary recording layer of Comparative Example 1-1 (Co-20Cr-
19Pt-3B) as corresponding to Sonobe's auxiliary recording layer (CoCrPtB).
App. Br. 6-7; Sonobe ,r 124. According to Appellant, the data show
inventive Examples 1-1 to 1-6 result in a significant difference in the bit
error rate when compared to Comparative Example 1-1. App. Br. 7-10.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F .2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After weighing Appellant's evidence in support of patentability,
including the comparative data in the Specification, we agree with the
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Application 14/514,303
Examiner's determination that a preponderance of the evidence weighs in
favor of obviousness. Ans. 2-3.
We first note that Appellant has not adequately established
Comparative Example 1-1 as an embodiment of Sonobe' s auxiliary
recording layer. Comparative Example 1-1 is directed to a specific
composition (Co-20Cr-19Pt-3B) for the auxiliary recording layer while
Sonobe discloses CoCrPtB as a broad category for its auxiliary recording
layer. Appellant directs us to no portion of Sonobe disclosing Co-20Cr-
19Pt-3B as a desired material for its invention. Nor does Appellant direct us
to any other objective evidence in support of this contention. Thus, it is not
clear that the showing distinguishes the claimed invention from the closest
prior art.
Further, there is no recognition in the Specification that the difference
in bit error rates is unexpected. The Specification merely discloses that the
bit error rates for the inventive examples were relatively lower. Spec. 29.
Moreover, the data principally tests the same composition (Co-20Cr-
19Pt-3B) in various oxide containing forms. Appellant has not adequately
explained why this single composition is representative of the broad scope of
auxiliary recording layer compositions claimed. In addition, the data does
not test the lower range of oxygen content. For example, there is no
showing that there is a significant difference in the bit error rate for an
auxiliary recording layer having an oxygen content of 0.1 mol% when
compared to Comparative Example 1-1. Absent evidence to the contrary,
one skilled in the art would have expected the bit error rate to remain
essentially unchanged for an auxiliary recording layer having an oxygen
content of 0.1 mol% in such a comparison.
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Thus, on this record, Appellant has not adequately explained why the
evidence shows the improvement would have been unexpected by one of
ordinary skill in the art and that the testing is reasonably commensurate in
scope with the claims.
Accordingly, we affirm the Examiner's prior art rejections of claims
1--4 and 6-11 for the reasons presented by the Examiner and given above.
Claim 5
We REVERSE.
Claim 5 requires the granular magnetic recording layer is formed of
two or more layers.
The Examiner finds Sonobe discloses forming a magnetic layer on a
miniaturization promoting layer. Ans. 4 ( citing Sonobe ,r,r 7 6-79). The
Examiner determines that this structure in Sonobe reads on the multi-layer
structure of claim 5. Ans. 4.
We agree with Appellant that there is reversible error in the
Examiner's determination of obviousness for this claim.
As argued by Appellant, Sonobe only discloses a single magnetic
layer. App. Br. 11-12; Sonobe Figure l(a) (layer 20). Moreover, as also
argued by Appellant, both layers of the claimed invention are magnetic
recording layers. App. Br. 12; see Application Figure 4 (layers 122c and
122d). While the Examiner relies on Sonobe's miniaturization promoting
layer as part of a two-layer structure, Sonobe describes this layer as
nonmagnetic. Sonobe ,r 76. Therefore, the Examiner does not adequately
explain how Sonobe' s structure is a magnetic recording layer of two or more
layers.
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Accordingly, we reverse the Examiner's prior art rejection of claim 5
for the reasons presented by Appellant and given above.
ORDER
The Examiner's prior art rejections of claims 1--4 and 6-11 under
35 U.S.C. § 103(a) are affirmed.
The Examiner's prior art rejection of claim 5 under 35 U.S.C.
§ 103(a) is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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