Ex Parte Uchida

Patent Trial and Appeal Board

Apr 12, 2017

13488690 (P.T.A.B. Apr. 12, 2017)

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.
13/488,690 06/05/2012 Shinji Uchida FEC 421 6539
23995 7590
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
EXAMINER
CHAU, LISA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
04/14/2017 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):
firm @ rabinberdo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINJIUCHIDA
Appeal 2016-005454
Application 13/488,6901
Technology Center 1700
Before KAREN M. HASTINGS, BRIAN D. RANGE 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—5. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as Fuji Electric Co, Ltd. App. Br. 2.
Appeal 2016-005454
Application 13/488,690
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A magnetic recording medium for use on a
nonmagnetic substrate, comprising:
a magnetic recording layer; and
a soft magnetic underlayer that has a stacked structure
and that includes a soft magnetic layer on a nonmagnetic
substrate side, an exchange coupling control layer, and a soft
magnetic layer on a magnetic recording layer side,
wherein the soft magnetic layer on the magnetic
recording layer side has a higher relative permeability
characteristic frequency than the soft magnetic layer on the
nonmagnetic substrate side, and the soft magnetic layer on the
nonmagnetic substrate side has a higher relative permeability
than the soft magnetic layer on the magnetic recording layer
side,
wherein the relative permeability characteristics
frequency is the frequency at which the relative permeability is
reduced by 50% compared with the relative permeability at 10
MHz, and
wherein the exchange control coupling layer is in contact
with both the soft magnetic layer on the nonmagnetic substrate
side and the soft magnetic layer on the magnetic recording layer
side.
Appellant requests review of the Examiner’s rejection of claims 1—5
rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as unpatentable over Matsumoto (US 2007
/0087226 Al, published April 19, 2007). Final Act. 3; App. Br. 3.
2
Appeal 2016-005454
Application 13/488,690
Appellant presents arguments for independent claim 1 and dependent
claim 5 only. See Appeal Brief, generally. Accordingly, we select claim 1
as representative of the subject matter before us on appeal. Claims 2-4
stand or fall with claim 1. Claim 5 will be addressed separately.
OPINION
Prior Art Rejection under 35 U.S.C. § 102(b)
Claim 1
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of representative claim 1
for the reasons presented by the Examiner. We add the following for
emphasis.
Claim 1 is directed to a magnetic recording medium for use in a hard
disk drive that stores data using perpendicular recording. App. Br. 2—3.
The Examiner found Matsumoto describes a magnetic recording
medium for use on a nonmagnetic substrate having a magnetic recording
layer and a soft magnetic underlayer (SUL), where the structure of the SUL
comprises two soft magnetic layers in contact with a respective side of an
exchange coupling control layer. Final Act. 3; Matsumoto 29, 30, 33, 40.
The Examiner found Matsumoto discloses the soft magnetic layer on the
nonmagnetic substrate side can contain 86—100 at. % of a cobalt and iron
(CoFe) magnetic material while the soft magnetic layer on the recording
layer side can contain 60-85 at. % of a CoFe magnetic material. Final Act.
3; Matsumoto 129. That is, the Examiner found that Matsumoto teaches
one soft magnetic layer as having more magnetic material than the other, as
claimed, and determined Matsumoto’s soft magnetic layers possessed the
3
Appeal 2016-005454
Application 13/488,690
claimed higher relative permeability characteristic frequency.2 Thus, the
Examiner found Matsumoto anticipates the subject matter of independent
claim 1. Final Act. 3—5.
Appellant argues Matsumoto’s SUL does not inherently possess the
relative permeability characteristic frequencies of the claimed SUL because
the Matsumoto embodiment relied upon by the Examiner has an SUL
structure different from the claimed SUL structure. App. Br. 4—8;
Matsumoto Tflf 29-30. According to Appellant, Matsumoto teaches away
from the claimed structure by disclosing it is desirable to use a laminated
structure in at least the portion of the SUL above the nonmagnetic layer
when using an exchange control layer. App. Br. 4—5; Matsumoto 130.
Thus, Appellant argues that Matsumoto’s disclosed structure is considerably
different from the claimed structure and, as a result, cannot be presumed to
inherently have the same physical characteristics. App. Br. 4, 6.
We find these arguments unavailing for the reasons provided by the
Examiner. Appellant’s arguments are, at best, premised on a preferred
embodiment disclosed by Matsumoto. Matsumoto 130. It is well settled
that a reference may be relied upon for all that it discloses, including non­
preferred embodiments. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)). The disclosed examples and preferred embodiments do
2 The Specification associates the relative permeability characteristic
frequencies of the respective soft magnetic layers, in part, to the content of
magnetic material contained in these layers. Spec. 11—12.
4
Appeal 2016-005454
Application 13/488,690
not constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
As noted by the Examiner, Matsumoto discloses insertion of a
nonmagnetic layer in the SUL to couple upper and lower soft magnetic
layers. Final Act. 3; Ans. 5; Matsumoto 130. While Matsumoto describes
desirable embodiments for soft magnetic layers to be used in conjunction
with a nonmagnetic layer (Matsumoto 130), Appellant has directed us to no
portion of Matsumoto that contravenes the broader disclosure of the
reference. Thus, Appellant has not distinguished the claimed magnetic
recording medium from the magnetic recording medium described by
Matsumoto.
Claim 5
Claim 5 recites the specific content of magnetic material for the two
soft magnetic layers as volume percentages.
As noted above, the Examiner found Matsumoto discloses the soft
magnetic layer on the nonmagnetic substrate side can contain 86—100 at. %
of a CoFe magnetic material while the soft magnetic layer on the recording
layer side can contain 60-85 at. % of a CoFe magnetic material. Final Act.
3; Matsumoto 129.
Appellant argues Matsumoto does not teach or suggest the claimed
compositions for the respective soft magnetic layers and that the Examiner’s
contention that Matsumoto’s atomic percentages meet the claimed volume
percentages is unsupported by evidence. App. Br. 8.
5
Appeal 2016-005454
Application 13/488,690
We are unpersuaded by these arguments as well. The Examiner
reasoned that Matsumoto’s proportion of the CoFe magnetic material in the
soft magnetic layer on the nonmagnetic substrate side is 85 at. % or more
meets the higher end of the claimed proportion of 82.5 vol. % or more as a
value of 100 at. % reads into 100 vol. %. Ans. 8—9. The Examiner also
reasons, for the soft magnetic layer on the magnetic recording layer side, a
low value of 60 at. % will read upon the claimed less than 82.5 vol. %. Id. at
9. The Examiner’s position in the Answer is unchallenged by Appellant.3
See Reply Brief, generally.4
3 In any event, Ames Laboratory provides an Excel spreadsheet (“Vol. %”
tab of Excel 2008 version) that converts volume percent to atomic percent
available for downloading at
https://www.ameslab.gOv/mpc/FAQ#convertatom. This spreadsheet shows
that the volume percent for iron (Fe) and cobalt (Co) are essentially of the
same magnitude as the atomic percent (iron: 20 vol. %=21.47 at. %; Co: 13
vol. %=14.97 at. %). Based on this, it appears that the Examiner is factually
correct that the atomic percentages for the magnetic material in Matsumoto
meet the claimed volume percentages for the same material.
4 In the Reply Brief, Appellant argues the Examiner relied on two additional
references not of record (Nolan (US 2011/0043939 Al, published February
24, 2011) and Zhou (US No. 2007/0217074 Al, published September 20,
2007)) in responding to the Appeal Brief without affording Appellant an
opportunity to address these references in the context of the rejection
presented by the Examiner. Reply Br. 4. The Examiner relied upon these
references as evidentiary references in rebuttal to Appellant’s arguments
concerning the magnetic moments of the upper and lower soft magnetic
layers. App. Br. 8; Ans. 8. We note, however, that Appellant subsequently
addressed these additional references in the Reply Brief by stating that they
do not support the Examiner’s rejection. Reply Br. 4—5. That is, Appellant
relied on the Reply Brief for an opportunity to address the additionally cited
references.
6
Appeal 2016-005454
Application 13/488,690
Accordingly we affirm the Examiner’s rejections of claims 1—5 under
35 U.S.C. § 102 (b) for the reasons presented by the Examiner and given
above.
Prior Art Rejection under 35 U.S.C. § 103(a)
Because anticipation is the epitome of obviousness, we also sustain
the Examiner’s prior art rejections under 35 U.S.C. § 103. See In re Baxter
TravenolLaboratories, 952 F.2d 388, 391 (Fed. Cir. 1991); In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982). Furthermore, to the extent one may need
to select the appropriate layers and ranges, the obviousness rejection is well
founded.
ORDER
The Examiner’s prior art rejections of claims 1—5 under 35 U.S.C.
§§ 102(b) and 103(a) are affirmed.
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)(1).
AFFIRMED
7