Ex Parte UCHIDADownload PDFPatent Trial and Appeal BoardFeb 2, 201612873249 (P.T.A.B. Feb. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/873,249 08/31/2010 23995 7590 02/04/2016 Rabin & Berdo, PC 1101 14TH STREET, NW SUITE 500 WASHINGTON, DC 20005 FIRST NAMED INVENTOR Shinji UCHIDA 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. FEC-314 4932 EXAMINER ANDERSON, SARAH ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 02/04/2016 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 SHINJI UCHIDA Appeal2014-006236 Application 12/873,249 Technology Center 1700 Before BRADLEY R. GARRIS, TERRY J. OWENS, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. Appeal2014-006236 Application 12/873,249 DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claim 1. Claim 1 is the only pending claim. We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we REVERSE. BACKGROUND Application 12/873,249 relates to a magnetic recording medium manufacturing method. Spec. i-f 1. Claim 1 is reproduced below: 1. A method of manufacturing a magnetic recording medium, compnsmg: forming a continuous magnetic recording layer on a non-magnetic substrate; forming a mask layer by applying a resist material on the magnetic recording layer; forming alternating concave and convex portions in the mask layer, having step portions marking boundaries between the convex and concave portions each with a taper angle; after said forming concave and convex portions, varying a taper shape associated with the taper angle based on a settling time; and altering magnetic characteristics of portions of the magnetic recording layer corresponding to the concave portions by ion implantation, or by exposure to an activated halogen-containing reactive gas, via the mask layer, so as to form a separating portion magnetically separating magnetic portions of the magnetic recording layer located at positions corresponding to the convex portions of the mask layer; wherein the resist material is an organic spin-on-glass (SOG) resist including a siloxane resin, and the taper angle is set between 66 degrees and 88 degrees, by allowing the resist material to settle for a period of time in the range of 10 minutes to 24 hours between said forming concave and convex portions and said altering. 1 Appellant identifies the real party in interest as Fuji Electric Device Technology Co., Ltd. App. Br. 3. 2 Appeal2014-006236 Application 12/873,249 THE REJECTION The Examiner rejects claim 1 pursuant to 35 U.S.C. § 103(a) as unpatentable over Fukushima et al., W0/2008/069082 Al, published June 12, 2008 (hereinafter, "Fukushima") and Iwabuchi et al., US 2007/0134916 Al, published June 14, 2007 (hereinafter, "Iwabuchi"). ANALYSIS We reverse the rejection. We concur with Appellant's conclusion that the Examiner erred in finding that the combination of references teaches or suggests the recited limitation of "varying a taper shape associated with the taper angle based on a settling time" where "the taper angle is set between 66 degrees and 88 degrees, by allowing the resist material to settle for a period of time in the range of 10 minutes to 24 hours between said forming concave and convex portions and said altering." In particular, the Examiner acknowledges that Fukushima lacks this element. Non-final Act. 3--4. The Examiner attempts to cure this omission by explaining that Iwabuchi demonstrates a "known property (deformation or tapering) of siloxane resin material, a material already used by Fukushima in a method to make a magnetic recording medium as in the instant invention." Ans. 3. Fukushima and Iwabuchi lack, however, any suggestion that "allowing the resist material to settle" would be advantageous in the context of manufacturing a magnetic recording medium. To the contrary, Fukushima accepts a ninety degree taper angle (no settling), encourages preventing the edge of the mask layer from "sagging," and encourages curing to "allow[] the shape of the stamp 5 to be accurately transferred to the resist layer 4." Fukushima, cols. 13: 18-27; 14: 1-2; 17:23-18:2. Meanwhile, Iwabuchi laments that siloxane compositions "do not have a 3 Appeal2014-006236 Application 12/873,249 straight wall profile" and that lack of "preservation stability ... causes a serious problem that a film thickness varies when the film is actually used," albeit in a context other than that of magnetic recording mediums. I wabuchi iT 19. Because neither Fukushima or I wabuchi teach the recited step of allowing settling for ten minutes to 24 hours and because the record does not establish that one of ordinary skill in the art would have had an apparent reason for allowing settling in the process of Fukushima or establish the step is no more than the predictable use of prior art elements according to established functions, see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), the Examiner has not provided an adequate factual basis to support a prima facie case of obviousness of claim 1. See In re Warner, 3 79 F .2d 1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must rest on a factual basis"). DECISION/ORDER For the above reasons, the rejection under 35 U.S.C. § 103(a) of claim 1 over Fukushima and I wabuchi is reversed. It is ordered that the Examiner's decision is reversed. REVERSED cdc 4 Copy with citationCopy as parenthetical citation