Ex Parte Wang et al

Patent Trial and Appeal Board

Feb 25, 2019

13844703 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/844,703 03/15/2013
73462 7590 02/27/2019
Hall Estill Attorneys at Law
(Seagate Technology LLC)
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
FIRST NAMED INVENTOR
Chun Wang
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.
STL16530 5234
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
danderson@hallestill.com
okcipdocketing@hallestill.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN WANG, CONNIE LIU, THOMAS P. NOLAN, and
KUEIR-WEEI CHOUR
Appeal2017-005880
Application 13/844,703
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1-15 and 21-25. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appellant is the Applicant, "Seagate Technology LLC" (Application
Data Sheet filed March 15, 2013, 5), which, according to the Brief, is the
real party in interest (Appeal Brief filed July 21, 2016 ("Appeal Br."), 1.
2 Appeal Br. 4--17; Reply Brief filed February 21, 2017 ("Reply Br."), 2-7;
Final Office Action entered August 26, 2015 ("Final Act."), 2-13;
Examiner's Answer entered December 21, 2016 ("Ans."), 2-13.
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I. BACKGROUND
The subject matter on appeal relates generally to an apparatus
comprising a magnetic layer that is supported by a substrate and includes,
inter alia, a segregation enhancement material adapted to enhance
segregation of the non-magnetic material into grain boundaries within the
layer at an elevated, moderate energy level (Specification filed March 15,
2013 ("Spec."), 1, 11. 4--8). Representative claim 1 is reproduced from the
Claims Appendix to the Appeal Brief, as follows:
1. An apparatus comprising:
a magnetic layer supported by a substrate, the magnetic layer
comprising a magnetic material, a non-magnetic material,
a single oxide characterized as a second non-magnetic
material, and an energy assisted segregation material
adapted to enhance segregation of the non-magnetic
material into grain boundaries within the layer at an
elevated, moderate energy level.
( Appeal. Br. 18 ( emphasis added).)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains four rejections (Rejections A-D)
and, in the Examiner's Answer, adds a fifth rejection (Rejection E), 3 all
entered under various pre-AIA statutory provisions, as follows:
A. Claims 21-25 under 35 U.S.C. § 112, ,r 1, as failing to comply
with the written description requirement; 4
3 In response to the Examiner's new ground of rejection, the Appellant
requests that the appeal be maintained (Reply Br. 1). See 37 C.F.R.
§ 4I.39(b)(2).
4 Claim 4 was also rejected on this ground in the Final Action, but the
rejection of this claim was subsequently withdrawn in the Examiner's
Answer (Ans. 3).
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B. Claims 3, 8, 9, 21, and 23 under 35 U.S.C. § 112, ,r 2, as
indefinite;
C. Claims 1-3, 6-15, 21, and 23-25 under 35 U.S.C. § I02(b) as
anticipated by Wu et al. 5 ("Wu");
D. Claims 4, 5, and 22 under 35 U.S.C. § I03(a) as unpatentable
over Wu in view of Koda et al. 6 ("Koda"); and
E. Claims 1-3, 6-15, and 23-25 under 35 U.S.C. § I03(a) as
unpatentable over Wu.
(Ans. 2-13; Final Act. 2-13.)
III. DISCUSSION
Rejection A. Claims 21 and 22 recite:
21. A perpendicular data recording medium comprising:
a substrate;
a soft underlayer supported by the substrate;
an ECC+CGG recording structure supported by the soft
underlayer comprising a CGC layer and at least one
granular layer, the CGC layer comprising a first portion of
magnetic material, a first portion of non-magnetic material
and a first portion of an energy assisted segregation
material adapted to enhance segregation of the non-
magnetic material into grain boundaries within the CGC
layer at a first elevated, moderate energy level, the at least
one granular layer comprising a second portion of the
magnetic material, a second portion of the non-magnetic
material, a second non-magnetic material comprising an
oxide, and a second portion of the energy assisted
segregation material adapted to enhance segregation of the
non-magnetic material in the at least one granular layer
5 US 2012/0026627 Al, published February 2, 2012.
6 US 2003/0235714 Al, published December 25, 2003.
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into grain boundaries within the layer at a second elevated,
moderate energy level.
22. The perpendicular data recording medium of claim 21,
wherein the first portion of the energy assisted segregation
material in the CGC layer is at a first concentration and the
second portion of the energy assisted segregation material in the
at least one granular layer is at a different second concentration.
(Appeal Br. 21-22; emphases added.)
With respect to claim 21, the Examiner finds that the recited
"ECC+CGG" ( emphasis added) recording structure is not supported by the
disclosure as originally filed (Final Act. 5). With respect to claim 22, the
Examiner finds that the claim's wherein clause limitations (i.e., "wherein the
first portion of the energy assisted segregation material in the CGC layer is
at a first concentration and the second portion of the energy assisted
segregation material in the at least one granular layer is at a different second
concentration") are not supported by the disclosure as originally filed (id. at
5---6).
The Appellant contends that the rejection as entered against claim 21
is improper because claim 21 's recitation "ECC+CGG" ( emphasis added)
contains "an inadvertent error that is clearly a typographical misprint, as is
evident by other pending claims in the application including claim 3 which
correctly states 'ECC+CGC"' (Appeal Br. 7 (emphasis added)). As for
claim 22, the Appellant contends that the wherein clause limitations are
supported by the original disclosures that "different layers can be provided
with different concentrations of the [energy assisted segregation material]"
(id. at 7-8).
We agree with the Appellant as to both claims. Consistent with the
Appellant's position, one skilled in the relevant art would understand from
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reading claim 21 in its entirety that "CGG" (when read in context with other
parts of the Specification including claim 3) contains a typographical error
and should actually read "CGC" as recited elsewhere in the claim. Hence,
the typographical error, which is readily discernible as an inadvertent error
by one skilled in the relevant art, has no effect on the claimed subject matter
or its scope. 7 Therefore, it cannot constitute a reasonable basis for finding
insufficient written description for the claimed subject matter. Cf Koito
Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004)
("A change to correct an error is not considered new matter if 'one skilled in
the art would appreciate not only the existence of an error in the
specification but what the error is."') (quoting In re Oda, 443 F.2d 1200,
1206 (CCPA 1971)).
As for claim 22, the Specification describes, for example, that the
amount of segregation enhancement material may be tuned or changed
during different stages of the deposition so that greater and/or lesser amounts
are provided (Spec. 7, 1. 28-8, 1. 11). In addition, the Specification states
that boron, which is disclosed as a segregation enhancement material (id. at
4, 11. 26-29; claim 2), may be added to the CGC layer or to a granular layer
(id. at 11, 11. 11-14). These disclosures would have reasonably conveyed to
one skilled in the relevant art that the inventors had possession of the subject
matter recited in claim 22 in which the first portion of an energy assisted
segregation enhancement material in the CGC layer differs from the second
portion of the energy assisted segregation enhancement material in the
granular layer.
7 At most, an objection to the error in the claim may be appropriate. Indeed,
the Appellant offers to correct the error by amendment (Appeal Br. 7).
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For these reasons, we do not sustain Rejection A.
Rejection B. Regarding claim 3, the Examiner states that "the second
magnetic layer" lacks antecedent basis (Final Act. 6). Regarding claims 8
and 9, the Examiner states that "the oxide" lacks antecedent basis (id.).
Regarding claim 21, both occurrences of "'the non-magnetic material' in
lines 7-8 and 13 [ sic, Appeal Br. 21, claim 21, 11. 8 or 13-14 ]" lack
antecedent basis (Final Act. 6). Regarding claim 23, the Examiner states
that "the magnetic material" lacks antecedent basis (id. at 7).
The Appellant disputes the rejection as to each of these claims
(Appeal Br. 8-9). According to the Appellant, one skilled in the relevant art
would perceive no ambiguity as to what the various terms mean (id. at 8).
We agree with the Appellant as to claims 3, 8, and 9 but not as to
claims 21 and 23. Our reasons follow.
1. Claim 3
Claim 3 recites, in relevant part: "the apparatus further comprises a
second non-oxide based magnetic layer of the ECC+CGC recording
structure, the second magnetic layer characterized as .... " (Appeal Br. 18).
One skilled in the relevant art would understand that "the second magnetic
layer" refers to the immediately-preceding "second non-oxide based
magnetic layer" because the "second non-oxide based magnetic layer" is the
only second magnetic layer recited in the claim. In re Skvorecz, 580 F.3d
1262, 1269 (Fed. Cir. 2009) ("'[T]he failure to provide explicit antecedent
basis for terms does not always render a claim indefinite."') ( quoting MPEP
§ 2173.0S(e)).
Therefore, we do not sustain the rejection maintained against claim 3.
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2. Claims 8 and 9
Claims 8 and 9, which depend from claim 1, recite "the oxide"
(Appeal Br. 19). The only oxide recited previously is in claim 1, which
specifies "a single oxide characterized as a second non-magnetic material"
(id. at 18). Under this circumstance, we agree with the Appellant that one
skilled in the relevant art would perceive no ambiguity as to the identity of
"the oxide" in the context of the claims.
Therefore, we do not sustain the rejection maintained against claims 8
and 9.
3. Claim 21
We agree with the Examiner that both occurrence of "the non-
magnetic material" render the claim scope ambiguous. The first occurrence
appears in the recitation "a first portion of an energy assisted segregation
material adapted to enhance segregation of the non-magnetic material into
grain boundaries within the CGC layer" ( emphasis added). Although this
recitation defines the "first portion of an energy assisted segregation
material" that is part of the CGC layer, one skilled in the relevant art would
not be able to ascertain whether the "first portion of an energy assisted
segregation material" is adapted to enhance segregation of only the non-
magnetic material present in the "first portion of non-magnetic material" or
all portions of non-magnetic material that may be present in the CGC layer.
In this regard, the term "comprising" opens the CGC layer to not only the
specified components but also unrecited components, such as any additional
portions of non-magnetic material that may be present in the CGC layer. In
re Baxter, 656 F.2d 679,686 (CCPA 1981) ("As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
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because the term 'comprises' permits the inclusion of other steps, elements,
or materials.").
A similar problem exists for the second occurrence of "the non-
magnetic material" because it is unclear whether it refers only to the "second
portion of the non-magnetic material" present in the granular layer or all
portions of non-magnetic material that may be present in the granular layer.
Id.
Despite the ambiguities in the claim, the Appellant provides only a
skeletal argument (Appeal Br. 8-9). In re Packard, 751 F.3d 1307, 1314
(Fed. Cir. 2014) (explaining that an applicant's response must "focus on the
claim-language difficulties" and may "propose clarifying changes or show
why, on close scrutiny, the existing claim language really was as reasonably
precise as the circumstances permitted.").
Under these circumstances, we concur with the Examiner that one
skilled in the relevant art would not be able to understand the claim's scope.
4. Claim 23
Claim 23 recites: "The perpendicular data recording medium of claim
21, wherein the magnetic material comprises Co, the non-magnetic material
comprises Cr, and the segregation material comprises B" (Appeal Br. 22).
We agree with the Examiner that "the magnetic material" recited in
claim 23 lacks sufficient antecedent basis because claim 21 recites more than
one magnetic material (i.e., "first portion of magnetic material" in the CGC
layer and "the second portion of the magnetic material" in the granular
layer). Consistent with the Examiner's position (Ans. 5), it is unclear
whether "the magnetic material" refers to the "first portion of magnetic
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material," "second portion of the magnetic material," both, or all magnetic
material that may be present.
Therefore, we also sustain the rejection as maintained against claim
23.
Rejection C. Except for claims 9 and 12, the Appellant argues the
rejected claims together (Appeal Br. 10-14). Therefore, although claims 9
and 12 are addressed separately below, all other claims rejected on this
ground stand or fall with claim 1, which we select as representative pursuant
to 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Wu describes every limitation recited in
claim 1 (Final Act. 7) (citing Wu, Fig. 1 and ,r 24). Regarding the "energy
assisted segregation material adapted to enhance segregation of the non-
magnetic material into grain boundaries within the layer at an elevated,
moderate energy level" limitation, the Examiner finds that Wu discloses
boron (B) as part of the grain core or magnetic grain, and, therefore, the
prior art inherently discloses the recited feature (Ans. 6).
Procedurally, the Appellant argues that Wu's paragraph 24 disclosure
was not mapped to the claim limitations (Appeal Br. 10). Substantively, the
Appellant contends that "Wu at least fails to disclose the energy assisted
segregation material as claimed" (id.). According to the Appellant, a person
having ordinary skill in the art would understand from Wu's disclosure that
Wu's oxide-based layer 42 is deposited using conventional ambient
conditions, which require "relatively low substrate temperature and adatom
energies" as described in the current Specification (id. at 11 (citing Spec. 3,
1. 20-4, 1. 4)). The Appellant argues that, by contrast, "the use of a
segregation enhancement material [ as specified in claim 1] under moderate
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energy levels provides significant improvements in the structure and
characteristics of the recording layer, including higher film densities, higher
grain uniformity and SFD, and reduced stacking faults" (Appeal Br. 11-12).
The Appellant's arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
1. Claim 1
As an initial matter, the Examiner specifically cites to Wu's paragraph
24 in support of the anticipation finding (Final Act. 7), as we noted above.
As for the disputed "energy assisted segregation material" limitations, the
Examiner also relies on Wu's disclosure of boron in CoCrPtBZ-CrOx, where
Z is a metal or rare earth element dopant (Ans. 6 (citing Wu, ,r,r 24, 47)).
Thus, the bases for the Examiner's anticipation finding "would have been
apparent to one with even a cursory command of prosecution practice from
the [E]xaminer's office actions." Jung, 637 F.3d at 1365. 8
Specifically, Wu describes a perpendicular magnetic recording layer
40 including, inter alia, a multi-layer stack 44 formed on a granular layer 42,
which may include Co alloys grain cores, and a substrate 32 (Wu, ,r 24; Fig.
2A). According to Wu, the Co alloys may be Co in combination with at
least one of Cr, Ni, Pt, Ta, B, Nb, 0, Ti, Si, Mo, Cu, Ag, Ge, or Fe (id. ,r 24).
In addition, Wu teaches that "[g]ranular layer 42 may also include one or
more non-magnetic oxides, such as, e.g., Si02 , Ti02[,] CoO, Cr203, Ta20s,
which segregate the magnetic grains within granular layer 40 [ sic, 42]" (id.).
8 To the extent that the Appellant believes that the Examiner's actions did
not comply with the notice requirement under 35 U.S.C. § 132(a), relief
should have been sought by way of a timely-filed petition for supervisory
intervention pursuant to 3 7 C.F .R. § 1.181.
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As the Examiner finds, Wu discloses CoCrPtBZ-CrOx, wherein Z is metal or
rare earth element dopant, as an example of a CGC layer (id. ,r 47).
Thus, it would have been apparent from a mere cursory review of the
cited portions of the reference that Wu's granular layer 42 supported on
substrate 32 corresponds to the "magnetic layer supported by a substrate"
recited in claim 1. In addition, a cursory review of the cited portions of the
reference in light of the rejection provides reasonable notice that Wu's
magnetic grains, non-magnetic oxides, and CrOx, correspond to the
"magnetic material," "non-magnetic material," and "single oxide
characterized as a second non-magnetic material," respectively, as specified
in claim 1 .
As for the "energy assisted segregation material adapted to enhance
segregation" limitations, the current Specification informs one skilled in the
relevant art that B in a CGC layer comprising CoCrPtB serves as a
segregation enhancement element (Spec. 11, 11. 1-21 ). Because the
language "adapted to" in claim 1, as broadly recited, may reasonably be
interpreted to specify only a capability of performing the specified function
at the specified condition,9 we discern no error in the Examiner's finding
that Wu's Bin CoCrPtBZ-CrOx would inherently meet the disputed claim
limitations. In re Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (en bane) ("[A]
compound and all of its properties are inseparable.") ( citing In re Papesch,
315 F.2d38I, 391 (CCPA 1963)).
As for the Appellant's argument that the "elevated, moderate energy
level" limitation in claim 1 differentiates claim 1 's subject matter over Wu's
9 See In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (acknowledging
that the phrase "adapted to" may mean "capable of').
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disclosed structure, the limitation is merely part of the functional
characteristics that follow the language "adapted to." Again, boron, which
the Inventors disclose as a suitable segregation enhancement material, is
disclosed in Wu and, therefore, would inherently be "adapted to" perform
(i.e., capable of performing) the recited function if subjected to the
conditions specified in claim 1. Although the Examiner states that the
"adapted to enhance segregation ... " limitations in claim 1 is a product-by-
process limitation (Ans. 7), 10 that error was harmless because the Examiner
correctly finds that the limitations would be inherent in the prior art structure
(id.). Moreover, as the Examiner notes, "[t]here are no parameters as to
what is considered to be an elevated, moderate energy level" (id.).
Therefore, when broadly construed, the limitation does not differentiate the
claimed apparatus over the prior art apparatus.
Additionally, although the Appellant alleges that Wu forms granular
layer 42 using "conventional ambient conditions"-i.e., "granular oxide
segregation" carried out at room temperature as described in the
Specification (Appeal Br. 11 (citing, e.g., Spec., 3, 1. 20-4, 1. 4)), Wu
actually teaches using any suitable technique, e.g., a DC magnetron sputter
process under vacuum to form granular layer 42 (Wu, ,r 36). The Appellant
does not provide any meaningful discussion or direct us to objective
persuasive evidence, that Wu's DC magnetron sputter process under vacuum
would not involve "an elevated, moderate energy level" as specified in claim
10 The limitation is not recited in a format akin to that normally considered
as product-by-process format ( e.g., language such as "a product produced by
a process comprising the steps of ... "). See In re Thorpe, 777 F.2d 695, 696
(Fed. Cir. 1985).
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1. In this regard, the Inventors also describe a sputtering technique (Spec. 7,
11. 1-27).
For these reasons, we uphold the rejection as maintained against claim
1.
2. Claim 12
The Appellant argues that claim 12 recites means-plus-function
language ("means for enhancing separation of the magnetic material into
grains at an elevated, moderate energy level to reduce porosity, enhance
density and enhance anisotropy") that must be construed under the strictures
of 35 U.S.C. § 112, ,r 6 (Appeal Br. 12). In the Appellant's view, "[f]ailure
to carry out a recited function of the means element prevents a prior art
reference from anticipating the element" (id.).
We discern no merit in the Appellant's argument. As the Appellant
acknowledges, the structure corresponding to the means-plus-function
language includes B or Ta (id.). Because Wu describes B, the prior art
reference describes the means-plus-function limitations, and, therefore,
anticipates claim 12.
Accordingly, we also sustain the rejection as maintained against claim
12.
3. Claim 9
Claim 9 recites: "The apparatus of claim 1, wherein the elevated,
moderate energy level comprises depositing the magnetic material, the non-
magnetic material, the oxide and the segregation material onto the substrate
as the substrate is maintained at a temperature of from about 100°C to about
200°C" (Appeal Br. 19).
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The Appellant argues that "the Examiner correctly notes that
limitations relating to product-by-process language carries patentable weight
if a skilled artisan would note structural characteristics in the final product
based on such limitations" (id. at 13). The problem, however, is that claim 9
( dependent on claim 1) does not include any "product-by-process"
limitations but, rather, only "adapted to" limitations that specify a capability
of the segregation enhancement material such as B, which is identically
disclosed in Wu. Moreover, the Appellant does not provide any meaningful
discussion or direct us to persuasive objective evidence that Wu's DC
magnetron sputtering techniques would not include an "elevated, moderate
energy level" in which the substrate is maintained at a temperature within
the specified range.
Therefore, we also uphold the rejection as maintained against claim 9.
Rejection D. The Appellant argues claims 4, 5, and 22 together,
focusing on claim 4 (Appeal Br. 14--16). Therefore, we confine our
discussion to claim 4. Claims 5 and 22 stand or fall with claim 4.
Claim 4 recites: "The apparatus of claim 1, wherein the magnetic
layer is a single layer of a multi-layer recording structure and the energy
assisted segregation material is provided with a concentration in the
magnetic layer that varies with respect to a thickness of the magnetic layer"
(Appeal Br. 18-19).
The Examiner finds that Wu does not describe the additional
limitations in dependent claim 4 (Final Act. 12). The Examiner finds
further, however, that Koda discloses a magnetic recording medium
comprising a magnetic layer in which the boron concentration decreases in a
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thickness direction extending away from the substrate (id.). The Examiner
concludes:
(Id.).
It would have been obvious to one of ordinary skill in the
art ... to modify Wu's magnetic layer so that the concentration
of boron decreases in thickness direction extending away from
the substrate, as suggested by Ko[ d]a, in order to greatly reduce
the transition noise between the adjoining recording bits [0013].
The Appellant argues that Koda teaches sputtering a recording layer
with a lower amount of B and then annealing at a high temperature
annealing process (such as 500°C) to cause subsequent diffusion into the
recording layer of B from a seed layer (Appeal Br. 15). According to the
Appellant, such a diffusion technique would not result in the claimed
apparatus and, instead, would "induce the very faults that are prevented by
the present claims, which utilize 'an elevated, moderate energy level"' (id.).
The Appellant argues that "[i]t is difficult to understand how a subsequent
diffusion of B [as disclosed in Koda], after the grain boundaries have already
been formed, would enhance 'the segregation of the non-magnetic material
into grain boundaries within the layer at an elevated, moderate energy level'
as claimed" (id.; emphases omitted).
The Appellant's arguments are unpersuasive. Koda teaches a
magnetic recording medium comprising a substrate, a backing layer formed
of a soft magnetic material on the substrate, a seed layer formed of a non-
magnetic material on the backing layer, and a recording layer formed
adjacently on the seed layer, wherein a segregation component in the
recording layer decreases from a boundary surface of the recording layer
disposed on a side of the seed layer toward a boundary surface at the
recording layer disposed on a side opposite to the seed layer (Koda, ,r 12).
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Specifically, Koda teaches that the concentration gradient of the segregation
component (B) is formed by causing diffusion of a part of B in the seed layer
toward the recording layer (id. ,r 13). Koda teaches that the magnetic
interaction is reduced between crystal grains in the recording layer and,
therefore, "it is possible to greatly reduce the transition noise between
adjoining recording bits" (id.). Koda teaches that "the recording layer is
formed by means of sputtering in the third step" and that "it is preferable
that an annealing treatment is performed at a temperature of 100 to 500° C.
in an oxygen atmosphere after forming the recording layer in the third step
when Bis used as the specified component" (id. ,r,r 23-24). According to
Koda, "[ o ]wing to the annealing treatment, the diffusion of B from the seed
layer to the recording layer is further facilitated" (id. ,r 25).
Based on the collective teachings found in Wu and Koda, we agree
with the Examiner that a person having ordinary skill in the art would have
been prompted to provide a concentration gradient for Bin Wu's recording
layer 40 including granular layer 42 by using a seed layer with B with a
reasonable expectation of greatly reducing the transition noise between
recording bits, as suggested by Koda. Contrary to the Appellant's position,
the "adapted to" limitations including "an elevated, moderate energy level"
recited in independent claim 1 fails to differentiate the claimed apparatus
over the prior art structure, as would have been suggested by the combined
teachings of Wu and Koda, for the reasons discussed above with respect to
claim 1. Moreover, the annealing temperatures described in Koda to
facilitate diffusion of B overlaps with and, therefore, is not inconsistent with
the temperatures useful for the claimed invention as disclosed in the current
Specification "[ w ]ithout limitation" (Spec. 7, 11. 14--20).
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Also, contrary to the Appellant's argument, claim 4 does not exclude
the presence of a seed layer with B to cause diffusion of B into a recording
layer, as disclosed in Koda. In Koda, B is disclosed as a "segregation
component contained in the recording layer" and a concentration gradient of
the segregation component in the recording layer is caused by diffusion of B
from the seed layer into the recording layer (Koda, ,r 13). Claim 4, as
broadly recited, reads on Koda's segregation component (B) having a
concentration gradient in the recording layer.
For these reasons, we uphold the rejection as maintained against claim
4.
Rejection E (New Ground of Rejection in the Answer). The
Examiner states:
While Wu fails to explicitly disclose which elements are a
magnetic material, a non-magnetic material, a single oxide, and
an energy assisted segregation material and the combination as
claimed, it would have been obvious to one of ordinary skill in
the art at the time of the invention to modify Wu's magnetic layer
to choose the claimed material composition from those taught,
layer [sic] in order to obtain a suitable magnetic anisotropy and
magnetization density and that Wu discloses that all of these
materials are suitable to be use in a magnetic layer [0024-0025].
(Ans. 3 (emphasis added).)
Regarding claim 1, the Appellant argues that the Examiner's
articulated obviousness analysis is flawed because "at least claim 1 does not
mention magnetic anisotropy and magnetization density, so it not clear why
selecting some sort of suitable values for these parameters would get the
skilled artisan any closer to the claimed combination" (Reply Br. 4 ). This
argument is unpersuasive, because the articulated reason supporting
obviousness need not be identical to that of the Inventors or the claim. KSR
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Int'! Co. v. Teleflex Inc., 550 U.S. 398,420 (2007) ("The question is not
whether the combination was obvious to the [inventors] but whether the
combination was obvious to a person with ordinary skill in the art.").
Moreover, Wu anticipates claim 1, as we discussed above.
Anticipation is the ultimate or epitome of obviousness. In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982).
To the extent that the Appellant relies on the "energy assisted
segregation material adapted to enhance segregation" limitations recited in
claim 1, our discussion in the section captioned Rejection C. 1 above is
incorporated herein by reference.
As to separately argued claim 12, the Appellant alleges that "[ t ]he
present application clearly discloses a new arrangement that is not
predictable, much less contemplated or expected, from the Wu reference"
(Reply Br. 6). The Appellant, however, does not direct us to any persuasive
objective evidence ( e.g., comparative experiments), commensurate in scope
with the broad degree of patent protection desired, that compares the
claimed invention against the closest prior art. Therefore, the Appellant's
argument has no persuasive force.
For these reasons, we uphold Rejection E.
IV. SUMMARY
Rejections A and B (as maintained against claims 3, 8, and 9) are not
sustained. Rejections B ( as maintained against claims 21 and 23) and C
through E are sustained. Therefore, the Examiner's final decision to reject
claims 1-15 and 21-25 is affirmed.
18
Appeal2017-005880
Application 13/844,703
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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