FUJIFILM CORPORATION

Patent Trials and Appeals Board

Apr 8, 2020

14855937 - (D) (P.T.A.B. Apr. 8, 2020)

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.
14/855,937 09/16/2015 Shinji KAWAKAMI 2870-0685PUS1 9981
2292 7590 04/08/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINJI KAWAKAMI, SADAMU KUSE, and
KENJI TANAKA

____________

Appeal 2019-001409
Application 14/855,937
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 2, 4, 5, 7 and 8 under 35 U.S.C.
§ 103 as unpatentable over Lowery (US 2011/0242698 A1; published Oct. 6,
2011), and claim 6 as unpatentable over the combined prior art of Lowery
and Oyanagi (US 2005/0282040 A1; published Dec. 22, 2005). An oral
hearing was conducted on March 26, 2020.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Fujifilm Corporation as the real party in
interest (Appeal Br. 1).
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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):

1. A magnetic recording medium comprising: a non-
magnetic substrate; a nonmagnetic layer formed on one of
principal surfaces of the non-magnetic substrate; and a magnetic
layer formed on a principal surface of the non-magnetic layer
opposite to the nonmagnetic substrate,
wherein the magnetic layer contains a magnetic powder,
the magnetic powder is one selected from the group
consisting of a hexagonal ferrite magnetic powder and a
ferromagnetic metallic iron magnetic powder,
Mr and t satisfy 0.0020 μT·m≤Mr·t≤0.0150 μ·Tm, where
Mr is the residual magnetic flux density of the magnetic layer,
and t is the average thickness of the magnetic layer,
L1 satisfies 2 nm≤L1≤ 6 nm, where L1 is the average
thickness of a first mixed layer that is formed on the surface of
the magnetic layer opposite to the non-magnetic layer,
L2 satisfies 0.1≤L2/t≤0.45, where L2 is the average
thickness of a second mixed layer that is formed on the surface
of the magnetic layer facing the non-magnetic layer,
the first mixed layer is high in lubricant, resin, filler and
void contents as compared with the magnetic layer,
a content of magnetic components per unit volume of the
first mixed layer is lower than a content of magnetic components
per unit volume of the magnetic layer, and
the magnetic layer has the average thickness of 20 to 100
nm.

Appellant’s arguments focus on the sole independent claim 1 (see
generally Briefs). Accordingly, all other claims, including separately
rejected claim 6, stand or fall with claim 1.
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OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contention is that Lowery teaches away from a first
mixed layer formed on the surface of the magnetic layer with a
concentration of magnetic particles lower per unit volume than a content of
magnetic components per unit volume of the magnetic layer as recited in
claim 1 (Appeal Br. 8, 9). Appellant also argues that Lowery does not teach
or suggest that its magnetic recording medium satisfies the claimed
relationship of Mr and t recited in claim 1 (Appeal Br. 9). Appellant’s
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arguments are not persuasive of reversible error for reasons presented by the
Examiner (Ans. 3–8).
The argument that Lowery teaches away from a lower concentration
at an upper surface of a magnetic layer is not persuasive for reasons stated
by the Examiner (e.g., Ans. 7–10). It is well established that a prior art
reference must be considered in its entirety, i.e., as a whole, when
determining if it would lead one of ordinary skill in the art away from the
claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005) (whether a reference teaches away from a claimed invention is a
question of fact). As pointed out by the Examiner, one of ordinary skill in
the art would have inferred and readily appreciated that Fig. 29 of Lowery
shows that an uppermost mixed layer of a magnetic recording medium may
indeed have a lower concentration of magnetic components (Ans. 4, 5). The
Examiner also points out that Lowery describes that any lubricant included
will migrate to the recording surface, which will also result in a lower
concentration of magnetic components near the recording surface (Ans. 4;
Lowery ¶¶ 65, 83). An artisan of ordinary skill would have weighed the
advantages and disadvantages of a lower or higher concentration of
magnetic components near the upper surface of a magnetic recording
medium. “The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000). Appellant’s teaching away argument fails to account for “the
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inferences and creative steps that a person of ordinary skill in the art would
employ.” See KSR, 550 U.S. at 418.
The Examiner’s statement that Lowery, due to its description that
includes having the same or similar structure as claimed (e.g., Fig. 29),
inherently possesses the property stated in the equation involving magnetic
flux density Mr and average thickness t as recited in claim 1 is reasonable
(Final Act. 4). Appellant has advanced no compelling rationale why the
Examiner’s conclusion is not reasonable. Cf. In re Spada, 911 F.2d 705, 708
(Fed Cir. 1990) (when a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
Thus, Appellant has not shown reversible error in the Examiner’s
position that it would have been obvious for one of ordinary skill to have
made a magnetic recording medium with a lower concentration of magnetic
components at the surface of the recording medium. See KSR, 550 U.S. at
417 (the predictable use of known prior art elements or steps performing the
same functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted).
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Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that no dependent
claims are separately argued (Appeal Br. generally).

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7, 8 103 Lowery 1, 2, 4, 5, 7, 8
6 103 Lowery, Oyanagi 6
Overall
Outcome

1, 2, 4–8

TIME PERIOD FOR RESPONSE
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)(iv).

AFFIRMED