Ex Parte Berger et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201512032669 (P.T.A.B. Feb. 19, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ANDREAS K. BERGER, YOSHIHIRO IKEDA, BYRON H. LENGSFIELD, III, DAVID T. MARGULIES, and ERNESTO E. MARINERO ________________ Appeal 2013-003015 Application 12/032,669 Technology Center 1700 ________________ Before TERRY J. OWENS, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for making perpendicular magnetic recording media. Claim 1 is illustrative: 1. A method of fabricating perpendicular magnetic recording media, the method comprising: sputtering an adhesion layer; sputtering a soft magnetic underlayer (SUL) on the adhesion layer; sputtering a seed layer on the SUL; Appeal 2013-003015 Application 12/032,669 2 sputtering an intermediate layer on the seed layer; sputtering a magnetic recording layer on the intermediate layer; and sputtering a capping layer; wherein at least one of the seed layer, the intermediate layer, the magnetic recording layer, and the capping layer is comprised of a multilayer structure that is formed in a single sputtering module by performing a sputtering process using a common sputtering target under varying sputtering conditions; wherein a grain growth substantially terminates at an interface between layers of the multilayer structure used to form at least one of the seed layer, the intermediate layer, the magnetic recording layer, and the capping layer. The References Osawa US 6,942,933 B2 Sept. 13, 2005 Hirayama US 2006/0088737 A1 Apr. 27, 2006 Liu US 2006/0246323 A1 Nov. 2, 2006 Chen US 7,175,925 B2 Feb. 13, 2007 Marinero US 7,722,967 B2 May 25, 2010 Bian US 7,736,767 B2 June 15, 2010 Nanba JP 62-58414 A Mar. 14, 1987 The Rejections The claims stand rejected as follows: claim 1 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, claims 1, 3, and 5–7 under 35 U.S.C. § 103 over Chen in view of Marinero, claim 2 under 35 U.S.C. § 103 over Chen in view of Marinero and Nanba, claim 4 under 35 U.S.C. § 103 over Chen in view of Marinero and Bian, claim 8 under 35 U.S.C. § 103 over Chen in view of Marinero and Osawa, claim 9 under 35 U.S.C. § 103 over Chen in view of Marinero and Liu and claims 10 and 11 under 35 U.S.C. § 103 over Chen in view of Marinero and Hirayama. Appeal 2013-003015 Application 12/032,669 3 OPINION We reverse the rejections. Rejection under 35 U.S.C. § 112, first paragraph The Examiner argues that the Appellants’ original disclosure fails to provide written descriptive support for the Appellants’ claim 1 requirement that “a grain growth substantially terminates at an interface between layers of the multilayer structure” (Final Rejection mailed Mar. 14, 2012 (hereinafter FR), p. 2). A specification complies with the 35 U.S.C. § 112, first paragraph, written description requirement if it conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563‒64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351‒52 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). The Appellants’ original Specification states (Spec. 11:18‒27): FIG. 4 illustrates sputtering conditions for fabricating the multilayer seed layer 112 in an exemplary embodiment of the invention. . . . Sputtering module 312 sputters a first seed layer at 7.5 mTorr for about 2 seconds to achieve a thickness of about 5 nanometers. After a 2.8 second delay (such as by turning off the plasma voltage), sputtering module 312 sputters a second seed layer at 15 mTorr for about 1 second to achieve a thickness of about 2.6 nanometers. Those skilled in the art will appreciate that numerous permutations of time duration, deposition rates, sputter pressures, delay times, etc, may be used to form seed layer 112. Appeal 2013-003015 Application 12/032,669 4 The Examiner asserts that “[t]he example ‘such as turning off the plasma voltage’ is inadequate because it leaves the process open to other actions or other types of ‘delay’ that do not terminate grain growth” (Ans. 8). As with any ground of rejection, the Examiner bears the initial burden of establishing a prima facie case of unpatentability. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner has not established that the Appellants’ plasma voltage can be turned off for 2.8 seconds without the grain growth at an interface between layers of the multilayer structure being substantially terminated and, therefore, has not established that the Appellants’ original disclosure fails to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession a method wherein such substantial termination of grain growth at an interface between layers of a multilayer structure occurs. Hence, the Examiner has not set forth a prima facie case of lack of written description of the Appellants’ claimed method. Accordingly, we reverse the rejection under 35 U.S.C. § 112, first paragraph. Rejections under 35 U.S.C. § 103 We need address only the sole independent claim (i.e., claim 1).1 That claim requires that “at least one of the seed layer, the intermediate layer, the magnetic recording layer, and the capping layer is comprised of a multilayer structure that is formed in a single sputtering module by performing a sputtering process using a common sputtering target under varying 1 The Examiner does not rely upon additional references applied to dependent claims to remedy the deficiency in the references applied to the independent claim (FR 6‒11). Appeal 2013-003015 Application 12/032,669 5 sputtering conditions” and that “a grain growth substantially terminates at an interface between layers of the multilayer structure used to form at least one of the seed layer, the intermediate layer, the magnetic recording layer, and the capping layer.” Chen discloses a perpendicular magnetic recording medium comprising first and second interlayers (4A, 4B) which “can be formed (i.e., sputter-deposited) under a continuously increasing gas pressure, commencing with a first (i.e., initial), lower pressure and terminating with the second (i.e., final), higher pressure” (col. 5, ll. 10‒27; col. 11, ll. 20‒24). “When fabricated in this manner, no sharp transition or interface is formed between the first and second interlayers” (col. 11, ll. 26‒28). “Interlayers 4A and 4B may also be formed (i.e., sputter-deposited) such that a distinct transition layer is present between the first and second interlayers, which transition layer is formed at a transitional gas pressure” (col. 11, ll. 29‒32). Marinero discloses an “underlayer structure particularly suitable for a perpendicular recording medium” (col. 3, ll. 12‒14). The underlayer structure includes a nanometer(s) thick spacer layer between lower and upper hexagonal closed packed (hcp) metal layers (col. 3, ll. 18‒20; col. 4, l. 66 – col. 5, l. 1). The spacer layer can be an elemental metal, a metal alloy or a metal oxide (col. 5, ll. 39‒58). Use of the spacer layer improves the high pressure hcp metal underlayer’s crystallographic properties, thereby improving the microstructure of the high pressure hcp metal underlayer and the overlying recording magnetic layer, resulting in gains in recording media performance (col.3, ll. 17‒28; col.4, l. 66–col. 5, l. 4). “The lower hcp metal Appeal 2013-003015 Application 12/032,669 6 layer 916 is preferably formed at lower sputtering pressure and at a slower growth rate than the upper hcp metal layer 918” (col. 5, ll. 32‒34). The Examiner argues that Marinero’s “first and second layers, 916 and 918, consisting of the same material, Ru (col. 5, ln. 20), would be processed in the same sputtering chamber with the same sputtering target because only the pressure of the sputtering gas is required to be changed” (Ans. 6‒7) and that Marinero’s spacer layer (914) substantially terminates the grain growth at an interface between the lower and upper hcp metal layers (916, 918) (FR 4). The Examiner does not establish that Marinero would have suggested, to one of ordinary skill in the art, forming the lower and upper hcp metal layers (916, 918) in a single sputtering module using a common target even though a spacer layer (914) is formed between those layers. Hence, the Examiner has not established that Marinero would have led one of ordinary skill in the art to form a spacer layer between Chen’s first and second interlayers (4A, 4B) yet form those interlayers in a single sputtering module using a common target. The Examiner argues that “there is no limitation in the claims that prevents the substrate from being removed from the single sputtering chamber to terminate the grain growth and then replaced into the sputtering chamber to continue the multilayer structure” (Ans. 7). That argument is not well taken because the Examiner has not established that the applied references would have suggested that method to one of ordinary skill in the art. Appeal 2013-003015 Application 12/032,669 7 Thus, the record indicates that the Examiner’s rejections are based upon impermissible hindsight in view of the Appellants’ disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejections. DECISION/ORDER The rejections of claim 1 under 35 U.S.C. § 112, first paragraph, written description requirement, claims 1, 3, and 5–7 under 35 U.S.C. § 103 over Chen in view of Marinero, claim 2 under 35 U.S.C. § 103 over Chen in view of Marinero and Nanba, claim 4 under 35 U.S.C. § 103 over Chen in view of Marinero and Bian, claim 8 under 35 U.S.C. § 103 over Chen in view of Marinero and Osawa, claim 9 under 35 U.S.C. § 103 over Chen in view of Marinero and Liu and claims 10 and 11 under 35 U.S.C. § 103 over Chen in view of Marinero and Hirayama are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED mat Copy with citationCopy as parenthetical citation