Ex Parte Chen et al

Board of Patent Appeals and Interferences

Sep 24, 2003

09559347 (B.P.A.I. Sep. 24, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte QIXU DAVID CHEN, LIJI HUANG,
CHARLES LEU and RAJIV YADAV RANJAN

Appeal No. 2003-1801
Application 09/559,347

ON BRIEF

Before GARRIS, PAK, and DELMENDO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final
rejection of claims 2, 3, 8, 9, 11, 12, 17, 18 and 21-25, which
are all of the claims remaining in the application.
Appeal No. 2003-1801
Application 09/559,347
2
The subject matter on appeal relates to a longitudinal
or perpendicular magnetic recording medium comprising a glass or
glass-ceramic substrate comprising lithium, a sealing layer
comprising substantially amorphous NiNb directly deposited on the
substrate and a magnetic layer, wherein the sealing layer has a
thickness of about 450
or less and substantially prevents
migration of lithium from the substrate to the magnetic layer.
The appealed subject matter also relates to a method of
manufacturing such a magnetic recording medium. This appealed
subject matter is adequately illustrated by independent claim 21,
which reads as follows:
21. A longitudinal or perpendicular magnetic recording
medium comprising, in this order:
a glass or glass-ceramic substrate comprising Li:
a sealing layer comprising substantially amorphous NiNb
directly deposited on the glass or glass-ceramic substrate; and
a magnetic layer,
wherein the sealing layer has a thickness of about
450
or less and substantially prevents migration of Li from the
substrate to the magnetic layer of the magnetic recording medium.
Appeal No. 2003-1801
Application 09/559,347
3
The prior art set forth below is relied upon by the
examiner in the rejections before us:
Okumura et al. (Okumura) 5,480,733 Jan. 2, 1996
Chen et al. (Chen ‘370) 5,733,370 Mar. 31, 1998
Taguchi et al. (Taguchi) 5,874,376 Feb. 23, 1999
Ross et al. (Ross) 5,980,997 Nov. 9, 1999
Chen et al. (Chen ‘890) 6,120,890 Sept. 19, 2000
(filed Nov. 5, 1998)
Starcke et al. (Starcke) 6,183,828 B1 Feb. 6, 2001
(filed May 20, 1998)
Huang et al. (Huang) 6,416,881 B1 July 9, 2002
(filed May 15, 2000)
The admitted prior art described on pages 4 and 6 of the subject
application.
All of the appealed claims stand rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-20 of Chen ‘890 in view of
Ross.
Claims 2, 11, 18 and 21-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ross in view of
Starcke and Taguchi, and the remaining appealed claims stand
correspondingly rejected over various combinations of these
references and the other prior art listed above.
We refer to the Brief filed January 14, 2003 and Reply
Brief as well as to the Answer for a complete exposition of the
Appeal No. 2003-1801
Application 09/559,347
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opposing viewpoints expressed by the appellants and by the
examiner concerning the above-noted rejections.
OPINION
None of these rejections can be sustained.
Regarding the § 103 rejection, it is the examiner’s
basic position that it would have been obvious to modify the
magnetic recording medium (and the corresponding method of
manufacturing such a magnetic recording medium) of Ross in such a
manner as to yield a magnetic recording medium (and corresponding
method) of the type here claimed and that the medium (and method)
resulting from this modification would inherently possess the
here-claimed property of substantially preventing migration of
lithium from the substrate to the magnetic layer of the magnetic
recording medium. According to the appellants, the examiner’s
obviousness conclusion is the result of improperly substituting a
retrospective view of inherency for some teaching or suggestion
which supports the selection and use of the various elements in
the particularly claimed combination. In re Newell, 891 F.2d
899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir. 1989). As argued by
Appeal No. 2003-1801
Application 09/559,347
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the appellants, this is because no actual prior art product
possesses their claimed property of preventing lithium migration.
It is only a hypothetical product resulting from the examiner’s
proposed modification of Ross that would even arguably possess
this characteristic. The appellants urge that the examiner’s
proposed modification of Ross is based upon impermissible
hindsight knowledge of the subject specification teaching that
the here-claimed sealing layer of substantially amorphous NiNb
substantially prevents migration of lithium from the substrate to
the magnetic layer. In this latter regard, the appellants
emphasize that obviousness cannot be predicated on what is
unknown such as the migration prevention feature under
consideration which the examiner characterizes as “inherent.” In
re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir.
1993). We share the appellants’ viewpoint on this matter.
The teachings of the applied prior art must be
selectively chosen and combined in numerous respects in order
to result in a magnetic recording medium which even arguably
possesses, under the principles of inherency, the feature of
substantially preventing migration of lithium from the substrate
Appeal No. 2003-1801
Application 09/559,347
1 This is because the examiner’s obviousness conclusion
regarding thickness is based on the proposition that thickness is
a result effective variable and that it would have been obvious
to determine optimum values for such a variable, pursuant to In
re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and
In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). However,
the thickness of Ross’ NiNb layer is result effective for a
purpose (i.e., laser texturizing) which is completely unrelated
to the appellants’ claimed purpose of preventing migration of
lithium from the substrate to the magnetic layer. Contrary to
the examiner’s inappropriate assumption, optimizing thickness
for the former purpose would not necessarily yield thicknesses
appropriate for the latter purpose, that is, thicknesses within
the here-claimed range.
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to the magnetic layer. Specifically, the substrate of Ross must
be replaced with a glass or glass-ceramic substrate comprising
lithium. Second, NiNb must be chosen from patentee’s many
embodiments as the layer to be deposited on this replacement
substrate. Third, the NiNb layer must be deposited directly onto
this substrate pursuant to yet another of the alternative
embodiments disclosed by Ross. Fourth, the layer must be
deposited to a thickness within the here-claimed range, the
obviousness of which is highly questionable at best.1 From our
perspective, this picking, choosing and combining of multiple
selected teachings in the applied prior art are the consequence
of impermissible hindsight rather than motivation, suggestion and
Appeal No. 2003-1801
Application 09/559,347
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teaching derived from the references under consideration. See
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
In addition to the foregoing, even if the applied
references were combined in the manner proposed by the examiner,
we cannot agree with the examiner’s determination that the
magnetic recording medium resulting from this combination would
inherently possess the feature of substantially preventing
migration of lithium from the substrate to the magnetic layer
of the modified recording medium of Ross. This is because we
discern merit in the position expressed in the Brief and in the
§ 1.132 Declaration by Ross, filed September 12, 2002, to the
effect that the laser texturizing procedure, which is performed
on the NiNb layer pursuant to the teachings of the Ross patent,
might well destroy any lithium-migrating prevention character-
istic this layer might otherwise have inherently possessed. In
essence, the examiner has dismissed this argument by assuming
that the texturized NiNb layer of the modified recording medium
of Ross would inherently prevent lithium migration and by
Appeal No. 2003-1801
Application 09/559,347
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challenging the appellants to prove the contrary.
For at least two reasons, the examiner has improperly
shifted to the appellants the burden of submitting such proof.
First, as correctly argued by the appellants, the examiner’s
inherency and burden-shifting position was improper in the first
instance since it related to a completely hypothetical recording
medium. The authorities cited by the examiner in support of his
position involve actual, not hypothetical, prior art products,
and it is indisputable that the prior art recording medium of
Ross does not inherently possess a lithium-migrating prevention
property (i.e., because patentee’s substrate does not contain
lithium). Second, the examiner’s aforementioned position is
improper with respect to a texturized layer of the type taught by
Ross since there is absolutely no evidence in the record before
us which supports a determination that such a texturized layer
would be capable of preventing lithium migration.
Under the circumstances discussed above, we determine
that none of the § 103 rejections advanced by the examiner on
this appeal can be sustained.
Appeal No. 2003-1801
Application 09/559,347
2 At most, Ross would have suggested replacing NiP with NiNb
for the purpose of providing patentee’s texturizing function. As
previously indicated, this texturizing function is unrelated to
the lithium-migrating prevention function performed by Chen’s
sealing layer and by the here-claimed sealing layer.
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We also cannot sustain the examiner’s obviousness-type
double patenting rejection. According to the examiner, it would
have been obvious to replace the amorphous NiP sealing layer of
Chen’s claimed magnetic recording medium with an amorphous NiNb
layer of the type taught by Ross “since one of ordinary skill in
the art would recognize that NiP and NiNb are known equivalents
and the substitution of known equivalents is within the knowledge
of one of ordinary skill in the art” (Answer, page 6). However,
Ross contains no teaching or suggestion that NiP and NiNb are
“known equivalents” (id.) for the purpose of performing a sealing
function and in particular with respect to substantially pre-
venting the migration of lithium from the substrate.2 For this
reason, the examiner’s obviousness conclusion lacks evidentiary
support.
Appeal No. 2003-1801
Application 09/559,347
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SUMMARY
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
BRG:psb
Appeal No. 2003-1801
Application 09/559,347
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