Ex Parte Choe

Patent Trial and Appeal Board

Oct 7, 2014

11935189 (P.T.A.B. Oct. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GUNN CHOE
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Appeal 2012-009838
Application 11/935,189
Technology Center 2600
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Before ALLEN R. MacDONALD, JASON V. MORGAN, and
MINN CHUNG, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009838
Application 11/935,189

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Exemplary Claims
Exemplary claims 1 and 7 under appeal reads as follows (emphasis
added):
1. A perpendicular magnetic recording disk, comprising:
a soft magnetic underlayer (SUL);
an interlayer on the SUL; and
a perpendicular magnetic recording layer on the interlayer;
wherein the SUL has an increased permeability from an inner radius
of the disk to an outer radius of the disk.

7. A perpendicular magnetic recording disk, comprising:
a first soft magnetic underlayer (SUL);
an antiparallel (AP) coupling layer on the first SUL;
a second SUL on the AP coupling layer;
an interlayer on the second SUL; and
a perpendicular magnetic recording layer on the interlayer;
wherein the first SUL, the AP coupling layer, and the second SUL are
formed such that an AP exchange field between the first SUL and the
second SUL decreases from an inner radius of the disk to an outer radius
of the disk.

Appeal 2012-009838
Application 11/935,189

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Examiner’s Rejections
The Examiner rejected claims 1, 2, 13, 14, 19, and 20 under 35 U.S.C.
§ 102(b) as being anticipated by Matsuyama (JP 2002-150544 A).1
The Examiner rejected dependent claims 3–6, 15–18, 21, and 22 as
being unpatentable under 35 U.S.C. § 103(a) over Matsuyama.2
The Examiner rejected independent claims 7 and 23, and their
dependent claims 8–12, 24, and 25 as also being unpatentable under
35 U.S.C. § 103(a) over Matsuyama.3

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1,
under 35 U.S.C. § 102(b) because “none of the solutions put forth in
Matsuyama teaches an SUL that has an increased permeability from an
inner radius to an outer radius as recited in claim 1.” (App. Br. 8).
2. Appellant further contends that the Examiner erred in rejecting
claim 1 based on paragraph [0007] of Matsuyama, because (App. Br. 9)
(emphasis added):
[A] periphery is defined as “the external boundary or surface of
a body”. Thus, the outermost periphery of a disk is the outer
edge of the disk. Looking at FIG. 4 in Matsuyama, the

1 Separate patentability is not argued for claims 2, 13, 14, 19, and 20.
Except for our ultimate decision, these claims are not discussed further
herein.
2 Separate patentability is not argued for claims 3–6, 15–18, 21, and 22.
Rather, the rejection of these claims turns on our decision as to the
underlying § 102 rejection, and is not further addressed herein.
3 Separate patentability is not argued for claims 8–12 and 23–25. Except for
our ultimate decision, these claims are not discussed further herein.

Appeal 2012-009838
Application 11/935,189

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outermost periphery of the disk would be the edge farthest to
the right.
3. Appellant contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because:
[T]he Examiner suggests that it would be obvious to decrease
an AP exchanged field between a first SUL and a second SUL.
The Appellants disagree. In the solutions presented in
Matsuyama, the thickness of the SUL is either decreased from
inner radius to outer radius (see Means 1), or the thickness is
constant (see Means 3).
(App. Br. 11).

Issue on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated (and
claim 7 as being obvious) because Matsuyama fails to disclose a soft
magnetic underlayer that has an increased permeability from an inner radius
to an outer radius?

ANALYSIS
As to contention 3, we do not reach this particular point because the
rejection of claim 7 explicitly depends on the rejection of claim 3 (“under
the same rationale used to reject claim 3 where such a feature is inherent as
the thicknesses of the SUL layers increases”) (Ans. 7), and in turn, the
rejection of claim 3 explicitly depends on the rejection of claim 1 (“which is
explicitly disclosed to be increased see rejection of claim 1”) (Ans. 6).
Therefore, our decision below as to claim 1 is controlling.
As to contention 2, we find without merit Appellant’s position that
“the outermost periphery of the disk would be the edge farthest to the right.”
Appeal 2012-009838
Application 11/935,189

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App. Br. 9. Equally, we find without merit the Examiner’s position
construing “if the soft magnetism film is added to the outermost periphery”
to mean a thickening of the material at the outer radius of the disk. Ans. 5.
We conclude that the machine translation of the cited sentence of
paragraph [0007] of Matsuyama is merely a statement that the soft
magnetism film in paragraph [0007] is being added to the “surface” (the
alternative definition cited by Appellant) of the “1st substrate layer 2” of
Figure 4 (rather than a particular location on that surface). This
interpretation is also consistent with paragraph [0023] of Matsuyama
(describing Figure 12) discussing “sticking the soft magnetism material 19
to the glass disk substrate 9 outermost periphery.” Figure 12 clearly shows
the soft magnetism material 19 on the surface of substrate 9.
As to contention 1, for the reasons set forth immediately above we
agree with Appellant’s general contention 1. The Examiner has erred in
finding that Matsuyama anticipates or renders obvious the claims.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1, 2, 13, 14, 19, and 20 as being anticipated under 35 U.S.C.
§ 102(b).
(2) Appellant has established that the Examiner erred in rejecting
claims 3–12, 15–18, and 21–25 as being unpatentable under 35 U.S.C.
§ 103(a).
(3) On this record, claims 1–25 have not been shown to be
unpatentable.
Appeal 2012-009838
Application 11/935,189

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DECISION
The Examiner’s rejections of claims 1–25 are reversed.

REVERSED

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