Ex Parte Girt et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201711544632 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 11/544,632 10/10/2006 Erol Girt 10-3797-00 1596 105639 7590 03/01/2017 Duane Morris LLP (10/11) Seagate IP Docketing 2475 Hanover Street Palo Alto, CA 94304-1194 EXAMINER CHAU, LISA N ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 03/01/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EROL GIRT,1 Raj N. Thangaraj, and Qixu Chen Appeal 2014-005822 Application 11/544,632 Technology Center 1700 Before BEVERLY A. FRANKLIN, MARKNAGUMO, and MONTE T. SQUIRE, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Erol Girt, Raj N. Thangaraj, and Qixu Chen (“Seagate”) timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1, 8, 15, and 22—30. We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is identified as Seagate Technology LLC (“Seagate”). (Appeal Brief, filed 29 October 2013 (“Br.”), 3.) 2 Office Action mailed 3 April 2013 (“Final Rejection”; cited as “FR”). Appeal 2014-005822 Application 11/544,632 OPINION A. Introduction3 The subject matter on appeal relates to magnetically soft amorphous alloys said to have high saturation magnetization and to be corrosion resistant. These materials are said to be particularly useful as a magnetic soft underlayer (“SUL”) in high density hard disks comprising perpendicular magnetic recording layers. More specifically, the ’632 Specification teaches that, on a magnetic hard disk, a SUL about 50 to about 300 nm thick (Spec. 3,11. 17—18) underlies a magnetically hard recording layer about 10 to 25 nm thick {id. at 11. 28—29). The Specification reveals that a major function of the SUL is to focus magnetic flux from a writing head into the overlying magnetically hard recording layer, thereby enabling higher writing resolution. {Id. at 2 [0005].) This is said to require the SUL to have a low coercivity, e.g., less than about 1 kOe, compared to the relatively high coercivity (3 to 8 kOe) of the hard magnetic recording layer. {Id. at [0004]—[0005].) “Moreover,” the Specification continues, “the saturation magnetization Ms must be sufficiently large such that the flux saturation from the write head is completely absorbed therein without saturating the SUL.” {Id. at [0005].) Conventional crystalline SULs fabricated from crystalline Feioo-xCox, where x is between 30 and 50, by magnetron sputtering, are said to provide the largest saturation magnetization, but to have a significantly larger surface 3 Application 11/544,632, Amorphous soft magnetic layers for perpendicular magnetic recording media, filed 10 October 2006. We refer to the “’632 Specification,” which we cite as “Spec.” 2 Appeal 2014-005822 Application 11/544,632 roughness that SULs prepared from amorphous magnetic materials. {Id. at 4 [0011].) Smoother surfaces are said to be desired for optimum growth of a magnetically hard recording layer on top of the SUL, and to minimize the transducer head-to-medium spacing. {Id.) Furthermore, amorphous magnetic materials are said to be less susceptible to corrosion than crystalline materials. {Id.) Seagate seeks patent protection for certain magnetically soft FeCo- based alloys that contain Zr and one of Ru, Rh, or Pt, which they have found result in amorphous alloys with high saturation magnetization that are resistant to corrosion compared to the parent FeCo alloys. Claim 1 is representative and reads: A magnetically soft material, comprising: a FeCo-based alloy, wherein said FeCo-based alloy consists essentially of FeCoZrX, where X is one of Ru, Rh, or Pt, wherein said magnetically soft material provides: (a) an amorphous micro structure with a smooth surface; (b) high saturation magnetization Ms greater than about 1.6 T; and (c) corrosion resistance. (Claims App., Br. 24; some indentation, paragraphing, and emphasis added.) Independent claim 8 is directed to a magnetic recording medium comprising the magnetically soft material, and remaining independent claim 15 is directed to a method of making a recording medium. 3 Appeal 2014-005822 Application 11/544,632 The Examiner maintains the following ground of rejection4,5: Claims 1, 8, 15, and 22—30 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Lee4 5 6 and Nepela.7 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. All arguments for patentability are directed to the limitations regarding the soft magnetic material. Accordingly, we select claim 1 as representative, and all claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2012). Initially, we note that Seagate argues, as “Issue #2,” that the Examiner erred in refusing to enter amendments to the Specification filed under 37 C.F.R. §1.116 after the final rejection because the amendments do not raise the issue of new matter. (Br. 20—21.) We do not have jurisdiction over 4 Examiner’s Answer mailed 26 February 2014 (“Ans.”). 5 Because this application was filed before the 16 March 2013 effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 6 Jean L. Lee et al., High coercivity perpendicular magnetic recording media on polymer substrates, U.S. Patent Application Publication 2005/0074633 Al (7 April 2006), based on an application filed 7 October 2003 (assigned to Seagate). 7 Daniel A. Nepela, Corrosion resistant amorphous magnetic alloys, U.S. Patent No. 5,961,746 (1999). 4 Appeal 2014-005822 Application 11/544,632 this aspect of the appeal, and we therefore will not address Seagate’s procedural arguments.8 Nonetheless, it will be useful to inspect the course of discussions after the Final Rejection, which was issued on 3 April 2013. There came a time when a phone interview was conducted on 31 May 2013. Seagate and the Examiner discussed the difference between FeCo-based alloys and CoFe-based alloys, including the [apparent] interchangeable use of FeCo and CoFe alloys in Specification paragraph [0040]. (Applicant-initiated interview summary, mailed 18 June 2013.) Subsequently, on 3 June 2013, under 37 C.F.R. §1.116, Seagate filed amendments to the claims (correcting minor formal matters) and arguments for patentability based on the differing interpretations of the alloy nomenclature. On 24 June 2013, the Examiner entered the amendments to the claims, but declined to withdraw the rejection over prior art. (Advl .)9 The Examiner found no explicit support for those amendments in the Specification for the narrower interpretation urged by Seagate. In particular, the Examiner found that the Specification does not teach the convention explicitly, and that “one cannot assume that the first element has to be present in the largest amount.” {Id. at 2,11. 15—16.) The Examiner explained 8 Relief from refusal to admit amendments should be addressed by petition to the Director under 37 C.F.R. §1.181—183 (delegated to the Technology Center Directors; see Manual of Patent Examining Procedure, 1002.02(c)). 9 Advisory Action communicated 24 June 2013 (“Advl”). 5 Appeal 2014-005822 Application 11/544,632 further, following up on the 13 May 2013 interview, that the interpretation of the claim limitation “FeCo-based alloy” was based in part on the inconsistent language in Specification paragraph [0040]. (Id. at 11. 16—18.) That passage, the Examiner pointed out, reads in most relevant part, “Co-Fe based alloy materials, e.g., FeCoZr . . . .” (Id. at 11. 18—19.) The Examiner concluded that the ’632 Specification thereby “indicates that FeCo and CoFe alloys are interchangeable.” (Id. at 11. 19—20.) The Examiner found further that Seagate had not come forward with evidence supporting a “closed” interpretation of the phrase “consisting essentially of’ as applied to FeCoZrX, recited in claim 1. (Id. at 3,11. 3—7.) On the same day, in a “mail crossing,” Seagate filed additional amendments under Rule 116, seeking to amend the claims in more substantive ways. Seagate also sought to correct the recitation of “CoFe” in paragraphs [0039] and [0040] of the Specification to —FeCo—, urging that the changes to the Specification corrected evident typographical errors that would have been apparent from the text of those paragraphs as well as Figures 2 and 3, which those paragraphs describe. (Amendment/Response under after final consideration pilot program 2.0.) The Examiner declined to enter the amendments and refused to withdraw the rejections. (Adv2.)10 Notable in this commendable attempt to advance examination by both Seagate and the Examiner is the absence of citation of a generally accepted authority regarding the naming conventions used by those skilled in the metallic alloy art. The inventors in this highly sophisticated and highly 10 Advisory Action communicated on 26 June 2013 (“Adv2”). 6 Appeal 2014-005822 Application 11/544,632 specialized technical field11 are in the better position to come forward with such evidence, whether from a treatise or review article, or from testimony by a suitably qualified expert12. Seagate contends the Examiner has misread or misapprehended the disclosure of the ’632 Specification as well as the disclosures of Lee and Nepela. More particularly, Seagate urges that the Examiner erred in finding that the CoFeZrNb alloy disclosed by Lee is a FeCoZrX alloy within the scope of claim 1. (Br. 12, last para.) Similarly, Seagate argues that the alloy disclosed in Nepala Example 1, Co81.5 Fe3.5 (Pt,Pd)9 Zr4 Rh2, is a Co based alloy that “should not be conflated with Appellants’ compositionally distinct Fe-based alloys FeCoZrX of [the] independent claims.” (Id. at sentence bridging 13—14.) Seagate urges further that the Examiner is taking improper Official Notice concerning the interpretation of the recitation, “FeCo-based alloy.” (Id. at 11. 1—11.) Seagate argues that proper, standard understanding of persons skilled in the art is that the first-named element in these alloys is the “base metal (i.e., the metal present in the greatest amount).” (Id. at 15.) Seagate offers several examples from the Specification and the applied prior art as being consistent with this 11 The level of high skill is evident from the disclosures in the ’632 Specification and the cited prior art. Cf. In re GPACInc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“the level of ordinary skill in the art. . . was best determined by appeal to the references of record.”) 12 The entry of affidavits or other evidence after a final rejection or other final action requires good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. 37 C.F.R. §1.116(e). Dictionaries and technical treatises, however, generally may be consulted at anytime. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996). 7 Appeal 2014-005822 Application 11/544,632 interpretation, and urges that the preponderance of evidence of record supports this interpretation. (Id. ) The Examiner responds that the Specification does not teach the convention explicitly, and that “one cannot assume that the first element has to be present in the largest amount.” (Ans. 3,11. 4—5.) Accordingly, the Examiner continues, the limitation “FeCo-based alloy[] does not indicate that Fe is the base metal, but requires the content of Fe and Co be the base metal together.'” (Id. at 11. 8—9; emphasis added.) In particular, the Examiner finds that paragraph [0040] of the Specification reads, in part, “Co-Fe based alloy materials, e.g., FeCoZr . . . ,” supporting the Examiner’s broad interpretation and contradicting Seagate’s arguments. (Id. at 11. 9-11; emphasis added.) We first reject Seagate’s characterization of the Examiner’s interpretation of the claim term “FeCo-based alloy,” and the subsequent interpretation of the limitation “consisting essentially of FeCoZrX,” as the taking of “Official Notice.” Rather, it is clear that the Examiner is interpreting a claim limitation, and is doing so in light of the Specification. Particularly with the status of the disclosure of paragraphs [0039] and [0040] currently unresolved—and we expressly decline to express any opinion on the merits of that dispute—we are persuaded that the evidence of record presently cited, while not inconsistent with Seagate’s interpretation, is insufficient to show that Seagate’s interpretation is the general understanding of those skilled in the art. Our reviewing court has explained that “a patent need not teach, and preferably omits, what is well known in the art.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). We do not find it surprising, therefore, that the patent 8 Appeal 2014-005822 Application 11/544,632 documents before use do not speak to this matter directly. We emphasize that the issue is not the adequacy of the description in the Specification, but rather the factual question, what did persons having ordinary skill in the art understand by the first-named element in an alloy? In the present circumstances, direct evidence on this matter is required.13 Seagate’s remaining arguments that the Examiner used insufficient facts and technical reasoning in support of an “inherency” decision (Br. 17— 19) are themselves lacking in supporting evidence. The Examiner has found that Nepala teaches additives (Zr, Rh, Pd, Pt) are known for similar effects in similar magnetic alloys, and reasons that those alloys are sufficiently similar, on the present record, to certain alloys taught by Lee, such that the routineer would have had a reasonable expectation of successfully incorporating those additives and obtaining useful soft magnetic alloys. We have declined to accept Seagate’s nomenclatural arguments for lack of persuasive evidence regarding how people skilled in the art name the relevant alloys. The generalized arguments, e.g., that “chemistry teaches ‘the same claimed elemental components’ can be variously combined to give materials or compounds of vastly different properties” {id. at 18,11. 10-11), while true, do not refute the appealed rejection. Put another way, although Seagate has made clear it regards the rejection as inadequate, Seagate has not shown that the rejection is internally inconsistent, or inconsistent with established facts in the record. 13 Compare, for example, In reMayne, 104 F.3d 1339, 1344 (Fed. Cir. 1997) (“Even were it obvious to a practitioner of the art [that the BGH or HGH would have been expected to be inactive when fused to similar, recognized enterokinase cleavage site], applicants have the burden to provide the PTO with evidence showing that such is the case.”). 9 Appeal 2014-005822 Application 11/544,632 We conclude that Seagate has not demonstrated harmful error in the appealed rejection. C. Order It is ORDERED that the rejection of claims 1, 8, 15, and 22—30 is affirmed. 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 10 Copy with citationCopy as parenthetical citation