Ex Parte Hirayama et al

Patent Trial and Appeal Board

Jan 8, 2013

11258532 (P.T.A.B. Jan. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/258,532 10/24/2005 Yoshiyuki Hirayama HIT1P495/HJP920040106US1 2645
50535 7590 01/09/2013
ZILKA-KOTAB, PC- HIT
P.O. BOX 721120
SAN JOSE, CA 95172-1120
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
01/09/2013 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIYUKI HIRAYAMA
IKUKO TAKEKUMA, and ICHIRO TAMAI
____________

Appeal 2011-010405
Application 11/258,532
Technology Center 1700
____________

Before TERRY J. OWENS, MARK NAGUMO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
The named inventors (collectively “Appellant”) appeal under
35 U.S.C. § 134 from the final rejection of claims 1, 3-5, 7-9, 11-13,
and 21-22 directed to a perpendicular magnetic recording medium and
magnetic recording/reproducing apparatus. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A perpendicular magnetic recording medium having at least a
soft-magnetic underlayer, an intermediate layer, a magnetic recording layer,
and a protective layer, which are laminated in order on a substrate, wherein:
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the magnetic recording layer is of granular-structure that is composed
of a plurality of columnar grains and grain boundary layers including oxide;
and
the columnar grains have a continuous columnar shape in which a
protective layer side portion is larger in average diameter value from more
than ten measurement results than that of an intermediate layer side portion
when the columnar grains are divided equally into two portions, which are
the protective layer side portion and the intermediate layer side portion, in a
film thickness direction thereof such that an oxygen content of the protective
layer side portion is lower than an oxygen content of the intermediate layer
side portion.

THE REJECTIONS
Appellant seeks our review of the following rejections, which we refer
to by number in our analysis:
Rejection 1: Claims 1, 3-5, 7-9, 11-13, and 21-22 stand provisionally
rejected on the ground of non-statutory obviousness-type double patenting as
being unpatentable over claims 21-30 of co-pending Application Serial
No. 12/061,518;
Rejection 2: Claims 1 and 9 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Koda (US 2004/0185308 A1 published Sept. 23, 2004);
Rejection 3: Claims 3, 11, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Koda in view of Takahashi (US 2003/0219631
A1 published Nov. 27, 2003);
Rejection 4: Claims 4-5, 7-8, and 12-13 stand rejection under
35 U.S.C. § 103(a) as unpatentable over Koda in view of Takahashi and in
further view of Hirayama (US 2004/0038083 A1 published Feb. 26, 2004);
Rejection 5: Claims 21-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Koda in view of Hirayama;
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Rejection 6: Claims 21-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Koda in view of Tetsuo (JP 2002-025030 published
Jan. 25, 2002).
Rejection 7: Claims 5, 7-8, and 13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Koda in view of Takahashi and in further view
of Tetsuo.
ANALYSIS
Rejection One: Obviousness-type double patenting
Claims 1, 3-5, 7-9, 11-13, and 21-22 are provisionally rejected on the
ground of non-statutory obviousness-type double patenting over claims 21-
30 of co-pending Application Serial No. 12/061,518.1 Ans. 4.2 Appellant
raises no substantive arguments contesting this rejection. App. Br. 11.
Therefore, we summarily affirm Rejection One.
Rejection Two: Anticipation of claims 1 and 9 by Koda
Appellant argues claims 1 and 9 as a group. App. Br. 11. We select
claim 1 as representative of the group. Claim 9 stands or falls with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
Having carefully considered each of Appellant’s arguments, we agree
with the Examiner that claim 1 is anticipated by Koda. We affirm Rejection
Two for the reasons stated on pages 4-5 and 11-12 of the Answer, adding the
following for emphasis only.

1 Application Serial No. 12/061,518 is the subject of a decision mailed
simultaneously herewith in Appeal No. 2011-010544.
2 Our analysis refers to the Examiner’s Answer mailed November 19, 2010
(“Ans.”), the Appeal Brief filed September 8, 2010 (“App. Br.”), and the
Reply Brief filed January 5, 2011 (“Reply Br.”).
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Appellant contends that “Koda’s magnetic recording layer has two
separately-formed layers” marked by “different oxide content[s]” and
“different grain diameters.” The nub of Appellant’s argument is that “a
step” is “formed at the transition of the layers in Koda,” App. Br. 13
(citations omitted), such that the grains are not of a “continuous” columnar
shape as required by claim 1. Id. at 14.
The Examiner finds that Koda discloses “a single magnetic recording
layer (5)” that is comprised of sub-layers (5a-5b), and that each sub-layer is
made of “the exact same material but with different oxide concentrations as
claimed.” Ans. 11 (citing Koda Fig.1 and ¶ [0059]; claim 1 (specifying a
magnetic layer divided into “two portions” having different oxide contents)).
The Examiner further finds that Koda’s sub-layers (5a-5b) “are formed of
the same sputtering methods” and “the same conditions of gas pressure and
input electric power but with different oxide concentration.” Id. (citing
Koda ¶¶ [0059]-[0060]). In the Examiner’s view, Koda depicts two sub-
layers (5a-5b) in Figure 1 “to illustrate the different oxide concentrations in
the magnetic layer (5), which reads on instant claim 1.” Id. at 12. A
magnetic layer having two portions that differ by oxygen content, such as
the layer (5) depicted in Koda at Figure 1, is covered by claim 1, which
specifies a magnetic recording layer having “two portions” that differ by
“oxygen content.”
The weight of the evidence supports the Examiner’s further finding
that Koda’s two-step sputtering process of making sub-layers (5a-5b) “is
very similar to those of the instant application.” Ans. 11. See Koda
¶¶ [0009], [0015]-[0018] (describing two-step sputtering method) and
especially ¶¶ [0059]-[0060] (describing two-step sputtering process in which
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mole percentage of oxide incorporated in sublayer 5a is higher than in
sublayer 5b); compare Spec. ¶¶ [0015], [0055], [0059] (describing two-step
sputtering method of invention) and especially ¶ [0064] (“the effect of the
present invention is obtained only with the magnetic recording layer
sputtering process configured by two different steps in which the oxygen gas
flow rate in the first step is set to be higher than that in the second step). On
this record, we agree that the processes are “very similar.” Ans. 11.
Furthermore, Koda discloses that “the crystalline orientation of the
entire recording layer is improved owing to the growth of the crystal grains
of the magnetic layer stacked on the lowermost layer by using the crystal
grains as the cores for the crystal growth.” Koda ¶ [0023]. This disclosure
supports the Examiner’s finding that, “due to the crystal growth connection
between” the sub-layers (5a-5b), Koda’s “grains are continuous” as required
by claim 1. Ans. 12.
Appellant argues that an ordinary artisan “would appreciate that
forming one layer above another layer using Koda’s method would not
obviously impart a continuous columnar shape” in Koda’s magnetic
recording layer. App. Br. 14. That unsupported attorney argument is
insufficient to rebut the Examiner’s finding that Koda’s magnetic recording
layer (5), which is divided into sub-layers (5a-5b) having different oxide
contents, differs in no meaningful way from the magnetic recording layer of
claim 1, which is divided into “two portions” that differ by “oxygen
content.” Claim 1; see Ans. 4; In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (where “claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
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necessarily or inherently possess the characteristics of his claimed
product.”).
On this record, we affirm Rejection Two.
Rejection Three: Unpatentability of claims 3, 11,
and 21 over Koda in view of Takahashi

Regarding Rejection Three, Appellant relies on the same arguments
raised as to Rejection Two. App. Br. 16-17. We affirm Rejection Three for
the reasons stated above regarding Rejection Two.
Rejection Four: Unpatentability of claims 4-5, 7-8,
and 12-13 over Koda in view of Takahashi and Hirayama

Appellant presents argument as to limitations common to claims 5
and 13 from among the group of claims that is subject to Rejection Four.
App. Br. 17-18. We select claim 5 as representative of the group. Claims 4,
7-8, and 12-13 stand or fall with claim 5. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant challenges the Examiner’s finding that Hirayama discloses,
from “among the layers of the intermediate layer, [a] layer which is located
immediately beneath the magnetic recording layer” that is formed “of a
granular-structure that is composed of a plurality of columnar grains and
grain boundary layers including oxide” as specified in claim 5. App. Br. 17.
Specifically, Appellant argues that, in the layer immediately below the
magnetic recording layer, “Hirayama appears to disclose metallic islands
formed above an oxygen containing layer,” much like “cookies on a baking
sheet.” Id. at 18 (citing Hirayama ¶ [0017]) (emphasis omitted).
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Figure 1 of Hirayama is reproduced below:

Figure 1 is a schematic diagram showing a cross-sectional structure of
perpendicular magnetic recording media according to Hirayama’s invention.
The Examiner finds that, “since there are clear voids between the
grains (15), the oxide-containing grain boundary layer (14) is immediately
beneath the magnetic recording layer (16).” Ans. 14 (further noting that
Hirayama’s “metallic islands . . . are considered the grains”) (numerical
references to Hirayama’s Figure 1 added) (emphasis omitted). What the
Examiner harmlessly mischaracterizes as “clear voids” are in fact integral
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features of the oxide-containing grain boundary layer in Hirayama: “[T]he
metallic intermediate layer containing oxygen functions to form clear crystal
grain boundaries formed of oxides on the oxygen-containing layer left
around the island-shaped metallic layer including a plurality of isolated
island structures, and these crystal grain boundaries function to promote
magnetic isolation of the crystal grains in the [magnetic] recording layer.”
Hirayama ¶ [0022]. This disclosure supports the Examiner’s further finding
“that the oxygen-containing layer” in Hirayama “has an effect of preventing
adjacent crystal grains from being united to each other” and, thus, “acts as a
segregant or a grain boundary” between the grains of the magnetic recording
layer. Ans. 14 (citing Hirayama ¶ [0017].
In reply, Appellant merely repeats arguments stated in the Appeal
Brief, coming forward with no persuasive argument or evidence
demonstrating error in the Examiner’s findings. Reply Br. 6.
On this record, Hirayama’s “cookies on a baking sheet” configuration,
id., meets the limitations of claim 5 requiring that, “among the layers of the
intermediate layer, the layer which is located immediately beneath the
magnetic recording layer is of granular-structure that is composed of a
plurality of columnar grains and grain boundary layers including oxide.”
Claim 5; Ans. 14.
Appellant further argues that Takahashi fails to disclose an “oxygen
containing layer” that is located “immediately beneath the magnetic
recording layer” as specified in claim 5. App. Br. 18. The Examiner,
however, does not rely on Takahashi for this feature of claim 5. Ans. 7, 14
(relying on Hirayama for an oxygen-containing intermediate layer located
immediately beneath the magnetic recording layer) (citations omitted). One
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cannot show nonobviousness by attacking references individually, where the
rejection is based on a combination of references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
On this record, we affirm Rejection Four.
Rejections Five, Six, and Seven
Regarding Rejections Five and Seven, Appellant relies on the same
arguments raised as to Rejections Two and Four. App. Br. 16-17. We
affirm Rejections Five and Seven for the reasons stated above regarding
Rejections Two and Four.
Regarding Rejection Six, claims 21-22 stand rejected as unpatentable
over Koda in view of Tetsuo. Ans. 8-9. Appellant responds that “neither
Koda nor Tetsuo disclose, teach or suggest” the limitations of claim 21.
App. Br. 20. Skeletal arguments merely declaring that a reference fails to
“disclose or suggest” a particular limitation are insufficient to support the
separate patentability of a claim within the meaning of 37 C.F.R.
§ 41.37(c)(1)(vii) and, therefore, need not be addressed. In re Lovin, 652
F.3d 1349, 1356-57 (Fed. Cir. 2011).
In the Reply Brief, Appellant raises a new argument regarding the
disclosure of Tetsuo at paragraphs [0018]-[0021]. Reply Br. 8. Absent a
showing of good cause, we decline to consider arguments raised for the first
time in a reply brief. Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI
2010) (informative). Good cause is not shown here, where Appellant
provides no reason why the argument could not have been raised in the
Appeal Brief. Ibid. The new argument is in fact directed to findings that
appear in the Final Office Action. See Final Office Action entered April 1,
2010, at p. 7 (Examiner’s findings regarding Tetsuo). Therefore, Appellant
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had every opportunity to raise that argument in the Appeal Brief to enable a
response by the Examiner.
On this record, we affirm Rejection Six.
CONCLUSION
For the above reasons, we affirm the rejections of claims 1, 3-5, 7-9,
11-13, and 21-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED

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