11265031 (B.P.A.I. Sep. 13, 2011)

Ex Parte Hsia et al

Board of Patent Appeals and InterferencesSep 13, 2011

11265031 (B.P.A.I. Sep. 13, 2011)

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. 11/265,031 11/02/2005 Yiao-Tee Hsia SEAG 70442/STL11569 5701 35810 7590 09/13/2011 PIETRAGALLO GORDON ALFANO BOSICK & RASPANTI, LLP ONE OXFORD CENTRE, 38TH FLOOR 301 GRANT STREET PITTSBURGH, PA 15219-6404 EXAMINER RICKMAN, HOLLY C ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 09/13/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YIAO-TEE HSIA, WEI PENG, and TIMOTHY J. KLEMMER ____________ Appeal 2010-007663 Application 11/265,031 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GARRIS, Administrative Patent Judge. Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. Â§ 102(b) of claims 1 and 3-11 as anticipated by Lin (6,127,053 issued Oct. 3, 2000) and of claims 1, 3-12, and 14-18 as anticipated by Mori (5,189,578 issued Feb. 23, 1993). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appeal 2010-007663 Application 11/265,031 2 Appellants claim a data storage medium or system comprising a magnetic recording layer and a stress-effecting layer adjacent the magnetic layer, wherein the stress-effecting layer comprises at least one of a magnetostrictive material, a piezoelectric material, a thermal expansion material or an electrostatic material (claims 1 and 12). Claims 1 and 12 are the only independent claims on appeal, and representative claim 1 reads as follows: 1. A data storage medium, comprising: a magnetic recording layer; and a stress-effecting layer adjacent the magnetic layer, wherein the stress- effecting layer comprises at least one of a magnetostrictive material, a piezoelectric material, a thermal expansion material or an electrostatic material. Appellants argue that neither Lin nor Mori teaches a data storage medium comprising a stress-effecting layer adjacent a magnetic recording layer as required by the independent claims on appeal (App. Br. 4-8, 10; Reply Br. 2-5). We agree. According to the Examiner, Appellants' claimed stress-effecting layer is satisfied by layer 420 of Lin (see Fig. 4a) and the piezoelectric layers of Mori (see 8, 9a, 9b in Fig. 1) because these prior art layers allegedly are capable of performing the claimed "stress-effecting" function since they are "adjacent" a magnetic recording layer as claimed and are made of the claimed materials (Ans. 8-10). Appeal 2010-007663 Application 11/265,031 3 Both Appellants and the Examiner refer to the following Specification disclosure regarding the claimed stress-effecting layer. [0029] A stress-effecting layer 40 can be deposited adjacent the magnetic layer 42. As used herein, the term "stress-effecting layer" means a material and/or materials that, when activated, produce an induced magneto-elastic anisotropy in an adjacent magnetic layer 42. As used herein, the term "activated" means an external force is applied to the stress- effecting layer causing a change in volume and/or shape of the stress-effecting layer. External force can be generated by applied mechanical forces, applied electric and/or magnetic fields and/or applied heat. The applied external force alters the stress/strain between the stress-effecting layer 40 and the magnetic layer 42 by inducing a magneto-elastic anisotropy (Ee) which reduces the composite magnetic anisotropy (E) of the magnetic layer 42, thereby decreasing the magnetic field required to switch the magnetic orientation of the magnetic layer 42. (Spec. [0029]). This disclosure clarifies that the material of construction alone does not result in a layer capable of performing a stress-effecting function. In addition, the layer also must become "activated" in response to an external force so as to thereby produce an induced magneto-elastic anisotropy in an adjacent magnetic layer. The Examiner has provided no support for the proposition that the identified layers of Lin and Mori are capable of being so-activated to thereby induce magneto-elastic anisotropy in an adjacent magnetic layer. In this latter regard, the deficiency of the Examiner's position is highlighted by the fact that in both Lin and Mori the allegedly stress-effecting layers are spaced from the allegedly magnetic recording layers. Although the Examiner seems to emphasize the breadth of the claim Appeal 2010-007663 Application 11/265,031 4 term "adjacent", the Examiner does not explain how magneto-elastic anisotropy would be induced despite this spacing. For the above reasons, we will not sustain either of the Examiner's Â§ 102 rejections. The decision of the Examiner is reversed. REVERSED sld