Ex Parte Hsia et al

Patent Trial and Appeal Board

Feb 1, 2017

12167040 (P.T.A.B. Feb. 1, 2017)

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.
12/167,040 07/02/2008 Yiao-Tee Hsia 10-13810-00-US 4731
105639 7590 02/02/2017
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
EXAMINER
LOUIE, MANDY C
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
02/02/2017 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 YIAO-TEE HSIA1
and Lei Li
Appeal 2015-003877
Application 12/167,040
Technology Center 1700
Before CHUNG K. PAK, MARKNAGUMO, and WESLEY B. DERRICK,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Yiao-Tee Hsia and Lei Li (“Seagate”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1—7, 10—15,
26—28, 36, and 37.3 We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Seagate Technology LLC
(“Seagate”). (Appeal Brief, filed 31 July 2014 (“Br.”), 3.)
2 Office action mailed 30 January 2014 (“Final Rejection”; cited as “FR”)
at 14—15.
3 Remaining copending claims 29—35 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal 2015-003877
Application 12/167,040
OPINION
A. Introduction4
The subject matter on appeal relates to methods of making high
density magnetic disc drives having patterned media. According to
the ’040 Specification, the density at which magnetically stored data can be
written on conventional continuous media is constrained by the
“superparamagnetic limit.” (Spec. 1 [0001].)5 According to the
Specification, a solution to this problem is to organize the magnetic media
into individual lands. (Id. ) The resulting topography arising from the
regions between the lands, however, is said to induce a deleterious “dynamic
response” of a disc head slider flying over the surface. (Id. at [0002].)
Seagate seeks patent protection for a method of making a patterned
storage medium in which the patterned medium is coated with a polymer,
which is then removed selectively, leaving a substantially planer medium.
(Id. at [0003].) The polymer has a functionalized end group at a first end
that preferentially bonds to the recess surfaces. (Id.) The recess surfaces
must be different from the land surfaces. (Id. at 4 [0021].)
Disk drives are generally coated with a lubricant, such as a
perfluorinated polyether (PFPE). (Id. at 6 [0032].) In preferred
4 Application 12/167,040, Planarization methodology for topographically
challenged media surface, filed 2 July 2008. We refer to the
“’040 Specification,” which we cite as “Spec.”
5 The “superparamagnetic limit” appears to be the same as the “thermal
fluctuation problem” discussed by Hieda ’694 (full cite at 5n.l0, infra)
at 1 [0006], in which the magnetization of a sufficiently small particle flips
randomly, and the particles lose their stable magnetic order, as discussed by
Kamata 1 [0005]—[0006] (full cite at 5n.l4, infra).
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Application 12/167,040
embodiments of the invention, the polymer has a functionalized second end
that preferentially bonds to the lubricant. {Id. at [0023].)
An embodiment of the process is illustrated in Figures 3 A—3C, below.
(Figs. 3 A—3C illustrate the claimed method}
As shown in Fig. 3 A, patterned media 246 is provided with lands 26,
made of magnetic material, which have top surfaces 36 and side surfaces 38.
{Id. at 3^4 [0019].) Lands 26 may be imprinted or grown on media 24.
{Id. at 4 [0020].) Land surfaces 36 may comprise a diamond-like carbon
film 30, which is not present on side surfaces 38 or on recess surfaces 40.
{Id. at [0021]—[0022].)
6 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 12/167,040
As shown in Fig. 3B, polymer 32 is applied to the surface of patterned
media 24. {Id. at [0023].) In this embodiment, polymer 32 contains polar
groups, and the functionalized end groups of polymer 32 are said to facilitate
preferential bonding to recess surfaces 40. {Id.) As mentioned supra, in a
preferred embodiment {see, e.g., claims 4 and 37, Claims App., Br. 27
and 31), the second end of polymer 32 is tailored to preferentially bond to
lubricant layer 34. {Id.; see Fig. 2, not reproduced here.) The Specification
reveals that polymer 32 may contain self-assembled monolayers (“SAM”),
derived, for example, from tridecafluoro-tetrahydrooctyl-trichlorosilane
[CF3(CF2)5-CH2CH2-SiCl3] (“FOTS”). {Id. at 5 11. 6-7.) In this case,
following the ’040 Specification, it appears that the polar group, —SiCl3,
would preferentially bond to the recess surfaces, while the fluorocarbon
moiety, CF3(CF2)s-, would preferentially bond to the PFPE lubricant.
Claim 1 is representative and reads:
A method comprising:
coating a storage medium with a polymer, wherein
the storage medium comprises
land sides,
land surfaces comprising a first material and
recess surfaces comprising a second material, and
the first material and the second material are
different; and
removing the polymer from the land surfaces to form a
substantially planar surface on the storage medium, wherein
the polymer comprises
a functionalized end group at a first end that is operable
to preferentially bond to
the recess surfaces and
the land sides.
(Claims App., Br. 27; some indentation, paragraphing, and emphasis added.)
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Application 12/167,040
Remaining independent claim 36 is similar but broader. It does not
recite the presence of land sides, and it requires that “the polymer comprises
a functionalized end group at a first end configured to bond to the recess
surfaces.'1'’ {Id. at 30-31; emphasis added.)
The Examiner maintains the following grounds of rejection7,8’9:
A. Claims 1, 2, 5, 6, 11, and 36 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Hieda ’694,10 Hieda’681,11 and Dictionary.12
B. Claims 1—5, 7—11, 26, 28, 36, and 37 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Hattori,13 Hieda ’681, Dictionary, and Kamata.14
Claim 10 is rejected based on Hieda ’694, the additional references
cited in Rejection A, and Kamata. Similarly, in Rejection B, Kamata is
7 Examiner’s Answer mailed 2 December 2014 (“Ans.”).
8 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.
9 A rejection under 35 U.S.C. § 112(2), indicated as withdrawn (Pre-Brief
Appeal Conference Decision mailed 1 May 2014), appears to have been
included in the Examiner’s Answer (Ans. 2) by mistake.
10 Hiroyuki Hieda et al., Magnetic recording media, U.S. Patent Application
Publication 2006/0257694 Al (2006).
11 Hiroyuki Hieda et al., Pattern forming method and method ofprocessing a
structure by use of same, U.S. Patent Application Publication
2006/0078681 Al (2006).
12 Merriam Webster Dictionary, definition of “bond.”
13 Kazuhiro Hattori and Kazuya Shimakawa, Information medium, U.S.
Patent Application Publication 2007/0275270 Al (2007), based on an
application filed 24 May 2007.
14 Yoshiyuki Kamata et al., Magnetic recording medium and method for
manufacturing the same, U.S. Patent Application Publication
2005/0069732 Al (2005); Hiroyuki Hieda is listed as a co-inventor.
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Application 12/167,040
applied against claim 10, but not against independent claims 1 or 36.
Claims 6, 12—15, and 27 stand rejected individually view of Hattori and the
additional references cited in Rejection B, and six additional references.
As will become apparent, it is not necessary to consider the additional
rejections further in view of the additional references to decide this appeal.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner finds that principal references Hieda ’694 and Hattori
describe methods of making planarized patterned magnetic storage media
meeting most of the limitations of the claimed method. The Examiner finds
that the difference is that Hieda ’694 and Hattori fail to teach a polymer
having a functionalized end group that preferentially bonds with the recess
surfaces. (FR, para, bridging 3^4; 6.)15 The Examiner finds that Hieda ’681
describes such a polymer, namely, a diblock copolymer constituted of
blocks A and B, wherein at least one of the blocks (block B) has a mesogen
group. The Examiner finds that the mesogen group causes the block
“copolymer to self-assemble in the groove to be regularly arrayed.” (FR 4,
11. 12—13; 6,11. 18—19.) This, the Examiner holds, meets the requirement
that a functionalized end group preferentially bonds to the recess surfaces
15 The Examiner finds further that Hattori does not teach that the land
surfaces and the recess surfaces comprise different materials (and, as
required by claim 10, which depends from claim 1, that the different
materials both be magnetic), but finds that Kamata provides these teachings.
{Id. at 7,1. 10, to 8,1. 4.) As will be become apparent, we need not consider
this aspect of the rejection in detail to resolve this appeal.
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(id. at 4,11. 13—15; 6,11. 19—20). The Examiner reasons that the artisan
would have been motivated to use the end-functionalized diblock
copolymers taught by Hieda ’681 in the processes taught by Hieda ’694 or
Hattori “to maintain consistency in order structures so as to avoid problems
in magnetic media [0008], and other benefits (i.e. cost effective) [0006].”
(Id. at 5,11. 1—3; 7,11. 7—9, citing Hieda ’681.)
Seagate argues, inter alia, that the Examiner has failed to establish an
adequate motivation to combine the teachings of principal references
Hieda ’694 or Hattori with the teachings of Hieda ’681. (Br. 13—14 and 19—
20 (Hieda ’694); 20-21, and 23 (Hattori).) More particularly, Seagate urges,
the Examiner has not explained how “consistency in ordered structures”
relates to “problems in magnetic media,” or what technical nexus is provided
by the alleged benefits. (Id. at para, bridging 19-20.)
The weight of the evidence supports Seagate’s arguments. The
Examiner does not direct our attention to any particular problem with the
magnetic media disclosed or apparent in Hieda ’694 or in Hattori that the
regular array of regular phase-separated structures provided by Hieda ’681
(see, e.g., Hieda ’681, Figs. 5 and 6) would ameliorate. Hieda ’681 teaches
that these regular phase-separated structures arise from the interaction of the
mesogens with the walls of a groove in which the diblock copolymers are
placed. (Hieda ’681, Fig. 3B and associated text at [0031]—[0033].) The
cost and other benefits disclosed by Hieda ’681 relate to the subsequent use
of those regular arrays of structures to generate high-etching resistant masks
from materials such as metals and oxides. (Id. at 4 [0034]—[0035],
and Example 4 at 5 [0045].) The Examiner has not explained—and we do
not perceive any immediately recognizable teachings—that would have
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Application 12/167,040
prompted the proposed use of the polymers taught by Hieda ’681 as the
polymers filling the regions between lands describe by Hieda ’694 or by
Hattori.
The Examiner makes no findings regarding the secondary references
that cure this fundamental defect in the rejection of claim 1.
The rejections of all claims are therefore reversed.
Our reversal of the rejections should not be interpreted as an
endorsement of Seagate’s arguments (Br. 15—18 and 21—22) regarding the
terms “functionalized end group” and “bond.” We offer the following
observations and comments as guidance in the event of further examination.
The ’040 Specification does not provide a formal definition of either term,
and Seagate has not introduced formal definitions from recognized prior art
authority into the record.
More particularly, Seagate has not directed our attention to an
unambiguous example of a “functionalized end group” in a polymer. The
clearest step in this direction, namely the molecule FOTS, is not a polymer,
and the two-dimensional array of a self-assembled monolayer of FOTS does
not provide much insight into how a functionalized end group is necessarily
defined for the conventional polymers recited in claim 5 (Claims App.,
Br. 27), especially in the case of polyolefins. The point is not that the
resulting term is indefinite, but that it is very broad. The side-chain and
main-chain mesogenic diblock copolymers illustrated in Hieda ’681,
Figures 4 A and 4B have mesogens at the end of the B-block that meet any
reasonable definition of a “functionalized end-group,” in light of
the ’040 Specification.
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Application 12/167,040
Similarly, the term “bond,” read in light of the disclosure of
the ’040 Specification, is very broad. In addition to reactive functional
groups such as -SiCf, the other end of the SAM precursor FOTS, namely
the CF3(CF2)5- group, is said to bond preferentially to lubricants such as
PFPE. It is well and generally known that these groups are not mutually
reactive under ordinary conditions. For example, fluorocarbons like
polytetrafluoroethylene, commonly recognized via the TEFLON® registered
trademark, are used to provide non-reactive, non-stick surfaces on cookware
and other items. Thus, the “preferential bonding” disclosed by
the ’040 Specification encompasses both conventional chemical bonds as
well as much much weaker van der Waals-based interactions.
Given the scope of these terms, Seagate has not demonstrated harmful
error in the Examiner’s findings that the mesogenic groups provide a
“functionalized end group” of a polymer that “is operable to preferentially
bond to [] recess surfaces” as required by claim 1. As discussed at length
supra, the harmful error arises from the absence of a reason to make such a
substitution based on the applied prior art.
C. Order
It is ORDERED that the rejection of claims 1—7, 10—15, 26—28, 36,
and 37 is reversed.
REVERSED
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