Ex Parte Ishibashi et al

Patent Trial and Appeal Board

Mar 20, 2017

13255450 (P.T.A.B. Mar. 20, 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.
13/255,450 11/04/2011 Shinichi Ishibashi Q125798 7001
23373 7590 03/22/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
MAYY, MOHAMMAD
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
03/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHIISHIBASHI, AKIRA YAMANE,
and MASATO FUKUSHIMA
Appeal 2016-002672
Application 13/255,450
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
Appellants2 filed an appeal under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1—5, 7—12, and 14—20.3 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, but enter NEW GROUNDS OF
REJECTION under 37 C.F.R. § 41.50(b).
1 Our decision refers to Appellants’ Specification filed October 1, 2014
(Spec.), Appellants’ Appeal Brief filed August 27, 2015 (Br.), and the
Examiner’s Answer delivered December 8, 2015 (Ans.).
2 Appellants identify the real party in interest as SHOWA DENKO K.K.
Br. 2.
3 Claim 6 has been withdrawn from consideration and is not before us on
appeal.
Appeal 2016-002672
Application 13/255,450
STATEMENT OF THE CASE
The subject matter on appeal relates to methods of producing a
magnetic recording medium having a magnetically separated magnetic
recording pattern (see, e.g., claim 1). Appellants disclose that attempts are
being made to increase the recording density of magnetic recording media in
view of strong demands for such densities. Spec. H 2, 3. However, as track
densities increase, mutual interference tends to occur between magnetically
recorded information within adjacent tracks, which causes a magnetized
transition region between tracks to act as a source of noise. Id. at 14. The
noise causes problems, such as deterioration of a signal to noise ratio, which
in turn leads to deterioration of a bit error rate. Id.
Moreover, to increase surface recording density, the size of each
recording bit must be reduced and the saturation magnetization and magnetic
film thickness must be maximized for each recording bit. Id. at | 5.
However, magnetization reversal induced by heat fluctuation may cause
recording data to be erased as the recording bits are reduced in size and the
minimum magnetization volume per bit is reduced. Id. Appellants further
disclose that prior methods are undesirable because a surface of a magnetic
layer is oxidized or halogenated or because the magnetic layer is physically
processed, which generates contaminating dust and reduces surface
smoothness. Id. at|| 15—16.
In view of the above, Appellants disclose a method that does not
oxidize or halogenate a surface of the magnetic layer and does not
contaminate the surface with dust. Id. at 117.
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Application 13/255,450
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.4 The limitations at issue are
italicized.
1. A method of producing a magnetic recording medium
having a magnetically separated magnetic recording pattern,
comprising, in this order:
a step of forming a magnetic layer on top of a non­
magnetic substrate;
a step of forming a mask layer for forming a magnetic
recording pattern on top of the magnetic layer; and
a step of irradiating an ion beam onto regions in the
magnetic layer which are not covered by the mask layer,
removing an upper layer portion of the magnetic layer at the
regions irradiated with the ion beam, and reforming magnetic
properties of a lower layer portion of the magnetic layer at the
regions irradiated with the ion beam to form a plurality of
recesses in the magnetic layer,
wherein two or more types of positive ions having
different masses are used for the ion beam, and
an ion gun for forming the ion beam has a positive
electrode thatforces out positive ions from an ion source towards
a substrate side, and a negative electrode that accelerates the
positive ions towards the substrate side.
The claims on appeal stand rejected as follows:
(1) claims 1, 2, 7—12, and 14—20 under 35 U.S.C. § 103(a) as
unpatentable over Kamata5 in view of Fujita6 and further in view of
Aisenberg;7
(2) claim 3 under 35 U.S.C. § 103(a) as unpatentable over Kamata
4 Br. 12.
5 Kamata et al., US 7,067,207 B2, issued June 27, 2006 (“Kamata”).
6 Fujita et al., US 2004/0190201 Al, published Sept. 30, 2004 (“Fujita”).
7 Aisenberg, US 3,904,505, issued Sept. 9, 1975 (“Aisenberg”).
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Application 13/255,450
in view of Fujita and further in view of Aisenberg and further in view of
Physical Electronics;8
(3) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over
Kamata in view of Fujita and further in view of Aisenberg and further in
view of Physical Electronics and further in view of Wakalopulos;9 and
(4) claim 5 under 35 U.S.C. § 103(a) as being unpatentable over
Kamata in view of Fujita and further in view of Aisenberg and further in
view of Wakalopulos.
ANALYSIS
Rejection over Kamata, Fujita, and Aisenberg
Claims 1, 2, 7—12, and 14—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kamata in view of Fujita and further in view of
Aisenberg.
The dispositive issue on appeal is whether Appellants have identified
a reversible error in the Examiner’s reason to combine the positive and
negative electrodes of Aisenberg with Kamata, as modified by Fujita.
Appellants have identified such an error.
The Examiner finds Kamata discloses a method of producing a
magnetic recording medium in which a magnetic layer is formed over a non­
magnetic substrate, a mask layer is formed over the magnetic layer, an ion
beam is irradiated onto regions of the magnetic layer not covered by the
8 Technician’s Model 11-068 Ion Gun Control Component Manual, Part No.
647203 Rev. A, Physical Electronics, Inc., pp. 1-3 and 4-1, 2000.
9 Wakalopulos, US 6,975,073 B2, issued Dec. 13, 2005 (“Wakalopulos”).
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Application 13/255,450
mask, and magnetic properties of a lower portion of the magnetic layer are
reformed at irradiated regions. Ans. 2.
The Examiner finds Kamata does not disclose removing an upper
layer portion of the magnetic layer or using an ion gun having a positive
electrode that forces out positive ions from an ion source towards a substrate
side and a negative electrode that accelerates the positive ions towards the
substrate side, as recited in claim 1. Ans. 2—3.
The Examiner finds Fujita discloses forming a magnetic layer over a
non-magnetic substrate, forming a mask over the magnetic layer, and
removing an upper portion of the magnetic layer not covered by the mask
using ion etching. Id. at 3. The Examiner concludes it would have been
obvious to modify Kamata in view of Fujita to prepare for subsequent steps
of forming a magnetic recording medium. Id.
The Examiner further finds Aisenberg discloses a positive ion beam
ion gun having a positive electrode to force out positive ions from an ion
source towards a substrate side and a negative electrode to accelerate the
positive ions towards a substrate side. Id.
Aisenberg discloses an apparatus for thin film deposition. Aisenberg
1:9—10. For the deposition of a silicon film 2110 onto a substrate 22,
Aisenberg discloses plasma ion source 10 having gas input line 12 and
silicon electrodes 14,15. Id. at 2:50-64; Fig. 1. A neutral gas, such as
argon, hydrogen, or helium, or an active gas, such as nitrogen or oxygen, or
a mixture thereof is introduced into the plasma ion source via gas input line
12. Id. at 3:7—11. Ions produced from the gas bombard silicon electrodes
10 Throughout this Decision, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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14,15, causing silicon atoms to sputter or vaporize into a discharge space of
plasma ion source 10 where the silicon atoms can be ionized. Id. at 3:7—14.
Anode extraction electrode 24 is biased as a positive anode to extract
electrons from plasma source 10. Id. at 3:39-42. Extraction electrode 24
pulls electrons from plasma source 10, which pull positive ions along with
them. Id. at 3:61—64. The device of Aisenberg further includes constrictor
electrode 26, which is operated as a cathode. Id. at 3:48—52.
The Examiner concludes it would have been obvious to modify
Kamata, as modified by Fujita, in view of Aisenberg to permit a glow
discharge ion source to operate at a lower pressure for faster processing
time. Id. at 4.
Appellants contend it would not have been obvious to combine the
positive and negative electrodes of Aisenberg with Kamata, as modified by
Fujita, because Aisenberg is directed to a deposition apparatus, not an ion
gun. Br. 10. These arguments are persuasive. The Examiner does not
sufficiently explain why one of ordinary skill in the art would have modified
the process of Kamata, which irradiates a ferromagnetic layer with ions to
convert portions of the ferromagnetic layer into soft magnetic material, to
use the electrodes of Aisenberg, which creates ions from a gas source,
bombards silicon electrodes with the gas ions to create silicon ions, and
draws the silicon ions towards a substrate with the electrodes to deposit a
film upon the substrate.
In view of the above, Appellants have identified a reversible error in
the Examiner’s reason to combine the positive and negative electrodes of
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Aisenberg with Kamata, as modified by Fujita, to provide the method of
claim 1.
Claims 2, 7—12, and 14—20 depend from claim 1. For the reasons set
forth above, the rejection of claims 1, 2, 7—12, and 14—20 under § 103 over
Kamata in view of Fujita and further in view of Aisenberg is not sustained.
Rejection of Claim 3 over Kamata, Fujita, Aisenberg, and Physical
Electronics
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kamata in view of Fujita and further in view of Aisenberg and further in
view of Physical Electronics.
Claim 3 depends from claim 1. The Examiner’s reliance on Physical
Electronics does not cure the deficiencies discussed above with regard to
claim 1. Therefore, we do not sustain the § 103 rejection of claim 3.
NEW GROUNDS OF REJECTION
Claims E 2, 5, 7—12, and 14—20
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection of claims 1, 2, 5, 7—12, and 14—20 under
35 U.S.C. § 103(a) as unpatentable over Kamata in view of Fujita,
Wakalopulos, and Aisenberg.
With regard to claim 1, Kamata discloses a prior art manufacturing
method in which ferromagnetic thin film layer 120 is formed on substrate
110, resist pattern 130 serves as a mask to form a pattern of recording bits,
ferromagnetic thin film layer 120 is etched by ion-milling to form the
pattern, and non-magnetic layer 140 is coated onto the ferromagnetic thin
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film layer 120. Kamata 2:42—52. As shown in Figure 1C of Kamata,
ferromagnetic thin film layer 120 is partially removed via the ion-milling
process, with a lower portion of ferromagnetic thin film layer 120 remaining
after an upper portion is removed.
Kamata further discloses a method of manufacturing a magnetic
recording medium comprising, among other things, forming ferromagnetic
layer 35 on nonmagnetic substrate 15, forming photoresist 70 (i.e., mask
layer) on ferromagnetic layer 35, forming recessed parts in photoresist 70
with stamper 60, and removing a remaining portion of photoresist 70 at the
bottom of the recessed parts via oxygen plasma ashing. Kamata 19:8—22.
Thereafter, portions of the ferromagnetic layer 35 not covered by the
photoresist 70 are irradiated by low mass rare gas ions, which have a
positive charge, to convert the exposed portions of ferromagnetic layer 35
into soft magnetic portions 25. Id. at 19:23—26. As shown in Figures 1 ID
and 1 IE of Kamata, an upper portion of the ferromagnetic layer is not
removed by the irradiation process. Kamata further discloses helium and
neon ion as preferred ions because low mass rare gas ions can prevent
sputter etching of the ferromagnetic layer when it is irradiated with the ions.
Id. at 19:26-29.
Fujita discloses providing intermediary body 26 made of a non­
magnetic material, forming protective layer 15 on intermediary body 26,
forming recording layer 30 (i.e., magnetic material) on protective layer 15,
forming first and second masks 32, 34 over recording layer 30, and
removing an upper portion of recording layer 30 not covered by the masks
via ion etching. Fujita 69-75. As shown in Figure 8 of Fujita, the
recording layer 30 is completely removed by the ion etching step at areas
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Application 13/255,450
where recesses were previously located in first mask 32 (depicted in Figure
7 of Fujita).
Based on the above, one of ordinary skill in the art would have
understood Kamata and Fujita demonstrate ion irradiation of a magnetic
layer as a result-effective process that can be optimized to produce different
results. Specifically, Kamata demonstrates irradiation of a magnetic layer
with ions can partially remove portions of the magnetic layer irradiated with
ions, as depicted in Figure 1C of Kamata, or not remove a portion of the
magnetic layer, as shown in Figures 1 ID and 1 IE of Kamata. Fujita further
demonstrates irradiation of a magnetic layer can cause complete removal of
portions of the magnetic layer irradiated with ions, as depicted in Figure 8 of
Fujita.
In view of these teachings of Kamata and Fujita, it would have been
obvious, as a matter of routine optimization to arrive at the level of ion
irradiation necessary for partial removal of the upper portion of
ferromagnetic layer 35 and reformation of the magnetic properties of a lower
portion of ferromagnetic layer 35 (e.g., forming soft magnetic portions 25).
“[Djiscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272,
276 (CCPA 1980).
Appellants argue neither Kamata nor Fujita teaches or suggests
removal of an upper layer portion of the magnetic layer at regions irradiated
with an ion beam and reforming magnetic properties of a lower layer portion
of the magnetic layer at the irradiated regions, as recited in claim 1, because
the references are silent with regard to these two limitations. Br. 7—8.
Appellants contend the Examiner admits Kamata does not teach removal of
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the upper layer portion, as it is protective layer 15, not magnetic recording
layer 14, of Fujita that is partially removed. Id. at 6—8. Moreover,
Appellants argue the combination of Kamata and Fujita utilizes
impermissible hindsight. Id. at 8. These arguments are unpersuasive
because the test for obviousness is not that the claimed invention must be
expressly suggested in any one or all of the references, but what the
combined teachings of the references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). As
described above, the disclosures of Kamata and Fujita demonstrate the
irradiation and removal of a portion of the magnetic layer with an ion beam
is a result-effective process that may be routinely optimized by one of
ordinary skill in the art. As a result, it would have been obvious for one of
ordinary skill in the art to routinely optimize the ion irradiation of Kamata so
that an upper portion of ferromagnetic layer 35 is partially removed and the
magnetic properties of a lower portion of ferromagnetic layer 35 irradiated
by ions are reformed.
Kamata, as modified by Fujita, does not disclose using an ion gun
having a positive electrode that forces out positive ions from an ion source
towards a substrate side and a negative electrode that accelerates the positive
ions towards the substrate side, as recited in claim 1.
Wakalopulos discloses an ion plasma beam generating device
including plasma chamber 10 into which gas flows. Wakalopulos abstract;
3:11—13, 26—28. Wakalopulos discloses the gas may be helium, hydrogen,
air, or another gas source. Id. at 3:28—29. The gas is converted into a
plasma by applying a positive voltage to the gas via a wire 52. Id. at 3:36—
39. One of ordinary skill in the art would have recognized positive gaseous
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ions would have been repelled by the positive voltage of wire 52. The
positive ions are further attracted to cathode surface 22, which has a negative
voltage. Id. at 3:49-50.
Wakalopulos demonstrates it was known in the art to use positively
and negatively charged elements to accelerate positively charged ions. We
conclude it would have been obvious to one of ordinary skill in the art to
modify Kamata, as modified by Fujita, to use a positive electrode and a
negative electrode as devices to accelerate positive ions, such as to force out
(i.e., repel) positive ions from an ion source and accelerate the ions towards
a substrate, as recited in claim 1, because it would have been a combination
of known elements according to known methods to produce a predictable
result. “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
With regard to dependent claims 2, 5, 7—12, and 14—20, Appellants do
not direct us to any error in the Examiner’s findings of fact or conclusions of
law set forth at pages 4—5 of the Examiner’s Answer. Therefore, in addition
to the findings set forth above in the new ground of rejection for claim 1, we
adopt the Examiner’s findings and conclusions of law set forth in the
Examiner’s Answer for rejecting claims 2, 5, 7—12, and 14—20.
In summary, claims 1, 2, 5, 7—12, and 14—20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Kamata in view of Fujita,
Wakalopulos, and Aisenberg under this new ground of rejection.
Claim 3
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection of claim 3 under 35 U.S.C. § 103(a) as
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unpatentable over Kamata in view of Fujita, Wakalopulos, and Aisenberg
and further in view of Physical Electronics.
Claim 3 recites further limitations for the ion gun of claim 1. Br. 13.
Appellants do not direct us to any error in the Examiner’s findings of fact or
conclusion of law set forth at page 6 of the Examiner’s Answer for the § 103
rejection of claim 3. Therefore, in addition to the findings set forth above in
the new ground of rejection for claim 1, we adopt the Examiner’s findings
and conclusion of law set forth in the Examiner’s Answer for rejecting claim
3.
Claim 4
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kamata in view of Fujita and further in view of Aisenberg and further
in view of Physical Electronics and further in view of Wakalopulos. This
combination of references includes the combination of references applied in
the new ground of rejection set forth above for rejecting claim 1. Appellants
do not direct us to any error in the Examiner’s findings of fact or conclusion
of law set forth at pages 6—7 of the Examiner’s Answer for the § 103
rejection of claim 4. Therefore, we affirm the § 103 rejection of claim 4
over Kamata in view of Fujita and further in view of Aisenberg and further
in view of Physical Electronics and further in view of Wakalopulos.
Claim 5
Claim 5 is rejected over the combination of Kamata, Fujita,
Wakalopulos, and Aisenberg. Ans. 8. This is the same combination applied
in the § 103 rejection set forth above for claim 1 under the new grounds of
rejection. Appellants do not direct us to any error in the Examiner’s findings
of fact or conclusion of law set forth at page 8 of the Examiner’s Answer for
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the § 103 rejection of claim 5. Therefore, we affirm the § 103 rejection of
claim 5 over the combination of Kamata, Fujita, Wakalopulos, and
Aisenberg.
CONCLUSION
On the record before us, we:
A. do not sustain the rejection of claims 1,2, 7—12, and 14—20
under § 103 over Kamata in view of Fujita and further in view of Aisenberg;
B. do not sustain the rejection of claim 3 under § 103 over Kamata
in view of Fujita and Aisenberg;
C. enter a new ground of rejection under § 103 for claims 1, 2, 7—
12, and 14—20 over Kamata in view of Fujita, Wakalopulos, and Aisenberg;
D. sustain the rejection of claim 5 under § 103 over Kamata in
view of Fujita, Wakalopulos, and Aisenberg;
E. enter a new ground of rejection under § 103 for claim 3 over
Kamata in view of Fujita, Wakalopulos, and Aisenberg and further in view
of Physical Electronics; and
F. sustain the rejection of claim 4 under § 103 over Kamata in
view of Fujita, Aisenberg, Physical Electronics, and Wakalopulos.
DECISION
The decision of the Examiner to reject claims 1—5, 7—12, and 14—20 is
affirmed-in-part, with new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2015). This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2015).
AFFIRMED-IN-PART
NEW GROUND OF REJECTION. 37 C.F.R, $ 41.50(b)
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