Ex Parte Kodama et al

Patent Trial and Appeal Board

Feb 28, 2018

13239244 (P.T.A.B. Feb. 28, 2018)

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.
13/239,244 09/21/2011 Mineaki Kodama HIT 1P618/HJP920100035US1 1083
50535 7590 03/02/2018
WESTERN DIGITAL CORPORATION_ZILKA/HG
5601 Great Oaks Parkway
SAN JOSE, CA 95119
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
03/02/2018 ELECTRONIC
EXAMINER
DRAVININKAS, ADAM B
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):
Patent. Reporting @ wdc. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINEAKI KODAMA, KAZUHITO MIYATA,
HIROSHI ISHIZAKI, and ATSUKO OKAWA
Appeal 2016-002742
Application 13/239,244
Technology Center 2800
Before JAMES C. HOUSEL, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 10-17 and 19-31. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to the Specification filed September 21,2011
(“Spec.”), the Final Office Action mailed April 29, 2014 (“Final Act.”),
Advisory Action mailed July 10, 2014 (“Adv. Act.”), the Appeal Brief filed
September 25, 2014 (“Appeal Br.”), Supplemental Appeal Brief filed
November 5, 2014 (“Supp. Appeal Br.”), the Examiner’s Answer mailed
January 22, 2015 (“Ans.”), and the Reply Brief filed January 11, 2016
(“Reply Br.”).
2 Appellants identify the real party in interest as HGST NETHERLANDS
B.V. Appeal Br. 2.
Appeal 2016-002742
Application 13/239,244
The subject matter of the claims on appeal relates to magnetic
recording heads with a protective film. Spec. ^ 1. Claim 10, reproduced
below from the Claims Appendix of the Appeal Brief, is illustrative of the
claims on appeal.
10. A magnetic head, comprising:
at least one of: a read element, a write element, a heater
element, and a resistance detector element above a substrate;
conductive terminals for each of the at least one of: the
read element, the write element, the heater element and the
resistance detector element; and
a solid protective film above a media-facing side of the at
least one of: the read element, the write element, the heater
element and the resistance detector element, wherein the
protective film physically comprises at least one of a gaseous
hydrogen compound and water therein.
Supp. Appeal Br. 2-3 (Claims App.).
Claim 24, the other independent claim, which is also directed to a
magnetic head, includes a similar recitation that “the protective film
comprises at least one of a gaseous hydrogen compound and water therein.”
Id. at 4 (Claims App.)
REJECTIONS3
The Examiner maintains the following rejections on appeal:
Rejection I: Claims 10-17 and 19-31 under pre-AIA 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement (Final Act. 3—4);
3 The Examiner maintained an objection to the drawings under 37 C.F.R.
§ 1.83(a) in the Advisory Action. Adv. Act. 2. We do not consider the
drawing objection in this appeal because the objection is a petitionable
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Application 13/239,244
Rejection II: Claims 10-13, 15, 17, 19, and 23-27 under 35 U.S.C.
§ 103(a) as unpatentable over Nishioka et al. (US 2012/0008230 Al,
published January 12, 2012) (“Nishioka”) in view of Mori et al.
(US 2005/0238877 Al, published October 27, 2005) (“Mori”) (Final
Act. 5-7);
Rejection III: Claims 14, 20, and 28-30 under 35 U.S.C. § 103(a) as
unpatentable over Nishioka, Mori, and Jiang et al. (US 2006/0286292 Al,
published December 21, 2006) (“Jiang”) (Final Act. 7-9);
Rejection IV: Claims 16 and 31 under 35 U.S.C. § 103(a) as
unpatentable over Nishioka, Mori, and Veerasamy et al. (US 5,858,477,
issued January 12, 1999) (“Veerasamy”) (Final Act. 10);
Rejection V: Claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Nishioka, Mori, Jiang, and Veerasamy (Final Act. 10-11); and
Rejection VI: Claim 22 under 35 U.S.C. § 103(a) as unpatentable
over Nishioka, Mori, and Rudder et al. (US 5,418,018, issued May 23, 1995)
(“Rudder”) (Final Act. 11-12).
DISCUSSION
Rejection I
Appellants’ arguments regarding the first stated ground of rejection
(Rejection I) focus on limitations that appear in claim 10. Appeal Br. 5-7.
We choose independent claim 10 as representative of this group, and
claims 11-17 and 19-31, stand or fall with claim 10. See 37 C.F.R.
§ 41.37(c)(l)(iv).
matter under 37 C.F.R. § 1.181 and is not within the jurisdiction of the
Patent Trial and Appeal Board. See 37 C.F.R. § 1.181.
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Application 13/239,244
The Examiner finds that the Specification does not provide written
description support for a protective film that “comprises at least one of a
gaseous hydrogen compound and water therein,” and at the same time is
“solid,” as recited in claim 10. Ans. 11; Final Act. 11.
Appellants identify paragraphs 39 and 67 in their Specification as
disclosing that the claimed protective films have “superior wear resistance
and higher density than conventional protective films” (Spec. ^ 39) making
the films less brittle and less prone to peeling {id. ^ 67) Appeal Br. 6.
Appellants argue that based on this disclosure, one of ordinary skill in the art
would reasonably conclude that the claimed protective films must be “solid.”
Id. Appellants also contend that a protective film that comprises at least one
of a gaseous hydrogen compound and water therein does not prevent its film
from being “solid”—citing sponges and low density aerogel as examples of
solid, yet porous materials. Id.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
As the Examiner persuasively explains, one of ordinary skill in the art
reading Appellants’ Specification would understand that the precursors of
hydrogen and water are introduced into the formation chamber as gases, and
there is nothing in Appellants’ Specification that describes a final protective
film produced including a gaseous hydrogen compound and water therein.
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Application 13/239,244
Ans. 11 (citing Spec. 54-55). Moreover, as the Examiner aptly points
out, Appellants’ arguments on pages 6-7 of their Appeal Brief that the
protective film may have the structure of a sponge containing gaseous
molecules or have a structure of a low density aerogel are not supported by
Appellants’ as-filed Specification. Therefore, we are unpersuaded of error
in the Examiner’s written description rejection of claims 10-17 and 19-31.
Accordingly, we sustain the § 112, first paragraph, rejection of claims 10-17
and 19-31.
Rejections II VI
Appellants’ arguments regarding the second stated ground of rejection
(Rejection II) focus on limitations that appear in claim 10. Appeal Br. 7-14.
Although separately rejected claims 14, 16, 20-22, and 24-31 are grouped
and presented under separate headings (i.e., Groups 5-11), Appellants do not
provide any separate substantive arguments regarding these claims, and
instead essentially rely on the same arguments as presented for claim 10. Id.
at 31-36. Appellants present additional arguments for patentability of
dependent claims 11, 12, and 13 (i.e., Groups 2^4). Id. at 15-31. We
address the arguments regarding those claims below under a separate
subheading.
Claims 10, 14—17, and 19 31 (Groups 1 and 5—11)
The Examiner finds that Nishioka discloses a magnetic head,
comprising: at least one of: a read element (15), a write element (23), a
heater element (31), and a resistance detector element (41, 42) above a
substrate (11). Final Act. 5 (citing Nishioka 23, 26, 27, Fig. 4). The
Examiner finds that Nishioka discloses conductive terminals (lead layers) for
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Application 13/239,244
each of the at least one of: the read element, the write element, and the
heater element. Final Act. 5 (citing Nishioka ^ 29). The Examiner also
finds that Nishioka discloses a protective film (14) comprising diamond-like
carbon (DLC) above the at least one of: the read element, the write element,
and the heater element. Final Act. 5 (citing Nishioka ^ 30, Fig. 4).
For a protective film that “physically comprises at least one of a
gaseous hydrogen compound and water therein,” the Examiner finds that
Mori discloses a diamond-like carbon film (11, 12, 13 combined) for
creating a low friction slider wherein the film comprises water after
formation. Final Act. 5-6 (Mori ^ 43, Fig. 12). The Examiner further finds
that the state of water (solid, liquid, gas) is a product of the temperature and
pressure, and at the correct temperature and pressure, the water would
inherently be water vapor. Id.
The Examiner finds, and Appellants do not dispute, that based on
Mori’s teachings, one of ordinary skill in the art would have been led to use
Mori’s diamond-like carbon film (including layers 11, 12, and 13) as
Nishioka’s DLC protective layer “to further reduce the coefficient of friction
of the slider.” Compare Final Act. 6 (citing Mori 43), with Appeal Br. 7-
14; see also Appeal Br. 13 (admitting that “a skilled artisan apprised of the
teaching[s] of Nishioka and Mori may be motivated to include a layer of
water molecules on the surface of Nishioka’s DLC layer to reduce friction
coefficients”).
Appellants argue that the Examiner erred in finding that Mori teaches
or suggests a protective film that “comprises at least one of a gaseous
hydrogen compound and water therein,” as recited in claim 10. Appeal
Br. 10-11. Particularly, Appellants argue that Mori’s adsorbed-water layer
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13 corresponds to a layer of water molecules that adhere to the surface, but
are not included in, silanol layer 12. Id. at 11. Appellants argue that there is
no guidance for including water and/or gaseous hydrogen in a protective
film. Id. at 13. Asa result, Appellants contend that a skilled artisan would
not reasonably expect the combination and/or modification of the cited art to
achieve the magnetic head of claim 10. Id. at 14.
We first note that Appellants’ arguments focus on a claim limitation
not described by the Specification as filed—i.e., a solid protective film that
“physically comprises at least one of a gaseous hydrogen compound and
water therein.” See Rejection I discussed above. Assuming, arguendo, that
Appellants’ Specification provides support for a solid protective film that
“physically comprises at least one of a gaseous hydrogen compound and
water therein,” we are not persuaded that the Examiner erred in finding that
Mori teaches this limitation.
Mori discloses a protective film that includes an amorphous hard
carbon film (11), a silanol layer (12), and an adsorbed-water layer (13).
Mori 43, Fig. 12. Despite Appellants’ argument (Appeal Br. 11), we are
not persuaded that Mori’s disclosure requires the water of Mori’s adsorbed-
water layer be adhered to the surface of, rather than within, the silanol layer.
Even if the water in Mori’s adsorbed-water layer may be adhered or
accumulated at the surface of silanol layer 12, it does not mean that Mori’s
amorphous hard carbon film does not have a gaseous hydrogen compound
and/or water “therein.” Thus, we are not persuaded that Mori’s protective
film does not “physically comprise^ at least one of a gaseous hydrogen
compound and water therein.”
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Application 13/239,244
Thus, on this record, we sustain the rejection of claims 10, 15, 17, 19,
and 23 under 35 U.S.C. § 103(a) over Nishioka and Mori. Likewise, we also
sustain the rejection of claims 14, 16, 20-22, and 24-31 under 35 U.S.C.
§ 103(a) over Nishioka and Mori in further combination with either Jiang
and Veerasamy, alone or in combination, and Rudder, which essentially rely
on the arguments regarding claim 10 for patentability.
Group 2 — Claim 11
Claim 11, argued in Group 2 of the Appeal Brief (Appeal Br. 15-21),
depends from claim 10 and requires that the protective film of the magnetic
head “further comprises diamond-like carbon (DLC), the at least one of a
gaseous hydrogen compound and water being in the DLC.”
We first note that Appellants’ arguments focus on a claim limitation
not described by the Specification as filed—i.e., at least one of a gaseous
hydrogen compound and water being in the diamond-like carbon of the
protective film. See Rejection I discussed above. Assuming, arguendo, that
Appellants’ Specification provides support for claim 1 l’s limitations, we are
not persuaded by Appellants’ argument (Appeal Br. 18-19) that the
Examiner erred in finding that Mori teaches a diamond-like carbon (DLC)
protective film where “at least one of a gaseous hydrogen compound and
water being in the DLC.”
Mori discloses a film (11, 12, 13 combined) that includes an
amorphous hard carbon film (11), a silanol layer (12), and an adsorbed-water
layer (13). Mori 43, Fig. 12. Mori discloses that its amorphous hard
carbon film can be a DLC-Si film. Id. ^ 49. As discussed above, we are not
persuaded that Mori’s disclosure requires the water of Mori’s adsorbed-
water layer be adhered to the surface of, rather than within, the silanol layer.
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Application 13/239,244
Even if the water in Mori’s adsorbed-water layer may be adhered or
accumulated at the surface of silanol layer 12, it does not mean that Mori’s
DLC-Si film does not have a gaseous hydrogen compound and/or water in
the DLC. Thus, we sustain the rejection under 35 U.S.C. § 103(a) of
claim 11.
Groups 3 & 4—Claims 12 and 13
Claim 12, argued in Group 3 of the Appeal Brief (Appeal Br. 21-25),
depends from claim 11 and requires that the protective film of the magnetic
head “comprises the gaseous hydrogen compound after formation thereof.”
Claim 13, argued in Group 4 of the Appeal Brief (Appeal Br. 25-31),
depends from claim 11 and requires that the protective film of the magnetic
head “comprises the water as water vapor after formation thereof.”
Appellants argue that the Examiner erred in finding that Mori teaches
or suggests a protective film that “comprises the gaseous hydrogen
compound after formation thereof,” as recited in claim 12 (Appeal Br. 23-
25) or “comprises the water as water vapor after formation thereof,” as
recited in claim 13 (Appeal Br. 27-28). Appellants argue that there is no
guidance for including water, much less water vapor, in a protective film.
Id. at 30. Asa result, Appellants contend that a skilled artisan would not
reasonably expect the combination and/or modification of the cited art to
achieve the embodiment of claim 13. Id. at 30-31.
We again point out that Appellants’ arguments focus on a claim
limitation not described by the Specification as filed—i.e., a solid protective
film that “comprises the gaseous hydrogen compound after formation
thereof’ (claim 12) and a solid protective film that “comprises the water as
water vapor after formation thereof’ (claim 13). See Rejection I discussed
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Application 13/239,244
above. Assuming, arguendo, that Appellants’ Specification provides support
for claims 12 and 13, we are not persuaded that the Examiner erred in
finding that Mori teaches claim 12 and 13’s limitations.
Mori discloses a protective film (11, 12, 13 combined) that includes
an amorphous hard carbon film (11), a silanol layer (12), and an adsorbed-
water layer (13). Mori 43, Fig. 12. Thus, after formation, Mori’s
protective film comprises a gaseous hydrogen compound or water, as water
vapor, therein.4 As discussed above, despite Appellants’ argument (Appeal
Br. 24, 28), we are not persuaded that Mori’s disclosure requires the water of
Mori’s adsorbed-water layer be adhered to the surface of, rather than within,
the silanol layer. Even if the water in Mori’s adsorbed-water layer may be
adhered or accumulated at the surface of silanol layer 12, it does not mean
that Mori’s amorphous hard carbon film, after formation, does not have a
gaseous hydrogen compound and/or water “therein.” Thus, we are not
persuaded that Mori’s protective film does not “comprise^ the gaseous
hydrogen compound after formation thereof,” as recited in claim 12, and
does not “comprise[] the water as water vapor after formation thereof,” as
recited in claim 13.
Thus, on this record, we sustain the rejection of claims 12 and 13
under 35 U.S.C. § 103(a) over Nishioka and Mori.
4 The Examiner finds, and Appellants do not dispute, that: (1) water
molecules, each comprising two hydrogen atoms, can be considered a
hydrogen compound; and (2) given the required temperature and pressure,
the water, a hydrogen compound, would have been in a gaseous state.
Compare Ans. 14, with Appeal Br. 7-36.
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Application 13/239,244
DECISION
For the above reasons, the rejection of claims 10-17 and 19-31 under
35 U.S.C. § 112, first paragraph, and the rejections of claims 10-17, and 19-
31 under 35 U.S.C. § 103(a) are 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
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