Ex parte Kouchiyama

Board of Patent Appeals and Interferences

Aug 31, 2001

08536045 (B.P.A.I. Aug. 31, 2001)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 30

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKIRA KOUCHIYAMA

____________

Appeal No. 1998-1632
Application No. 08/536,045
____________

HEARD: August 15, 2001
____________

Before WALTZ, TIMM, and PAWLIKOWSKI, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-14, which are all of the claims pending
in this application.

We reverse.
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Application No. 08/536,045

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BACKGROUND
Appellant’s invention relates to a method of forming a
magneto-resistance effect thin film for a magneto-resistance
effect type magnetic head or a method of forming a magneto-
resistance effect magnetic head. Claims 1-14 are reproduced
in the attached Appendix.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Shirahata et al. (Shirahata) 4,260,466 Apr. 07, 1981
Sato et al. (Sato) 4,576,699 Mar. 16, 1986
Ueda et al. (Ueda) 4,824,724 Apr. 25, 1989
Yamada et al. (Yamada) 4,929,320 May 29, 1900
Fontana, Jr. et al. (Fontana) 4,940,511 Jul. 10, 1990
Chaug et al. (Chaug) 5,505,834 Apr. 09, 1996
(Filed Dec. 29, 1993)
Claims 1-14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over either Sato or Yamada, in view of either
Ueda or Shirahata, further in view of Chaug or Fontana.
Rather than reiterate all of the conflicting viewpoints
advanced by the examiner and appellant regarding the above-
noted rejections, we make reference to the examiner's answer
(Paper
No. 19) for the examiner's complete reasoning in support of
the rejection, and to the appellant’s brief (Paper No. 18) and
reply brief (Paper No. 20), for appellant’s arguments
thereagainst. We do refer to some of the positions held by
the examiner and appellant throughout this opinion.

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Application No. 08/536,045

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OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appellant states that his claimed invention is directed
to a new method of forming a thin film for a magneto-
resistance effect type magnetic head (claim 1) or to a method
of manufacturing a magneto-resistance effect magnetic head
(claims 4, 7, and 11). (Brief, page 6).
Appellant argues, inter alia, that Sato and Yamada are
directed to making a magneto-optical recording medium, not a
magneto-resistive film or magneto-resistive effect magnetic
head. (Brief, page 9). Appellant also argues that the
secondary references of Ueda and Yamada are also directed to
making a magneto-optical recording medium, and not a magneto-
resistive film or magneto-resistive effect magnetic head.
(Brief, page 10).
In his reply brief, appellant reiterates that the process
of Yamada and Sato is directed to making a magneto-optical
recording medium and not to a magneto-resistive film. (Reply
brief, pages 1-2). Appellant argues that a magneto-optical
recording medium is very different from a magneto-resistance
effect type magnetic head. Appellant states that the
preferred physical properties of each are very different.
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Application No. 08/536,045

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(Reply brief, page 3). Appellant explains that the magneto-
optical recording media in each of Yamada, Sato, Ueda and
Shirata all include a high coercive force. (Reply brief, page
3). On the contrary, appellant argues that in producing a
magneto-resistance effect thin film, the goal is to provide a
low coercive force of less than 1.0 Oe. (Reply brief, page
3).

The examiner recognizes that the combination of Sato or
Yamada in view of Ueda or Shirahata concerns magneto-optical
recording media and not a magneto-resistance effect thin film
or a magneto-resistance effect type magnetic head. (Answer,
page 5).
The examiner relies upon the references of Chaug and
Fontana for teaching that it is known in the art to use NiFe
material in making magneto-resistance films. (Answer, page 5,
office action of Paper No. 14, pages 2-3). The examiner
concludes that it would have been obvious to employ the method
of the primary references in manufacturing a magneto-resistant
film or head in view of the teachings of Chaug or Fontana,
which disclose “the same basic structure and the same magnetic
material NiFe”. (Answer, page 5). The examiner reiterates
this point in his rebuttal, and states, “it has been
established . . . that the same or similar device having the
magnetic layer composed of NiFe can be used in the manufacture
of a magnetic head”. Based upon this, the examiner concludes
that it would have been obvious to have used the same process
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Application No. 08/536,045

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of Yamada or Sato for manufacturing a magnetic head since it
is well known in the art that the magnetic head also employs
the same material for the magnetic material (Answer, pages 6-
7).
It is well settled that a prima facie case of obviousness
is established by showing that some objective teaching or
suggestion in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in the
art would have led that person to the claimed invention as a
whole, including each and every limitation of the claims,
without recourse to the teachings in appellant’s disclosure.
See generally, In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring);
In re Laskowski, 871 F.2d 115, 117, 10 USPQ3d 1397, 1398-99
(Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d
1596, 1598-1600 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686,
688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). The mere fact that
the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, we agree with appellant’s statement made on pages
13-14 of their brief, that the cited references lack any
suggestion for the modification as proposed by the examiner.
Specifically, we cannot find any suggestions in the cited
references which would have motivated one skilled in the art
to have utilized the method of Sato or Yamada to make the
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Application No. 08/536,045

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magneto-resistance film of Chaug or Fontana. In this context,
we strongly disagree with the examiner’s reasoning that the
teachings of Chaug or Fontana of using a NiFe material in
making a magneto-resistance film are sufficient motivation to
utilize the process of Sato or Yamada in making a magneto-
resistance film. As pointed out by appellant, one seeking to
provide an improved magneto-resistance effect thin film or
head would not look to Sato or Yamada because neither of these
references are directed to making these types of films.
Furthermore, these references teach the forming of a film
having a high coercive force property, which is detrimental to
a magneto-resistance effect thin film. (Brief, page 11). The
examiner never addresses these particular issues raised by
appellant. These circumstances lead us to conclude that the
examiner, in making his Section 103 rejection, has fallen
victim to the insidious effect of hindsight syndrome wherein
that which only the inventor has taught is used against its
teacher. W.L. Gore & Assocs. V. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
Hence, we reverse the rejection of record.

CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-14 under 35 U.S.C. § 103 is reversed.

REVERSED
Appeal No. 1998-1632
Application No. 08/536,045

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THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
Appeal No. 1998-1632
Application No. 08/536,045

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APPENDIX

1. A method of forming a magneto-resistance effect
thin film for a magneto-resistance effect type magnetic
head, in which a single unit layer of an Ni-Fe alloy thin
film layer or a superlattice thin film layer of Ni and Fe
is formed as a unit layer or a plurality of said unit
layers are laminated, comprising the step of:
providing a base material for forming thereon a thin
film for a magneto-resistance effect type magnetic head;
forming said thin film for said magneto-resistance
effect type magnetic head by sputtering Ni and Fe on said
base material from an Ni target and an Fe target disposed
separately while said Ni target and said Fe target are
both being rotated relatively to said base material.
2. The method according to claim 1, wherein said
unit layer has a thickness of less than 10Å.
3. The method according to claim 1, wherein an
amount of NI in a composition of the whole of said
magneto-resistance effect thin film formed of said Ni-Fe
alloy thin film layer or said superlattice layer of Ni
and Fe is selected in a range of from 75 to 90 weight %.
4. A method of manufacturing a magneto-resistance
effect magnetic head comprising the steps of:
providing a base material for forming thereon a thin
film for a magneto-resistance type magnetic head;
forming said thin film of Ni-Fe by sputtering Ni and
Fe on said base material from an Ni target and an Fe
target disposed separately while said Ni target and said
Fe target and said base material are relatively rotated.
5. The method according to claim 4, wherein said
unit has a thickness of less than 10Å.
6. The method according to claim 4, wherein an
amount of Ni in a composition of said thin film is
selected in a range of from 75 to 90 weight %.
7. A method of manufacturing a magneto-resistance
effect magnetic head comprising the steps of:
providing a base material for forming thereon a thin
film for a magneto-resistance type magnetic head;
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Application No. 08/536,045

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forming said thin film of Ni-Fe by sputtering Ni and
Fe on said base material from an Ni target and a Fe
target disposed separately while said Ni target and said
Fe target and said base material are relatively rotated;
and
forming a plurality of thin layers of Ni and Fe
alternately.
8. The method according to claim 7, wherein an
amount of Ni in the composition of the whole magneto-
resistance effect thin film is selected to be between 75
to 90 atomic percent.
9. The method according to claim 7, wherein the
thin layers of Ni and Fe are selected to be less than 10Å
thick.
10. The method according to claim 7, wherein a
magneto-resistance changing ratio ??/?0 has a value
exceeding 3% and a coercive force Hch of less than 1.0.
11. A method of manufacturing a magneto-resistance
effect magnetic head comprising the steps of:
providing a base material for forming thereon a thin
film for a magneto-resistance type magnetic head;
forming said thin film of Ni-Fe by sputtering Ni and
Fe on said base material from an Ni target and a Fe
target disposed separately while said Ni target and said
Fe
target and said base material are relatively rotated; and
12. The method according to claim 11, wherein an
amount of Ni in the composition of the whole magneto-
resistance effect thin film is selected to be between 75
to 90 atomic percent.
13. The method according to claim 11, wherein the
thin layers of Ni and Fe are selected to be less than 10Å
thick.
14. The method according to claim 11, wherein a
magneto-resistance changing ratio ??/?0 has a value
exceeding 3% and a coercive force Hch of less than 1.0.

Appeal No. 1998-1632
Application No. 08/536,045

Page 1
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