Ex Parte Lee et al

Patent Trial and Appeal Board

Feb 26, 2013

12108205 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PA TENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMAnON NO.
12/108,205 04123/2008 Hoo-san Lee 22438-00-US 1147
73462 7590 02/26/2013
EXAMINER
Hall Estill Attorneys at Law
(Seagate Technology LLC) RICKMAN, HOLLY C
100 North Broadway, Suite 2900
ART UNIT PAPER NUMBEROklahoma City, OK 73102-8820
1785
MAIL DATE DELIVERY MODE
02/26/2013 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 HOO-SAN LEE, SUNG-DONG SUH,
TAE-SANG PARK, and HOON-SANG HO
____________________

Appeal 2011-010644
Application 12/108,205
Technology Center 1700
____________________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and GRACE
KARAFFA OBERMANN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-17 and 26-29. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the invention on appeal:
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1. A perpendicular magnetic recording medium
comprising:
a substrate;
a buffer layer formed on the substrate;
a soft magnetic underlayer formed on the buffer layer;
and
a recording layer formed on the soft magnetic underlayer.
(Claims App’x. at Br. 24.)
The Examiner maintains, and Appellants appeal, the following
rejections:1
1. The rejection of claims 1, 3, 4, 10-13, 15-17, and 26-29 under 35
U.S.C. § 102(e) as anticipated by Oikawa2;
2. The rejection of claims 1-6, 10-17, and 26-29 under 35 U.S.C. §102(e)
as anticipated by Maeda3;
3. The rejection of 1, 3, 4, 7, and 15 under 35 U.S.C. § 102(e) as
anticipated by Ajan4;
4. The rejection of claims 1-4, 10-17, and 26-29 under 35 U.S.C. §103(a)
as obvious over Oh5 in view of Oikawa; and

1 Appellants wish to defer addressing the merits of the Examiner’s
provisional nonstatutory obviousness double patenting rejections over: (1)
claims 1-20 of Application No. 12/137,318; (2) claims 1-17 of Application
No. 12/117,766; and (3) claims 1-15 of Application No. 11/477,624 (now
US 7,799,445) (Reply Br. 16). Because Appellants have not identified an
error in these rejections, we summarily affirm the Examiner’s decision to
maintain them.
2 Oikawa, US 2006/0269794 A1, pub. Nov. 30, 2006.
3 Maeda et al., US 2007/0065955 A1, pub. Mar. 22, 2007.
4 Ajan et al., US 2007/0230052 A1, pub. Oct. 4, 2007.
5 Oh et al., US 2004/0072031 A1, pub. Apr. 15, 2004.
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5. The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as obvious
over Oikawa or Maeda in view of Gusliyenko6.7
II. OPINION
Appellants contend that the Examiner erred in interpreting “buffer
layer” and that none of the references relied upon by the Examiner describe
the required buffer layer (Br. 11-22; Reply Br. 4-15). Therefore, our first
task is to determine the correct interpretation of “buffer layer”. Claim
interpretation is a question of law. In re Donaldson Co., 16 F.3d 1189, 1192
(Fed.Cir.1994) (en banc).
A. The Meaning of “Buffer Layer”
In order to determine the correct interpretation, we read the claim
language in light of the Specification as it would have been interpreted by
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Unless the Specification provides a definition
or disclaims the broader meaning one of ordinary skill in the art would give
the term, we apply a broad interpretation consistent with the ordinary
meaning of the term in the art. In re Icon Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007); In re Bigio, 381 F.3d 1320, 1324-25, 1210-11
(Fed. Cir. 2004).
Turning to the Appellants’ Specification, we find that it describes a
perpendicular magnetic recording medium with a buffer layer sandwiched

6 Gusliyenko, US 2006/0188752 A1, pub. Aug. 24, 2006.
7 The Examiner states the ground of rejection applied to claims 8 and 9 as
under 35 U.S.C. § 103(c) for anticipation (Final Office Action 11; Ans. 9),
however, it is evident from the Examiner’s explanation of the rejection that
the basis of the rejection is obviousness under 35 U.S.C. §103(a).
Appellants address the correct basis of the rejection (Br. 22), therefore, the
error was harmless.
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between a substrate and a soft magnetic layer (Fig. 1 (buffer layer 12); Spec.
3:25-28).
The Specification does not specifically limit the buffer layer in terms
of composition or thickness; it merely states that the buffer layer “can be
formed of an oxide or a nitride,” provides example oxides, and states
possible thicknesses (Spec. 4:32 to 5:2).
The Specification states that the buffer layer “has a thermal transfer
coefficient of 1 W/mK to 10W/mK” in one location (Spec. 4:32-33), but
merely states that it “can be” formed of a material having such a heat
coefficient in another location (Spec. 6:4-5). The Specification similarly
discusses a thermal stability property, stating it has the property in one
location, but merely states it “can” have the property in another location
(Spec. 4:32-34 and 6:3-6).
The Specification discloses a preventive function for the buffer layer.
According to the Specification, “[t]he buffer layer 12 formed on the
substrate 10 prevents the substrate 10 from being transformed, due to high
temperature in the process of annealing the recording layer 18, to have a L10
structure.” (Spec. 4:28-30.) The Specification also states that “[t]his
process of annealing the recording layer 18 also prevents the diffusion of
impurities contained in the substrate 10 into the soft magnetic underlayer
14.” (Spec. 4:30-32.) While the language of the Specification is somewhat
unclear, it appears that the buffer layer functions to protect the substrate
from heat and further protect the soft magnetic underlayer from impurities
during the annealing process.
The Specification provides evidence that the meaning to be ascribed
to “buffer layer” is not particularly limited to any particular composition,
thickness or other structural parameters beyond the structural parameters
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connoted by the word “layer.” The word “buffer” appears to refer to a
protective function for the layer.
Other claims, both asserted and unasserted, can also be a source of
enlightenment as to the meaning of a claim term. Phillips v. AWH Corp.,
415 F.3d 1303, 1314 (Fed. Cir. 2005). “For example, the presence of a
dependent claim that adds a particular limitation gives rise to a presumption
that the limitation in question is not present in the independent claim.” Id.,
at 1314-15.
Appellants’ broadest claim does not particularly limit the structure of
the buffer layer (Claim 1). Claim 5 further limits the buffer layer to one
formed of an oxide or nitride, which creates a presumption that the buffer
layer of claim 1 encompasses layers formed of other materials. Claims 3
and 4 each further limits the function of the buffer layer, creating a
presumption that the buffer layer of claim 1 is not limited to buffer layers
performing a heat blocking or a diffusion preventing function. Likewise,
the dependent claims create a presumption that the buffer layer of claim 1
may have a heat transfer coefficient outside the range of claim 2, a thermal
stability outside the range of claim 27, and/or a thickness outside the range
of claim 7.
The claims, like the Specification, provides evidence that the meaning
to be ascribed to “buffer layer” is not particularly limited to any particular
composition, thickness or other structural parameters beyond the structural
parameters connoted by the word “layer.” The claims further provide
evidence that the “buffer” refers to a protective function beyond that of heat
blocking and diffusion preventing functions.
As found by the Examiner, the Specification does not provide any
definition for the term “buffer layer” (Ans. 10). Moreover, Appellants do
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not provide any evidence or convincing reason to believe that “buffer” or
“buffer layer” has a special meaning in the art of magnetic recording
mediums. In the absence of any definitions in the Specification, and in
cases where the ordinary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to lay people, general
purpose dictionaries may be helpful. See Phillips, 415 F.3d at 1314.
According to the Examiner, “Webster's dictionary defines the term
buffer to mean (1) ‘any of various devices or pieces of material for reducing
shock or damage due to contact’ or ‘something that serves as a protective
barrier.’” (Ans. 10, citing Merriam-webster.com/dictionary/buffer.)
Appellants find fault with the Examiner’s definition because it is
located in what Appellants refer to as “a contemporary general purpose
dictionary” (Br. 14). However, Appellants provide no evidence that the
meaning of “buffer” has changed over time such that the online dictionary
meaning fails to provide adequate evidence of the meaning at the time of
Appellants’ invention.
Dictionaries endeavor to collect the accepted meanings of terms.
Phillips, 415 F.3d at 1318. The meanings of most generally used terms
remains relatively static over time, and an online dictionary will usually
suffice to provide evidence of meaning over time. Appellants have provided
no convincing evidence that “buffer” is a word that has changed in meaning
between the time of the invention and the time the Examiner retrieved the
definition from the online dictionary. In fact, Webster’s Ninth New
Collegiate Dictionary, published by Merriam-Webster in 1986, contains
exactly the same dictionary definition as the online version cited by the
Examiner. The Examiner’s reliance on the online definition was reasonable
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and Appellants fail to present evidence tending to show that a different
dictionary meaning should be ascribed to “buffer.”
The functional aspect of the “buffer layer” limitation, furthermore,
must be viewed in light of the fact that the claim is directed to an article of
manufacture, i.e., a perpendicular magnetic recording medium. Choosing to
define an element functionally, i.e., by what it does, carries with it a risk:
Where there is reason to conclude that the structure of the prior art is
inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981).
In light of the evidence as a whole, it is reasonable to interpret “buffer
layer” as any layer that is capable of protecting other layers or structures
within the perpendicular magnetic recording medium. Should Appellants
desire a narrower meaning, they are free to amend the claim language to
accomplish that goal. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364.
B. The Rejections
Turning to the rejections, we note that Appellants argue some claims
apart from others. Where no claims are argued separately, in accordance
with 37 C.F.R. 41.37(c)(1)(vii), we select claim 1 as representative to
resolve the issues on appeal. Non-argued claims stand or fall with the
argued claim from which they depend.
1. The Anticipation Rejection over Oikawa
The Examiner rejects claims 1, 3, 4, 10-13, 15-17, 26-29 as
anticipated by Oikawa (Ans. 3-5). Appellants separately argue claims 3 and
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4 as a group and claims 26-28 as a group. For the general arguments we
select claim 1 as representative.
a. Claim 1
Oikawa teaches a perpendicular magnetic recording medium (Oikawa,
¶ [0001]). There is no dispute that Oikawa’s recording medium includes a
substrate, a soft magnetic layer, and a recording layer (Compare Br. 11-15
with Ans. 4). The question is whether Oikawa describes a layer meeting the
structural requirements of the buffer layer of claim 1.
The Examiner finds that Oikawa teaches a NiP layer that reads on the
claimed “buffer layer” (Ans. 4, citing Oikawa, ¶¶ [0070-72]).
Appellants contend that Oikawa teaches that the NiP layer forms the
substrate itself and does not teach that the NiP layer is a buffer layer (Br. 11;
Reply Br. 4). However, the difference is merely semantic in nature. There
is no real dispute that the NiP layer is a layer: It is plated onto, for instance,
an Al-based alloy substrate (Oikawa, ¶ [0070]). The name given the layer
by the reference is of little import when there is no patentable difference in
structure between it and the claimed buffer layer. It is reasonable to
conclude that the NiP layer would be capable of serving at least some
protective function as required by the buffer layer of claim 1 because it
covers the underlying substrate layer and separates that underlying substrate
layer from the layers above it.
A preponderance of the evidence supports the Examiner’s finding of
anticipation with respect to claim 1.
b. Claims 3 and 4
Claims 3 and 4 further limit the functional aspect of the buffer layer of
claim 1. Claim 3 requires that the buffer layer perform as a heat blocking
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layer. Claim 4 requires the buffer layer perform as a diffusion prevention
layer.
The Examiner finds that Oikawa’s NiP layer is capable of functioning
as a heat blocking layer (claim 3) and as a diffusion prevention layer (claim
4) (Ans. 4)
Appellants contend that the mere possibility that the NiP layer could
so function is insufficient is establish inherency (Br. 12).
Appellants’ argument is not convincing because it is not in
conformance with the law. The mere possibility that the prior art layer could
function as claimed is, in fact, enough to show that there is a reason to
believe that there is no actual difference in structure between the claimed
layer and the prior art layer. In order to insure that an applicant is not
awarded a claim that fails to patentably distinguish a claimed structure from
prior art structures, our reviewing court and its predecessor have articulated
a burden shifting rule with regard to function claiming: Where there is
reason to believe that the prior art structure possesses all the claimed
structural characteristics including the capability of performing the claimed
function, the burden shifts to the applicant to show that, in fact, the claimed
function structurally distinguishes the claimed apparatus from the prior art
apparatus. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re
Hallman, 655 F.2d 212, 215 (CCPA 1981). In re Ludtke, 441 F.2d 660, 664
(CCPA 1971);
The Examiner has provided a reason to conclude that the NiP layer
would block at least some heat and prevent some diffusion (Ans. 11-12).
The layer would have a mass that would absorb some heat. The layer covers
the substrate and, therefore, would provide a barrier to diffusion. As pointed
out by the Examiner, heat blocking and diffusion prevention are qualitative
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limitations and not quantitative; any heat or diffusion blocked would meet
claims (Ans. 11). The burden was shifted to Appellants to show that the
claimed buffering function structurally distinguishes the claimed layer from
Oikawa’s NiP layer. Appellants have not met their burden in showing the
required structural difference.
A preponderance of the evidence supports the Examiner’s finding of
anticipation.
c. Claims 26-28
With respect to claims 26-28, Appellants contend that the Examiner’s
Final Office Action fails to set forth grounds of rejection for these claims
(Br. 15). The Examiner advanced reasons for rejecting claims 27 and 28
(Ans. 4). However, we find no mention of claim 26 or the annealing
limitation of that claim (Ans. 4-5 and 10-12).
Therefore, we sustain the rejection of claims 27 and 28 because
Appellants have not identified an error in the Examiner’s rejection of those
claims, but we do not sustain the Examiner’s rejection of claim 26.
2. The Anticipation Rejection over Maeda
The Examiner rejects claims 1-6, 10-17, and 26-29 as anticipated by
Maeda. Appellants present general arguments as well as argue claims 3 and
4 separately as a group and also argue claim 26 separately. We select claim
1 as representative for resolving the issues arising from the general
arguments.
a. Claim 1
With regard to the rejection over Maeda, the Examiner finds that
Maeda’s longitudinal biasing layer meets the requirements of the claimed
buffer layer (Ans. 5, citing Maeda, ¶ [0091]), and Appellants contend that
this layer is not a buffer layer, but a bias-imparting layer (Br. 16).
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What Maeda describes is a bias-imparting layer, such as an in-plane
hard magnetic film and an antiferromagnetic film, for example, provided
between the soft magnetic layer 12 and the substrate 11 (Maeda ¶ [0091]).
The bias-imparting layer may be formed from, for example, a Cobalt alloy
containing SiO2 (id.)
It is reasonable to conclude that the bias-imparting layer would be
capable of protecting the substrate 11 and the soft magnetic layer 12 as it
covers the substrate layer 11 and separates it from the soft magnetic layer
12. Therefore, the burden shifted to Appellants to show that the prior art
layer has a patentably different structure from that of the buffer layer of
claim 1. Appellants have not presented convincing evidence of a structural
difference.
b. Claims 3-4
With regard to claims 3 and 4, the Examiner finds that Maeda’s bias-
imparting layer would be capable of functioning as a heat blocking and a
diffusion layer (Ans. 12). Appellants contend that “such allegations do not
provide the requisite basis in fact and/or technical reasoning to reasonably
support rejections under 35 U.S.C. § 102 for at least reasons similar to those
already discussed above regarding Oikawa.” (Br. 17.) As discussed above,
in fact, the Examiner’s rejection provides the required reasonable basis to
support the rejection such that the burden shifted to Appellants. Appellants
have not met their burden in showing a patentable difference in structure.
c. Claim 26
Claim 26 requires that the recording layer be an annealed recording
layer. The Examiner determines that “annealed” refers to a process of
making or treating the claimed recording layer that does not distinguish the
claimed product structurally from the structure of the prior art (Ans. 6).
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But as pointed out by Appellants, annealing defines structural
characteristics (Br. 18, citing Spec. 4:14-21). Annealing, as explained in the
Specification causes a phase transformation for an irregular structure to a
regular structure (Spec. 4:14-21). The Examiner has not responded to this
evidence (Ans. 13).
A preponderance of the evidence indicates that annealing results in a
structural difference in the recording layer. Therefore, we do not sustain the
Examiner’s rejection of claim 26 over Maeda.
3. The Anticipation Rejection over Ajan
The Examiner rejects claims 1, 3, 4, 7, and 15 as anticipated by Ajan
(Ans. 6-7). Appellants present general arguments and a separate argument
for claims 3, 4, 7, and 15 (Br. 20-21). We select claim 1 as representative
for resolving the issues raised by the general arguments.
a. Claim 1
The Examiner finds that Ajan’s first soft magnetic layer is the
required buffer layer (Ans. 7).
Ajan has a soft magnetic layer 13 adjacent the substrate 11 (Ajan, ¶
[0061]; Fig. 1).
Appellants argue that the soft magnetic layer 15 is not a buffer layer
(Br. 20).
The evidence as a whole supports the Examiner’s finding that soft
magnetic layer 13 is capable of protecting the substrate and layers above it.
The Examiner’s finding is reasonable, and Appellants have not submitted
evidence fulfilling their burden of showing a patentable difference in
structure between the soft magnetic layer 13 of Ajan and the buffer layer of
claim 1.
b. Claims 3, 4, 7, and 15
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With respect to claims 3, 4, 7, and 15, Appellants contend that the
Examiner has not set forth any reasoning to support the rejection of those
claims (Br. 21). However, we find reasoning for claims 3, 4, 7, and 15 on
pages 7 and 13 of the Answer. Therefore, Appellants’ argument is not
persuasive of error on the part of the Examiner.
4. The Obviousness Rejections
The Examiner further rejects claims 1-4, 10-17, and 26-29 as obvious
over Oh in view of Oikawa (7-9). Claims 8 and 9 are rejected as obvious
over Oikawa or Maeda in view of Gusliyenko (Ans. 9). Appellants do not
argue any claim apart from the others (Br. 22; Reply Br. 15). We select
claim 1 (the argued buffer limitation thereof is imported into dependent
claim 8) as representative to resolve the issue on appeal.
To support the obviousness rejections, the Examiner finds that
Oikawa and Maeda teach a buffer layer as recited in claim 1 (Ans. 7-9).
Appellants’ sole argument is that neither Oikawa nor Maeda teach or suggest
the buffer layer for at least the reasons already discussed above (Br. 15).
For the reasons discussed above, we find that “buffer layer” is broad
enough to encompass the layer structure of Oikawa and Maeda.
CONCLUSION
We sustain the Examiner’s rejection of claims 1, 3, 4, 10-13, 15-17,
and 27-29 as anticipated by Oikawa, but do not sustain the rejection of claim
26.
We sustain the Examiner’s rejection of claims 1-6, 10-17, and 27-29
as anticipated by Maeda, but do not sustain the rejection of claim 26.
We sustain the Examiner’s rejection of claims 1, 3, 4, 7, and 15 as
anticipated by Ajan.
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We sustain the Examiner’s rejection of claims 1-4, 10-17, and 26-29
as obvious over Oh in view of Oikawa.
We sustain the Examiner’s rejection of claims 8 and 9 as obvious over
Oikawa or Maeda in view of Gusliyenko.
We summarily sustain the Examiner’s rejection of claims 1, 3-4, 10,
15-17 and 26-29 on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-15 of copending Application
No. 11/477,624, which is now U.S. Patent 7,799,445.
We summarily sustain the Examiner’s provisional rejection of claims
1, 3-4, 10, 12, 15-17 and 26-29 on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1-20 of copending
Application No. 12/137,318.
We summarily sustain the Examiner’s provisional rejection of claims
1, 3-4, 8-10, 15-16 and 26-29 on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1-17 of copending
Application No. 12/117,766.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).

AFFIRMED
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