Ex Parte Nolan et al

Patent Trial and Appeal Board

Aug 8, 2017

12544091 (P.T.A.B. Aug. 8, 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.
12/544,091 08/19/2009 Thomas P. Nolan STC.101.A1 8641
98068 7590
Hollingsworth Davis
8000 West 78th Street
Suite 450
Minneapolis, MN 55439
EXAMINER
CHAU, LISA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
tdotter @ hdpatlaw. com
roswood@hdpatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS P. NOLAN, BOGDAN F. VALCU, and LI TANG1
Appeal 2016-005855
Application 12/544,091
Technology Center 1700
Before JEFFREY T. SMITH, MONTE T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision to reject claims 32, 34^46,
49-59, 61, and 62, which constitute all the claims pending in this
application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). For the reasons set forth below, we AFFIRM.
1 Appellants identify Seagate Technology LLC as the real party in interest.
App. Br. 1.
2 In our Decision, we refer to the Specification filed August 19, 2009
(“Spec.”); the Final Office Action mailed February 17, 2015 (“Final Act.”);
the Advisory Action dated June 30, 2015 (“Adv. Act.”); the Appeal Brief
dated September 17, 2015 (“App. Br.”); the Examiner’s Answer to the
Appeal Brief mailed March 16, 2016 (“Ans.”); and the Reply Brief (“Reply
Br.”) dated May 16, 2016.
Appeal 2016-005855
Application 12/544,091
The Claimed Invention
Appellants’ disclosure relates to methods and media structures for
increasing writability and reducing unintentional erasure of magnetic
recording media. Abstract; Spec. 11. Claim 32 is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief (App. Br. 15) (key disputed claim language italicized
and bolded):
32. A system, comprising:
a first soft magnetic layer with a first magnetic thickness
(Bst), wherein the first soft magnetic layer has a low magnetic
permeability region and a high magnetic permeability region;
a second soft magnetic layer with a second magnetic
thickness, wherein the second magnetic thickness is different
from the first magnetic thickness and substantially equal to a
magnetic thickness of the low magnetic permeability region; and
a first coupling layer oriented between the first soft
magnetic layer and the second soft magnetic layer and the first
coupling layer configured to antiferromagnetically couple the
first soft magnetic layer and the second soft magnetic layer.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Shimizu et al.,
(hereinafter “Shimizu”)
Girt et al.,
(hereinafter “Girt”)
US 2002/0127433 Al Sept. 12, 2002
US 2007/0065681 Al Mar. 22, 2007
Zhou et al.AAUW
(hereinafter “Zhou”)
US 2007/0217074 Al Sept. 20, 2007
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Application 12/544,091
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 32, 34-46, 49-59, 61, and 62 are rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement (“Rejection 1”).
Final Act. 3; Ans. 2.
2. Claim 52 is rejected under 35 U.S.C. § 112(d) or
35 U.S.C. § 112 (pre-AIA), fourth paragraph, as being of improper
dependent form for failing to further limit the subject matter of the claim
upon which it depends, or for failing to include all the limitations of the
claim upon which it depends (“Rejection 2”). Final Act. 7; Ans. 2.
3. Claims 32, 34—36, 39-41, 43—46, 49-51, 54—58, 61, and 62 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou
(“Rejection 3”). Final Act. 7; Ans. 2.
4. Claims 37, 38, 52, 53, 59, and 62 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Zhou as applied to claim 32
above, and further in view of Shimizu (“Rejection 4”). Final Act. 10;
Ans. 2.
5. Claim 42 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhou as applied to claim 32 above, and further in view of
Girt (“Rejection 5”). Final Act. 11; Ans. 2.
OPINION
Rejection 1
Claims 32, 34-46, 49-59, 61, and 62 stand rejected for failing to
comply with the written description requirement. Final Act. 3; Ans. 2.
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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)).
Claims 39, 41, 54, and 56.
The Examiner rejects claims 39, 41, 54, and 56 for failing to provide
adequate written descriptive support for the recitation: the magnetic
thickness (Bst) of the magnetic layers each having “a different magnitude.”
Final Act. 3—6. In particular, the Examiner finds that although the
Specification discloses that the permeability within each magnetic layer is
varied, adequate written descriptive support is not provided in the
Specification that the magnetic thickness within each layer is varied. Id.
We disagree with the Examiner’s determination in this regard. Based
on our review of the Specification and the reasons provided by Appellants at
page 12 of the Appeal Brief, we find that the Examiner reversibly erred in
rejecting these claims for lack of written description on the basis of the
magnetic layers each having a different magnitude.
As Appellants point out (App. Br. 12), the Specification, as filed,
discloses that the permeability of a layer can be adjusted by selecting the
magnetic thickness of the layer through selection of the thickness and Bs of
each SUL layer. In particular, paragraph 30 of the Specification discloses
that the “thicknesses, permeabilities, and relative position of [SULi and
SUL2] layers can be adjusted arbitrarily over a large range by selection of
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Application 12/544,091
the thickness and Bs of each SUL layer.” Paragraph 32 of the Specification
further discloses that the “thicknesses and magnetic thicknesses of the SUL
layers can be varied” and that the “thickness of the third layer 508 is less
than about 43.75 percent of the total thickness of the underlayer.” See also
Spec. 131 (disclosing that the “first layer (504A, 504B) and the third layer
508 have unequal magnetic thicknesses (Bst)”).
As Appellants further explain with respect to claims 41 and 56 (App.
Br. 12), paragraph 34 of the Specification discloses that the fourth layer is
antiferromagnetically coupled to the third layer, forming a second SUL
structure stacked on a first SUL structure, and suggests that the third and
fourth layers would also have varying magnetic thicknesses as disclosed for
the first and second soft magnetic layers. Spec. 134; Fig. 7.
In light of the foregoing disclosures, we are persuaded that the
Specification, as filed, provides sufficient written descriptive support such
that the skilled artisan would have understood that additional magnetic
layers could also have varying magnetic thicknesses and different
magnitudes and the inventor was in possession of the layer stack structure as
claimed. Carnegie Mellon, 541 F.3d at 1122.
We, therefore, cannot sustain the Examiner’s rejections of claims 39,
41, 54, and 56 for lack of written description for reciting that the magnetic
layers each have “a different magnitude.”
Claims 40 and 55.
The Examiner rejects claims 40 and 55 for failing to provide adequate
written descriptive support for the recitation regarding the magnetic layers
“each comprising a low magnetic permeability region and a high magnetic
permeability region.” Final Act. 4—5.
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We are not persuaded that a preponderance of the evidence supports
the Examiner’s determination in this regard. Rather, we find that the
Specification, as filed, provides sufficient written descriptive support for the
recitation.
As Appellants note (App. Br. 13), Figure 7 of the Specification
discloses that two AFC coupled structures can comprise an unbalanced
seven-layer structure wherein one layer in each of the respective AFC
coupled structures would include a low and high magnetic permeability
region. Paragraph 34 of the Specification further discloses that the seven-
layer unbalanced SUE structure includes two substructures (704/708 and
712/716) that each provide two levels of permeability establishing a total of
four levels of permeability in the seven layer stack and this is accomplished
with two AFC coupled structures separated by a nonmagnetic spacer.
We, therefore, cannot sustain the Examiner’s rejections of claims 40
and 55 for lack of written description on this basis.
Claim 59.
The Examiner rejects claim 59 for failing to provide adequate written
descriptive support for the recitation that the soft magnetic underlayer
comprises “at least two or more antiferromagnetically coupled soft magnetic
layers.” Final Act. 6. In particular, the Examiner finds that Appellants’
Specification does not provide support for an infinite amount of soft
magnetic layers. Id.
We cannot sustain the Examiner’s § 112 rejection of claim 59 on this
basis for the well-stated reasons provided by Appellants at page 13 of the
Appeal Brief. In particular, we concur with Appellants that Figure 7 and the
corresponding discussion at paragraph 34 of the as-filed Specification
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Application 12/544,091
disclose a soft magnetic underlayer having four antiferromagnetically
coupled layers (i.e., “704/708” and “712/716”) and that the disclosure
provides sufficient written descriptive support for the recitation that the soft
magnetic underlayer comprises “at least two or more antiferromagnetically
coupled soft magnetic layers.”
Claim 61.
The Examiner rejects claim 61 for failing to provide adequate written
descriptive support for the recitation “the first soft magnetic layer has a
thickness that is greater than 5% of a total thickness of the first and second
magnetic layers.” Final Act. 6.
In response, Appellants argue that the Examiner’s § 112 rejection of
claim 61 should be reversed because “Figs. 12 and 13, and the
corresponding discussions at paragraphs [00043]-[00045]” of the
Specification disclose that the layer comprising high and low magnetic
permeability regions is greater than 20 angstroms (5% of the total thickness
of the SUL designs). App. Br. 13—14.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection in this regard. As the Examiner finds (Ans. 16),
although the Specification, as-filed, discloses that the total SUL thickness is
o
400 A (Spec. H42^45), it does not disclose or suggest the relationship
describing the first soft magnetic layer having a thickness that is greater than
5% of a total thickness of the first and second soft magnetic layers, as recited
in the claim. Moreover, we are not persuaded that the portions of the
Specification that Appellants rely on and identity at pages 13 and 14 of the
Appeal Brief (see Spec., Figs. 12, 13, H 43—45) provide sufficient written
descriptive support for the recitation.
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Accordingly, we affirm the Examiner’s rejection of claim 61 for
failing to comply with the written description requirement.
Claims 32, 46, and 59.
The Examiner rejects independent claims 32, 46, and 59 for failing to
provide adequate written descriptive support for the recitation that the
second soft magnetic layer is “substantially equal to a magnetic thickness of
the low magnetic permeability region.” Final Act. 3.
Appellants do not provide a substantive argument in the Appeal
briefing in response to the Examiner’s §112 rejection of claims 32, 46, and
59 on this basis. See App. Br. 11—14; Reply Br. 11. Appellants’ assertion
that “the rejections of claims 32, 34-46, 49—59, 61, and 62 should be
reversed” (App. Br. 14; Reply Br. 12) is conclusory and, without more,
insufficient to show reversible error in the Examiner’s rejection in this
regard.
Accordingly, we summarily affirm the Examiner’s rejection of
independent claims 32, 46, and 59 for lack of written description with
respect to the “substantially equal to a magnetic thickness” recitation.
Because claims 34-45, 61, and 62 depend from claim 32, and because
claims 49—58 depend from claim 46, each of these claims, by extension,
includes the same “substantially equal to a magnetic thickness” recitation as
independent claims 32 and 46. We, therefore, affirm the Examiner’s
rejection of these claims for lack of written description.
Rejection 2
Appellants do not address the Examiner’s § 112, fourth paragraph,
rejection of claim 52 in the Appeal briefing.
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Accordingly, because the Examiner’s Rejection 2 has not been
withdrawn and is not disputed by Appellants, we summarily affirm it. Cf.
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection”) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011)).
Rejection 3
Claims 32. 3A-36. 39. 40. 4A46. 49-51. 54. 55. 57. 58. 61. and 62.
Appellants argue independent claims 32 and 46 as a group and do not
present separate arguments for the patentability of claims 34—36, 39, 40, 44,
45, 49-51, 54, 55, 57, 58, 61, and 62. We select claim 32 as representative
of this group and claims 34—36, 39, 40, 44-46, 49-51, 54, 55, 57, 58, 61,
and 62 stand or fall with claim 32. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the Zhou teaches or suggests a soft magnetic
structure satisfying all of the limitations of claim 32 and concludes that the
reference would have rendered claim 32 obvious. Final Act. 8—10.
Appellants argue that the Examiner’s rejection should be reversed
because Zhou does not teach a magnetic layer comprising low and high
permeability regions, i.e., “wherein the first soft magnetic layer has a low
magnetic permeability region and a high magnetic permeability region.”
App. Br. 5. Appellants contend that there is no teaching or suggestion that
the layers of an APS unit would have differing permeabilities. Id. at. 6.
Appellants also contend that the Examiner’s reversibly erred because the
rejection improperly relies on official notice. Id. at 9.
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We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
preponderance of the evidence supports the Examiner’s determination that
Zhou teaches or suggests all of the limitations of claim 32 and would have
rendered the claim obvious. Zhou, Abstract, || 12, 37, 38, 47, 48, 52, 53
(Table 1), Figs. 2, 3, 4, 5.
Contrary to what Appellants argue, Zhou does suggest a structure
wherein the first soft magnetic layer has a low magnetic permeability region
and a high magnetic permeability region. As the Examiner finds (Final Act.
8; Ans. 6), Zhou teaches anti-parallel coupled soft (APS) magnetic units
comprising soft magnetic layers separated by a thin, non-magnetic coupling
layer, such that the soft magnetic layers are anti-parallel coupled through the
thin, non-magnetic coupling layer. Zhou, Abstract, 112, Fig. 3. As the
Examiner further finds (Final Act. 8; Ans. 6—8), the bottom APS unit of
Zhou’s structure (“APS-2”) includes a first soft magnetic layer comprising a
first soft magnetic layer with a first magnetic thickness (“Co/CoZrTa”); a
second soft magnetic layer with a second magnetic thickness (“CoZrTa”);
and a first coupling layer (“Ru”) oriented between the first soft magnetic
layer and the second soft magnetic layer. Zhou, 1 53, Table 1, Fig. 3.
As the Examiner also finds (Final Act. 8; Ans. 6—8), Zhou teaches that
its soft magnetic underlayer structure includes multiple soft magnetic layers
with different magnetic permeabilities having a gradient effect in order to
reduce adjacent track erasure while maintaining good overwrite properties.
Zhou, Abstract, Figs. 4, 5, 48, 52. As the Examiner finds (Final Act. 9;
Ans. 6—8), the antiferromagnetic coupling layer can be between any of the
soft magnetic layers in Figures 4 and 5 of Zhou, such as between p5 and p6,
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resulting in the first soft magnetic layer having both high and low magnetic
permeability regions (Zhou, Figs. 4, 5); and there can be a permeability
gradient, i.e., an increase or decrease in value, through the depth of the soft
magnetic underlayer structure (Zhou, Figs. 2—5, Tflf 47, 48, 52).
Appellants’ argument exposes no reversible error in the Examiner’s
factual findings in this regard.
The Examiner also provides articulated reasoning with rational
underpinning explaining why one of ordinary skill would have had reason to
provide a structure wherein the first soft magnetic layer has a low magnetic
permeability region and a high magnetic permeability region. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”).
In particular, based on Zhou’s teachings, we concur with the
Examiner’s conclusion (Final Act. 8, 9; Ans. 6—8) that it would have been
obvious to one of ordinary skill in the art to have provided a structure with
layers comprising low and high permeability regions in order to reduce
adjacent track erasure while maintaining good overwrite properties. Zhou,
Abstract, || 48, 52, Figs. 3—5. As the Examiner explains (Ans. 7—8), it
would have been within the skill of one of ordinary skill in the art to
combine the teachings of Zhou’s Figure 3 with Figures 4 or 5 to include a
first soft magnetic layer having a low magnetic permeability region and a
high magnetic permeability and, as suggested by Zhou, the motivation to do
so would have been to have a gradient of magnetic permeability along the
depth of the SUL to provide reduced adjacent track erasure and a sufficiently
high overwrite properties. Zhou, Figs. 3—5, 48, 52.
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Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning lacks a rational underpinning or is otherwise based on some other
reversible error.
Specifically, Appellants’ assertion that “Zhou’s Figs. 4 and 5 are not
directed to APS units” (App. Br. 6) is conclusory and Appellants do not
provide an adequate technical explanation or direct us to sufficient evidence
in the record to support it. Attorney argument is not evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants’ argument that the Examiner’s rejection “improperly relies
on Official Notice” (App. Br. 9) is equally unpersuasive for the well-stated
reason provided by the Examiner at pages 11—12 of the Answer. In
particular, as the Examiner explains (Ans. 12), the rejection is not based on
official notice. Rather, as previously discussed above, a preponderance of
the evidence in the record and sound technical reasoning support the
Examiner’s findings and obviousness analysis.
Appellants further argue that the Examiner’s rejection should be
reversed because the claimed relationship between magnetic thicknesses
provides unexpected results. App. Br. 7—9. In particular, Appellants
contend that
the claimed magnetic thicknesses provide an unbalanced
structure, e.g., the first and second soft magnetic layers have
unequal magnetic moment, where the magnetic thickness of the
second layer is substantially equal to the magnetic thickness of
the first layer’s low permeability region . . . [and] the claimed
magnetic thickness relationship among layers and the low/high
permeability regions provides unexpected results for the claimed
unbalanced structure.
Id. at 7—8.
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Relying on Figures 8—10, 12, 13 and paragraph 28 of the
Specification, Appellants argue that by changing from a balanced SUL
structure to an unbalanced SUL structure, the magnetic properties can be
attained by modifying the thickness of the high permeability SUL material
and changing the SUL layer magnetic thickness balance. Id. at 8.
Appellants contend that writability is improved by adjusting the thickness of
either the top or bottom layer, but the erasure properties do not respond
symmetrically. Id.
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. In attempting to overcome a prima facie case of
obviousness by showing unexpected results, the burden rests with
Appellants to establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the prior art and
(2) that the difference actually obtained would not have been expected by
one skilled in the art at the time of the invention. See In re Freeman, 474
F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”).
Appellants have failed to satisfy the requisite burden. Appellants do
not identify sufficient evidence to show that there actually is a difference
between the claimed structure and the closest prior art, which is Zhou’s
structure. Appellants fail to adequately explain or provide data sufficient to
show how Zhou’s prior art structures would have performed if subject to the
same testing as set forth in Figures 8—10, 12, and 13 of the Specification.
As the Examiner finds (Ans. 11), both Zhou and the claimed invention
are directed to the same principal concept of having a magnetic permeability
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gradient along the depth of the SUL in order to simultaneously achieve
reduced adjacent track erasure (ATE) and a sufficiently high overwrite
(OW) properties. See Zhou 1 52 (“The principal concept of the present
invention is a gradient... of magnetic permeability along the depth of the
SUL so that a reduced ATE and a sufficiently high OW can be
simultaneously achieved.”); Spec. 115 (“Media with an improved
combination of easier writability on the recorded track and difficult erasure
off-track (between tracks and on neighboring tracks) is achieved[.]”).
Appellants also do not identify sufficient evidence that the difference
actually obtained would not have been expected by one skilled in the art at
the time of the invention. As the Examiner finds (Ans. 11), Appellants have
not established criticality of the claimed magnetic thickness relationship
among the layers and the low/high permeability regions for the claimed
unbalanced structure or otherwise made clear what feature is the unexpected
result when having an unbalanced soft magnetic structure.
Appellants’ assertion that “writability is improved by adjusting the
thickness of either the top or bottom layer, but the erasure properties do not
respond symmetrically” (App. Br. 4) is conclusory and, without more,
insufficient to establish unexpected results. De Blauwe, 736 F.2d at 705
(Fed. Cir. 1984) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.”).
Moreover, the data set forth in Figures 8—10, 12, and 13 of the
Specification and upon which Appellants rely for showing unexpected
results are not commensurate with the scope of the claims. For example, as
the Examiner finds (Ans. 11), although the data provided in Figure 10 are
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specific to a magnetic thickness value and coupled layers all with the same
magnetic moment (Bs) value, the claims are not so limited. As the Examiner
further finds (Ans. 11), none of the figures upon which Appellants rely for
showing unexpected result mention layers having low and high magnetic
permeability regions as required by the claims.
Accordingly, we affirm the Examiner’s rejection of claims 32, 34—36,
39, 40, 4AA6, 49-51, 54, 55, 57, 58, 61, and 62 under 35 U.S.C. § 103(a) as
unpatentable over Zhou.
Claims 41 and 56.
Appellants present separate argument for the patentability of
dependent claims 41 and 56 and argue these claims as a group. App. Br. 6—
7.
Claim 41 depends indirectly from claim 39 and recites the system of
claim 39, further comprising:
a fourth soft magnetic layer with a fourth magnetic
thickness, wherein the fourth magnetic thickness has a
different magnitude than the third magnetic thickness', and
a second coupling layer oriented between the third soft
magnetic layer and the fourth soft magnetic layer and providing
antiferromagnetic coupling between the third soft magnetic
layer and the fourth soft magnetic layer.
App. Br. 16 (Claims App’x) (key disputed claim language italicized and
bolded). Claim 56 also recites the limitation “wherein the fourth magnetic
thickness has a different magnitude than the third magnetic thickness.” Id.
at 19 (Claims App’x).
The Examiner determines that the Zhou teaches or suggests all of the
limitations of claims 41 and 56 and would have rendered the claims obvious.
Final Act. 8—10; Ans. 9—10. Regarding the limitation “wherein the fourth
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magnetic thickness has a different magnitude than the third magnetic
thickness,” the Examiner finds that Zhou discloses an “APS-2” structure
which comprises a lowermost CoZrTa soft magnetic layer, a Ru thin, non­
magnetic layer, and an uppermost Co/CoZrTa soft magnetic layer. Ans. 9
(citing Zhou 1 53 (Table 1)). Relying on paragraph 54 of Zhou, the
Examiner finds further that the reference suggests that lowermost CoZrTa
layer and uppermost Co/CoZrTa layer can have different magnetic
thicknesses. Id. at 9—10 (citing Zhou 154).
Appellants argue that the Examiner’s rejection of claims 41 and 56
should be reversed because Zhou has not been shown to teach or suggest the
claimed differing magnetic thicknesses, i.e., “wherein the fourth magnetic
thickness has a different magnitude than the third magnetic thickness.”
App. Br. 6; Reply Br. 7.
We agree with Appellants’ argument for the reasons provided at pages
6—7 of the Appeal Brief and pages 7—8 of the Reply Brief. In particular, we
do not find that the Examiner has established by a preponderance of the
evidence that Zhou teaches or suggests this limitation. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial
burden of establishing a prima facie case of obviousness).
None of the portions of Zhou upon which the Examiner relies teach or
suggest the fourth magnetic thickness having a different magnitude than the
third magnetic thickness, as required by the claims. As Appellants correctly
point out (App. Br. 6; Reply Br. 7), paragraphs 47 and 53 and Figure 3 of
Zhou do not teach, suggest, or show a fourth magnetic layer, wherein the
fourth magnetic thickness has a different magnitude than the third magnetic
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thickness, or appear to provide any motivation for the skilled artisan to
modify Zhou’s structure in such a manner.
Accordingly, we reverse the Examiner’s rejection of claims 41 and 56
under 35 U.S.C. § 103(a) as being unpatentable over Zhou.
Claim 43.
Appellants present separate arguments for the patentability of claim
43. App. Br. 7; Reply Br. 8.
Claim 43 depends from claim 32 and further recites “wherein the total
thickness of the first soft magnetic layer, the second soft magnetic layer, and
the first coupling layer combined is between about 200 angstroms and 400
angstroms.” App. Br. 17 (Claims App’x) (key disputed claim language
italicized and bolded).
Appellants argue that the Examiner’s rejection of claim 43 should be
reversed because Zhou does not teach or suggest a structure having a total
thickness between about 200 angstroms and 400 angstroms. App. Br. 6;
Reply Br. 8.
We agree with Appellants’ argument for the reasons provided at page
7 of the Appeal Brief and pages 8—9 of the Reply Brief. The Examiner’s
finding that paragraph 53 (Table 1) of Zhou discloses this limitation is
unsupported by a preponderance of evidence in the record. Indeed, as
Appellants’ correctly point out (App. Br. 7; Reply Br. 8) and contrary to the
Examiner’s findings, none of the total SUL thickness values for APS-2 listed
in Table 1 are between about 200 angstroms and 400 angstroms, as required
by the claim, and the Examiner has not provided sufficient reasoning for
why one of ordinary skill in the art would have arrived at the claimed range
in view of Zhou’s disclosure.
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Accordingly, we reverse the Examiner’s rejection of claim 43 under
35 U.S.C. § 103(a) as being unpatentable over Zhou.
Rejections 4 and 5
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 4 and 5, stated above.
Rather, Appellants rely on the same arguments presented above in
response to the Examiner’s rejection of independent claims 32 and 46 as
obvious over Zhou. App. Br. 10 (stating that “[a]s set forth above, Zhou
fails to teach each of the features of underlying independent claims 32 and
46 . . . [and] Shimizu has not been shown to remedy the above-discussed
deficiencies in the rejections based on Zhou”); id. at 11 (stating that “as set
forth above, Zhou fails to teach each of the features of claim 32 . . . [and]
Girt has not been shown to remedy the above-discussed deficiencies in the
rejections based on Zhou”).
We do not find these arguments persuasive for the same reasons
discussed above for affirming the Examiner’s rejection of claims 32 and 46
as obvious over Zhou and, accordingly, affirm the Examiner’s Rejections 4
and 5.
DECISION/ORDER
The Examiner’s rejections of claims 32, 34^46, 49-59, 61, and 62
under 35 U.S.C. § 112 are affirmed.
The Examiner’s rejection of claims 32, 34—36, 39, 40, 44^46, 49-51,
54, 55, 57, 58, 61, and 62 under 35 U.S.C. § 103(a) as unpatentable over
Zhou is affirmed.
18
Appeal 2016-005855
Application 12/544,091
The Examiner’s rejection of claims 41, 43, and 56 under
35 U.S.C. § 103(a) as unpatentable over Zhou is reversed.
The Examiner’s rejection of claims 37, 38, 52, 53, 59, and 62 under
35 U.S.C. § 103(a) as unpatentable over the combination of Zhou and
Shimizu is affirmed.
The Examiner’s rejection of claim 42 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zhou and Girt is affirmed.
It is ordered that the Examiner’s decision is 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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