Ex parte OHTA et al.

Board of Patent Appeals and Interferences

Dec 31, 1998

08013987 (B.P.A.I. Dec. 31, 1998)

Application for patent filed February 5, 1993. According to appellants, the application is a continuation of1
Application 07/715,738, filed June 18, 1991, now abandoned, which is a continuation of Application 07/275,724 , filed
November 23, 1988, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a
law journal and (2) is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENJI OHTA, AKIRA TAKAHASHI,
YOSHITERU MURAKAMI, JUNICHIRO NAKAYAMA,
and TOMOYUKI MIYAKE
__________
Appeal No. 95-2427
Application 08/013,9871
___________
HEARD: December 9, 1998
___________
Before WEIFFENBACH, ELLIS and OWENS, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
1, 2 and 4-14, which are all of the claims remaining in the application. We reverse and enter a new ground
Appeal No. 95-2427
Application 08/013,987
In their brief, appellants refer to attached documents A, B and C attached to the brief. In our review, we did2
not find the documents identified as A, B and C attached or included with the brief. We further note that in the answer,
the examiner made no comment about the documents. Since we are reversing the examiner’s rejection, we find it
unnecessary to remand this case to the examiner.
The document lists the first named applicant as “Kokusai Kenshin Kenwa” and the first named inventor as3
“Kokusai Kenshin Denwa.” These first named applicant and first named inventor appear to be same person, but the
spelling of the last name of one of the names is must be incorrect.
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of rejection pursuant to the provisions of 37 CFR § 1.196(b).
The Claimed Subject Matter
The claims on appeal are directed to a magneto-optic memory medium. Claim 1 is representative
of the claimed subject matter and reads as follows:
A magneto-optic memory medium consisting essentially of:
a first dielectric film, a magneto-optic memory film, a second dielectric film and a
reflective film, wherein said films are superposed in layers on a light trans-mitting substrate,
the magneto-optic memory film being a rare earth-transition metal alloy film havng the
composition formula:
(Gd Tb ) Fex 1-x y 1-y
wherein x is 0.58 to 0.62, and y is 0.27 to 0.33, and wherein said magneto-optic
memory film has a thickness of 20-50 nm.
References of Record2
The following references of record are relied upon by the examiner as evidence of obviousness:
Takahashi et al. (Takahashi) 4,610,912 Sep. 9, 1986
Tanaka et al. (Tanaka) 4,814,238 Mar. 21, 1989
Gardner 4,833,043 May 23, 1989
Denwa et al. (Denwa) 2 071 696 A Sep. 23, 19813
Appeal No. 95-2427
Application 08/013,987
In the final Office action, the examiner stated that claims 1, 2 and 4-14 were rejected. However, in the answer,4
the examiner stated that claims 1 and 3-14 were rejected. Since claim 3 was cancelled by amendment “C” (paper no. 11)
which was filed before the final Office action (paper no. 23), we consider the examiner’s statement in the answer of the
claims rejected is in error and should have been claims 1, 2 and 4-14.
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(UK Patent Application)
Imamura et al. (Imamura), “Magneto-Optical Recording On Amorphous Films,” IEEE
Transactions On Magnetics, Vol.-Mag. 21, No. 5, pages 1607-12, September
1985.
The Rejection
Claims 1, 2 and 4-14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Denwa4
in view of Gardner, Tanaka and Imamura, and further in view of Takahashi.
Opinion
We have carefully considered the respective positions advanced by appellants and the examiner.
For the reasons set forth below, we reverse the examiner's rejection and enter a new ground of rejection
under 35 U.S.C. § 112, fourth paragraph.
While Takahashi discloses a magneto-optic memory medium comprising a first dielectric film,
GdTbFe magneto-optic memory film which is 35 nm thick, a second dielectric film and a reflective film
(col. 4, lines 21-23, Example I) as superimposed layers on a transparent substrate, we do not find that the
prior art relied upon by the examiner, taken as a whole, presents a prima facie case of obviousness for
the claimed medium having the GdTbFe composition set forth in the claims. We find that the examiner’s
analysis of the prior art would not have led a person having ordinary skill in the art to the recited GdTbFe
Appeal No. 95-2427
Application 08/013,987
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composition.
Appellants claim very limited ranges for x and y in the GdTbFe composition. They further disclose
a film that the claimed ranges are critical (specification: p. 8, lines 8-16). Denwa discloses a (Gd Tb ) Fex 1-x y 1-
film wherein 0.00 # x # 1.00 and 0.15# y# 0.35. The examiner acknowledges that while these broady
ranges overlap the claimed ranges, the reference does not disclose the limited ranges for x and y set forth
in appellants’ claims. The examiner refers to two examples set forth on page 2, lines 77 and 78 of the
Denwa wherein the following alloy compositions are disclosed: Gd Tb Fe and Gd Tb Fe .0.17 0.14 0.79 0.10 0.17 0.73
The first formula appears to be in error since the amounts of the components do not add up to 100. We
will presume, as apparently did the examiner and appellants, that the amount of Fe in the first formula
should be 69, and not 79.
According to Denwa, his GdTbFe alloy compositions are characterized by larger light reproduced
output (p. 2, lines 44-53). Considering the increased light output of Denwa’s GdTbFe compositions, it
would have been obvious to use such compositions in Takahashi’s magneto-optic memory element.
However, Denwa’s alloy compositions Gd Tb Fe and Gd Tb Fe do not come within the0.17 0.14 0.69 0.10 0.17 0.73
scope of appellants’ claimed alloy. Alloy composition Gd Tb Fe has a y value of 0.27 which is0.10 0.17 0.73
within appellants’ claimed r ange, but an x value of 0.37 which is outside the claimed range. Alloy
composition Gd Tb Fe has a value of x of 0.55 and a value of y of 0.31. While the value of y is0.17 0.14 0.69
within appellants’ claimed range for y, the value of x is just outside the claimed range for x of 0.58 to 0.62.
Appellants concede that alloy Gd Tb Fe is closest to the claimed magneto-optic film alloy. 0.17 0.14 0.69
Appeal No. 95-2427
Application 08/013,987
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The value of x of Denwa’s Gd Tb Fe alloy is so close to appellants claimed alloy that one0.17 0.14 0.69
skilled in the art would have expected Denwa’s alloy and appellants’ claimed alloy to have the same
properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir.
1985). To show that the properties are not the same, appellant refers us to Table 1 on page 11 of the
specification. Appellant points to alloy composition 3 in the Table wherein x has a value of 0.56 and y has
a value of 0.27. Appellants contend that this alloy is the closest alloy to Denwa’s alloy. Alloy composition
3 in the Table shows a C/N value which is at least 2.4 dB less than the C/N values for alloy compositions
4, 5 and 6 which are within the scope of appellants’ claimed alloy. Appellants also point to Fig. 1 in their
brief which compares the Curie temperature (Tc) and coercive force (Hc) of Denwa’s Gd Tb Fe0.17 0.14 0.69
alloy to compositions having y values of 0.20-0.35 and x values of 0.0 to less than 0.35 (specification: Fig.
2; p. 10, lines 1-11). The Tc for Denwa’s alloy composition is 190E C. which is signicantly higher than
appellants claimed alloy which is about 160E C. while the Hc for Denwa’s alloy composition is 400 Oe
which is significantly below that for the claimed alloy which is over 1000 Oe. We find that the evidence
presented by appellants is sufficient to show that the Tc and Hc properties of Denwa’s alloy and appellants’
claimed alloy are not the same, but are significantly different.
We have considered the examiner’s analysis of the teachings of Gardner, Imamura and Tanaka
wherein the examiner concludes that a person having ordinary skill in the art would have been motivated
to optimize the amount of Gd to enhance the Kerr rotation angle. The examiner’s analysis is as follows:
Gardner <043 also teaches an amount of GdTb at 31 at.%. (C.6: 29-33). Thus,
Appeal No. 95-2427
Application 08/013,987
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it is known that the amount of rare earth can be set at the high end of the range from .15
at.% to 35 at.% and still maintain perpendicular anisotrophy.
With respect to the value of “x” it is generally known that Gd contributes to
increasing the Kerr angle of rotation (resulting in higher S/N) but has the disadvantage of
increasing the curie [sic, Curie] point and depressing the coerceive force. Tb, on the other
hand, contributes to a high coercive force and low curie [sic, Curie] temperature, but has
the disadvantage of a low Kerr angle of rotation. For example, see Denwa <686 where
GdFe has a much higher S/N ratio than Tb Fe or DyFe, (Fig. 2); Tanaka et al <238 which
teaches that in “GdTbFe systems ... Gd or Co may [be] included for the purpose of
improving their reproducing characteristics ...” (C.2: 53-55), and finally Imamura, N[.] et
al (R) “[i]t is clear from these figures that Gd and Co have the remarkable effect of
increasing [Kerr rotation], mainly due to the increase in Tc [sic, T ].” (p. 1607-1608).c
Thus, from the above citations it is suggested that Gd and Tb relative to each other
and to the amount of Fe are result effective parameters dependent upon the desired
coercivity, Kerr rotation angle, and curie [sic, Curie] temperature. In light of this, it would
have been obvious, [sic] to one skilled in the art of magetooptics to adjust the amount of
each element to optimize desired recording properties. The motivation to optimize the
proportion of each alloy rests with the broad teachings that the amunt of rare earth should
be between 15 at.% to 35 at.%, and the narrower disclosures teaching that Gd enhances
the Kerr rotation angle. Thus, one would be motivated to add as much Gd as is optimum
to enhance the Kerr rotation angle, even at the expense of reduced Hc [sic, H ] andc
greater Tc [sic, T ]. c
We find the examiner’s analysis to be insufficient to present a prima facie case of obviousness.
While a person skilled in the art may have been motivated to optimize the Kerr rotation angle by adding
Gd, the analysis fails to explain how optimization would have led such a person to the claimed range for
the value of x. Moreover, we do not find that Gardner, Imamura and Tanaka make up for the deficiencies
of the combined teachings of Denwa and Takahashi.
For the foregoing reasons, the rejection of the claims under 35 U.S.C. § 103 as being unpatentable
over the teachings of Denwa, Gardner, Tanaka, Imamura and Takahashi is reversed.
Appeal No. 95-2427
Application 08/013,987
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Appeal No. 95-2427
Application 08/013,987
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New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we enter the following new ground of rejection. Claim
2 is rejected under 35 U.S.C. § 112, fourth paragraph. Claim 2, which is dependent on claim1, does not
further limit claim 1. Claim 1 equates the magneto-optic memory film with a rare earth-transition metal alloy
film. Claim 1 defines the thickness of the magneto-optic memory film as being 20-50 nm while claim 2,
defines a broader thickness range the same film, namely, 5-100 nm.
Decision
For the foregoing reasons, the examiner’s rejection of claims 1, 2 and 4-14 under 35 U.S.C. §
103 as being unpatentable over Denwa, Gardner, Tanaka, Imamura, and Takahashi is reversed. This
decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. &
Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new ground of
rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(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 proceedings (37 CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts
relating to the claims so rejected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded to the examiner....
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent
Appeal No. 95-2427
Application 08/013,987
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Appeals and Interferences upon the same record....
Should the appellants elect to prosecute further before the primary examiner pursuant to 37 CFR
§ 1.196(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect
to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals
and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof.
REVERSED and 37 CFR § 1.196(b)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-2427
Application 08/013,987
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