Ex Parte Ranjan et alDownload PDFPatent Trial and Appeal BoardDec 19, 201612882053 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 12/882,053 09/14/2010 Rajiv Yadav Ranjan 10-3394-10 2188 105639 7590 12/19/2016 Duane Morris LLP (10/11) Seagate IP Docketing 2475 Hanover Street Palo Alto, CA 94304-1194 EXAMINER CHAU, LINDA N ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 12/19/2016 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 RAJIV YADAV RANJAN, JEFFREY SHANE REITER, and THOMAS PATRICK NOLAN Appeal 2015-006678 Application 12/882,053 Technology Center 1700 Before CHUNG K. PAK, BRIAN D. RANGE, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 1 In the Opinion we refer to the Specification filed September 14, 2010 (“Spec.”), the Final Action mailed August 25, 2014 (“Final Act.”), the Appeal Brief filed December 10, 2014 (“App. Br.”), the Examiner’s Answer mailed May 7, 2015 (“Ans.”), and the Reply Brief filed July 6, 2015 (“Reply Br.”). Appeal 2015-006678 Application 12/882,053 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims 24, 29, 32, 37, 40, 45, 48, 50-54, and 56—63. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to apparatuses comprising a substrate comprising a sublayer of non-uniform thickness. Claim 24, reproduced below, is illustrative of the claimed subject matter: 24. An apparatus comprising: a substrate comprising a first surface and a first layer on said first surface, wherein a thickness of said first layer continuously increases from an inner diameter to an outer diameter of said substrate, and wherein said first layer comprises a sub-layer for a magnetically soft underlayer operable to guide magnetic flux through a recording layer. App. Br. 23 (Claims App’x). REFERENCES The Examiner relies on US 5,815,342 to Akiyama et al, issued September 29, 1998 (“Akiyama”) as prior art. Final Act. 4. REJECTIONS Claims 24, 29, 32, 37, 40, 45, 48, 50—54, and 56—63 stand rejected as obvious over Akiyama. Final Act. 4. 2 Appellants identify Seagate Technology LLC as the real party in interest. App. Br. 3. 2 Appeal 2015-006678 Application 12/882,053 OPINION Akiyama discloses a perpendicular magnetic recording/reproducing apparatus wherein the perpendicular magnetic recording medium has a soft magnetic back layer. Akiyama Abstract. The soft magnetic back layer may be deposited on one surface of the substrate to yield a single-sided perpendicular magnetic recording medium, or on two opposing surfaces of the substrate to yield a double-sided perpendicular magnetic recording medium. Id. at col. 9,11. 44-49. The Examiner contends that the soft magnetic back layers of Akiyama reads on of the claimed invention. Final Act. 4. (With respect to claim 40, the claimed first and second layers are on opposing surfaces of a substrate. See App. Br. 24 (Claims App’x.).) The Examiner acknowledges that “Akiyama fails to explicitly disclose the thickness profile of the first and second layer either being increasing or decreasing from the inner diameter to said outer diameter, or [the] angular thickness profile.” Final Act. 4. The Examiner argues, however, that Appellants’ Specification discloses that the first layer and second layer are part of a uniform thickness layer and that each layer within the uniform thickness layer is not materially distinct. Id. The Examiner notes that the claims are to an intermediate product of a final product that has a uniform thickness. Id. The Examiner contends that drawing an arbitrary line within a layer in Figure 5 of Akiyama would create sublayers that, combined, would have a uniform thickness and, consequently, Akiyama intrinsically discloses strata with the thickness profile as claimed in a soft magnetic layer. Id. at 5. Appellants argue that the Examiner’s conclusion is based on impermissible hindsight. App. Br. 18—19. Appellants contend that, in the 3 Appeal 2015-006678 Application 12/882,053 absence of impermissible hindsight, one of ordinary skill in the art at the time of the invention would not be motivated to modify Akiyama Figure 5 as the Examiner suggests to construct an arbitrary line within a layer. Id. at 19. A modification of Akiyama Figure 5 is reproduced below: FIS. 5 ianhotato'sj Figure 5 of Akiyama is a vertical cross-sectional view schematically illustrating the structure of a perpendicular magnetic recording/reproducing apparatus according to a fourth embodiment of Akiyama’s invention. Akiyama col. 5,11. 64—67. The “arbitrary line” discussed by the Examiner has been added to the original figure, and has the word “motivation” and the symbol for “stop.” Appellants contend that Akiyama provides no teaching, suggestion, or motivation that would have led one of ordinary skill in the art at the time of the invention to modify Akiyama in the manner suggested by the Examiner. App. Br. 19. Appellants also contend that the Examiner provides no factual support for the conclusion that Akiyama intrinsically or inherently discloses strata with the thickness profile as claimed in a soft magnetic layer. Id. at 19—20. Specifically, Appellants argue that the Examiner must show the claimed thickness profile is necessarily present in Akiyama to show inherency, but has failed to do so. Id. at 20. 4 Appeal 2015-006678 Application 12/882,053 We agree with Appellants. The Examiner does not identify any teaching in Akiyama that would have suggested or intrinsically mentioned the formation of layers or sublayers with the thickness profiles claimed. The Examiner provides no factual basis for a suggestion or motivation, other than hindsight, to alter the uniform layers of Akiyama. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”); In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”). In addition, the Examiner fails to establish inherency, which requires more than that sublayers with thickness profiles as claimed are probabilities or possibilities based on Akiyama’s final product; inherency requires that the claimed features necessarily be present in Akiyama. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). As we stated, to establish inherency, “the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Here, the Examiner’s argument that “[bjecause there is no material distinction between the first and second layer, the Examiner is taking the position that Akiyama intrinsically discloses strata with the thickness profile as claimed within a soft magnetic layer” are speculative and unsupported by evidence. Ans. 3. 5 Appeal 2015-006678 Application 12/882,053 The fact that “there is no material distinction between the first and second layer” does not indicate that Akiyama’s layers or sublayers necessarily or intrinsically has the thickness profile recited in the claims on appeal or would necessarily have the thickness profile during an intermediate stage of manufacture. We note that the Examiner attempts to shift the burden to Appellants to dispute inherency is improper because the Examiner does not supply the required sufficient basis in fact and/or technical reasoning to establish a prima facie case of inherency. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”) The Examiner’s evidence and explanation are insufficient to establish a prima facie case of obviousness for the subject matter recited in the claims, and we accordingly do not sustain the rejections under 35 U.S.C. § 103(a). DECISION For the above reasons, the Examiner’s rejection of claims 24, 29, 32, 37, 40, 45, 48, 50—54, and 56—63 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation