Ex Parte Sapozhnikov et alDownload PDFPatent Trial and Appeal BoardNov 22, 201714167575 (P.T.A.B. Nov. 22, 2017) 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. 14/167,575 01/29/2014 Victor Boris Sapozhnikov STL 18239.00 6019 64776 7590 HolzerlPLaw, P.C. dba Holzer Patel Drennan 216 16th Street Suite 1350 Denver, CO 80202 EXAMINER EVANS, JEFFERSON A ART UNIT PAPER NUMBER 2688 NOTIFICATION DATE DELIVERY MODE 11/27/2017 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): hiplaw@blackhillsip.com docket @ hpdlaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VICTOR BORIS SAPOZHNIKOV, TARAS GRIGORYEVICH POKHIL, and MOHAMMED SHARIA ULLAH PATWARI (Applicant: Seagate Technology LLC) Appeal 2017-004023 Application 14/167,575 Technology Center 2600 Before MICHAEL J. STRAUSS, KARA L. SZPONDOWSKI, and SHARON FENICK, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—4, 6—16, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-004023 Application 14/167,575 STATEMENT OF THE CASE Appellants’ invention is directed to a synthetic antiferromagnetic reader. Spec. 12. Claim 1, reproduced below, is representative of the claimed subject matter: 1. An apparatus, comprising: a synthetic antiferromagnetic (SAF) structure, wherein a ratio of total moment MrT of a pinned layer in the SAF structure and total moment MrT of a reference layer in the SAF structure is substantially greater than 1.1, and wherein the pinned layer has a pinning strength substantially lower than 0.9 erg/cm2. App. Br. 13 (Claims Appendix). REJECTION Claims 1—4, 6—16, 19, and 20 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. ANALYSIS The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 736—37 (Fed. Cir. 1988); see Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Although the Examiner agrees with Appellants that candidate materials that can be used for forming pinned and reference layers are known to one of ordinary skill in the art, the Examiner concludes the claims fail to comply with the enablement requirement because the Specification does not disclose the materials that may be utilized to form the pinned layer or the reference layer or the thicknesses of the two layers. Final Act. 2; Ans. 2 Appeal 2017-004023 Application 14/167,575 3. The Examiner concludes the materials and thickness directly relate to the total moment MrT and pinning strength and the lack of disclosure creates a burden of undue experimentation on one of ordinary skill in the art. Final Act. 2—3; Ans. 3. Appellants contend “from what is disclosed in the application together with available information and without undue experimentation,” one of ordinary skill in the art is “highly capable” of “selecting] specific materials and specific thicknesses and utilizing] those layers in the specific arrangements claimed. One skilled in the field has access to many sources of information that can be used to select materials and thicknesses in order to arrive at the claimed subject matter.” App. Br. 8; see also Reply Br. 2—3. Specifically, Appellants argue soft magnetic materials having a magnetic orientation are well-known in the art. App. Br. 7. Appellants further argue the “well-known, reference book” Ferromagnetism, by Richard Bozorth (“the Bozorth text”), lists magnetic moment information for magnetic materials and “it is well known that the total moment (MrT) can be calculated from the known magnetic moment and known thickness.” App. Br. 8. According to Appellants, “[o]ne skilled in the art or field is highly competent and capable of reading a magn etic moment table in a book and calculating (e.g., multiplying) the corresponding total moment.” App. Br. 8. Appellants additionally argue “[t]he patent literature provides countless examples of materials and thicknesses.” Reply Br. 4. Appellants have submitted the Declaration of Victor Sapozhnikov (“Declaration”), co-inventor of the claimed invention, in support of their arguments that the claims are properly enabled. Appellants contend that the Declaration 3 Appeal 2017-004023 Application 14/167,575 provides several examples of how one of ordinary skill in the field of MR sensors would be able to design a structure having the properties recited in the pending claims based on information that is readily available to those in the field of MR sensors, including textbooks that provide magnetic properties and computer modeling programs that can be used to model layers (such as a SAF PL and a SAF RL) and a sensor stack having those layers. As explained by Mr. Sapozhnikov, no experimentation at all is needed to determine total moment MrT and pinning strength of a layer of a selected material at a selected thickness, since one can merely reference a textbook and then calculate (a simple multiplication step, really). App. Br. 8—9. Appellants further argue “[mjagnetoresistivity and magnetism is not an unpredictable art, and the interaction and interrelation of magnetic materials is not unpredictable.” App. Br. 9. In addition, Appellants argue that in addition to Ferromagnetism, the Declaration identifies computer- based modeling programs, such as Magpar, that can be used to design, make, and use the claimed subject matter. App. Br. 10-11. We are not persuaded by Appellants’ arguments and agree with the Examiner’s detailed factual findings and legal conclusions, which we incorporate herein by reference and adopt as our own. Final Act. 2—\\ Ans. 2—9. Although Appellants identify various tools, books, and patent literature that one of ordinary skill in the art may be able to use to obtain the claimed results (e.g., Reply Br. 3—4, App. Br. 8—11), Appellants are “required to provide an adequate enabling disclosure in the specification; [they] cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification.” ALZA Corp. v. AndrxPharmaceuticals, LLC, 603 F.3d 935, 941 (Fed. Cir. 2010); Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997) (“It is the 4 Appeal 2017-004023 Application 14/167,575 specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.”). As the Examiner points out (Ans. 5—6), none of these tools, books, and patent literature are referenced in Appellants’ Specification. Nor do Appellants direct us to any description in the Specification of materials that may be utilized to form the pinned and reference layers, or any description of the desired thickness of the two layers. “[W]hen there is no disclosure of any specific starting material or of any of the conditions] under which a process can be carried out, undue experimentation is required.” ALZA, 603 F.3d at 941 (quoting Auto. Tech. Int’l, Inc. v. BMWofN. Am., Inc., 501 F.3d 1274, 1283—84 (Fed. Cir. 2007) (quoting Genentech, 108 F.3d at 1366). Moreover, we agree with the Examiner that the Declaration does not adequately establish that one of ordinary skill in the art could make and use the invention without undue experimentation. Final Act. 3—4, Ans. 3—9. We disagree with Appellants that the Declaration provides “several examples of how one of ordinary skill in the field of MR sensors would be able to design a structure having the properties recited in the pending claims based on information that is readily available to those in the field of MR sensors.” App. Br. 8. Rather, the Declaration summarily concludes that “[t]he total magnetic moment (MrT) of a layer can be readily calculated (e.g., manually) by one skilled in the art by knowing the magnetic moment of the material (e.g., such as from the Bozorth text) and the thickness of the layer” and “the total moment (MrT) of a layer can be readily determined by computer-based modeling programs, which have the magnetic moment of a material present as data within the modeling program.” Declaration || 8, 9. In addition, the Declaration very generally describes the Bozorth text and the Magpar 5 Appeal 2017-004023 Application 14/167,575 modeling program. Declaration || 7, 10. However, the Declaration does not provide any working examples or details of how these calculations and determinations might be accomplished by one of skill in the art when provided with the Specification as a guide. C-onclusory declarations lacking specificity, such as the Declaration, are legally insufficient to rebut the Examiner’s prima facie enablement rejection. See, e.g., Auto. Tech., 501 F.3d at 1284—85 (declaration “failed to provide any detail regarding why [undue] experimentation was [not] necessary'.”). We further note our reviewing courts have found a declaration provided by an inventor is by nature self-serving, and is therefore accorded little, if any, evidentiary weight. See e.g., Reese v. Hurst, 661 F.2d 1222, 1239 (CCPA 1981) (discussing the weight to be given to self-serving declarations made by an inventor in an interference proceeding). “A man cannot make evidence for himself by writing a letter containing the statements that he wishes to prove.” A. B. Leach & Co. v. Peirson, 275 U.S. 120, 128 (1927). Cf. with Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2015) (finding that oral testimony of an inventor must be treated “with skepticism due to the possibility of an inventor’s self-interest in obtaining or maintaining an existing patent”). Accordingly, we are not persuaded the Examiner erred. 6 Appeal 2017-004023 Application 14/167,575 DECISION For the above reasons, we affirm the Examiner’s rejection of claims 1^1, 6-16, 19, and 20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation