Ex Parte Sendur et al

Patent Trial and Appeal Board

Mar 6, 2017

13688106 (P.T.A.B. Mar. 6, 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.
13/688,106 11/28/2012 Ibrahim Kursat Sendur 10-11131-10-US 2513
105639 7590 03/07/2017
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
EXAMINER
DAVIS, DAVID DONALD
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
03/07/2017 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 IBRAHIM KURSAT SENDUR,
WILLIAM ALBERT CHALLENER, and CHUBING PENG
Appeal 2016-004513
Application 13/688,106
Technology Center 2600
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 16, 19, 20, 24—28, and 32^44. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Seagate Technology
LLC. App. Br. 3.
Appeal 2016-004513
Application 13/688,106
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates to magnetic
storage media, and more particularly to patterned magnetic storage media for
heat assisted magnetic recording, and to disc drives that can include such
magnetic recording media.” Spec. 1:2-4.2 The Specification explains that a
“patterned magnetic recording medium for use in heat assisted magnetic
recording comprises an electrically conductive heat sink layer and a plurality
of discrete magnetic recording elements positioned adjacent to a first surface
of the heat sink layer.” Abstract.
Exemplary Claim
Independent claim 16 exemplifies the subject matter of the claims
under consideration and reads as follows:
16. A method of recording comprising:
positioning a recording head adjacent to a patterned
recording medium including an electrically conductive heat
sink layer and a plurality of discrete recording elements
positioned adjacent to a first surface of the heat sink layer,
wherein the discrete recording elements are
thermally and electrically isolated from each other;
producing electromagnetic radiation having electric field
lines substantially perpendicular and tangential to one or more
of the discrete recording elements to raise the temperature of
the one or more discrete recording elements; and
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November 28, 2012; “Final Act.” for the Final Office
Action, mailed January 5, 2015; “App. Br.” for the Appeal Brief, filed
June 8, 2015; “Ans.” for the Examiner’s Answer, mailed February 23, 2016;
and “Reply Br.” for the Reply Brief, filed March 22, 2016.
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Application 13/688,106
changing the magnetization of the one or more discrete
recording elements.
App. Br. 19 (Claims App.).
The Prior Art Supporting the Rejection on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Suzuki et al. (“Suzuki”) US 5,703,733 Dec. 30, 1997
Ruigrok et al. (“Ruigrok”) US 6,804,175 B2 Oct. 12, 2004
The Rejection on Appeal
Claims 16, 19, 20, 24—28, and 32^44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ruigrok and Suzuki. Final Act. 2-4.
ANALYSIS
We have reviewed the rejections of claims 16, 19, 20, 24—28, and 32—
44 in light of Appellants’ arguments that the Examiner erred. For the
reasons explained below, we agree in part with Appellants’ assertions
regarding error by the Examiner.
The Rejection of Independent Claims
16, 24, and 32 Under 35 U.S.C. § 103(a)
“Electric Field Lines ... Substantially Perpendicular
and Tangential to One or More ... Recording Elements”
Appellants argue that the Examiner erred in rejecting independent
claims 16, 24, and 32 because the cited references do not teach or suggest
“electric field lines . .. tangential to one or more . . . recording elements,” as
required by the claims. App. Br. 13; see Reply Br. 2—3.
The Examiner explains, however, that “[t]he claims require ‘electric
field lines . . . substantially perpendicular and tangential to the one or
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Application 13/688,106
more . . . recording elements’.” Ans. 2. The Examiner interprets
“tangential” as “merely touching” or “slightly connected.” Id. The
Examiner finds that electric field lines according to the Ruigrok-Suzuki
combination “have to be tangential” because “they are perpendicular, which
appellant [sic] hasn’t refuted.” Id. The Examiner further finds that the
electric field lines “have to be tangential” because “the lines would be
unable to raise the temperature of the recording elements if they were not
tangential.” Id. at 3^4.
In response, Appellants dispute the Examiner’s finding that “the lines
would be unable to raise the temperature of the recording elements if they
were not tangential.” Reply Br. 2. More specifically, Appellants assert that
“it is indeed possible to raise the temperature of the recording elements with
only perpendicular lines.” Id. at 3. Appellants also assert that Ruigrok
describes elongated semicircular recording regions that are “heated as a
whole” or “heated and (re)written as a whole” with an “elongated heat
region.” Id. at 2 (citing Ruigrok 11:20-28, 11:55—63, 19:10-20, Figs. 2—3,
13). Appellants further assert that “Suzuki teaches nothing with respect to
heating.” Id. at 3.
Appellants’ assertions do not persuade us of Examiner error.
Appellants do not address (1) the Examiner’s interpretation of “tangential”
or (2) the Examiner’s finding that electric field lines according to the
Ruigrok-Suzuki combination “have to be tangential” because “they are
perpendicular.” Reply Br. 2—3. In addition, Appellants’ assertions overlook
Ruigrok’s disclosure that a radiation beam, e.g., laser light, causes “[l]ocal
heating” at “an elongate heat spot” in the recording region. Ruigrok 1:40-
44, 2:5—9, 19:5—16. Further, Ruigrok Figure 13 shows “a tapered planar
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Application 13/688,106
wave guide 135 or laser” that forms the heat spot. Id. at 19:5—16, Fig. 13.
Ruigrok’s disclosure parallels Appellants’ disclosure that a light source
transmits electromagnetic radiation through an optical fiber and an optical
waveguide to a magnetic recording medium to heat a “localized area” in the
recording medium. Spec. 18:10—25, Fig. 19.
“Changing the Magnetization of ... Discrete Recording Elements”
Appellants argue that the Examiner erred in rejecting claims 16, 24,
and 32 because the cited references do not teach or suggest “changing the
magnetization of. . . discrete recording elements,” as required by the claims.
App. Br. 14; see also Reply Br. 3^4. In particular, Appellants contend that
Suzuki teaches “magnetization direction is not used as a recording means”
and, therefore, “actually teaches away from changing the magnetization of
the recording elements.” App. Br. 14.
The Examiner explains, however, that the claims require “‘changing
the magnetization’ not ‘changing the magnetization direction’.” Ans. 2.
The Examiner finds that “[cjhanging the magnetization is how information
is recorded and reproduced on the magnetic medium” in Suzuki and that
“[i]f the magnetization was not changed, information could not be stored on
the magnetic medium.” Id. at 2—3.
In response, Appellants assert that “Suzuki describes an apparatus
where the physical characteristics of pits and ridges [of a soft magnetic film]
store information, and the information is read by detecting changes in an
externally applied magnetic field, where the magnetic changes are caused by
the pits and ridges as the magnetic field passes over.” Reply Br. 4. Based
on that, Appellants assert that “Suzuki does not teach changing the
magnetization of the recording elements (pits and ridges), as claimed.” Id.
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Appellants’ assertions do not persuade us of Examiner error. The
Examiner finds Ruigrok teaches changing the magnetization of the recording
layer. Final Act. 2—3. For instance, Ruigrok discloses “us[ing] a magnetic
field to change locally the magnetisation [sic] of the recording layer and a
radiation beam to heat the recording layer.” Ruigrok 1:41—43. Appellants
do not address the Examiner’s finding regarding Ruigrok or Ruigrok’s
disclosure. App. Br. 14—15; Reply Br. 3^4.
In addition, Appellants’ assertions concerning Suzuki (1) relate to
reading information rather than recording information and (2) address only
some of the magnetic recording media described and depicted in Suzuki.
For recording information, Suzuki teaches that recording “may be performed
by forming a pattern of a soft magnetic material, causing a magnetoeletric
[sic] converting element to approach said magnetic recording medium, [and]
applying [a] magnetic field” to change the discrete recording elements
forming the pattern from unmagnetized to magnetized. Suzuki 4:12—17,
Fig. 1. Thus, Suzuki’s statement that “magnetization direction is not used as
a recording means” does not teach away from the claimed subject matter.
As the Examiner explains, the claims require “changing the magnetization”
not “changing the magnetization direction.” Ans. 2.
As Appellants note, Suzuki discloses magnetic recording media with
pits and ridges in a film, e.g., Figure 11 (Example 5) and Figure 13
(Example 7). See Reply Br. 3^4. But Suzuki also discloses magnetic
recording media with discrete recording elements, e.g., Figure 1
(Example 1), Figure 4 (Example 2), and Figure 6 (Example 3). See Final
Act. 3^4; Ans. 6.
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Summary for Independent Claims 1,24, and 32
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claims 1, 24, and 32 for
obviousness based on Ruigrok and Suzuki. Hence, we sustain the rejection
of these independent claims.
The Rejection of Dependent Claims 20,
25, 28, and 38—40 Under 35 U.S.C. § 103(a)
Appellants do not present any patentability arguments for dependent
claims 20, 25, 28, and 38—40 beyond the arguments for the associated
independent claims. App. Br. 13—17; Reply Br. 2—7. Accordingly, we
sustain the rejection of these dependent claims for the same reasons as the
independent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
The Rejection of Dependent Claims 19, 27,
33—37, and 42—44 Under 35 U.S.C. § 103(a)
Appellants argue that the Examiner erred in rejecting claims 19, 27,
33—37, and 42-44 because “[njowhere in the Final Office Action or any
other Office communications does the Examiner address any of the”
limitations in these claims. App. Br. 15—16.
Dependent Claims 19 and 27
Claims 19 and 27 require that “the heat sink layer has an anisotropic
thermal conductivity.” App. Br. 19—20 (Claims App.). In the Answer, the
Examiner cites a portion of page 10 in Appellants’ Specification. Ans. 3.
Page 10 states:
Anisotropic films are often obtained naturally during thin film
deposition processes. The films tend to grow in a columnar
manner which gives rise to higher thermal conductivity along
the columns than between columns. The materials that might
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Application 13/688,106
be used for the anisotropic heat sink would include the usual
suspects, gold, silver, copper, aluminum, etc.
Spec. 10:22—26. Based on Appellants’ Specification, the Examiner finds
that “a skilled artisan would have been motivated to specify that a heat sink
layer was formed of specific materials such as Ag [silver], Au [gold], Cu
[copper], A1 [aluminum], which are naturally occurring and readily available
materials . . . .” Ans. 3. In addition, the Examiner finds that U.S. Patent No.
4,882,212 to SinghDeo et al. (“SinghDeo”) teaches that “gold, silver, copper
and aluminum” are “excellent heat sink materials.” Id. Appellants respond
by arguing that “the Examiner has not addressed” the combination of
elements required by claims 19 and 27. Reply Br. 5.
Appellants’ arguments do not persuade us of Examiner error because
they do not address the Specification’s admission that gold, silver, copper,
and aluminum often produce anisotropic heat sink layers. Based on that
admission, claims 19 and 27 encompass the predictable use of prior-art
elements according to their established functions. See Ans. 3. Thus, the
Examiner properly “declin[ed] to allow [a] patent[] for what is obvious.”
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). Hence, we
sustain the rejection of claims 19 and 27.
Dependent Claims 33 and 43
Claims 33 and 43 require that “the electric field lines are substantially
perpendicular to one or more top surfaces” of discrete recording elements
and “substantially tangential to one or more side surfaces” of discrete
recording elements. App. Br. 20, 22 (Claims App.). In the Answer, the
Examiner finds that Ruigrok Figure 13 shows electric field lines as required
by claims 33 and 43. Ans. 3 (citing Ruigrok Fig. 13). In addition, the
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Application 13/688,106
Examiner finds that electric field lines according to the Ruigrok-Suzuki
combination “have to be tangential” because “they are perpendicular, which
appellant [sic] hasn’t refuted.” Id. Appellants respond by referencing the
“discussion of the perpendicular and tangential lines” for independent
claims 16, 24, and 32. Reply Br. 5.
Appellants’ arguments do not persuade us of Examiner error.
Appellants do not address the Examiner’s finding that Ruigrok Figure 13
shows electric field lines as required by claims 33 and 43. Reply Br. 5. Nor
do Appellants address the Examiner’s finding that electric field lines
according to the Ruigrok-Suzuki combination “have to be tangential”
because “they are perpendicular.” Id. Hence, we sustain the rejection of
claims 33 and 43.
Dependent Claims 34 and 44
Claims 34 and 44 require that “the electric field lines couple more
strongly” to the discrete recording elements “through interactions with the
side surfaces than interactions with the top surfaces.” App. Br. 21—22
(Claims App.). In the Answer, the Examiner finds that Suzuki Figure 1 and
Figure 5 show electric field lines coupling according to claims 34 and 44.
Ans. 4 (citing Suzuki Figs. 1, 5). In response, Appellants “submit that
Suzuki does not show these features” and assert that Suzuki discusses
“isolating the magnetic elements from each other.” Reply Br. 5 (citing
Suzuki 11:55—63).
We agree with Appellants that the Examiner erred in finding that
Suzuki Figure 1 and Figure 5 show electric field lines coupling according to
claims 34 and 44. Suzuki Figure 1 illustrates a magnetic head positioned
adjacent to a magnetic recording medium and does not depict electric field
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lines. Suzuki 6:12—14, 10:25—33, Fig. 1. Suzuki Figure 5 illustrates an
operational principle for a magnetic head positioned adjacent to a magnetic
recording medium according to Figure 4. Id. at 6:25—26, 12:51—13:32,
Figs. 4—5. Figure 5 shows magnetic flux from the magnetic head and does
not depict electric field lines. Id. at 13:7—20, Fig. 5. Thus, we do not sustain
the rejection of claims 34 and 44.
Dependent Claims 35-37
Claim 35 specifies that “the heat sink layer is a better electrical
conductor than the recording layer.” App. Br. 21 (Claims App.). In the
Answer, the Examiner cites the same portion of page 10 in Appellants’
Specification as cited for claims 19 and 27. Ans. 4. In addition, the
Examiner finds that SinghDeo teaches that “gold, silver, copper and
aluminum” are “electrically conductive materials.” Id. at 5. Appellants
respond by arguing that “the Examiner has not addressed” the combination
of elements required by claim 35. Reply Br. 5—6.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Ruigrok,
Suzuki, and Appellants’ Specification teach or suggest that “the heat sink
layer is a better electrical conductor than the recording layer.” Although the
Examiner finds that certain materials are “electrically conductive materials,”
the Examiner does not compare the electrical conductivity of those materials
(or any others) to the electrical conductivity of a recording layer. Ans. 4—5;
see Final Act. 2-4. Thus, we do not sustain the rejection of claim 35.
Claims 36 and 37 depend from claim 35. For the reasons discussed
regarding claim 35, we do not sustain the rejection of claims 36 and 37.
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Dependent Claim 42
Claim 42 requires that “the discrete recording elements allow for the
heat sink layer to be less aggressive than a corresponding heat sink layer in a
recording medium having a continuous recording layer, resulting in
comparatively higher temperature increases for the one or more discrete
recording elements.” App. Br. 22 (Claims App.). In the Answer, the
Examiner finds that Suzuki discloses discrete recording elements that “are
less aggressive” when combined with a heat-sink layer according to
Ruigrok. Ans. 6 (citing Suzuki Figs. 1, 2, 4, 5; Ruigrok Fig. 13 layer 134).
In response, Appellants explain that claim 42 requires “the heat sink layer to
be less aggressive,” not the discrete recording elements. Reply Br. 6. In
addition, Appellants assert that (1) “the Examiner failed to address the
claimed elements of, ‘resulting in comparatively higher temperature
increases’” and (2) “Suzuki is silent with respect to temperature increases.”
Id. at 6—7.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Ruigrok
and Suzuki teach or suggest claim 42’s subject matter. For instance, the
Examiner has not explained how the Ruigrok-Suzuki combination “result[s]
in comparatively higher temperature increases for the one or more discrete
recording elements.” Ans. 6; see Final Act. 2—\. Thus, we do not sustain
the rejection of claim 42.3
3 The Examiner notes that claim 42 requires “comparing the heat sink layer
to a hypothetical heat sink layer without any specificity.” Ans. 6. In the
event of continued prosecution, the Examiner should consider the
applicability of 35 U.S.C. § 112 12 to claim 42. See In re Packard,
751 F.3d 1307, 1310-14 (Fed. Cir. 2014) (agreeing that a claim fails to
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The Rejection of Dependent Claim 41 Under 35 U.S.C. § 103(a)
Claim 41 specifies that “the heat sink layer comprises Ag [silver], Au
[gold], Cu [copper], A1 [aluminum], ornichrome.” App. Br. 21 (Claims
App.). Appellants contend that the Examiner erred in rejecting claim 41
because the Examiner relied on (1) common knowledge in the art without
providing evidentiary support or (2) personal knowledge without providing a
supporting affidavit or declaration. App. Br. 16—17 (citing In re Zurko,
258 F.3d 1379, 1385 (Fed. Cir. 2001)). Appellants then “request that the
Examiner provide documentary evidence” supporting the rejection. Id.
at 17.
The Examiner explains, however, that (1) the claimed materials “are
naturally occurring materials with known properties” that Appellants have
“taken advantage of in the claimed invention” and (2) the “instant
specification refers to those materials ... as the ‘usual suspects’” for a heat­
sink layer. Ans. 6 (citing Spec. 10:25—26). The Examiner cites SinghDeo as
further support. Id. at 3. SinghDeo teaches that a heat-sink layer “is
preferably formed of a high conductivity metal or alloy, such as, . . . copper,
aluminum, gold, silver, nickel, iron and alloys thereof. . . .” SinghDeo
15:65—16:1. In addition, we note that Suzuki teaches forming discrete
recording elements on an aluminum layer. Suzuki 8:34—38, Figs. 1,4.
In the Reply Brief, Appellants continue to contend that the Examiner
erred in rejecting claim 41 because the Examiner relied on (1) common
knowledge in the art without providing evidentiary support or (2) personal
knowledge without providing a supporting affidavit or declaration. Reply
comply with 35 U.S.C. § 112 12 “when it contains words or phrases whose
meaning is unclear”).
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Br. 7. Appellants do not address the Specification’s admission that “gold,
silver, copper, [and] aluminum” are the “usual suspects” for a heat-sink
layer. Id. Nor do Appellants address SinghDeo’s teaching concerning
preferable materials for a heat-sink layer. Id. Consequently, Appellants’
contentions have not persuaded us that the Examiner erred in rejecting
claim 41 for obviousness. Hence, we sustain the rejection of claim 41.
DECISION
We affirm the Examiner’s decision to reject claims 16, 19, 20, 24—28,
32, 33, 38—41, and 43.
We reverse the Examiner’s decision to reject claims 34—37, 42,
and 44.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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