Ex Parte Suzuki

Patent Trial and Appeal Board

Dec 15, 2016

14020876 (P.T.A.B. Dec. 15, 2016)

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.
14/020,876 09/08/2013 Kouta SUZUKI M4879.D1/Q210958 1025
140810 7590 12/19/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
TAD AY YON ESLAMI, TABASSOM
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
PPROCESSING@SUGHRUE.COM
IPdocket@wdc.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WD MEDIA
Appeal 2015-007801
Application 14/020,876
Technology Center 1700
Before LINDA M. GAUDETTE, MARK NAGUMO, and MICHAEL G.
McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 4, and 6 under 35 U.S.C. § 102(b) as
anticipated by Stimiman et al. (US 2008/0075854 Al, pub. Mar. 27, 2008
(“Stimiman”)). App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Western Digital
Technologies, Inc. Appeal Brief filed Feb. 18, 2015 (“App. Br.”), 2.
2 Final Office Action mailed June 26, 2014 (“Final Act.”).
Appeal 2015-007801
Application 14/020,876
Claim 1, the sole independent claim on appeal, is reproduced below:
1. A perpendicular magnetic recording medium,
comprising:
a base;
a magnetic recording layer;
a medium protective layer; and
a lubricating layer in this order on the base,
wherein the lubricating layer has a CF bond density of
2.0xl022 to 2.7xl022 atoms/cm3 calculated based on a film
thickness of the lubricating layer measured by using an
ellipsometer or X-Ray Reflectivity and the number of CF bonds
in a predetermined range of the lubricating layer counted by
using Fourier Transform Infrared Spectroscopy or X-ray
Photoelectron Spectroscopy, and
wherein the lubricating layer comprises
perfluoropolyether (PFPE) and has a film thickness of 10 to 16
angstroms and an FT-IR absorbance value of 12 to 18.
App. Br. 13 (Claims App’x).
Appellant contends the Examiner failed to establish a prima facie case
of anticipation because the Examiner erred in finding that the lubricating
layer of Stimiman’s recording medium: (1) has “a film thickness of 10 to 16
angstroms” (claim 1); and (2) inherently has “a CF bond density of 2.0xl022
to 2.7xl022 atoms/cm3” (id.). App. Br. 6—11. We address each of these
arguments in turn.
1. Did the Examiner reversibly err in finding that the lubricating layer of
Stirniman ’s recording medium has “a film thickness of 10 to 16 angstroms ”
(claim 1)?
Appellant does not dispute the Examiner’s finding that Stirniman
describes a perpendicular magnetic recording medium comprising a base, a
magnetic recording layer, a medium protective layer and a lubricating layer.
See Final Act. 3 (citing Stirniman H 3, 4, 6); App. Br. 5—11. The Examiner
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Appeal 2015-007801
Application 14/020,876
cites paragraph 46 of Stimiman for a teaching of using specific thicknesses
of 1 nm (Final Act. 3) and 1.2 nm (Ans. 2) for the lubricating layer, as well a
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teaching of a preferred thickness range of 10-30 A (id.). Paragraph 46 of
Stimiman reads, in relevant part: “The thickness of the lubricant coating
should be at least 0.5 nm, preferably at least 1 nm, and more preferably at
least 1.2 nm and will generally be below 3 nm, preferably in the range from
1 nm to 3 nm.”
When a patent claims a range,. . . that range is
anticipated by a prior art reference if the reference discloses a
point within the range. ... If the prior art discloses its own
range, rather than a specific point, then the prior art is only
anticipatory if it describes the claimed range with sufficient
specificity such that a reasonable fact finder could conclude that
there is no reasonable difference in how the invention operates
over the ranges.
Ineos USA LLC v Berry Plastics Corp., 783 F.3d 865, 869 (Fed. Cir. 2015)
(citing Clear Value, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1345
(Fed. Cir. 2012); Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999
(Fed. Cir. 2006); and Titanium Metals Corp. v. Banner, 778 F.2d 775, 782
(Fed. Cir. 1985)). Furthermore, “when the prior art discloses a range, rather
than a point, the court must evaluate whether the patentee has established
that the claimed range is critical to the operability of the claimed invention.”
Id. at 871.
We agree with Appellant that the phrases “at least 1 nm” and “at least
1.2 nm” in paragraph 46 of Stimiman do not describe specific thicknesses,
but are more accurately characterized as describing end points of preferred
ranges, the other end point of these ranges being “generally . . . below 3
nm.” App. Br. 6; Reply Brief filed Aug. 25, 2015 (“Reply Br.”), 9-10. See
Atofina, 441 F.3d at 1000 (“[T]he disclosure of a range is no more a
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Appeal 2015-007801
Application 14/020,876
disclosure of the end points of the range than it is of each of the intermediate
points.”). The thickness range recited in claim 1 (“10 to 16 angstroms”),
however, is encompassed by Stimiman’s preferred thickness range of 10—30
A. Therefore, we next consider whether Appellant has established that a
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range of 10-16 A is critical to the operability of the claimed perpendicular
magnetic recording medium. See Ineos, 783 F.3d at 871.
Appellant relies on paragraph 11 of the Specification as establishing
criticality in the claimed thickness range. App. Br. 7. Appellant notes
paragraph 11 discloses that although increasing the thickness of the
lubricating layer improves properties such as durability, moisture resistance,
and contamination resistance, too great of an increase in layer thickness can
deteriorate read/write characteristics. Id. A goal of the invention is,
therefore, to use “a film thickness as thin as possible” while ensuring
durability and good read/write characteristics. Id. (citing Spec. 111).
The problem with Appellant’s argument is that there is no indication
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in the Specification that a lubricating layer thickness of 10—16 A is critical to
achieving the goal identified in paragraph 11, or any other features of the
invention, such as good moisture resistance and contamination resistance
(see Spec. 113). In fact, we have reviewed the Specification in its entirety
and find no clear indication of criticality in the recited thickness range of
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10—16 A. Nor do we find any basis for ascertaining the thickness at which a
lubricating film results in an unacceptable reduction in the read/write
characteristic of the recording medium. See id. 111. At most, the recitation
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of a lubricant film thickness of 10—16 A in one of the original dependent
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claims (see Spec. 15 (original claim 3)) evidences that 10—16 A is a
preferred range.
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Appeal 2015-007801
Application 14/020,876
Appellant argues CF bond density is a function of film thickness and
suggest that at film thicknesses outside the claimed range, a “CF bond
density of 2.0xl022 to 2.7xl022atoms/cm3” (claim 1) would not necessarily
result. See Reply Br. 13. We agree that the Specification describes the
desired properties of the lubricating layer as being a function of CF bond
density. See, e.g., Spec. 115. The Specification explicitly discloses that
when the lubricating layer is formed from a lubricant having a CF bond
density of 2.0x1022 to 2.7x1022 atoms/cm3, the lubricating layer has improved
durability, high contamination resistance, and good read/write
characteristics. See id.', see also id. 174. We also agree that the
Specification describes CF bond density as a function of thickness (see id.
118;3 see also id. H 71—72), but we find no clear indication that a particular
film thickness is critical to achieving a CF bond density of 2.0x1022 to
2.7 x 1022 atoms/cm3.
In sum, we are not persuaded that the Examiner reversibly erred in
finding Stimiman describes a recording medium comprising a lubricating
layer having “a film thickness of 10 to 16 angstroms,” as recited in appealed
claim 1.
3“In the CF bond density measuring step, an ellipsometer or X-Ray
Reflectivity (XRR) may be used to measure a film thickness of the
lubricating layer, Fourier Transform Infrared Spectroscopy (FT-IR) or X-ray
Photoelectron Spectroscopy (XPS) may be used to count the number of CF
bonds in a predetermined range of the lubricating layer, and the CF bond
density may be calculated based on the measured film thickness and the
counted number of CF bonds (CF bond density measuring step).”
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Appeal 2015-007801
Application 14/020,876
2. Did the Examiner reversibly err in finding that the lubricating layer of
Stimiman ’s recording medium inherently has “a CF bond density of
2.0x1022 to 2.7x1022atoms/cm3” (claim 1)?
The Examiner finds Stimiman discloses the lubricating layer of the
recording medium can be “Fomblin Z-Dol®” or “Fomblin Ztetraol®”
(Stimiman 135), and that these lubricants inherently would possess a CF
bond density of 2.0x1022 to 2.7x1022 atoms/cm3 based on the Specification’s
disclosure that these lubricants are suitable for use as the lubricating layer of
the inventive recording medium (see Spec. 170). Final Act. 3; Ans. 3.
To anticipate, a “reference must clearly and unequivocally disclose
the claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.” In
reArkley, 455 F.2d 586, 587 (1972).
Appellant does not contend that Stimiman fails to direct those of skill
in the art to a recording medium comprising “Fomblin Z-Dol®” or “Fomblin
Ztetraol®” as the lubricating layer. See generally, App. Br. 6—11. Rather,
Appellant argues the Examiner erred in finding these lubricants inherently
would possess a CF bond density of 2.0xl022 to 2.7xlO22 atoms/cm3. See id.
at 8—11. Appellant relies on Figure 3 and the description in paragraphs 51—
77 of the Specification in support of their argument that Fomblin Z-Dol®
and Fomblin Ztetraol®, as well as other Fomblin Z-type lubricants, do not
necessarily possess a CF bond density of 2.0xl022 to 2.7xl022 atoms/cm3.
App. Br. 9-11. Appellant argues, more specifically, that the Specification
and Figure 3 provide experimental data “showing that three lubricants made
of the same lubricant (i.e., Fomblin Z) have a different CF bond density.”
Reply Br. 5; see also App. Br. 9-10.
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Appeal 2015-007801
Application 14/020,876
We have reviewed the Specification and Drawings and agree with the
Examiner that there is insufficient support for Appellant’s contention that
the tested lubricants (lubricants A, B, and C) are all Fomblin Z-type
lubricants. See Ans. 2—3. The Specification does not identify lubricants A,
B, and C, specifically, but describes them as “Fomblin-type lubricants.”
Spec. 173. Paragraphs 50-52 and 70 of the Specification state that in
preferred embodiments of the invention, the material of the lubricating layer
is a Fomblin Z-type lubricant “(such as Fomblin Z DOF or Fomblin Z
TETRAOF)” (Spec. 170). Based on the described testing of lubricants A,
B, and C, lubricant C appears to be the only lubricant having a CF bond
density of 2.0xl022 to 2.7xl022atoms/cm3. See id. ]Hf 77—81 (describing the
effectiveness of the invention by comparing the recording medium of the
“Example,” made with lubricant C, with the recording medium of the
“Comparative Examples,” made with lubricant B); id. 173 (describing
lubricant A as having a lower CF bond density than lubricants B and C).
Therefore, because lubricants A and B are not used in preferred
embodiments of the invention, there is no basis in the Specification to
support a finding that they are Fomblin Z-type lubricants. Rather, it was
reasonable for the Examiner to conclude that lubricants A and B are within
the genus of Fomblin-type lubricants, but not within the species of Fomblin
Z-type lubricants. See Ans. 3.
Based on the Specification’s disclosure that, in preferred
embodiments, the material of the lubricating layer is a Fomblin Z-type
lubricant “(such as Fomblin Z DOF or Fomblin Z TETRAOF)” (Spec. 170),
we find the Examiner had a reasonable basis for finding that Stimiman’s
lubricating layer, having the thickness preferred by Stimiman, comprising
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Appeal 2015-007801
Application 14/020,876
Fomblin Z-Dol® or Fomblin Ztetraol® (Stimiman 135), inherently would
have a CF bond density within Appellant’s claimed range of “2.0x1022 to
2.7x1022 atoms/cm3” (claim 1). Where the Examiner establishes a
reasonable assertion of inherency and thereby evinces that a claimed process
appears to be identical to a process disclosed by the prior art and/or that the
products claimed by the applicant and disclosed in the prior art appear to be
the same, the burden is properly shifted to the applicant to show that they are
not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1254—56 (CCPA 1977). Appellant has not provided persuasive
evidence to refute the Examiner’s finding that Stimiman’s lubricating layer
inherently would have a CF bond density within Appellant’s claimed range.
In sum, we are not persuaded that the Examiner reversibly erred in
finding the lubricating layer of Stimiman’s recording medium inherently has
“a CF bond density of 2.0x1022 to 2.7x1022 atoms/cm3,” as recited in
appealed claim 1.
Appellant does not present separate arguments in support of
patentability of dependent claims 4 and 6. See App. Br. 11. Accordingly,
we sustain the Examiner’s rejection of claims 1, 4, and 6 under 35 U.S.C.
§ 102(b) as anticipated by Stimiman.
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
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