Ex Parte Uchida

Patent Trial and Appeal Board

Feb 2, 2016

12873249 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/873,249 08/31/2010
23995 7590 02/04/2016
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Shinji UCHIDA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FEC-314 4932
EXAMINER
ANDERSON, SARAH
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
02/04/2016 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):
firm@rabinberdo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINJI UCHIDA
Appeal2014-006236
Application 12/873,249
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
Appeal2014-006236
Application 12/873,249
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claim 1.
Claim 1 is the only pending claim. We have jurisdiction under 35 U.S.C.
§ 6(b ).
For the reasons set forth below, we REVERSE.
BACKGROUND
Application 12/873,249 relates to a magnetic recording medium
manufacturing method. Spec. i-f 1. Claim 1 is reproduced below:
1. A method of manufacturing a magnetic recording medium,
compnsmg:
forming a continuous magnetic recording layer on a non-magnetic
substrate;
forming a mask layer by applying a resist material on the magnetic
recording layer;
forming alternating concave and convex portions in the mask layer,
having step portions marking boundaries between the convex and
concave portions each with a taper angle;
after said forming concave and convex portions, varying a taper shape
associated with the taper angle based on a settling time; and
altering magnetic characteristics of portions of the magnetic recording
layer corresponding to the concave portions by ion implantation, or by
exposure to an activated halogen-containing reactive gas, via the mask
layer, so as to form a separating portion magnetically separating
magnetic portions of the magnetic recording layer located at positions
corresponding to the convex portions of the mask layer;
wherein
the resist material is an organic spin-on-glass (SOG) resist including a
siloxane resin, and
the taper angle is set between 66 degrees and 88 degrees, by allowing
the resist material to settle for a period of time in the range of 10
minutes to 24 hours between said forming concave and convex
portions and said altering.
1 Appellant identifies the real party in interest as Fuji Electric Device
Technology Co., Ltd. App. Br. 3.
2
Appeal2014-006236
Application 12/873,249
THE REJECTION
The Examiner rejects claim 1 pursuant to 35 U.S.C. § 103(a) as
unpatentable over Fukushima et al., W0/2008/069082 Al, published June
12, 2008 (hereinafter, "Fukushima") and Iwabuchi et al., US 2007/0134916
Al, published June 14, 2007 (hereinafter, "Iwabuchi").
ANALYSIS
We reverse the rejection. We concur with Appellant's conclusion that
the Examiner erred in finding that the combination of references teaches or
suggests the recited limitation of "varying a taper shape associated with the
taper angle based on a settling time" where "the taper angle is set between
66 degrees and 88 degrees, by allowing the resist material to settle for a
period of time in the range of 10 minutes to 24 hours between said forming
concave and convex portions and said altering."
In particular, the Examiner acknowledges that Fukushima lacks this
element. Non-final Act. 3--4. The Examiner attempts to cure this omission
by explaining that Iwabuchi demonstrates a "known property (deformation
or tapering) of siloxane resin material, a material already used by Fukushima
in a method to make a magnetic recording medium as in the instant
invention." Ans. 3. Fukushima and Iwabuchi lack, however, any suggestion
that "allowing the resist material to settle" would be advantageous in the
context of manufacturing a magnetic recording medium. To the contrary,
Fukushima accepts a ninety degree taper angle (no settling), encourages
preventing the edge of the mask layer from "sagging," and encourages
curing to "allow[] the shape of the stamp 5 to be accurately transferred to the
resist layer 4." Fukushima, cols. 13: 18-27; 14: 1-2; 17:23-18:2.
Meanwhile, Iwabuchi laments that siloxane compositions "do not have a
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Appeal2014-006236
Application 12/873,249
straight wall profile" and that lack of "preservation stability ... causes a
serious problem that a film thickness varies when the film is actually used,"
albeit in a context other than that of magnetic recording mediums. I wabuchi
iT 19.
Because neither Fukushima or I wabuchi teach the recited step of
allowing settling for ten minutes to 24 hours and because the record does not
establish that one of ordinary skill in the art would have had an apparent
reason for allowing settling in the process of Fukushima or establish the step
is no more than the predictable use of prior art elements according to
established functions, see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007), the Examiner has not provided an adequate factual basis to support a
prima facie case of obviousness of claim 1. See In re Warner, 3 79 F .2d
1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must
rest on a factual basis").
DECISION/ORDER
For the above reasons, the rejection under 35 U.S.C. § 103(a) of claim
1 over Fukushima and I wabuchi is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
cdc
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