Ex Parte Zhao et al

Patent Trial and Appeal Board

Sep 14, 2016

13867179 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/867, 179 04/22/2013
75742 7590 09/15/2016
MUETING, RAASCH & GEBHARDT, P.A.
P.O. Box 581336
Minneapolis, MN 55458-1336
FIRST NAMED INVENTOR
Tong Zhao
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.
430.16333011 8467
EXAMINER
HINDI, NAB IL Z
ART UNIT PAPER NUMBER
2686
MAILDATE DELIVERY MODE
09/15/2016 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 TONG ZHAO, MICHAEL CHRISTOPHER
KAUTZKY, WILLIAM ALBERT CHALLENER, and
MICHAEL ALLEN SEIGLER1
Appeal2015-004659
Application 13/867, 179
Technology Center 2600
Before ROBERT E. NAPPI, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 21, 22, 24-32, 35, 36, and 38--40. Appellants have
previously canceled claims 1-20. Claims 23, 33, 34, and 37 are objected to
by the Examiner, but are otherwise indicated as being drawn to allowable
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Seagate Technology,
LLC. App. Br. 2.
Appeal2015-004659
Application 13/867, 179
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to "a near field
transducer [NFT] ... used in a HAMR [heat-assisted magnetic recording]
recording head. The NFT includes materials that show enhanced hardness
and higher resistance to stress relaxation and creep properties than pure gold,
while still possessing acceptable optical properties." Spec. i-f 28.
Exemplary Claim
Claim 21, reproduced below, is representative of the subject matter on
appeal:
21. An apparatus comprising:
a near field transducer comprising gold and at least one
of: nitride particles, oxide particles, or combinations thereof.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Komura et al. ("Komura") US 8,077,556 B2 Dec. 13, 2011
Rejection on Appeal
Claims 21, 22, 24--32, 35, 36, and 38--40 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Komura. Final Act. 2.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 28, 2014); Reply Brief ("Reply Br.," filed Mar. 16, 2015); Examiner's
Answer ("Ans.," mailed Jan. 15, 2015); Final Office Action ("Final Act.,"
mailed Feb. 6, 2014); and the original Specification ("Spec.," filed
Apr. 22, 2013).
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Appeal2015-004659
Application 13/867, 179
ISSUE
Appellants argue (App. Br. 3-9; Reply Br. 2-5) the Examiner's
rejection of claim 21 under 35 U.S.C. § 102( e) as being anticipated by
Komura is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses an
apparatus that includes "a near field transducer comprising gold and at least
one of: nitride particles, oxide particles, or combinations thereof," as recited
in claim 21? (Emphasis added).
ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to claim 21 for the specific reasons discussed below.
Appellants previously disagreed with the Examiner's initial
characterization of Komura in the Final Action by arguing, "[t]he material
with which the magnetic pole; the cladding; or the conductive substrate is
made has virtually nothing to do with what the NFT is made of. App.
Br. 4--5 (citing Final Act. 2--4 ). For the first time, the Examiner explicitly
construed the "transducer" limitation in the Answer:
The limitation "transducer" is interpreted by the examiner as a
device and not limited to a light generating element as argued
by appellant, since the claims are not limited to nor specifically
recite the elements within the transducer. Therefore the
transducer as interpreted by the examiner read on elements 3 6
and 332 (fig 4) of the reference. The reference does shows a
transducer (device) 36 and 332 having gold (column 4 lines 1-
15) and at least oxide material in element 332 as cited in
column 8 lines 18-35. The examiner disagrees with appellant's
argument since the limitation "transducer" is not limited to a
light generating element 36 as shown in the reference, but
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Application 13/867, 179
rather read on a device that encompasses elements 36 and 332
shown in the reference. The reference does show the use of a
gold material and an oxide material within the transducer
(device) as cited in column 4 lines 1-15 and an oxide material
as cited in column 8 lines 18-36 meeting the claimed invention.
Ans. 2-3.
Appellants contest the Examiner's construction of the term "near field
transducer" as reading on the combination of Komura's near-field light
generator plasmon probe 36 and magnetic-resistive (MR) effect element 33,
particularly MR laminate 332, as being overly broad, unreasonable, and
inconsistent with Appellants' Specification. Reply Br. 2-3.
We first note, claim terms are to be given their broadest reasonable
interpretation, as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
i\.ppellants' Specification discloses near-field transducers (e.g.,
NFT 84 in Fig. 2) being installed in and thus, a part of, recording head 30 in
Figure 2. Recording head 30 also includes write pole ("second" or "sloped
pole piece") 58, used to apply the magnetic write field "H" to storage
media 16.
Similarly, Komura discloses magnetic head portion 32 includes, inter
alia, MR effect element 33 for detecting magnetic information, "a near-field
light generator plasmon probe [] 36 for generating near-field light for
heating a recording layer portion of a magnetic disk," and "an
electromagnetic coil element 34 as a perpendicular (or, possibly,
longitudinal) magnetic recording element for writing magnetic information
by generation of a magnetic field." Komura col. 7, 11. 28--43.
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Appeal2015-004659
Application 13/867, 179
Komura defines MR effect element 33, which contains MR laminate
332, relied upon by the Examiner as disclosing an oxide or nitride particles
portion of the recited near-field transducer, as follows:
The MR effect element 33 [which detects magnetic
information, see Komura col. 7, 11. 31-33] includes an MR
laminate 332, and a lower shield layer 330 and an upper shield
layer 334 located at respective positions on both sides of this
MR laminate 332. The lower shield layer 330 and the upper
shield layer 334 can be made, for example, of a magnetic
material of NiFe, CoFeNi, Co Fe, FeN, FeZrN, or the like and in
the thickness of about 0.5-3 µm by a pattern plating method
including a frame plating method, or the like. The upper and
lower shield layers 334 and 330 prevent the MR laminate 332
from being affected by an external magnetic field serving as
n01se.
Komura, col. 7, 1. 65 - col. 8, 1. 8.
Thus, in terms of disclosure, we find Komura's embodiments and
Appellants' disclosure in the Specification and Drawings are very similar
with respect to the relevant constituent parts and functions. We especially
find the recited "near-field transducer" more correctly reads on Komura's
near-field light generator plasmon probe 36 in light of Appellants'
Specification and the knowledge of a person of ordinary skill in the art, as
evidenced by Komura. For us to find otherwise would be overly broad and
unreasonable, and inconsistent with Appellants' Specification.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art to disclose the disputed limitation of claim 21, such that we find error in
the Examiner's resulting finding of anticipation. Therefore, we do not
sustain the Examiner's anticipation rejection of independent claim 21. For
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Application 13/867, 179
the same reasons, we also cannot sustain the Examiner's rejection of
independent claims 29 and 35 which recite commensurate limitations, i.e., "a
near field transducer comprising gold and oxide particles," and "a near field
transducer comprising gold and nitride particles," respectively. For the same
reasons, we also reverse the rejections of claims 22, 24--28, 30-32, 36, and
3 8--40 that depend therefrom. 3
CONCLUSION
The Examiner erred with respect to the anticipation Rejection of
claims 21, 22, 24--32, 35, 36, and 38--40 under 35 U.S.C. § 102(e) over the
cited prior art of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 21, 22, 24--32,
35, 36, and 38--40.
REVERSED
3 Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), e.g., under 35 U.S.C. § 103(a), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.
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