JX Nippon Mining & Metals Corporation

Patent Trials and Appeals Board

May 27, 2020

14414518 - (D) (P.T.A.B. May. 27, 2020)

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.
14/414,518 01/13/2015 Shin-ichi Ogino OGOSH315USA 5983
270 7590 05/27/2020
HOWSON & HOWSON LLP
325 Sentry Parkway East, Five Sentry East
Suite 160
Blue Bell, PA 19422
EXAMINER
WANG, NICHOLAS A
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
ckodroff@howsoniplaw.com
docketing@howsoniplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHIN-ICHI OGINO

Appeal 2019-006365
Application 14/414,518
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 10, 11, and 15. Claims 13 and
14 are pending but withdrawn from consideration by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as JX Nippon
Mining & Metals Corporation. Appeal Br. 2.
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Appellant’s invention is directed to a sintered compact used in the
manufacture of a magnetic thin film for heat-assisted magnetic recording
media (Spec. ¶ 1; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A Fe-Pt based magnetic material sintered compact, consisting of iron and
platinum forming a sintered Fe-Pt alloy and particles of hexagonal BN
and SiO2 dispersed in the sintered Fe-Pt alloy, wherein, in an element
mapping image obtained by a Field Emission Electron Probe Micro
Analyzer (FE-EPMA) of a cross-sectional surface of the sintered compact,
elements of Si and O are detected in the same area as that where elements of
B and N are detected, and wherein, in X-ray diffraction analysis of a cross-
sectional surface of the sintered compact which is parallel to a pressurized
face of the sintered compact, an X-ray diffraction peak from (002) plane of
hexagonal BN is present, and an X-ray diffraction peak from (101) plane of
cristobalite has an intensity ratio of 1.40 or less to a back-ground intensity of
the (101) X-ray diffraction peak.

Appellant appeals the following rejections:
1. Claims 1, 3–5, 10, 11, and 15 are rejected under 35 U.S.C. § 103
as unpatentable over Zhang (US 2007/0189916 A1; pub. Aug.
16, 2007) in view of Fauzi (US 2002/0076557 A1; pub. June 20,
2002).
2. Claims 1, 3–5, 10, 11, and 15 are rejected under 35 U.S.C. § 103
as unpatentable over Ogino (US 2013/0168240 A1; pub. July 4,
2013) in view of Shimizu (US 2002/0160232 A1; pub. Oct. 31,
2002) and Appellant’s Admitted Prior Art (AAPA).

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Application 14/414,518

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FINDINGS OF FACT & ANALYSIS

Rejection 1
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 1 over Zhang in view of Fauzi are located on pages 3 to 5
of the Final Action. The Examiner finds that Zhang teaches a sintered
sputter target including iron and a non-metal second material additive that
maybe a boride, carbide, nitride, and oxide (Final Act. 3). The Examiner
finds that Zhang does not teach hexagonal boron nitride (BN) (Final Act. 3).
The Examiner finds that Fauzi teaches a method of making hexagonal boron
nitride particles that are useful as lubricants and can be sintered easily with
other ceramic particles (Final Act. 3 to 4). The Examiner concludes that it
would have been obvious to select hexagonal boron nitride as the material of
Zhang in order to impart lubricity to the sintered compact as taught by Fauzi
(Final Act. 4).
Appellant argues that the Examiner’s combination of Zhang and Fauzi
is based upon impermissible hindsight (Appeal Br. 14–15). Appellant
argues that the Examiner has not shown a reason for specifically selecting
Fauzi’s hexagonal BN as the nitride of the second material in Zhang and for
adding SiO2 when producing a Fe-Pt magnetic material sintered body
(Appeal Br. 12). Appellant contends that the Examiner’s reason for
combining Fauzi’s hexagonal BN with Zhang (i.e., to improve lubricity) is
unnecessary for a sintered sputtering target compact (Appeal Br. 10). We
agree.
The Examiner fails to explain sufficiently why adding lubricity via
Fauzi’s hexagonal BN would have been desirable for Zhang’s sintered
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sputtering target compact (Final Act. 4; Ans. 11). In the Answer the
Examiner states that Zhang teaches adding “at least a boride, carbide, etc. . .
[and] therefore, it is not apparent to the examiner as to why one of SiO2 or
hexagonal BN can be included.” (emphasis added) (Ans. 11). The
obviousness standard is not based upon what could have been done, but
rather what would have been obvious to the ordinarily skilled artisan at the
time of the invention. The Examiner has not shown based on the combined
teachings of Zhang and Fauzi that a person of ordinary skill in the art would
have combined Fauzi’s hexagonal BN with Zhang’s sintered sputtering
target composition absent hindsight.
On this record, we reverse the Examiner’s § 103 rejection over Zhang
in view of Fauzi.

Rejection 2
The Examiner’s rejection of claim 1 over Ogino in view of Shimizu is
located on pages 6 to 8 of the Final Action. The Examiner finds that Ogino
teaches Fe-Pt ferromagnetic sintered sputtering target material including
SiO2 as a metal oxide (Final Act. 6). The Examiner finds that Ogino teaches
adding boron to a sputtering target, but does not expressly teach that the
additive material is hexagonal BN (Final Act. 7). The Examiner finds that
Shimizu teaches making a magnetic recording medium through sputtering
and teaches including BN as a grain separating material in the magnetic
medium (Final Act. 7). The Examiner finds that Shimizu does not teach that
the BN is hexagonal BN (Final Act. 7). The Examiner relies on Appellant’s
Admitted Prior Art (AAPA) for the teaching that hexagonal BN is known to
have excellent lubricating properties (Final Act. 7). The Examiner
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concludes that it would have been obvious to modify the BN incorporated
into Ogino and Shimizu to be hexagonal BN in order to impart excellent
lubricating properties as taught by AAPA (Final Act. 7).
Appellant argues that based on the teachings of AAPA, a person of
ordinary skill in the art would have avoided using hexagonal BN in the
sintered compact because doing so would have resulted in a poorly sintered
product as taught by the AAPA in the form of comparative examples in
Table 1 of the Specification (Appeal Br. 20–21). Appellant contends that
the Examiner engaged in impermissible hindsight is concluding that the
subject matter of claim 1 would have been obvious over the combined
teachings of Ogino, Shimizu, and AAPA (Appeal Br. 26–27). Appellant
argues that contrary to the Examiner’s reason for adding hexagonal BN to
Ogino’s sintered sputtering target compact (i.e., to impart lubricity to the
sintered compact), the hexagonal BN is added to Appellant’s composition as
a non-magnetic phase which separates grains of magnetic phase of the Fe-Pt
alloy (Appeal Br. 20). Appellant argues that based on the AAPA, it was
known that hexagonal BN alone does not form a suitable sputtering target
due to the lower density achieved by using hexagonal BN alone as part of
the composition (Appeal Br. 21).
The Examiner responds that the AAPA’s teaching regarding poor
sinterability is not considered as a complete teaching away from the
combination in view of the entire disclosure of the AAPA (Ans. 14). The
Examiner finds that a person of ordinary skill in the art would have used
hexagonal BN as the boron source in Ogino’s sintered sputtering target
compact to impart lubricity where lubricating properties are highly desired
over sinterability (Ans. 14). The Examiner does not explain why lubricating
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Application 14/414,518

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properties would have been desirable for Ogino’s sputtering target.
Moreover, the Examiner’s obviousness statement is based on using AAPA’s
hexagonal BN in light of Shimizu’s teaching to use BN as a grain boundary
insulator in a magnetic material as the boron source in Ogino’s sintered
sputtering target compact (Final Act. 7). The Examiner cites paragraph 31
of Ogino as teaching the use of boron in Ogino’s alloy (Final Act. 7).
Paragraph 31 of Ogino, however, is directed to the metals used in the alloy
itself. The Examiner does not explain why a person of ordinary skill in the
art would have used the AAPA’s hexagonal BN as the boron metal in
Ogino’s alloy. Rather, we find that the Examiner engaged in impermissible
hindsight in rejecting claim 1 over Ogino, Shimizu, and AAPA.
On this record, we reverse the Examiner’s § 103 rejection over Ogino,
Shimizu, and AAPA.

CONCLUSION
In summary:
Claims
Rejected
Basis Prior Art Affirmed Reversed
1, 3–5, 10, 11, 15 § 103 Zhang,
Fauzi
1, 3–5, 10, 11, 15
1, 3–5, 10, 11, 15 § 103 Ogino,
Shimizu,
AAPA
1, 3–5, 10, 11, 15
Overall
Outcome
1, 3–5, 10, 11, 15

REVERSED