JX Nippon Mining & Metals CorporationDownload PDFPatent Trials and Appeals BoardMay 27, 20202019006365 (P.T.A.B. May. 27, 2020) Copy Citation 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 Claims 13 and 14 are pending but withdrawn from consideration by the Examiner.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. Appeal 2019-006365 Application 14/414,518 2 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). Appeal 2019-006365 Application 14/414,518 3 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 Appeal 2019-006365 Application 14/414,518 4 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 Appeal 2019-006365 Application 14/414,518 5 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 Appeal 2019-006365 Application 14/414,518 6 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 Copy with citationCopy as parenthetical citation