Ex Parte SHIBATA et al

Patent Trial and Appeal Board

Nov 29, 2018

14051005 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/051,005 10/10/2013
23373 7590 12/03/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Hisato SHIBATA
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.
Q207597 4198
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HISATO SHIBATA, KEN INOUE, TSUBASA OKADA,
GOHEI KUROKAWA, SHIN SAITO, SHINTARO HINATA,
MIGAKU TAKAHASHI, TOMOYUKI MAEDA,
YOSUKE ISOW AKI, and AKIRA KIKITSU
Appeal2018-000153
Application 14/051,005
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the final rejections of
claims 1, 2, 4, 6, 7, 11, and 12. Claims 8 and 10, the other claims pending in
this application, stand withdrawn from consideration by the Examiner. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real parties in interest as Showa Denko, K.K. and
Tohoku University (Br. 2).
Appeal2018-000153
Application 14/051,005
Appellants' invention is directed to a magnetic recording medium
suitable for high-density recording on a hard disk drive (Spec. 1: 13-17).
Claim 1 is illustrative (italics added):
1. A magnetic recording medium in which, on a non-
magnetic substrate, at least an orientation control layer and a
vertical magnetic layer in which an easy axis of
magnetization is mainly vertically oriented with respect to
the non-magnetic substrate are laminated,
wherein the orientation control layer includes an Ru-
containing layer containing Ru or Ru alloy and controls
orientation of the vertical magnetic layer, and a diffusion
prevention layer that is provided on the Ru-containing layer,
between the Ru-containing layer and the vertical magnetic
layer, is made of a material having a melting point of
1500°C or higher and 4215°C or lower, and is formed by a
covalent bond or an ionic bond and prevents thermal
diffusion of Ru atoms in the Ru-containing layer,
the diffusion prevention layer consists of any one
selected from a group consisting of AlN, Si02, MgO, Ta20s,
Cr203 and Zr02, and
the vertical magnetic layer has a crystalline structure
of crystal grains that is continuously formed from the Ru-
containing layer with the diffusion prevention layer
interposed therebetween and includes a columnar crystal that
is continuously formed in a thickness direction together with
the crystal grains, and
a second diffusion prevention layer made of a
material having a melting point of 15 00°C or higher and
4215°C or lower andformed by a covalent bond or an ionic
bond and prevents the thermal diffusion of the Ru atoms of
the Ru-containing layer is provided on the Ru-containing
layer, between the Ru-containing layer and the non-
magnetic substrate, and
the second diffusion prevention layer consists of any
one selected from the group consisting of AlN, Si 02, MgO,
Ta20s, Cr203 and Zr02.
2
Appeal2018-000153
Application 14/051,005
Appellants appeal the following rejections:
1. Claims 1, 6, and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Sasaki et al. (US 2010/0188772 Al, published July
29, 2010, "Sasaki") in view of Jones et al. (US 2006/0099461 Al,
published May 11, 2006, "Jones"), and further in view of Sakamoto et
al. (US 2010/0279151 Al, published Nov. 4, 2010, "Sakamoto"). 2
2. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Sasaki in
view of Jones, Sakamoto, and further in view of Kurita (JP 2007-
272990, published Oct. 18, 2007, and relying on an English translation
that is of record).
3. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Sasaki
in view of Jones, Sakamoto, Kurita, and further in view of Marinero et
al. (US 2007/0026261 Al, published Feb. 1, 2007, "Marinero").
4. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over Sasaki
in view of Jones, Sakamoto, and further in view of Hauet et al. (US
2011/0085264 Al, published Apr. 14, 2011, "Hauet").
5. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over Sasaki in
view of Jones, Sakamoto, and further in view of Oh et al. (US
2005/0129985 Al, published June 16, 2005, "Oh").
6. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Sasaki in view of Jones, and further in view of Tanaka et al. (US
2008/0158709 Al, published July 3, 2008, "Tanaka").
2 The Examiner's statement of the rejection included claim 5 (Final Act. 3).
However, Appellants canceled this claim by Amendment (filed Jan. 14,
2015), and this claim is no longer pending (Final Act. 1 ). Accordingly, we
view the Examiner's inclusion of claim 5 in this rejection as a clerical error.
3
Appeal2018-000153
Application 14/051,005
FINDINGS OF FACT & ANALYSIS
Rejections (1) through (6): 35 U.S.C. § 103
Appellants' arguments for reversal of the rejections of claims 1, 2, 4,
6, 7, 11, and 12 focus on limitations recited in independent claim 1 (Br. 6-
4 ). Claims 2, 4, 6, 7, 11, and 12 will stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
We refer to the Examiner's Final Office Action for a statement of the
rejection with respect to claim 1 (Final Act. 3-5).
Appellants argue that "none of the cited references disclose, teach or
suggest all elements of the present claims, whether taken alone or in
combination" (Br. 8). In particular, Appellants argue that "Sasaki does not
disclose the second diffusion prevention layer which is provided under the
Ru layer and includes any one selected from the group consisting of AlN,
Si02, MgO, Ta20s, Cr203, and Zr02" because Sasaki's "NiW alloy layer ...
is formed not by a covalent bond or an ionic bond but by a metallic bond
between Ni and W" (id. at 8).
We are not persuaded by these arguments.
As the Examiner found, Sasaki' s NiW alloy layer corresponds to the
claimed second diffusion prevention layer because this layer is directly
under a Ru layer as part of an orientation control layer 3 (Ans. 5 ( citing
Sasaki ,r 81) ). We note that Sasaki' s NiW alloy layer is located between the
Ru-containing layer ( within orientation control layer 3) and the non-
magnetic substrate 1. See Sasaki Fig. 1; ,r 51, 81.
With regard to the requisite layer's formation by a covalent bond or an
ionic bond, the Examiner finds that the applied prior art suggests modifying
Sasaki's NiW diffusion prevention layer to include additional material
formed of ionic or covalent bonds (see Ans. 4, 6). Although Sasaki fails to
4
Appeal2018-000153
Application 14/051,005
explicitly disclose that the NiW diffusion prevention layer additionally
comprises of Si 02, Cr203, or Ta20s, the Examiner finds Sakamoto discloses
a NiW diffusion prevention layer, which is directly below a Ru layer,
additionally comprising Si02, Cr203, or Ta20s (Ans. 4 (citing Sakamoto
,r 65)). The Examiner determines that it would have been obvious to further
modify Sasaki by incorporating Sakamoto's Si02 (covalent bond), Cr203
(ionic bond), or Ta20s (ionic bond) in the NiW diffusion layer in order to
miniaturize crystal grains of the layer and improve the SIN ratio of the
magnetic recording medium (Final Act. 3 ( citing Sakamoto ,r 63); Ans. 6).
Thus, Appellants' arguments have not identified reversible error in the
Examiner's conclusion that the combination of Sakamoto and Sasaki would
have rendered the claimed invention, including a second diffusion layer,
obvious.
Appellants argue that the Examiner's proposed combination of Sasaki
and Jones fails to teach or suggest the claimed second diffusion prevention
layer because Jones describes AlN and Ru "only as materials consisting of a
seed layer which promotes formation [ ofJ a subsequently deposited layer ( a
magnetic layer)" (Br. 8-9). Thus, according to Appellants, "there is
insufficient motivation to provide the orientation control layer consisting of
AlN and Ru and laminating AlN layer, Ru layer, and AlN layer in this
order" (id. at 9).
Appellants' arguments are not persuasive because the Examiner does
not rely upon Jones for teaching the claimed second diffusion prevention
layer located underneath the Ru-containing layer, i.e., between the Ru-
containing layer and the non-magnetic substrate (Ans. 5; see Spec. Fig. 1).
Rather, the Examiner relies on Jones for teaching "an AlN seed
layer/orientation control layer provided on a Ru layer, wherein Jones also
5
Appeal2018-000153
Application 14/051,005
discloses that it is below a magnetic recording layer (magnetic layer)"
(Ans. 5).
As the Examiner found, Sasaki teaches or suggests each component of
the claimed magnetic recording medium, with the exception of, inter alia,
the initial "diffusion prevention layer" recited in claim 1 (Final Act. 3). The
Examiner, however, finds Jones discloses that including an AlN layer in an
orientation control layer provides orientation control of the subsequently
deposited film (id. at 3 ( citing Jones ,r 26)). The Examiner determined that it
would have been obvious to modify Sasaki' s orientation control layer to
include Jones' AlN diffusion prevention layer over a Ru layer in order to
control the orientation of the subsequently deposited film (Final Act. 3).
Thus, Appellants' arguments alleging the deficiencies in Jones' teachings
have not identified reversible error in the Examiner's findings regarding the
claimed second diffusion layer.
Appellants argue that Sakamoto' s underlayer 14 includes a Ni alloy in
a ratio higher than that of the oxide material (Br. 10 ( citing Sakamoto Fig.
9) ). Thus, Appellants contend that "physical property of Sakamoto' s
underlayer 14 is significantly affected by metallic bond of Ni, and at least,
the melting point of the underlayer 14 is different from that of a layer
formed by a covalent bond or an ionic bond" (Br. 10).
Appellants further argue that the Examiner's proposed combination of
Sasaki and Sakamoto would have necessarily included Ni in the lower
stratum of the orientation control layer, which distinguishes the applied prior
art from the closed-ended Markush group recited in claim 1 for the second
diffusion prevention layer (id.). In other words, Appellants argue that the
language reciting that the second diffusion layer "consists of any one
6
Appeal2018-000153
Application 14/051,005
selected from the group consisting of AlN, Si02, MgO, Ta205, Cr203 and
Zr02" excludes Sasaki's NiW and Sakamoto's Ni (id.).
We are not persuaded by these arguments. As the Examiner found,
Sakamoto' s additional material of Si 02, Cr203, or Ta20s is a
completely separate entity from the material ofNiW. This is
because the additional material is a grain boundary and the
material ofNiW is a grain or particle. Sakamoto's Si02, Cr203,
or Ta20s additive is a material in itself that has a melting point
between 1500-42 l 5°C and is formed by covalent bond (Si02)
or ionic bond (Cr203 and Ta20s). While the primary reference
Sasaki discloses NiW as the second diffusion prevention layer
... , Sasaki further discloses that oxides such as Si02, Cr203, or
Ta20s are added as a separate component to form grain
boundaries to a granular orientation control layer.
(Ans. 6 (citing Sasaki ,r,r 80-81, 83)). Appellants do not contest or
otherwise show reversible error in the Examiner's findings as set forth in the
Answer (no Reply Brief was filed). See, e.g., In re Fox, 471 F.2d 1405,
1407 (CCPA 1973) (affirming the Board's decision because "appellant has
not denied the existence of the facts on which the examiner rested his
obviousness rejection nor the added facts of which the board took judicial
notice.").
Therefore, the preponderance of the evidence of record supports the
Examiner's findings and conclusion that it would have been obvious to the
ordinary skilled artisan to modify Sasaki by incorporating Sakamoto's Si02,
Cr203, or Ta20s as a separate entity from Sakamoto's NiW diffusion layer in
order to miniaturize crystal grains of the layer and improve the SIN ratio of
the magnetic recording medium (Ans. 6-7).3
3 We note that the preamble of claim 1 recites open-ended language that
encompasses a magnetic recording medium with layers in addition to the
requisite orientation control layer and vertical magnetic layer.
7
Appeal2018-000153
Application 14/051,005
We, therefore, affirm Rejections (1}-(6) under§ 103.
DECISION
The Examiner's§ 103 rejections are affirmed.
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
8