DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
The objection to claims 14 and 16 is withdrawn in view of Applicant’s amendments.
The objection to claims 3, 9, 11, 14, 16 and 19 is withdrawn in view of Applicant’s amendments.
Claim Rejections – 35 USC § 112
The rejection of claim 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of Applicant’s amendments.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 11-12, and 16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP 6741140 (citations refer to English machine translation included with this Office action).
JP 6741140 discloses a magnetic recording tape for use in a cartridge structure having a substrate with a magnetic recording layer thereon (see description of Fig 4 on p. 4) and having an average thickness of preferably less than 5 microns (p. 10, last para). The reference teaches that the temperature expansion coefficient of the magnetic recording medium is 6-8 ppm/°C at a relative humidity of 24%, which falls within the claimed range of 10-80%RH (see p 12 under Temperature Expansion Coefficient heading).
The limitations directed to the head to be used in association with the claimed magnetic recording medium (CTH and CTQ) and conditional expression (1) are considered to be functional recitations of intended use because the claims themselves are directed to the medium and not a tape apparatus including a magnetic head component (see preambles of claims 1 and 5). Thus, these limitations are only germane to the patentability of the magnetic recording medium insofar as they materially affect the structure, composition or other physical features of the tape itself. Because JP’140 discloses a tape medium that is identical to the one claimed and is taught to have 5 or more servo bands (see p 6, description of Fig 5A), one of ordinary skill in the art would expect that the tape medium taught therein would inherently be capable of functioning in the claimed capacity in combination with a head meeting conditional expression (1) as claimed in the absence of evidence to the contrary.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC §102 or on prima facie obviousness under 35 USC §103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
With regard to claim 12, see p.10, last paragraph for disclosure of an average thickness of 5 microns or less.
See also p. 2, description of Figure 2 for description of the cartridge and reel structure as per claim 16.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2-3, 6-11, 13-16, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6741140 (citations refer to English machine translation included with this Office action).
With regard to claim 2, JP 6741140 discloses all of the features of the claims, as set forth above under section 102, except for temperature expansion coefficients of 4.5-9.5 ppm/°C at relative humidities of 10%, 40% and 80%. Instead, the reference discloses values of 6-8 ppm/°C at a RH of 24%.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the temperature expansion coefficient of the tape medium taught by JP’140 across a broad range of humidities in order to optimize tape functioning in any use environment. The reference suggests a testing range of 10-80%RH for a different parameter. Thus, one of ordinary skill in the art would have been motivated to optimize tape functioning via temperature expansion coefficient across at least this humidity range.
With regard to claims 3 and 14, JP 6741140 discloses a humidity expansion coefficient for the magnetic recording tape taught therein of 5 ppm/%RH or less. This range overlaps with the claimed range of -3 to 3 ppm/%RH. It would have been obvious to choose any value of 5 ppm/%RH or less, including the claimed values of -3 to 3 ppm/%RH, in view of the apparent suitability of all values less than 5 ppm/%RH.
With regard to claims 6-11, 14 and 22, JP’140 discloses all of the features of the claims except for the specific number of servo bands on the magnetic tape and the CTH, CTQ, CHH, CHR values of the head to satisfy the claimed conditional expressions (2)-(5). With regard to the number of servo bands, JP’140 teaches 5 or more servo bands up to a maximum of 33 (see p. 6, description of Fig 5A). Choice of any value, including the claimed values of 5, 9, 13 and 17 from within the range of 5-33 would have been prima facie obvious in view of the apparent suitability of all values within the disclosed range.
The features of claim 6-11 relating to the magnetic head itself (CTH and CHH) and the magnetic head in relation to the tape medium (CTQ and CHR) and conditional expressions (2)-(5), have been considered to be functional recitations of an intended use because the claims themselves are directed to the medium and not a tape apparatus including a magnetic head component. Thus, these limitations are only germane to the patentability of the magnetic recording medium insofar as they materially affect the structure, composition or other physical features of the tape itself. Because JP’140 discloses a tape medium that is identical to the one claimed, one of ordinary skill in the art would expect that the tape medium taught therein would necessarily be capable of functioning in the claimed capacity with a given head in the absence of evidence to the contrary.
With regard to claim 13, JP’140 discloses a thickness range for the tape substrate of 3-8 microns with a preferred range of 3-4.2 microns (see p. 4 under section heading “Base”). The overlapping portions of the ranges would have been obvious to choose in view of the specific teaching that a range of 3-4.2 microns is desirable.
With regard to claims 15-16, see p. 2 under the heading “Cartridge configuration.”
Claim(s) 17-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6741140 (citations refer to English machine translation included with this Office action) in view of Hirai (US 2005/0260458).
With regard to claims 17-18, JP 6741140 discloses all of the features of the claims, as set forth above under sections 102 and 103, but does not disclose the head of the apparatus as claimed meeting conditional expressions (1)-(5).
Hirai teaches that it was known in the magnetic recording tape cartridge art to use a magnetic head formed from AlTiC having a coefficient of thermal expansion of 7ppm/°C at 10%RH (see disclosure of 7.0x10 E-6/°C for thermal expansion coefficient in para [0115]). The reference also teaches that it is desirable to use a head having a coefficient of thermal expansion that closely matches that of the tape medium used therewith in order to minimize off track effects (see para [0129]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use a conventional head, such as the AlTiC head taught by Hirai in the recording apparatus taught by JP’140. Choice of this particular head would have been obvious in order to obtain close head to tape matching of thermal expansion coefficients to minimize off track effects (JP’140 having temperature expansion coefficient of the tape in the range of 6-8 ppm/°C at 24%RH).
With regard to claim 19, see above description of tape limitations as per claims 1 and 3. With regard to the claimed spindle, spindle drive device and magnetic head, see p. 22.
With regard to claims 20-21, JP’140 does not disclose the claimed variation in a width of the magnetic recording medium with reference to a position of the magnetic head of 0.1 micron or less or a P value of 5-50 ppm. However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the temperature expansion and humidity expansion coefficients of the tape in order to best match the temperature and humidity expansion coefficients of the head for use therewith, and thereby minimize P, Q and R as claimed, in order to reduce off-track effects.
Response to Arguments
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive. Applicant argues:
“the claimed magnetic recording medium recites magnetic recording medium features that correspond to material characteristics of the magnetic recording medium as claimed and as amended. Indeed, Applicant has recognized and demonstrated that such claimed magnetic recording medium features contribute to enhanced magnetic recording medium properties. See, published application, for example, Tables 1 and 3 and corresponding written description including paragraphs [0314] to [0316], [0375] and [0376].”
The Examiner respectfully disagrees that the claimed features correspond to material characteristics of the magnetic recording medium. As noted in the rejections above, the features directed to the magnetic head do not particularly limit the material characteristics of the claimed magnetic recording medium. The magnetic recording medium taught by the prior art appears to be substantially the same as the claimed medium and therefore would be expected to exhibit the claimed conditional expressions (1)-(6) for some given magnetic recording head. With regard to the claims directed to a recording/reproducing apparatus, which includes both the recording medium and head, Hirai et al. was cited to show that choice of a head meeting the claimed conditional expressions would have been obvious to one of ordinary skill in the art.
Applicant refers to data in Tables 1 and 3 as demonstrating that the claimed magnetic recording medium features contribute to improved medium properties. However, review of the data does not support the presence of unexpected results associated with the claimed invention. None of Examples 1-4 shown in Table 1 include temperature expansion coefficients of 6.0-8.0 ppm/degree C between 10-80% RH. Furthermore, comparative examples 1 and 6 do not meet the claimed temperature coefficient values of 6.0-8.0 ppm/degree C between 10-80% RH but still exhibit the claimed P value. For at least these reasons, the data does not establish the presence of an unexpected improvement commensurate in scope with the claims.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLY RICKMAN whose telephone number is (571)272-1514. The examiner can normally be reached Mon, Tues, and Thurs, from 9am-3pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Holly Rickman/ Primary Examiner, Art Unit 1785
Prosecution Insights