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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Vernam et al. (US 4,412,870).
Regarding claims 1-3 and 6, Vernam discloses an aluminum alloy disc blank for a magnetic disc (col. 1, lines 10-16) made of an aluminum alloy comprising 0.5-10 wt.% of Mg, not more than 1 wt.% of Si, not more than 1 wt.% of Fe, not more than 3.5 wt.% of Zn, and 0-0.35 wt.% of Cr (Abstract).
Vernam and the claims differ in that Vernam does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention was made would have considered the invention to have been obvious because the compositional proportions taught by Vernam overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Vernam is silent with regard to the conductivity and the proof stress of the aluminum alloy as claimed. However, Vernam discloses the preparation of the aluminum alloy disc blank is similarly to the instant specification. Vernam discloses a rolling method comprising of annealing at 400-600ºF (204.4-315.6ºC) (claim 69), and annealing temperature after annealing is at 420-750ºF (215.6-398ºC) (claim 73). It appears that annealing temperature after press annealing contributes to the claimed conductivity and proof stress. (Ex. 1 and Comparative Ex. 4 are the same except for annealing temperature after press annealing; [0060]). Although Vernam fails to disclose the claimed conductivity and proof stress, the composition of the alloy and the method of forming the alloy disc is substantially the same as set forth in Applicant’s examples in the specification and meets the criteria set forth in the present specification for achieving the conductivity and proof stress. Thus, it would be reasonable to expect the aluminum alloy disc disclosed by Vernam to necessarily exhibit the claimed conductivity and proof stress.
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).
In the alternate to inherency, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the conductivity and proof stress since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivate to optimize the conductivity and proof stress based on the desired end use of the material.
Regarding claim 4, please see Abstract.
Regarding claim 7, Vernam discloses that Fe is less than 0.5 wt.% and Mn is less than 1 wt.%, therefore, overlaps the claimed Fe+Mn (claim 1 and 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Vernam et al. (US 4,412,870) in view of Otsuka et al. (JP 2020-087485).
Vernam discloses an aluminum-based substrate for a memory disc as set forth above (col. 1), however, fails to explicitly disclose that the substrate is plated with NiP as well as magnetic body.
Otsuka discloses an aluminum alloy substrate that is plated with NiP for a magnetic recording disc, wherein it includes a magnetic body ([0057], all claims).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Otsuka’s MRM to include nominal features of Ni plated layer onto an aluminum-based substrate with a magnetic body, since Otsuka discloses that this is a known structure for a MRM.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP H02-061538.
Regarding claims 1-4 and 6-7, JP ‘538 discloses an aluminum alloy disc blank for a magnetic disc made of an aluminum alloy comprising
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JP ‘538 and the claims differ in that JP ‘538 does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention was made would have considered the invention to have been obvious because the compositional proportions taught by JP ‘538 overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
JP ‘538 is silent with regard to the conductivity and the proof stress of the aluminum alloy as claimed. However, JP ‘538 discloses the preparation of the aluminum alloy disc blank is similarly to the instant specification. JP ‘538 discloses a rolling and press annealing at 500ºC, and annealing temperature after press annealing is at 350ºC (Example). It appears that annealing temperature after press annealing contributes to the claimed conductivity and proof stress. (Ex. 1 and Comparative Ex. 4 are the same except for annealing temperature after press annealing; [0060]). Although JP ‘538 fails to disclose the claimed conductivity and proof stress, the composition of the alloy and the method of forming the alloy disc is similar as set forth in Applicant’s examples in the specification and meets the criteria set forth in the present specification for achieving the conductivity and proof stress. Thus, it would be reasonable to expect the aluminum alloy disc disclosed by JP ‘538 to necessarily exhibit the claimed conductivity and proof stress.
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).
In the alternate to inherency, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the conductivity and proof stress since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivate to optimize the conductivity and proof stress based on the desired end use of the material.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over JP H02-061538 in view of Otsuka et al. (JP 2020-087485).
JP ‘538 discloses a magnetic disc comprising on a magnetic body layer on the aluminum alloy disc blank (last paragraph). However, JP ‘538 fails to explicitly that the substrate is plated with NiP.
Otsuka discloses an aluminum alloy substrate that is plated with NiP for a magnetic recording disc [0057].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify JP ‘538 aluminum-based substrate to be of NiP plated layer, since Otsuka discloses that this is known in the art in MRM.
Response to Arguments
Applicant's arguments filed 10/21/25 have been fully considered but they are not persuasive.
Applicant argues that Vernam does not anticipate or render prima facie obvious the claimed disk comprises the conductivity and proof stress as presently claimed. This is because Vernam does not use an annealing step after press annealing. This has been found unpersuasive.
Vernam discloses the preparation of the aluminum alloy disc blank is similarly to the instant specification. Vernam discloses a rolling method comprising of annealing at 400-600ºF (204.4-315.6ºC) (claim 69), and annealing temperature after annealing is at 420-750ºF (215.6-398ºC) (claim 73). The examiner contends that Vernam’s thermally flattening said substrate at a temperature of 420-750ºF (claim 73) refers to temperature after press annealing. This is because Vernam discloses that thermally flattening comprises of a post treatment (col. 7, lines 51-56: thermally flattened at least twice (again) of a final end product (substrate)).
Applicant also argues that JP ‘538 does not anticipate or render prima facie obvious the claimed disk comprises the conductivity and proof stress as presently claimed. Similarity with the arguments with Vernam, applicant argues that JP ‘538 does not use an annealing step after press annealing. This has been found unpersuasive. JP ‘538 discloses a rolling and press annealing at 500ºC, and annealing temperature after press annealing is at 350ºC (Example). The examiner contends that the rolling and press annealing at 500ºC refers to press annealing, and JP’ 538’s “press annealing” at 350ºC refers to annealing after press annealing, thereby discloses similar method steps in the instant specification. Alternatively, the stage that is subsequent from “press annealing” to the final end product that is cooled, would read upon annealing step as it would maintain a small degree of constant temperature from the previous heat.
Furthermore, Applicant has not addressed the examiner’s position that it would have been obvious to optimize the properties of conductivity and proof stress. The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the conductivity and proof stress based on the desired end use of the material.
Therefore, the examiner maintains that the prior art of record discloses the claimed conductivity and proof stress absence of evidence of materially different product as well as absence of evidence of the criticality of the claimed aluminum alloy composition. It was noted in the previous correspondence that the evidence is not commensurate in scope with the claims as the evidence uses specific Al alloy.
Conclusion
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785