DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/14/26 has been entered.
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 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.
Claims 1-3, 5-8, 19-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hikosaka et al. (US 2004/0001975) in view of Zarkevich et al. (Viable Materials with a Giant Magnetocaloric Effect).
Regarding claims 1-2 and 19, Hikosaka discloses a data storage medium a cobalt-based ferromagnetic recording layer (6) [0033], a non-magnetic substrate [0038], a Gd material (4) between the recording layer and the substrate, and an interlayer (5) disposed between the recording layer and the magnetocaloric material. Given that Hikosaka discloses that the interlayer is a Ru alloy, specifically RuCr, [0031] and it is known to be nonmagnetic [0009], Hikosaka’s Ru alloy layer would be configured as an exchange break layer.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Although Hikosaka discloses Gd material, Hikosaka fails to explicitly that this material is “magnetocaloric” material and that is configured to generate heat upon exposure to a magnetic field that causes a phase change between paramagnetic phase and a ferromagnetic phase. However, as evidenced by Zarkevich, Gd is considered to be a magnetocaloric material (Table 1). Zarkevich further discloses a phase change between paramagnetic phase (PM) and a ferromagnetic phase (FM) (page. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hikosaka’s Gd material to have a phase change between PM and FM, since Zarkevich discloses that this is a known phase change for a Gd material.
Additionally, given that Hikosaka in view of Zarkevich discloses the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed phase change of PM and FM.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 3, given that there is no structural difference between the claimed interlayer and seed layer, the examiner is taking the position that the upper stratum of the interlayer corresponds to the claimed seed layer. Further, with regards to the term “seed” layer, Hikosaka discloses that the interlayer functions of improving the alignment of the overlying layer [0027]. Because of the function of orientation control layer, the upper stratum of the interlayer of Hikosaka would corresponds to the claimed “seed” layer.
Regarding claim 5, Hikosaka discloses a SML (2) as claimed.
Regarding claim 6, Hikosaka discloses that the magnetocaloric material is Gd, which is known to be a soft magnetic material. Hikosaka further discloses that additionally layers can be present in the MRM, therefore, one of the layers would corresponds to the claimed substrate.
Regarding claims 7-8, Hikosaka discloses that the magnetocaloric material is Gd, however, Hikosaka fails to explicitly that the material is MnFeNiSiAl.
Zarkevich shows that MnFeNiSiAl is an equivalent structure known in the art (Table 1). Therefore, because these two materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute Gd for MnFeNiSiAl in the invention of Hikosaka. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 20, Hikosaka discloses that the interlayer is configured to control grain size of the recording layer [0027].
Regarding claim 22, given that Hikosaka in view of Zarkevich discloses the same materials and structure as claimed, Hikosaka in view of Zarkevich discloses that the MC material is configured to reduce a coercivity of the recording layer when the magnetocaloric material generates heat upon exposure to a magnetic field.
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).
Claims 1-4, 6-8, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kuboki et al. (US 2003/0228495) in view of Zarkevich et al. (Viable Materials with a Giant Magnetocaloric Effect).
Regarding claims 1-2 and 19, Kuboki discloses a data storage medium a cobalt-based ferromagnetic recording layer (105) [0030], a non-magnetic substrate (101) [0012], a FeRh material (102) [0012] between the recording layer and the substrate, and an interlayer (104) disposed between the recording layer and the magnetocaloric material. Given that Kuboki discloses that the interlayer is Ru [0012] and nonmagnetic (Abstract), Kuboki’s Ru nonmagnetic interlayer would be configured as an exchange break layer.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Although Kuboki discloses FeRh material, Kuboki fails to explicitly that this material is “magnetocaloric” material and that is configured to generate heat upon exposure to a magnetic field that causes a phase change between paramagnetic phase and a ferromagnetic phase. However, as evidenced by Zarkevich, FeRh is considered to be a magnetocaloric material (Table 1). Zarkevich further discloses a phase change between paramagnetic phase (PM) and a ferromagnetic phase (FM) (page. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuboki’s FeRh material to have a phase change between PM and FM, since Zarkevich discloses that this is a known phase change for a FeRh material.
Additionally, given that Kuboki in view of Zarkevich discloses the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed phase change of PM and FM.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 3, Kuboki discloses a seed layer (103) as claimed. Alternatively, given that there is no structural difference between the claimed interlayer and seed layer, the examiner is taking the position that the upper stratum of the interlayer corresponds to the claimed seed layer.
Regarding claims 4 and 21, Kuboki disclose that the thickness of the magnetocaloric material is 0-30 nm [0012], wherein the endpoint of 30 nm reads upon the claimed about 30 nm, and shows an example of the recording layer of 5 nm and interlayer of 10 nm [0049]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose any thickness from that ranged to obtain the magnetocaloric material is equal to or greater than the combined thickness of the interlayer and recording layer as claimed based on the desired magnetic properties and that choosing thickness values would have rendered the claimed relationship between layer thicknesses obvious in the absence of showing criticality.
Regarding claim 6, Kuboki in view of Zarkevich discloses that the magnetocaloric material is FeRh, which comprises a soft magnetic material and contacts the substrate (Fig. 1).
Regarding claims 7-8, Kuboki fails to explicitly disclose that the magnetocaloric material is MnFeNiSiAl. Zarkevich shows that MnFeNiSiAl is an equivalent structure known in the art (Figure 2(d) and Table 1). Therefore, because these two materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute FeRh for MnFeNiSiAl in the invention of Kuboki. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 20, please see [0029-0031].
Regarding claim 22, given that Kuboki in view of Zarkevich discloses the same materials and structure as claimed, Kuboki in view of Zarkevich discloses that the MC material is configured to reduce a coercivity of the recording layer when the magnetocaloric material generates heat upon exposure to a magnetic field.
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).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kuboki et al. (US 2003/0228495) in view of Zarkevich et al. (Viable Materials with a Giant Magnetocaloric Effect) and further in view of Hikosaka et al. (US 2004/0001975).
Kuboki in view of Zarkevich discloses a MRM as set forth above, however, is silent of a SUL as presently claimed.
Hikosaka disclose a magnetic recording medium comprising a SUL between a magnetocaloric material and a substrate (All Figs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuboki’s MRM to include a SUL between the magnetocaloric material and a substrate, since Hikosaka discloses that this would increase the recording /reading efficiency [0035].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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
