CTNF 18/673,038 CTNF 85426 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions Applicant's election with traverse of Group I, claims 1-9 in the reply filed on 4/13/26 is acknowledged. Applicant’s arguments have been found persuasive, therefore, pending claims to be examine are claims 1-9 and 21-27. 08-06 AIA Claim s 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/13/26 . Claim Rejections - 35 USC § 102/103 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-20-aia AIA 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. 07-27-aia AIA Claim s 1-9, 21-24, and 27 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 Iwata et al. (JP 2010-192016) . Regarding claims 1-3, Iwata discloses a data storage device comprising a magnetic recording medium comprising a substrate (101), a magnetic recording layer (104b) on the substrate, and a ferrimagnetic TbFeCo capping layer (104a) on the magnetic recording layer. Or alternatively, given that there is no structural or material difference between the claimed magnetic recording layer and ferrimagnetic capping layer, the examiner is taking the position that the uppermost stratum of magnetic layer (104) would corresponds to the claimed ferrimagnetic TbFeCo capping layer. MPEP 2144.04 V.C. provides guidance for this issue: C. Making Separable In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that ‘if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.’). Dividing Iwata’s TbFeCo magnetic layer matches the required capping layer and MRL. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to divide Iwata’s magnetic layer, by calling it capping layer and MRL, and thus achieve the claimed capping layer and MRL. Iwata further disclose a magnetic recording apparatus comprising a heat-assisted writer configured to write information to the magnetic recording layer of the magnetic recording medium during a write operation, and a heat-assisted reader configured to read information from the magnetic recording layer of the magnetic recording medium during a read operation ([0135-0151], Fig. 8-9, Fig. 12-13). Regarding claim 4, Iwata discloses a SUL as claimed [0051-0052]. Regarding claim 5, given that there is no structural or material difference between the claimed SUL and heatsink layer, the examiner is taking the position that the upper stratum of Iwata’s SUL corresponds to the claimed heatsink layer. As such, since Iwata has been shown by the Examiner to meet all the structural limitations of the product claim, the burden has shifted to the Applicants to other amend the claims to structurally (or compositionally) define over Iwata or provide evidence that the structure of Iwata can’t meet the functional limitation set forth in claim. As set forth in MPEP 2114, while features of an apparatus or product may be recited as either structurally or functionally, claims directed to an apparatus or product MUST be distinguished from prior art in terms of structure (or composition of such structure) rather than function or nomenclature. Regarding claims 6-7, Iwata discloses near-field light generating means [0032] or member (352), thereby corresponds to claimed NFT. Regarding claim 8, Iwata discloses the heat source of the heat-assisted reader is configured to apply heat at a target read location on the MRM during a read operation [0029-0032]. In addition, Iwata discloses a that the MRM is a heat-assisted discrete track medium, thereby would have portions of the ferrimagnetic capping layer become magnetically aligned with one another at the target read location while portions of the ferrimagnetic capping layer adjacent to the target read location remain magnetically unalign (All Figs, [0092-0094], [0119-0122]. Regarding claim 21-24, Iwata discloses a magnetic recording medium comprising a substrate (101), a SUL as claimed [0051-0052], a magnetic recording layer (104b) on the substrate, and a ferrimagnetic TbFeCo capping layer (104a) on the magnetic recording layer. Given that there is no structural or material difference between the claimed SUL and heatsink layer, the examiner is taking the position that the upper stratum of Iwata’s SUL corresponds to the claimed heatsink layer. As such, since Iwata has been shown by the Examiner to meet all the structural limitations of the product claim, the burden has shifted to the Applicants to other amend the claims to structurally (or compositionally) define over Iwata or provide evidence that the structure of Iwata can’t meet the functional limitation set forth in claim. As set forth in MPEP 2114, while features of an apparatus or product may be recited as either structurally or functionally, claims directed to an apparatus or product MUST be distinguished from prior art in terms of structure (or composition of such structure) rather than function or nomenclature. Regarding claim 27, Iwata discloses a carbon overcoat [0049] . 07-27-aia AIA Claim s 21-27 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 Nolan et al. (US 10,026,432) . Regarding claims 21-23, Nolan discloses data storage device comprising a magnetic recording medium comprising a substrate (110), a SUL (612) comprising soft magnetic material, a heatsink layer (613), and a TbFeCo magnetic layer (col. 3, lines 30-32). Given that there is no structural or material difference between a ferrimagnetic capping layer and a magnetic recording layer, the examiner is taking the position that the lower stratum of TbFeCo magnetic layer corresponds to the claimed MRL. MPEP 2144.04 V.C. provides guidance for this issue: C. Making Separable In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that ‘if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.’). Dividing Nolan’s TbFeCo magnetic layer matches the required capping layer and MRL. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to divide Nolan’s magnetic layer, by calling it capping layer and MRL, and thus achieve the claimed capping layer and MRL. Alternatively, “mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. Please see MPEP 2144.04 and In re Harza , 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Duplication of Nolan’s magnetic layer matches the required capping layer and MRL. It would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention to duplicate Nolan’s magnetic layer and thus achieve the claimed capping layer and MRL. Furthermore, Nolan discloses a HAMR device comprising a R/W head, thereby would corresponds to the heat-assisted reader and writer (col. 5, lines 30-31, col. 7, lines 57-59). Regarding claim 24, Nolan discloses a SUL as claimed (col. 7, line 55-58). Regarding claim 25, Nolan discloses MgO UL as claimed (col. 5, line 65-col. 6, line 7). Regarding claim 26, Nolan discloses an adhesive layer and a thermal resistive layer (col. 2, lines 36-50 and all Figs). Nolan further discloses that some of the layers provides multiple functions (col. 2, lines 47-50), therefore, given that there is no structural difference between a seed layer and a SUL, the examiner is taking the position that the upper stratum of Nolan’s SUL corresponds to the claimed seed layer. It is known in the MRM art that a soft magnetic layer can both function as a SUL and a magnetic seed/orientation control layer. Regarding claim 27, Nolan discloses a DLC overcoat (col. 9, line 31-32) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 5 and 25-26 rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al. (JP 2010-192016) in view of Nolan et al. (US 10,026,432) . Regarding claims 5 and 25-26, Iwata discloses a magnetic recording medium as set forth above, and comprises a SUL [0051-0052] however, fails to disclose a heatsink layer, MgO UL, adhesion layer, and a thermal resistive layer as presently claimed. Nolan discloses a HAMR medium comprising a heatsink layer between a SUL and a MRL (Fig. 6), MgO UL as claimed (col. 5, line 65-col. 6, line 7). Nolan further discloses an adhesive layer and a thermal resistive layer (col. 2, lines 36-50 and all Figs). Furthermore Nolan discloses that some of the layers provides multiple functions (col. 2, lines 47-50), therefore, given that there is no structural difference between a seed layer and a SUL, the examiner is taking the position that the upper stratum of Iwata in view of Nolan’s SUL corresponds to the claimed seed layer. It is known in the MRM art that a soft magnetic layer can both function as a SUL and a magnetic seed/orientation control layer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Iwata’s MRM to include a heatsink layer between a MRL and SUL in addition to MgO UL, adhesive layer, and a thermal resistive layer as claimed, since Nolan discloses that it is useful in HAMR application in order to control the flow of heat created during write operation (col. 7, lines 64-67), and to provide appropriate orientation, topographical, diffusion, thermal, and other characteristics in order to achieve a high magnetic anisotropies (col. 2, lines 15-21). 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. 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. Linda Chau /L.N.C/Examiner, Art Unit 1785 /Holly Rickman/Primary Examiner, Art Unit 1785 Application/Control Number: 18/673,038 Page 2 Art Unit: 1785 Application/Control Number: 18/673,038 Page 3 Art Unit: 1785 Application/Control Number: 18/673,038 Page 4 Art Unit: 1785 Application/Control Number: 18/673,038 Page 5 Art Unit: 1785 Application/Control Number: 18/673,038 Page 6 Art Unit: 1785 Application/Control Number: 18/673,038 Page 7 Art Unit: 1785
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