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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09 October 2025 is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the information disclosure statement has been considered by the examiner.
Drawings
The drawings were received on 19 December 2025. These drawings are accepted.
Specification
The disclosure is objected to because of the following informalities:
In line 1 in each of claims 35-39, the status identifier “(New)” should be corrected to state that these claims are -- (Previously Presented) -- as these claims were added in the previously filed amendment dated 28 May 2024. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22, 24, 30-32 and 33-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
a. In lines 1-3 of claim 22, “wherein the controller changes the first determination value based on the first shift amount every time the first shift amount exceeds the first threshold value” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
b. In lines 1-4 of claim 24, “wherein a second shift amount is a shift amount of the head in the radial direction at a time of the write processing of the second track, and the first threshold value is generated based on the second shift amount” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
c. In lines 5-7 of claim 30, “a first threshold value based on a second shift amount of the head in the radial direction at a time of the write processing of a second track adjacent to the first track in the radial direction” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
d. In lines 1-3 of claim 32, “wherein the controller changes the first determination value based on the first shift amount every time the first shift amount exceeds the first threshold value” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
e. In lines 1-5 of claim 34, “wherein the first threshold value is generated by shifting from the second shift amount in the radial direction” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
f. Claims 31 and 35-39 fail to correct the deficiency with respect to independent claim 30 and stand rejected as well.
Terminal Disclaimer
The terminal disclaimer filed on 19 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,230,297 has been reviewed and is NOT accepted.
The terminal disclaimer was reviewed by the Patent Legal Research Center (OPLC), which disapproved the terminal disclaimer because the applicant cited on the terminal disclaimer is not cited exactly as it is cited on the Application Data Sheet (ADS) and/or filing receipt and the applicant cited on the terminal disclaimer is not cited in its entirety. If more space for applicant section is required, please use smaller fonts or submit an attachment page to the terminal disclaimer. No new fee is required to correct and resubmit the terminal disclaimer.
In view of the non-acceptance of the terminal disclaimer, the nonstatutory double patenting rejection is repeated in the following paragraph(s).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20-21 and 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 13, 15 and 16 of U.S. Patent No. 12,230,297. Although the claims at issue are not identical, they are not patentably distinct from each other because pending claims 20-21 and 25-29 are anticipated by patented claims 1, 3, 4, 13, 15 and 16 of U.S. Patent No. 12,230,297 as follows:
With respect to pending claim 20, U.S. Patent No. 12,230,297 claims a magnetic disk device comprising a disk (lines 1-2 of patented claim 1); a head configured to write data to the disk and read the data from the disk (lines 3-4 of patented claim 1); and a controller configured to control write processing based on a first shift amount (lines 5-7 of patented claim 1) of the head in a radial direction of the disk (lines 8-9 of patented claim 1) at a time of the write processing of a first track of the disk (lines 11-12 of patented claim 1), a first threshold value at which the first shift amount may cause a read error in a second track adjacent to the first track in the radial direction (lines 9-11 of patented claim 1), a first determination value corresponding to the first shift amount (lines 6-7 of patented claim 1), and a second threshold value changing the write processing (lines 12-14 of patented claim 1).
With respect to pending claim 21, U.S. Patent No. 12,230,297 claims wherein the first determination value corresponds to the first shift amount exceeding the first threshold value (lines 6-9 of patented claim 1).
With respect to pending claim 25, U.S. Patent No. 12,230,297 claims wherein the controller stops the write processing of the first track in a case where it is determined that the first determination value is greater than the second threshold value (lines 1-4 of patented claim 3).
With respect to pending claim 26, U.S. Patent No. 12,230,297 claims wherein the controller changes a first DDOL corresponding to the first track to a second DDOL smaller than the first DDOL in a case where it is determined that the first determination value is greater than the second threshold value (lines 1-6 of patented claim 4).
With respect to pending claim 27, U.S. Patent No. 12,230,297 claims wherein the controller shifts at least a sector of the first track in a case where it is determined that the first determination value is greater than the second threshold value (lines 2-5 of patented claim 13).
With respect to pending claim 28, U.S. Patent No. 12,230,297 claims wherein the controller manages the first shift amount every time an error correction is performed in a unit of track (lines 2-6 of patented claim 15).
With respect to pending claim 29, U.S. Patent No. 12,230,297 claims wherein the controller controls the write processing every time the error correction is performed (lines 2-4 of patented claim 16).
Response to Arguments
Applicant's arguments filed 19 December 2025 have been fully considered but they are not persuasive.
With respect to the rejection of claim 22 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, the applicant argues that “claim language is believed to be clear from the original disclosure, see for example Figure 6 and the specification at page 32, line 31 to page 33, line 15, and see also original dependent claim 2.”
This argument, however, is not found to be persuasive as “wherein the controller changes the first determination value based on the first shift amount every time the first shift amount exceeds the first threshold value” is not described in the above cited section(s) of the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
With respect to the rejection of claim 24 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, the applicant “submits features from claim 24 are clear from the original disclosure. In that respect applicant draws attention to original Figure 7 and the specification at page 27, line 16 to page 28, line 5, and thereby applicant submits the features recited in claim 24 are clear.”
This argument, however, is not found to be persuasive as “wherein a second shift amount is a shift amount of the head in the radial direction at a time of the write processing of the second track, and the first threshold value is generated based on the second shift amount” is not described in the above cited section(s) of the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
With respect to the rejection of claim 30 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, the applicant “submits claim 30 corresponds to claim 20 except that the term ‘the read error’ in claim 20 is changed to ‘the second shift amount’ in claim 30, but which applicant submits is clear for example from Figure 7 in the specification.”
This argument, however, is not found to be persuasive as “a first threshold value based on a second shift amount of the head in the radial direction at a time of the write processing of a second track adjacent to the first track in the radial direction” is not described in the above cited section(s) of the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention (extra emphasis added).
With respect to the rejection on the ground of nonstatutory double patenting, the applicant maintains that “submission of that Terminal Disclaimer is believed to obviate the outstanding double patenting rejection.”
This argument, however, is not found to be persuasive as the terminal disclaimer was not accepted for the reason(s) set forth in paragraph 7, supra.
Conclusion
THIS ACTION IS MADE FINAL. 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 Craig A. Renner whose telephone number is (571) 272-7580. The examiner can normally be reached Monday-Friday 9:00 AM - 7:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571) 270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG A. RENNER/Primary Examiner, Art Unit 2688