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.
Election/Restrictions
Due to the Petition Decision, filed 12/4/25, the restriction/election requirement mailed on 5/22/25 is withdrawn. Claims 1-20 and 28 are now pending.
Claim Rejections - 35 USC § 112
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 1-10 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.
Although the instant specifications provide support for “a concentration of the TiN in the interfacial layer is higher than a concentration of Ti in the underlayer”, there is no support in the specification to claim “a concentration of Ti in the interfacial layer is higher than a concentration of Ti in the underlayer”.
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 1-20 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Hellwig et al. (US 2016/0099017).
Regarding claims 1 and 11, Hellwig discloses a magnetic recording medium comprising a substrate [0007], a heat sink layer on the substrate [0083], a bilayer underlayer [0084], which corresponds to the claimed underlayer (and interfacial layer per claim 1), and multiple magnetic layers [0112], which corresponds to the claimed first nucleation layer, second nucleation layer, and magnetic recording layer. Hellwig discloses that the magnetic layers includes FePtX, wherein X is Ag, as the magnetic grains [0079], and oxides and nitrides as the grain boundaries [0077-0078].
Although Hellwig teaches that underlayer comprises of TiN and MgTiOx, which is known in the art as MTO, and can be of a bilayer structure [0084], Hellwig fails to explicitly disclose that the bilayer underlayer is TiN/MgOTiO (MTO), wherein TiN is at the upper layer or second surface as presently claimed. Hellwig discloses other suitable materials could be used as the seed layer [0084]. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention to use a bilayer with materials of TiN and MTO, wherein TiN is at the upper layer, as these materials are functional equivalent to each other and with reasonable expectation of success.
Therefore, in light that TiN is at the upper layer of the UL and MTO is at the lower layer of the UL, Hellwig discloses a concentration of Ti in the interfacial layer or second surface is higher than a concentration of Ti in the claimed underlayer or first surface (TiN: molar mass is 47.9 (Ti) + 14.0 (N) = 61.9 g/mol; thereby would equate to having 77% Ti (47.9/61.9). MgOTiO has a molar mass of 104.2 g/mol, thereby would equate to having 46% Ti (47.9/104.2)). Additionally, given that there is no TiN at the lower layer in MTO, Hellwig discloses a concentration of the TiN in the underlayer is higher at the second surface than at the first surface.
Regarding claims 2, 12, and 28, Hellwig discloses that the interfacial layer is directly on the underlayer as set forth above. The limitation “formed of Ti from the underlayer and N2 during sputtering of the first nucleation layer”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Hellwig discloses a TiN interfacial layer as set forth above.
Regarding claims 3-7, 9, 13-17, and 19, Hellwig discloses the oxide and nitride materials a claimed [0077-0078].
Regarding claims 8 and 18, Hellwig discloses the Ag concentration as claimed [0119].
Regarding claims 10 and 20, in light of Hellwig’s disclosure that onset layer is optional [0109] and additional layer is present above the heat sink layer, which corresponds to the claimed thermal barrier layer [0086], Hellwig discloses the stack of the magnetic recording medium as claimed.
Claims 1-20 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Hellwig et al. (US 2016/0099017) in view of Ho et al. (US 2022/0139422).
Regarding claim 1, Hellwig discloses a magnetic recording medium comprising a substrate [0007], a heat sink layer on the substrate [0083], a bilayer underlayer [0084], which corresponds to the claimed underlayer and interfacial layer, and multiple magnetic layers [0112], which corresponds to the claimed first nucleation layer, second nucleation layer, and magnetic recording layer. Hellwig discloses that the magnetic layers includes FePtX, wherein X is Ag, as the magnetic grains [0079], and oxides and nitrides as the grain boundaries [0077-0078]. Although Hellwig teaches that underlayer comprises of TiN and MgTiOx, which is known in the art as MTO, and can be of a bilayer structure [0084], Hellwig fails to explicitly disclose that the bilayer underlayer is TiN/MgOTiO as presently claimed.
Ho discloses a magnetic recording medium comprising TiN layer (256) / MTO layer (252) between a magnetic recording layer and a heat-sink layer (Fig. 4, [0030]). Ho discloses that this layer structure allows for reduced laser power while still achieving a high thermal gradient [0008].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hellwig’s underlayer to be of TiN/MTO bilayer, as suggested by Ho, in order to obtain optimal R/W properties [0007-0008].
Therefore, in light that TiN is at the upper layer and MTO is at the lower layer, Hellwig in view of Ho discloses a concentration of Ti in the interfacial layer or second surface is higher than a concentration of Ti in the claimed underlayer or first surface (TiN: molar mass is 47.9 (Ti) + 14.0 (N) = 61.9 g/mol; thereby would equate to having 77% Ti (47.9/61.9). MgOTiO has a molar mass of 104.2 g/mol, thereby would equate to having 46% Ti (47.9/104.2)). Additionally, given that there is no TiN at the lower layer in MTO, Hellwig in view of Ho discloses a concentration of the TiN in the underlayer is higher at the second surface than at the first surface.
Regarding claims 2, 12 and 28, Hellwig in view of Ho discloses that the interfacial layer is directly on the underlayer as set forth above. The limitation “formed of Ti from the underlayer and N2 during sputtering of the first nucleation layer”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Hellwig in view of Ho discloses a TiN interfacial layer as set forth above.
Regarding claims 3-7, 9, 13-17, and 19, Hellwig discloses the oxide and nitride materials a claimed [0077-0078].
Regarding claims 8 and 18, Hellwig discloses the Ag concentration as claimed [0119].
Regarding claims 10 and 20, in light of Hellwig’s disclosure that onset layer is optional [0109] and additional layer is present above the heat sink layer, which corresponds to the claimed thermal barrier layer [0086], Hellwig discloses the stack of the magnetic recording medium as claimed.
Response to Arguments
Due to the Petition Decision, filed 12/4/25, the restriction/election requirement mailed on 5/22/25 is withdrawn and a new ground of rejections for claims 1-20 and 28 has been applied.
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
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