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 § 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 1-10, 12-19, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ajan (US 2008/0268293) in view of Yoshimura et al. (JP 2015-153447).
Regarding claims 1-5, 10, and 13-15, Ajan discloses a magnetic recording medium and a method of making thereof comprising a substrate (1), an amorphous soft magnetic underlayer (11) on the substrate, FCC NiPt60at.% seed layer (5a) [0033, 0043], a Ru interlayer (5b) [0032] on a seed layer, and a magnetic recording layer (6). In addition, official notice is taken that NiPt alloy is a substitutional alloy (not interstitial) are notoriously old and well-known and ubiquitous in the art; such Officially noticed fact being capable of instant and unquestionable demonstration as being well-known. Because atom sizes of Ni and Pt are substantially similar, Ajan discloses Pt atoms have substitutionally replaced at least some of the Ni atoms within an Ni lattice structure of the NiPt.
Alternatively, 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).
Ajan discloses a NiPt seed layer as set forth above, wherein the concentration of Pt is 40-70 at.% [0043] and that all values within the range appears to be functionally equivalent, however, fails to explicitly disclose that the seed layer comprises a plurality of seed layers composed of NiPt, each with a different percentage of Pt in the NiPt.
Yoshimura discloses a magnetic recording medium comprising of NiPt seed layer, wherein the seed layer can be a multilayer [0050-0052]. The art of Ajan, Yoshimura, and the instant invention is analogous as pertaining to seed layers for magnetic recording layers. It would have been obvious to one of ordinary skill in the art to form a multilayered NiPt, with different Pt content as Ajan discloses that they are functional equivalent, as claimed in the product of Ajan in view of Yoshimura as a typical configuration well known in the art and to obtain a MRM with excellent SNR disclosed by Yoshimura (Abstract).
Ajan discloses a NiPt seed layer comprises varying Pt concentrations (Fig. 2-6, [0043]), and that all values within the range appears to be functionally equivalent. Yoshimura discloses that NiPt seed layer can be of a multilayer. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features Ajan’s different NiPt alloys with Yoshimura’s NiPt multilayer structure as functionally equivalent option as the seed layers of Ajan in view of Yoshimura a reasonable expectation of success in obtaining a multilayer NiPt seed layer.
Regarding claims 6 and 16, although Ajan discloses FCC NiPt60at.% seed layer, Ajan fails to explicitly disclose a lattice constant. However, it is known in the art that lattice constant depends on alloy composition.
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 claims 7-9 and 17-19, please see [0007], Fig. 3, and [0042-0043].
Regarding claim 12, please see Fig. 2.
Regarding claims 28-30, Ajan in view of Yoshimura fails to explicitly disclose a graded Pt concentration in a NiPt multilayer, wherein the uppermost layer has the highest Pt concentration.
However, Ajan discloses a NiPt seed layer as set forth above, wherein the concentration of Pt is 40-70 at.% [0043] and that all values within the range appears to be functionally equivalent, however, fails to explicitly disclose that the seed layer comprises a plurality of seed layers composed of NiPt, each with a different percentage of Pt in the NiPt.
Yoshimura discloses a magnetic recording medium comprising of NiPt seed layer, wherein the seed layer can be a multilayer [0050-0052]. The art of Ajan, Yoshimura, and the instant invention is analogous as pertaining to seed layers for magnetic recording layers. It would have been obvious to one of ordinary skill in the art to form a multilayered NiPt, with different Pt content such that the Pt content is at the highest at the uppermost layer as Ajan discloses that they are functional equivalent, as claimed in the product of Ajan in view of Yoshimura as a typical configuration well known in the art and to obtain a MRM with excellent SNR disclosed by Yoshimura (Abstract).
Ajan discloses a NiPt seed layer comprises varying Pt concentrations (Fig. 2-6, [0043]), and that all values within the range appears to be functionally equivalent. Yoshimura discloses that NiPt seed layer can be of a multilayer. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features Ajan’s different NiPt alloys with Yoshimura’s NiPt multilayer structure as functionally equivalent option as the seed layers of Ajan in view of Yoshimura to produce the claimed seed layer structure having Pt content at the highest in the uppermost layer a reasonable expectation of success in obtaining a multilayer NiPt seed layer.
Furthermore, the examiner finds that there is no meaningful distinction between the NiPt layers within the scope of the claims (different Pt content in each layer, wherein the uppermost layer is the highest) and having NiPt layers having identical composition (same Pt content for each layer). For instance, a NiPt containing 49.999 at.% Pt is essentially identical to a layer containing 49.998 at.% Pt, therefore having a different Pt content between each layer. Additionally having a stacked layer of NiPt5.0003/NiPt5.0002/NiPt5.0001 is essentially identical to a layer containing NiPt5. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference between the Pt content in the NiPt multilayer of 0.00001 at.% in each layer does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed Pt content for each layer.
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the Pt content for each layer within the limits known in the art based on the desired end use of the seed layer to obtain optimal growth orientation since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980. Applicant has not provided any criticality of the claimed Pt content relationship.
Claims 1-10, 12-19, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ajan (US 2008/0268293) in view of in view of Nolan (US 7,211,340).
Regarding claims 1-5, 10, and 13-15, Ajan discloses a magnetic recording medium and a method of making thereof comprising a substrate (1), an amorphous soft magnetic underlayer (11) on the substrate, FCC NiPt60at.% seed layer (5a) [0033, 0043], a Ru interlayer (5b) [0032] on a seed layer, and a magnetic recording layer (6). In addition, official notice is taken that NiPt alloy is a substitutional alloy (not interstitial) are notoriously old and well-known and ubiquitous in the art; such Officially noticed fact being capable of instant and unquestionable demonstration as being well-known. Because atom sizes of Ni and Pt are substantially similar, Ajan discloses Pt atoms have substitutionally replaced at least some of the Ni atoms within an Ni lattice structure of the NiPt.
Alternatively, 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).
Ajan discloses a NiPt seed layer as set forth above, wherein the concentration of Pt is 40-70 at.% [0043] and that all values within the range appears to be functionally equivalent, however, fails to explicitly disclose that the seed layer comprises a plurality of seed layers composed of NiPt, each with a different percentage of Pt in the NiPt.
Nolan discloses a magnetic recording medium comprising of multilayer FCC seed layers comprising of Ni and Pt (col. 5 line 49 – col. 6, line 16). The art of Ajan, Nolan, and the instant invention is analogous as pertaining to seed layers for magnetic recording layers. It would have been obvious to one of ordinary skill in the art to form a multilayered NiPt, with different Pt content as Ajan discloses that they are functional equivalent, as claimed in the product of Ajan in view of Nolan as a typical configuration well known in the art and to obtain a strengthening growth orientation disclosed by Nolan (col. 4, lines 44-67).
Ajan discloses a NiPt seed layer comprises varying Pt concentrations (Fig. 2-6, [0043]), and that all values within the range appears to be functionally equivalent. Nolan discloses that NiPt seed layer can be of a multilayer. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features Ajan’s different NiPt alloys with Nolan’s NiPt multilayer structure as functionally equivalent option as the seed layers of Ajan in view of Nolan a reasonable expectation of success in obtaining a multilayer NiPt seed layer.
Regarding claims 6 and 16, Although Ajan discloses FCC NiPt60at.% seed layer, Ajan fails to explicitly disclose a lattice constant. However, it is known in the art that lattice constant depends on alloy composition.
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 claims 7-9 and 17-19, please see [0007], Fig. 3, and [0042-0043].
Regarding claim 12, please see Fig. 2.
Regarding claims 28-30, Ajan in view of Nolan fails to explicitly disclose a graded Pt concentration in a NiPt multilayer, wherein the uppermost layer has the highest Pt concentration.
However, Ajan discloses a NiPt seed layer as set forth above, wherein the concentration of Pt is 40-70 at.% [0043] and that all values within the range appears to be functionally equivalent, however, fails to explicitly disclose that the seed layer comprises a plurality of seed layers composed of NiPt, each with a different percentage of Pt in the NiPt.
Nolan discloses a magnetic recording medium comprising of multilayer FCC seed layers comprising of Ni and Pt (col. 5 line 49 – col. 6, line 16). The art of Ajan, Nolan, and the instant invention is analogous as pertaining to seed layers for magnetic recording layers. It would have been obvious to one of ordinary skill in the art to form a multilayered NiPt, with different Pt content as Ajan discloses that they are functional equivalent, as claimed in the product of Ajan in view of Nolan as a typical configuration well known in the art and to obtain a strengthening growth orientation disclosed by Nolan (col. 4, lines 44-67).
Ajan discloses a NiPt seed layer comprises varying Pt concentrations (Fig. 2-6, [0043]), and that all values within the range appears to be functionally equivalent. Nolan discloses that NiPt seed layer can be of a multilayer. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features Ajan’s different NiPt alloys with Nolan’s NiPt multilayer structure as functionally equivalent option as the seed layers of Ajan in view of Nolan to produce the claimed seed layer structure having Pt content at the highest in the uppermost layer a reasonable expectation of success in obtaining a multilayer NiPt seed layer.
Furthermore, the examiner finds that there is no meaningful distinction between the NiPt layers within the scope of the claims (different Pt content in each layer, wherein the uppermost layer is the highest) and having NiPt layers having identical composition (same Pt content for each layer). For instance, a NiPt containing 49.999 at.% Pt is essentially identical to a layer containing 49.998 at.% Pt, therefore having a different Pt content between each layer. Additionally having a stacked layer of NiPt5.0003/NiPt5.0002/NiPt5.0001 is essentially identical to a layer containing NiPt5. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference between the Pt content in the NiPt multilayer of 0.00001 at.% in each layer does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed Pt content for each layer.
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the Pt content for each layer within the limits known in the art based on the desired end use of the seed layer to obtain optimal growth orientation since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980. Applicant has not provided any criticality of the claimed Pt content relationship.
Allowable Subject Matter
Claim 31 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The closest prior art of record is Ajan (US 2008/0268293) in view of (Yoshimura et al. (JP 2015-153447) OR Nolan (US 7,211,340)). Ajan discloses a NiPt seed layer comprises varying Pt concentrations (Fig. 2-6, [0043]) and Yoshimura (or Nolan) discloses a multilayered NiPt seed layer. However, Ajan in view of Yoshimura (or Nolan) fails to teach, suggest, or otherwise render obvious the specific ordering of the NiPt seed layer with the respective Pt content as claimed.
Response to Arguments
Applicant's arguments filed 2/13/26 have been fully considered but they are not persuasive.
Applicant argues that the combination of Yoshimura with Ajan does not disclose or suggest the features of claim 1. Applicant recognizes that Yoshimura discloses that the underlayer 12 can be a single or a multilayer [0052], wherein it can comprise of NiPt alloys [0050]. Applicant goes on to state that Yoshimura does not mention a seed layer, much less using different percentages of Pt in different seed layer. This has been found unpersuasive.
With regard to applicant’s argument that Yoshimura fails to explicitly disclose that the “underlayer” is a “seed layer”, the nomenclature of the layer does not give patentable weight. See In re Danly, 263 F.2d 844, 847 (CCPA 1959) (holding that, “[r]egardless of the terminology used by the reference, claims are obvious where the prior art discloses or suggests the claimed structure”). As the Examiner finds, Yoshimura’s underlayer is an FCC NiPt single or multilayer that functions as an orientation-control layer [0046]. Therefore, the growth orientation property of Yoshimura’s underlayer discloses or suggests “seed layer,” as recited in claim 1. Additionally, Ajan discloses FCC NiPt layer refers to a “seed” layer. Given that Yoshimura also discloses FCC NiPt underlayer, Yoshimura’s FCC NiPt underlayer would discloses or suggests FCC NiPt seed layer.
With regards to applicant’s argument that Yoshimura fails to disclose a different percentage of Pt in different seed layers, Yoshimura explicitly disclose that the underlayer can be a multilayer instead of a single layer, wherein it can comprise of NiPt alloy. It would have been well within the purview of one of ordinary skill in the art to choose to use different alloy of NiPt in a multilayer. NiPt multilayer can have the exact composition (for example Ni50Pt50/Ni50Pt50) or different (for example Ni50.01Pt49.9), however, it is noted that having exact composition for each layer would result actually result in single stack NiPt layer. Given that one of ordinary skill in the art would be well aware that NiPt multilayer alloys are either same or different, choice of a NiPt multilayer to be different only two alternatives would be well within the level of ordinary skill in the art.
Nonetheless, the examiner is taking the position of the combination of Ajan and Yoshimura to disclose the claimed invention.
Applicant argues that Ajan simply indicates that different embodiments may use different percentages of Pt in the seed layer. The examiner agrees that Ajan doesn’t explicitly teach a multilayer NiPt are composed of different composition, but the examiner took in the position that Ajan discloses possible material for a NiPt layer. Given that Yoshimura discloses NiPt layer being a single or multilayer and Ajan discloses possible NiPt material with varying Pt concentrations and that all values within the range appears to be functionally equivalent (Fig. 2-6, [0043]), it would have been obvious to one of ordinary skill in the art to form a multilayered NiPt, with different Pt content as Ajan discloses that they are functional equivalent and suitable, as claimed in the product of Ajan in view of Yoshimura as a typical configuration well known in the art and to obtain a MRM with excellent SNR disclosed by Yoshimura (Abstract).
Applicant argues that the combination of Nolan with Ajan does not disclose or suggest the features of amended claim 1. This is because applicant argues that Nolan discloses a multiple layer structure where different layers have different lattice parameters. Indeed Nolan discloses a teaching of each layer having lattice parameters, however, the examiner took in the position that Nolan discloses a combination of FCC NiPt multilayer (col. 5 line 49 – col. 6, line 16). It is known in the art that a disclosure of NiPt multilayer can have the exact composition (for example Ni50Pt50/Ni50Pt50) or different (for example Ni50.01Pt49.9), however, it is noted that having exact composition for each layer would result actually result in single stack NiPt layer. Given that one of ordinary skill in the art would be well aware that NiPt multilayer alloys are either same or different, choice of a NiPt multilayer to be different only two alternatives would be well within the level of ordinary skill in the art.
The art of Ajan, Nolan, and the instant invention is analogous as pertaining to seed layers for magnetic recording layers. It would have been obvious to one of ordinary skill in the art to form a multilayered NiPt, with different Pt content as Ajan discloses that they are functional equivalent, as claimed in the product of Ajan in view of Nolan as a typical configuration well known in the art and to obtain a strengthening growth orientation disclosed by Nolan (col. 4, lines 44-67).
Additionally, absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to combine features Ajan’s different NiPt alloys composition with Yoshimura or Nolan’s NiPt multilayer structure as functionally equivalent option as the seed layers of Ajan in view of Yoshimura or Nolan a reasonable expectation of success in obtaining a multilayer NiPt seed layer with different Pt content.
Furthermore, the examiner finds that there is no meaningful distinction between the NiPt layers within the scope of the claims (different Pt content in each layer) and having NiPt layers having identical composition (same Pt content for each layer). For instance, a NiPt containing 49.999 at.% Pt is essentially identical to a layer containing 49.998 at.% Pt, which therefore having a different Pt content between each layer. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference between the Pt content in the NiPt multilayer of 0.00001 at.% does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed Pt content for each layer.
Therefore, absence of evidence of the criticality of the Pt content being “different” in a NiPt multilayer, the rejections has been maintained.
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.
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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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