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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US 2007/0248749) in view of Guo et al. (US 2014/0231385), and in view of Ishiyama (JP 2003-288720).
Regarding claim 1, Guo discloses a method of producing a magnetic recording medium in which a lubricating layer is formed on a stack including a magnetic recording layer and a protective layer disposed on a substrate [0037, 0039], the method comprising coating the stack with a first lubricant (14a) and a second lubricant (14b), burnishing a surface of the stack, which is coated with the first and second lubricant, with an abrasive material [0047], removing the second lubricant present on the stack ([0044], Fig. 2C), wherein the first lubricant has a mean molecular weight greater than a mean molecular weight of the second lubricant [0042-0043], wherein the first lubricant layer can comprise of ZTMD or Z-Tetraol and the second lubricant layer is Fomblin Z or Z-dol [0042], which therefore corresponds to the claimed molecules of the first lubricant are more polar than molecules of the second lubricant, wherein the burnishing includes pressing a tape including the abrasive material against the surface of the stack to rub the surface of the stack [0047], wherein the removing of the second lubricant includes performing a heat treatment on the stack, which is coated with the first lubricant and the second lubricant ([0036], [0045], and claim 3).
Guo discloses that the lubricant layer is formed by a dipping process [0037], however, discloses that the process involves a mixture of a first and second lubricant with two distinct layers (Fig. 2A-2C), instead of a two-process step of individually coating a first lubricant and then a second lubricant.
Guo (‘385) shows a lubricant layer is formed by a mixture of different lubricants and applied at once, or can be applied by dipping the different lubricants sequentially, thereby would read on two-step coated process [0023]. Therefore, Guo (‘385) that a two-step coating process of different lubricants is an equivalent process known in the art.
Therefore, because these two processes 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 a one-step mixture coating for a two-step different lubricant coating in the invention of Guo. 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).
Additionally, because both Gao teach a lubricant layer that allows in decrease magnetic spacing to maximize magnetic performances (Gao: [0038], Gao ‘385: abstract), a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted one-step mixture coating process for Gao (‘385)’s two-step coating process with a reasonable expectation of success.
Although both Gaos discloses a dip-coat process, wherein Gao (‘385) utilizes a bath [0023], both Gao fails to disclose that the bath or that the coating comprises of a solvent. However, Gao (‘385) discloses a step utilizing solvent vapor to reduce the thickness of the lubricant layer [0027], thereby one of ordinary skill in the art would immediately envisage that the bath would include solvent with the lubricant, since it is known in the art that solvent vapor is a fundamental process to remove solvent from a mixture, leaving behind a solid or concentrated layer.
Nevertheless, Ishiyama discloses a method of forming a lubricant film by a dipping method, a spray method, a spin coating method, a vapor method or the like, wherein a lubricant is dissolved in a solvent ([0017-0018], [0077]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Gao’s dip-coat process involves using a solvent with a lubricant, since Ishiyama discloses that this is known in the art of forming a lubricant layer. Thus, Gao, Gao (‘385), and in view of Ishiyama discloses the claimed solvent characteristics.
Regarding claim 2, Guo discloses the low molecular weight as claimed [0030], wherein the second lubricant structure can be of Z-dol, which is known in the art to have two polar groups (-OH), or Fomblin Z, which is known in the art to have zero polar groups.
Regarding claims 3 and 7, Guo discloses the high molecular weight as claimed [0028], wherein the first lubricant structure can be of Z-tetraol, which is known in the art to have four polar groups (-OH), or ZTMD, which is known in the art to have eight polar groups (-OH).
Regarding claims 4 and 8, Guo discloses a first and second lubricant set forth above, wherein the first and second lubricant has a thickness about 0.5-7 nm (Fig. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges for each of the first and second lubricant disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claims 5 and 9, those claims further limit what steps involve with UV irradiation, but do nothing to narrow the scope of the removing step. The claim does not remove the heat treatment from possible removing step.
Regarding claims 6 and 10, Guo discloses that the remaining low MW lubricant evaporates or removed from the disk at ambient temperature or elevated temperature or during post-lube treatment ([0045], claim 3). However, Guo fails to explicitly disclose that the heat treatment is conducted in an inert atmosphere.
Ishiyama discloses that low MW lubricant is evaporated or removed during a heat-treatment in an inert atmosphere ([0048], [0082]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Guo’s heat treatment step to be in an inert atmosphere in order to remove or evaporate a low MW lubricant, since Ishiyama discloses that this is known in the art for removal of a low MW lubricant and that it will suppress fly stiction (Abstract).
Regarding claim 11, Gao discloses removing of the second lubricant with heat treatment, however, fails to disclose the duration as claimed.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the duration of the heat-treatment since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed duration is critical and has unexpected results. In the present invention, one would have been motivate to optimize the duration of the heat-treatment in order to successfully obtain a suitable lubricant layer.
Regarding claim 12, Gao discloses a protective layer as set forth above, however, fails to disclose that the protective layer has a nitride surface, wherein the first lubricant includes forming bonds between the molecules of the first lubricant and nitrogen atoms present at the nitrided surface of the protective layer as presently claimed.
Ishiyama discloses a nitride protective layer as claimed [0055, 0065].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Gao’s protective layer to be nitrided so that the first lubricant includes forming bonds between the molecules of the first lubricant and nitrogen atoms present at the nitrided surface of the protective layer as presently claimed, as suggested by Ishiyama, in order to improve the adhesion between the lubricant layer and the protective layer [0055].
Response to Arguments
Applicant’s arguments with respect to claim 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
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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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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