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 .
Double Patenting (Statutory)
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 10-16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 8-14 of prior U.S. Patent No. 12,354,628 (hereafter patent claims 8-14). This is a statutory double patenting rejection.
Claim 10 is dependent upon claim 9 and therefore includes all of the limitations of claim 9, i.e., in its entirety, claim 10 recites: a method for manufacturing a near field transducer that is part of a thermally-assisted magnetic recording (TAMR) write head, the method comprising: disposing an alumina layer above a waveguide; disposing a first plasmonic material in a first portion of the etched recess; disposing a second plasmonic material in a second portion of the etched recess, wherein the first plasmonic material and the second plasmonic material comprise a second layer of the near field transducer; and disposing a first layer comprising the first plasmonic material above the alumina layer and the etched recess (claim 9 limitations); AND further comprising: forming an etched recess in the alumina layer via an etching process (claim 10 limitations).
Patent claim 8 identically recites all the above-noted limitations:
Patent claim 8 recites: a method for manufacturing a near field transducer that is part of a thermally-assisted magnetic recording (TAMR) write head (lines 1-3), the method comprising: disposing an alumina layer above a waveguide (line 4); disposing a first plasmonic material in a first portion of the etched recess (lines 7-8); disposing a second plasmonic material in a second portion of the etched recess, wherein the first plasmonic material and the second plasmonic material comprise a second layer of the near field transducer (lines 9-12); and disposing a first layer comprising the first plasmonic material above the alumina layer and the etched recess (lines 13-14); AND further comprising: forming an etched recess in the alumina layer via an etching process (lines 5-6).
For the same reasons noted above, claims 11-16 appear to be substantially identical in scope to patent claims 9-14, respectively.
Double Patenting (Non-Statutory)
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.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,354,628 (hereafter patent claim 8). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Patent claim 8 includes all of the limitations of claim 9, i.e., patent claim 8 recites: a method for manufacturing a near field transducer that is part of a thermally-assisted magnetic recording (TAMR) write head (lines 1-3), the method comprising: disposing an alumina layer above a waveguide (line 4); disposing a first plasmonic material in a first portion of the etched recess (lines 7-8); disposing a second plasmonic material in a second portion of the etched recess, wherein the first plasmonic material and the second plasmonic material comprise a second layer of the near field transducer (lines 9-12); and disposing a first layer comprising the first plasmonic material above the alumina layer and the etched recess (lines 13-14).
Patent claim 8 also includes additional limitations, e.g., in lines 5-6, forming an etched recess in the alumina layer via an etching process.
Hence, claim 9 is generic to the species of invention covered by patent claim 8. As such, claim 9 is anticipated by patent claim 8 and is therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, “a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim”, In re Goodman, 29 USPQ2d 2010, “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5 & 9 recite “the etched recess”, which lack antecedent basis because there is no previous mention of this limitation in the claims.
Claims 6-8 & 10-16 are dependent upon rejected base claims and are therefore rejected on the same grounds.
Claim Rejections - 35 USC § 102
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 –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4 & 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee et al. (US 11,657,844).
In regard to claim 1, Lee et al. discloses a method for manufacturing a thermally-assisted magnetic recording (TAMR) write head (Figure 3), the method comprising: disposing a heat sink (355) adjacent to a main pole (362), the main pole including a tip portion disposed adjacent to an air-bearing surface (ABS) (305), the main pole configured to direct a magnetic field toward a magnetic recording medium (308) to interact with the magnetic recording medium; disposing a first layer (354) of a near-field transducer (NFT) (350) adjacent to the heat sink, the first layer comprising a first plasmonic material (column 5, lines 60-65: “middle disk 354 may include a transition metal. A transition metal of middle disk 354 may be a platinum group metal (e.g., iridium, ruthenium, rhodium, osmium, platinum, palladium)”); disposing a second layer of the NFT adjacent to the first layer, the second layer including a second plasmonic portion (352B) and a first plasmonic portion (352A) (column 5, lines 26-44: “peg 352A and anchor disk 352B each include one or more of the same materials. For example, peg 352A and anchor disk 352B may both include iridium, rhodium, ruthenium, gold alloy(s), gold composite(s) (e.g., a gold-nanoparticle composite), or combinations thereof.”); and disposing a waveguide (332) adjacent to the NFT, the waveguide configured to direct a laser light source to heat a portion of the magnetic recording medium.
In regard to claim 4, Lee et al. discloses that the first portion of the second layer is disposed adjacent to the ABS (as shown in Figure 3).
In regard to claim 17, Lee et al. discloses a method comprising: disposing a first layer (354) comprising a first plasmonic material (column 5, lines 60-65: “middle disk 354 may include a transition metal. A transition metal of middle disk 354 may be a platinum group metal (e.g., iridium, ruthenium, rhodium, osmium, platinum, palladium)”) adjacent to a heat sink (355); disposing a second layer including a second plasmonic portion (352B) and a first plasmonic portion (352A) adjacent to the first layer, the first plasmonic portion disposed adjacent to an air-bearing surface (ABS) (305); disposing an alumina layer (334; column 3, lines 51-67) disposed between a waveguide (332) and the second layer (as shown).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. in view of Zhao et al. (US 2022/0051694).
For a description of Lee et al., see the rejection above. However, while Lee et al. suggests using rhodium and gold for the first and second plasmonic portions, Lee et al. requires that the first and second plasmonic portions use the same material (see column 5, lines 26-44). Therefore, Lee et al. does not disclose: in regard to claim 3, wherein the first plasmonic portion comprises any of rhodium, iridium, or platinum, and wherein the second plasmonic portion comprises gold.
Zhao et al. discloses: in regard to claim 3, first and second plasmonic portions wherein the first plasmonic portion comprises rhodium, iridium, or platinum, and wherein the second plasmonic portion comprises gold (see paragraph 0108: “Au disc 5900 and Ir or Rh peg 5901”).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to have applied this teaching of Zhao et al. to the method of Lee et al., the motivation being to minimize trenching effect (see paragraphs 0107-0108).
Claims 5, 18 & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. in view of Lille (US 2005/0046995).
For a description of Lee et al., see the rejection above. However, Lee et al. does not disclose: in regard to claim 5, wherein the etched recess is etched into the alumina layer via an etching process.
Lille discloses: in regard to claim 5, etching an etched recess into an alumina layer via an etching process (see paragraph 0054).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to have applied this teaching of Lille to the method of Lee et al., the motivation being to provide enhanced protrusion (see paragraph 0016).
Claim 18 has similar limitations as claim 5 and is therefore rejected on the same grounds.
In regard to claim 19, the above-noted combination of references would inherently result with the claimed “wherein the second layer is disposed within the etched recess”.
Allowable Subject Matter
Claims 2 & 20 are 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.
Claims 6-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 9-16 would otherwise be allowable over the prior art of record if the rejections based on double patenting and 35 U.S.C. § 112(b) are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record, Lee et al. discloses: in regard to claim 9, a method for manufacturing a near field transducer (350) that is part of a thermally-assisted magnetic recording (TAMR) write head (see Figure 3), the method comprising: disposing an alumina layer (334) above a waveguide (32); wherein a first plasmonic material (352A) and a second plasmonic material (352B) comprise a second layer of the near field transducer; and disposing a first layer (354) comprising the first plasmonic material above the alumina layer.
However, Lee et al. does not disclose: in regard to claim 9, disposing a first plasmonic material in a first portion of the etched recess; disposing a second plasmonic material in a second portion of the etched recess, and disposing a first layer comprising the first plasmonic material above the alumina layer and the etched recess.
Conclusion
The prior art made of record and not relied upon (see attached PTO-892 form) is considered pertinent to applicant's disclosure.
Zhao et al. (US 8,514,673) discloses a near-field transducer including a composite layer deposited on a substrate-parallel plane, wherein the composite layer has a first layer of a plasmonic material and a second layer of an insertion material adjacent the substrate.
Blaber et al. (US 2016/0351211) discloses a device having air bearing surfaces (ABS), the device including a near field transducer (NFT) that includes a disc configured to convert photons incident thereon into plasmons; and a peg configured to couple plasmons coupled from the disc into an adjacent magnetic storage medium, wherein at least a portion of the peg includes a multilayer structure including at least two layers including at least a first layer of a first material and at least a second layer of a second material.
Krichevsky et al. (US 2019/0198053) discloses an NFT comprising a core layer comprising an insulator, a first metal layer adjacent to the core layer, and a second layer adjacent to the first metal layer, wherein the second layer comprises a material that is substantially mechanically and thermally stable and thereby functions as a hard jacket to mitigate deformation of the NFT.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Vincent Agustin whose telephone number is (571) 272-7567. The examiner can normally be reached on Monday - Thursday 8:30 am - 6:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached on 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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/Peter Vincent Agustin/
Primary Examiner, Art Unit 2688