Ex Parte Ren et alDownload PDFPatent Trial and Appeal BoardApr 23, 201412343301 (P.T.A.B. Apr. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/343,301 12/23/2008 Zhiyuan Ren 205508-1 (GELC:0064) 4208 62204 7590 04/23/2014 GE Licensing ATTN: Brandon, K1-2A62A 1 Research Circle Niskayuna, NY 12309 EXAMINER ANGEBRANNDT, MARTIN J ART UNIT PAPER NUMBER 1722 MAIL DATE DELIVERY MODE 04/23/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ZHIYUAN REN, BRIAN LEE LAWRENCE, PINGFAN PETER WU, JOHN ERIK HERSHEY, XIAOLEI SHI, KENNETH BRAKELEY WELLES, JOHN ANDERSON FERGUS ROSS and VICTOR PATROVICH OSTROVERKHOV ____________________ Appeal 2012-010282 Application 12/343,301 Technology Center 1700 ____________________ Before CHUNG K. PAK, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1 through 32. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2012-010282 Application 12/343,301 2 The claims are directed to a data storage device and method of use. App. Br. 2-4. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A data storage device comprising: a plastic substrate having a plurality of volumes arranged along a plurality of depth-extending, radially stacked tracks; and, a plurality of micro-holograms each contained in a corresponding one of the plurality of volumes; wherein, the presence or absence of a micro-hologram in each of the volumes is indicative of a corresponding portion of data stored. The Examiner relied on the following references in rejecting the appealed subject matter: Hirao US 7,006,425 B1 Feb. 28, 2006 Lawrence US 2006/0227398 A1 Oct. 12, 2006 Appellants, App. Br. 5, request review of the following rejections from the Examiner’s final office action: I. Claims 1, 3-5, 7, 15, 21-25 and 31 rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Lawrence. II. Claims 1-32 rejected under 35 U.S.C. § 103(a) as unpatentable over Lawrence. III. Claims 1-32 rejected under 35 U.S.C. § 103(a) as unpatentable over Lawrence and Hirao. Appeal 2012-010282 Application 12/343,301 3 OPINION After review of the respective positions provided by Appellants and the Examiner, we reverse the rejection under 35 U.S.C. § 102(b) and affirm the Examiner’s rejections under 35 U.S.C. § 103(a). The dispositive issue for this appeal is: Did the Examiner err in determining that Lawrence teaches or would have suggested a data storage device comprising a plastic substrate having a plurality of depth-extending, radially stacked tracks as required by the subject matter of independent claims 1, 21 and 31?1, 2 We only answer the latter question in the negative and only AFFIRM the Examiner’s § 103(a) rejections for the reasons presented by Examiner in the Answer. |We add the following. The Examiner found that Lawrence discloses a data storage device comprising a plastic substrate having a plurality of volumes arranged on a plurality of tracks and a plurality of micro-holograms contained in a corresponding one of the plurality of volumes. Ans. 5; Lawrence ¶¶ [0006], [0127]. The Examiner also found that Lawrence discloses writing tracks inside the holographic media where each track may spiral through various radii and/or depths inside the media. Ans. 6; Lawrence ¶ [0127]. The Examiner found that it would have been obvious to one skilled in the art to form Lawrence’s holographic recording medium having tracks that spiral radially through the depth of the medium with a reasonable expectation of 1 Appellants argue independent claims 1, 21 and 31 together. App. Br. 7-8, 12-13. We select claim 1 as representative and limit our discussion thereto. 2 A discussion of Hirao, relied upon by the Examiner in the separate rejection of claims 1-32 under 35 U.S.C. § 103 (Ans. 7-8), is unnecessary for disposition of the present appeal. Appeal 2012-010282 Application 12/343,301 4 success to provide high-capacity data storage in view of Lawrence’s disclosure that tracks may spiral through various radii and/or depths inside the medium. Ans. 7; Lawrence ¶¶ [0054], [0127]. Appellants argue that Lawrence does not disclose any structure similar to the depth-extending and radially stacked tracks required by the subject matter of independent claim 1. App. Br. 12. We are unpersuaded by this argument and agree with the Examiner’s determination of obviousness of such subject matter based on the teachings at paragraphs 0054 and 0127 of Lawrence. The subject matter of independent claim 1 requires (1) a plurality of tracks that extend depth-wise (spiral) through the data storage device and (2) that the plurality of depth-extending tracks are stacked radially providing an outer track and at least one inner track. These tracks appear to be concentric. Spec. ¶ [0128], Fig. 28D. As noted by the Examiner, Lawrence discloses that spiral tracks can spiral through various radii and/or depths inside the holographic media. Ans. 10; Lawrence ¶ [0127]. Further, as also noted by the Examiner, Lawrence discloses that tracks can be arranged concentrically. Ans. 8-9; Lawrence ¶ [0127]. Therefore, we agree with the Examiner’s finding that this disclosure of Lawrence is sufficient to suggest to one skilled in the art that tracks in a holographic media can be arranged to extend depth-wise through the media and radially stacked as required by the claims on appeal. Ans. 10-11. While Appellants assert that the claimed track configuration “may produce unexpected results in increasing data rates” (App. Br. 13), Appellants have not directed us to any objective evidence to show that the claimed track configuration actually produces unexpected results. Appeal 2012-010282 Application 12/343,301 5 Appellants also assert that Lawrence does not provide an enabling disclosure for depth-extending and radially stacked tracks as required by independent claim 1. App. Br. 10. However, as indicated supra, Lawrence would have suggested forming such feature to one of ordinary skill in the art. Appellants have not directed us to any objective evidence to show that one of ordinary skill in the art would not be able to make a data storage device having such feature. Accordingly, because we rely on the prior art’s suggestion of the subject matter recited in the claims on appeal, we only affirm the Examiner’s prior art rejections under 35 U.S.C. § 103(a) for the reasons presented by the Examiner in the Answer and given above. ORDER The Examiner’s prior art rejection of claims 1, 3-5, 7, 15, 21-25 and 31 under 35 U.S.C. § 102(b) is reversed. The Examiner’s prior art rejections of claims 1-32 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tc Copy with citationCopy as parenthetical citation