Ex Parte Sweeney

Patent Trial and Appeal Board

Nov 27, 2012

11057941 (P.T.A.B. Nov. 27, 2012)

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.
11/057,941 02/15/2005 Thomas I. Sweeney 0656/73638 8937
23432 7590 11/27/2012
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
VERDERAME, ANNA L
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
11/27/2012 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 THOMAS I. SWEENEY
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Appeal 2011-010925
Application 11/057,941
Technology Center 1700
________________

Before TERRY J. OWENS, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010925
Application 11/057,941

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12, 18, 19, 23 and 25-28, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims methods for manufacturing optical recording
media and claims an optical disc manufactured by one of the methods.
Claims 1and 19 are illustrative:
1. A method for enhancing yields in an optical recording media
manufacturing process, by monitoring dye polymer formation on glass, said
method comprising the steps of:

(a) coating a glass substrate with a dye polymer layer;

(b) scanning the dye polymer coated glass substrate to detect defects;

(c) discarding the dye-polymer coated glass without data written on
the dye-polymer coated glass if the defects detected in step (b) are at or
above an unacceptable threshold level; and

(d) writing data on the dye polymer coated glass if the defects
detected in step (b) are below the unacceptable threshold level and utilizing
the dye polymer coated glass bearing the data in said optical recording
media manufacturing process,

wherein said scanning in step (b) occurs prior to writing to the dye
polymer coated glass, and

wherein the scanning in step (b) does not cause marks or pits to be
formed in the dye polymer layer, and does not change physical properties of
the dye polymer coated substrate.

19. An optical disc produced by a manufacturing process which
includes the method of claim 1.
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Application 11/057,941

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The References
Herrick US 3,317,736 May 2, 1967
Teter US 3,813,173 May 28, 1974
Kuriyama US 5,002,455 Mar. 26, 1991
Wilkinson (Wilkinson ‘326) US 2003/0147326 A1 Aug. 7, 2003
Shibata (Shibata ‘247) US 2005/0061247 A1 Mar. 24, 2005
(as translated) (filed Sep. 22, 2004)
Shibata (Shibata ‘044) JP 60-136044 A Jul. 19, 1985
(as translated)
Noboru (abstract) JP 04-363649 A Dec. 16, 1992

Takamoto (as translated) JP 2000-076713 A Mar. 14, 2000

Richard L. Wilkinson, DVD Mastering Using Dye Polymer Media 90-91,
Optical Data Storage Topical Meeting (Apr. 7-9, 1997) (hereinafter the
Wilkinson article).

The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
5, 10-12, 18, 19, 25 and 28 over Takamoto in view of Shibata ‘044,
Shibata ‘247, the Wilkinson article, Teter and Herrick,1 claims 6-9 over
Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article,
Teter, Herrick and Noboru, claim 23 over Takamoto in view of Shibata ‘044,
Shibata ‘247, the Wilkinson article, Teter, Herrick and Kuriyama, and
claims 26 and 27 over Takamoto in view of Shibata ‘044, Shibata ‘247, the
Wilkinson article, Teter, Herrick and Wilkinson ‘326.

1 The Examiner’s Answer incorrectly includes claim 27 instead of claim 28
in the statement of this rejection (Ans. 4) as indicated by the Examiner’s
Answer (Ans. 9) and the Appellant’s Brief (Br. 8),
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Application 11/057,941

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OPINION
The rejections are reversed as to claims 1-12, 18, 23 and 25-28 and
affirmed as to claim 19.
Claims 1-12, 18, 23 and 25-28
We need to address only the independent claims (1, 4 and 10). Each
of those claims requires scanning a dye polymer coated glass substrate to
detect defects prior to writing to the dye polymer coated glass. For a
disclosure of that claim requirement the Examiner relies upon Shibata ‘044
or Shibata ‘247 (Ans. 5-6).
Shibata ‘044 discloses that “defects detected by an inspection during
the preparation of a pre-grooved disk are written and displayed as they are,
so that the defect inspection is not required in the use of the optical disk,
thereby being able to save the labor and to improve the reliability” (p. 7).
The detected defect signal “is synthesized with a signal from the modulating
signal preparing circuit 5 and written by the Ar laser beams 4. For example,
while address information such as track number is written, if a defect is
detected in a certain sector, the defect may be displayed after writing the
section number.” Id.
Thus, Shibata ‘044 detects defects during, not before, writing to the
disk.
The Examiner relies upon Shibata ‘044’s disclosure that “before
writing by the Ar laser beams 4, scanning is carried out in advance with the
He·Ne laser beams 11 with a wavelength at which the resist is not
photosensitized” (p. 6) (Ans. 18).
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Application 11/057,941

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Although the scanning for a defect is carried out before the defect is
written, that scanning takes place while other information is written to the
disk, as indicated by Shibata ‘044’s disclosure that the result of the
inspection for defects “is fed back to writing of an argon (Ar) laser or
helium-cadmium (He·Cd) laser, and the defect information is written along
with address information” (p. 5). Also, in the sentence preceding that relied
upon by the Examiner, Shibata ‘044 discloses that “[t]he detected signal may
be processed in a defect detecting circuit 14, synthesized in a modulating
signal preparing circuit 5, and added to the optical modulator 6” (p. 6). The
signal to the optical modular 6 to which the detected defect signal is added is
the argon laser beam 4 used for writing to the disk (p. 8, figure).
Shibata ‘247 discloses “a substrate processing apparatus for
performing a predetermined process such as application of a resist solution
or development on a substrate which may be a semiconductor wafer or a
glass substrate for a liquid crystal display, for example” (¶ 0002).
Shibata ‘247 positions an inspection block (IB) anywhere between an
indexer block (1), a bottom antireflection coating block (2), a resist coating
block (3) and a development block (4) (¶ 0091; Fig. 4).
The Examiner argues that it would have been prima facie obvious to
one of ordinary skill in the art, in view of Shibata ‘247’s disclosure of
inspecting a photoresist layer on a semiconductor wafer or a liquid crystal
display before developing the photoresist, to inspect Takamoto’s optical disk
master before recording rather than during recording, as is done by
Takamoto (¶¶ 0015, 0031, 0034, 0036, 0047), “in order to avoid the
presences of defects in later processing stages” (Ans. 15-16).
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Application 11/057,941

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Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has not
provided evidence or technical reasoning which shows that a disclosure of
inspecting a photoresist layer on a semiconductor wafer or a liquid crystal
display before developing the photoresist would have provided one of
ordinary skill in the art with an apparent reason to inspect an optical disk
master before recording rather than during recording. Thus, the record
indicates that the rejection is based upon impermissible hindsight. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
For the above reasons we reverse the rejections as to claims 1-12, 18,
23 and 25-28.
Claim 19
Claim 19 encompasses an optical disc having defects below an
unacceptable threshold level in a dye polymer layer to which data has been
written, regardless of whether defects are detected before writing to the dye
polymer layer or, as disclosed by the Wilkinson article (Fig. 1), after doing
so.
Hence, we affirm the rejection of claim 19.
DECISION/ORDER
The rejection under 35 U.S.C. § 103 of claims 1-5, 10-12, 18, 19, 25
and 28 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson
article, Teter and Herrick is reversed as to claims 1-5, 10-12, 18, 25 and 28
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Application 11/057,941

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and affirmed as to claim 19. The rejections under 35 U.S.C. § 103 of
claims 6-9 over Takamoto in view of Shibata ‘044, Shibata ‘247, the
Wilkinson article, Teter, Herrick and Noboru, claim 23 over Takamoto in
view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and
Kuriyama, and claims 26 and 27 over Takamoto in view of Shibata ‘044,
Shibata ‘247, the Wilkinson article, Teter, Herrick and Wilkinson ‘326 are
reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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-IN-PART

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