Ex Parte Tajima et alDownload PDFPatent Trial and Appeal BoardJan 27, 201510824926 (P.T.A.B. Jan. 27, 2015) 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. 10/824,926 04/14/2004 Hideharu Tajima 61,144 (70904) 7906 7590 01/28/2015 EDWARDS & ANGELL, LLP P.O. Box 55874 Boston, MA 02205 EXAMINER HEYI, HENOK G ART UNIT PAPER NUMBER 2695 MAIL DATE DELIVERY MODE 01/28/2015 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 HIDEHARU TAJIMA, NOBUYUKI TAKAMORI, GO MORI, and MASAKI YAMAMOTO ____________ Appeal 2012-006493 Application 10/824,926 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims 1, 3–13, 17, and 18. App. Br. 7; Ans. 3. Claims 2 and 14–16 are cancelled. App. Br. 51 and 54.1 We have jurisdiction under 35 U.S.C. § 6(b). The Examiner rejected claims 1, 3–13, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Tominaga (US 5,569,517; issued Oct. 29, 1996) in view of Jung (US 5,516,568; issued May 14, 1996). App. Br. 18; Ans. 4– 12. 1 The Appeal Brief’s and Answer’s “status of claims” sections list claim 14 as pending. App. Br. 7; Ans. 3. As reflected by the Appeal Brief’s claims appendix, claim 14 was canceled. App. Br. 54; accord Amendment, November 1, 2007. Appeal 2012-006493 Application 10/824,926 2 We REVERSE the Examiner’s decision to reject claims 1, 3–13, 17, and 18 for reasons presented by the: second paragraph of page 22 of the Appeal Brief; and entirety of pages 38–41 of the Appeal Brief. As argued therein by Appellants, the Examiner has not supported a pivotal finding (i.e., upon which the rejection rests) that the positioning of Jung’s recording layer 5 — and, particularly, facing of the light-incident surface of the supporting substrate 1 — suggests a likewise positioning of Tominaga’s mask layer 3 so as to face the light-incident surface of the supporting substrate 1.2 For example, the Examiner does not even present a similarity of Jung’s recording layer 5 and Tominaga’s mask layer 3, much less a similarity that suggests Tominaga’s mask layer 3 would be likewise suited to face the light- incident surface of the supporting substrate. See e.g., Ans. 12–14 (lacking such explanation). No such similarity is self-evident. Jung’s recording layer 5 includes an “electric field-discoloring element” for writing data. Jung, col. 4, ll. 40– 67. Tominaga’s mask layer 3 includes a “crystal-to-crystal transition” element for restrictively passing — and thereby decreasing the passing width of — a light beam reading an underlying recording layer. Tominaga, col. 2, l. 40–col. 3, l. 5. In short, the Examiner fails to articulate a reason for repositioning Tominaga’s mask layer 3 in view of Jung’s recording layer 5. 2 By “facing” and “face,” we mean fronting but not necessarily being directly beside. Appeal 2012-006493 Application 10/824,926 3 DECISION For the foregoing reasons, the Examiner’s decision rejecting claims 1, 3–13, 17, and 18 is reversed. REVERSED llw Copy with citationCopy as parenthetical citation