Ex Parte Zhou et al

Board of Patent Appeals and Interferences

May 15, 2007

10479203 (B.P.A.I. May. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUO-FU ZHOU,
JOHANNES CORNELIS NORBERTUS RIJPERS,
ERWIN RINALDO MEINDERS,
and HERMANUS JOHANNES BORG
____________

Appeal 2007-0409
Application 10/479,203
Technology Center 1700
____________

Decided: May 15, 2007
____________

Before, BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2007-0409
Application 10/479,203

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-20,
the only claims pending in this application. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
Appellants’ invention relates to an optical data storage medium for
recording by a focused laser-light beam. Independent Claims 1 and 12 are
reproduced below:
1. An optical data storage medium for rewritable recording by means
of a focused laser-light beam, said medium having a substrate with deposited
on a side thereof a recording stack comprising:

- at least one transparent layer,

- a phase-change type recording layer, and

- a metal reflective layer,

characterized in that the transparent layer comprises indium tin oxide and is
interposed between the recording layer and the metal reflective layer.

12. A rewritable optical data storage medium, having a substrate with
deposited on a side thereof a recording stack comprising:

- a transparent layer of indium tin oxide,

- a phase-change type recording layer, and

- a metal reflective layer,

characterized in that the transparent layer of indium tin oxide is interposed
between the recording layer and the metal reflective layer.

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Application 10/479,203

The Examiner relies on the following prior art references to show
unpatentability:
Uchiumi JP 61-208648 Sep. 17, 1986
Nonaka EP 1 001 415 A1 May 17, 2000

The Examiner made the following rejections1:
1. Claim 2 under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement;
2. Claims 13 and 14 under 35 U.S.C. § 112 second paragraph as
indefinite; and
3. Claims 1, 3-5, 9, 11-12, and 14-16 under 35 U.S.C. § 102(b) as
anticipated by Uchiumi.
4. Claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over
Uchiumi in view of Nonaka.

ISSUES
I. The Examiner contends that the Specification does not provide
support for a transparent layer having a thickness of 10 nm or less.
Appellants contend that one of ordinary skill in the art, upon reading the
Specification, would have understood that the inventors had possession of
the entire claim 2 range of less than 25 nm although there is no explicit
disclosure of the entire range. The issue before us is: Does the omission of
any discussion as to minimum thickness in Appellants’ Specification
reasonably convey to the artisan that Appellants had possession of the range
of 10 nm or less at the time of the invention?

1 The rejection of claims 12-18 and 20 under 35 U.S.C § 112, second
paragraph, has been withdrawn. (Answer 3).
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Application 10/479,203

For the reasons discussed below, we answer this question in the
negative.
II. The Examiner contends that Uchiumi discloses the invention as
claimed in each of claims 1, 3-5, 9, 11, 12, and 14-16. Appellants contend
that the Examiner’s findings are not sufficient to establish a prima facie
case of anticipation. The issue before us is: Has the Examiner properly
established that each of the recited claim elements is either expressly or
inherently taught by Uchiumi?
For the reasons discussed below, we answer this question in the
affirmative.
III. The Examiner contends that it would have been obvious to one of
ordinary skill in the art to add the boundary layers of Nonaka to the
recording medium of Uchiumi. Appellants contend that one of ordinary skill
in the art would not have combined Uchiumi and Nonaka because Nonaka is
intended to function as rewritable media while Uchiumi’s recording layer is
allegedly not rewritable. The issue for us to decide is: Has the Examiner
made sufficient factual findings to establish reasonable expectation of
success in combining Uchiumi with Nonaka?
For the reasons discussed below, we answer this question in the
affirmative.
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Application 10/479,203

RELEVANT FINDINGS OF FACT (“FF”)
Uchiumi
(1) Uchiumi is directed to manufacturing methods for optical recording
media. Uchiumi teaches that a recording can be generally performed
by varying the conditions of recording films while light is selectively
radiated between amorphous crystal and crystal or between crystals.
(Uchiumi 2).
(2) Uchiumi Figure 1 shows a layered stack comprising a substrate 1,
transparent film 2, recording film 3, protective film 4 and metal
electrode film 5.
(3) In Example 1, the layered stack comprises a disk glass substrate 1, an
electrode film 2 of SnO2 and ITO having a preferred thickness of 50 to
500 nm, a recording film 3 of an alloy of Te and Sn having a thickness
of 150 nm, a protective film 4 of SnO2 or ITO having a thickness of
150 nm, and a chromium electrode film 5 having a thickness of 200
nm.
(4) According to Uchiumi, the electrode film 2 of SnO2 and ITO acts as a
protective film. (Uchiumi 4).
(5) In Examples 1-3 of Uchiumi, the recording film 3 of Te and Sn is
deposited in an amorphous state (see Uchiumi 5, ¶ 1) and then
crystallized by heat treatment (see Uchiumi 5, ¶ 4).
(6) Uchiumi teaches that each of the optical recording media of Examples
1-3 is rewritable. (Uchiumi 8:7-8).

Nonaka
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Application 10/479,203

(7) Nonaka discloses an optical recording medium wherein recording and
erasure of information are affected by reversible phase change
between the amorphous phase and the crystalline phase of the
recording layer. (Abstract).
(8) Nonaka describes conventional rewritable phase change type optical
recording medium technology as follows:
The conventional optical recording media have a
recording layer mainly composed of tellurium, etc., and
for recording, the recording layer in the crystalline state
is irradiated with focused laser beam pulses for a short
time, to be partially molten. The molten portions are
quickly cooled and solidified by thermal diffusion, to
form recorded marks of the amorphous state. The light
reflectance of the recorded marks is lower than that of the
crystalline state, and they can be optically reproduced as
recorded signals. For erasing, the recorded marks are
irradiated with a laser beam, to be heated to a
temperature lower than the melting point and higher than
the crystallization point of the recording layer, to
crystallize the amorphous recorded marks, for restoring
the original non-recorded state. [0002].

(9) Nonaka’s recording medium comprises, in order, a substrate, a first
dielectric layer, a first boundary layer, and a recording layer.
(Abstract). A second boundary layer may be formed on the recording
layer on the side opposite the first boundary layer. [0023].
(10) The boundary layers are mainly composed of oxides, carbides and
nitrides of elements belonging to group 3A through group 6B of the
2nd period through the 6th period in the periodic table which include In,
Sn, Zn, Al, and Si [0026].
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Application 10/479,203

(11) The thickness of the first boundary layer is preferably 0.5 to 10 nm.
[0039].
(12) The thickness of the second boundary layer is preferably 0.5 to 50 nm.
[0040].
(13) According to Nonaka, the boundary layer reduces deterioration due to
repeated overwriting. [0018].
(14) “The dielectric layers act to prevent the recording layer form [sic,
from] being deformed or opened during recording.” [0004].
(15) Nonaka teaches that Te alloys, including alloys of Ge, Sb, Te, and Sn
may be used as the recording layers in rewritable phase change type
optical recording media. [0047] & [0050]. According to Nonaka, it is
known that Te alloys have a high crystallization rate and allow high
speed overwriting. [0003].
(16) According to Nonaka, known materials used as the dielectric layer in
contact with the recording layer include sulfides such as ZnS and a
mixture film of ZnS and SiO2. [0005].
ANALYSIS AND CONCLUSIONS
Rejections under 35 U.S.C. § 112:

Rejection of claims 13 and 14 under 35 U.S.C. § 112, ¶ 2
Appellants do not contest the Examiner’s finding that claims 13 and
14 contain a typographical error (i.e., double recitation of the phrase
“transparent layer”) which renders these claims indefinite. (Reply Br. 3).
Because it is uncontested, the rejection is summarily affirmed.

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Appeal 2007-0409
Application 10/479,203

Rejection of claim 2 under 35 U.S.C. § 112, ¶ 1
According to the Examiner, the Specification, as originally filed, does
not provide support for the transparent layer having a thickness of "less than
25 nm" as recited in claim 2. (Answer 3-4). Appellants concede that there
is no explicit disclosure of the recited range, but argue that the disclosure of
the application as originally filed reasonably conveys to the artisan that
Appellants had possession of this range at the time of the invention. (Br. 5).
See In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). In support of their contention, Appellants direct us to the
Specification, page 5, lines 4-8, which discloses a preferred thickness of 10-
50 nm and further states that a transparent layer which is too thick may have
a negative impact on the recording stack. Appellants assert that the absence
of any discussion regarding minimum thickness provides sufficient evidence
to support the full claim 2 thickness range of "less than 25 nm." (Br. 5).
Like the Examiner, we fail to see how the omission of language in the
Specification demonstrates that Appellants, at the time of the invention,
contemplated a transparent layer having a thickness in the range of 0 to 10
nm. See In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA
1976).
The rejection is affirmed.

Prior Art Rejections:
Appellants’ brief includes separate headings for each of claims 1-20.
However, Appellants do nothing more than point out what each claim
recites. Therefore, we do consider Appellants’ Brief as presenting
arguments for separate patentability of the claims. See 37 C.F.R.
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41.37(c)(1)(vii). In any event, we note that the Examiner has addressed, and
persuasively demonstrated, that each of the appealed claims is prima facie
anticipated and/or obvious for the reasons stated in the Answer. For the
reasons discussed below, we find that Appellants have failed to overcome
the Examiner’s prima facie showing of anticipation as to claims 1, 3-5, 9, 11,
12, and 14-16, and prima facie showing of obviousness as to appealed
claims 2, 6-8, 13, and 17-20.

Rejection of claims 1, 3-5, 9, 11, 12, and 14-16 under 35 U.S.C. § 102(b)
The Examiner found that Uchiumi discloses the invention as claimed
in each of claims 1, 3-5, 9, 11, 12, and 14-16. Appellants argue that the
Examiner’s findings are not sufficient to establish that Uchiumi teaches
each of the recited claim limitations. (See Reply Br. 4-5). We address
Appellants’ arguments as to each of the claim limitations in turn.
Appellants argue that the Examiner has not provided evidence that a
Te-Sn recording layer is rewritable. The Examiner found that Uchiumi’s
Te-Sn recording layer is inherently rewritable based on specific disclosures
in the Specification that the recording layer changes between amorphous
and crystalline phases. The Examiner also relied on Uchiumi’s explicit
statement that the optical recording media of Examples 1-3 is rewritable.
(Answer 7). Based on these findings, we fail to see any merit in
Appellants’ argument. Moreover, we note that the Examiner’s position is
supported by Nonaka’s teaching that Te alloys, including alloys of Ge, Sb,
Te, and Sn may be used as the recording layers in rewritable phase change
type optical recording media. (FF 15).
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Application 10/479,203

Appellants argue that Uchiumi fails to disclose a dielectric layer. The
Examiner found that the recitation of a “dielectric layer” is met by
Uchiumi’s electrode film 2. (Answer 8, ¶ 2). In our view, the Examiner’s
finding is reasonable, particularly given Appellants’ disclosure that SiO2,
Ta2O5, SiO2, and ZnS may be used for the claimed dielectric layer (see
Specification 4:18-29). The Examiner’s finding also appears to be
supported by Uchiumi’s teaching that electrode film 2 serves as a protective
film (FF 4) and Nonaka’s teaching that dielectric layers act to prevent the
recording layer from being deformed or opened during recording (FF 14),
thereby acting as protective layers. Appellants have not presented evidence
to refute the Examiner’s finding, such as evidence which shows that
Uchiumi’s layer of SnO2 and ITO does not act as a dielectric layer.
Appellants argue that Uchiumi does not disclose a further transparent
layer having a thickness in the range of 50 to 250 nm. As pointed out by the
Examiner, the claims, as drafted, do not require three separate layers, i.e.,
two transparent layers and a dielectric layer. Appellants have failed to refute
the Examiner’s finding that Uchiumi teaches a recording media having a
first layer which meets the limitation of Appellants’ claimed first transparent
layer and a second layer which meets the claim limitation of a dielectric
layer (claims 5 and 16) or a second transparent layer (claims 4, 9, and 15).
(Answer 8).

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Application 10/479,203

Appellants argue that Uchiumi does not disclose or suggest high data
rate recording. The Examiner found that Uchiumi’s data storage medium
would inherently record data at a high rate because of rapid heat dissipation
through the ITO layer to the 200 nm metal layer. (Answer 11). This finding
is supported by Nonaka’s teaching that it is known that Te alloys have a high
crystallization rate and allow high speed overwriting. (FF 15). Thus, in our
view, the Examiner properly shifted the burden to Appellants to present
evidence showing that Uchiumi’s data storage medium cannot be used for
high data storage. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1658 (Fed. Cir. 1990)(“[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”). Appellants have not met this
burden.
For the foregoing reasons, we find that Examiner has established a
prima facie case of anticipation as to claims 1, 3-5, 9, 11, 12, and 14-16,
which Appellants have failed to overcome. The rejection is affirmed.

Rejection of claims 1-20 under 35 U.S.C § 103(a)
The Examiner found that it would have been obvious to one of
ordinary skill in the art to add the boundary layers of Nonaka to the
recording medium of Uchiumi with a reasonable expectation of reducing
degradation of the optical properties of the recording medium as taught by
Nonaka. (Answer 5-6). According to Appellants, one of ordinary skill in
the art would not have had a reasonable expectation of success in combining
Uchiumi with Nonaka because Nonaka is intended to function as a
rewritable media. (Reply Br. 5-6). We do not find Appellants’ arguments
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persuasive since they are premised on Appellants’ contention that Uchiumi
does not disclose or suggest a phase change type recording media. As noted
above, we find that the Examiner has provided sufficient evidence to
establish that Uchiumi does, in fact, teach a rewritable recording medium.
The rejection is affirmed.
ORDER
The rejection of claim 2 under 35 U.S.C. § 112, first paragraph for
failing to comply with the written description requirement is affirmed.
The rejection of claims 13 and 14 under 35 U.S.C. § 112, second
paragraph, as indefinite is affirmed
The rejection of claims 1, 3-5, 9, 11-12, and 14-16 under 35 U.S.C.
§ 102(b) as anticipated by Uchiumi is affirmed.
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over Uchiumi in view of Nonaka is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

sld/ls

MICHAEL E. BELK
US PHILIPS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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