Ex Parte Fukuzawa

Board of Patent Appeals and Interferences

Oct 23, 2009

10657244 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NARUTOSHI FUKUZAWA
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Appeal 2009-005170
Application 10/657,2441
Technology Center 2600
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Decided: October 23, 2009
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is TDK Corporation.
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Application 10/657,244

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1-3 and 5-12. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention relates to an optical recording medium that
includes a recording layer composed mainly of an organic compound such
that blue-violet semiconductor laser light (390 to 420 nm wavelength) can be
used as the recording/reproducing laser light. The monomethine cyanine dye
used as the organic compound has a minimum value nmin of its refractive
index n within the range of 370 to 425 nm, and has a refractive index of 1.2
or lower with respect to the wavelength of the recording/reproducing laser
light. When absorbing the laser light, the dye melts or degrades to bring
about a change in the refractive index, thereby effecting recording of the
information (Spec. 1, 5-6).
Claim 1 is exemplary of the claims on appeal:
1. An optical recording medium comprising at least:
a supporting substrate;
a recording layer on the supporting substrate, the recording layer
comprising at least one organic compound as a major component;
a dielectric layer on the recording layer; and
a light-transmitting layer on the dielectric layer, the light-transmitting
layer having a thickness of 1 to 150 µm and being capable of transmitting
laser light with a wavelength of 390 to 420 nm for recording and
reproducing information,
wherein the at least one organic compound in the recording layer
includes at least one monomethine cyanine dye that has the minimum value
nmin of its refractive index n (real part of the complex refractive index)
within the range of 370 to 425 nm and has a refractive index n of 1.2 or
lower with respect to the wavelength of the recording/reproducing laser
light, and the organic compound, when absorbing the laser light, melts or
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degrades to bring about a change in the refractive index, thereby effecting
recording of the information, and
wherein the monomethine cyanine dye contains a monomethine group
with two nitrogen-containing heterocyclic rings positioned on ends of the
monomethine group, said two nitrogen-containing heterocyclic rings being
selected from the group consisting of a combination of indolenine and
indolenine, a combination of benzothiazole and benzothiazole, and a
combination of benzothiazole and quinoline.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Yanagisawa US 5,326,679 Jul. 5, 1994
Kasada US 6,683,188 B1 Jan. 27, 2004
(filed Nov. 24, 2000)
Sabi EP 1 103 962 A2 Nov. 23, 2000
Claims 1-3, 5, 7-9, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kasada in view of Sabi.
Claims 6 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kasada in view of Sabi and Yanagisawa.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed April 23, 2008), the Reply Brief (“Reply Br.,” filed
September 9, 2008), and the Examiner’s Answer (“Ans.,” mailed July 11,
2008) for their respective details.

ISSUE
Appellant argues that Kasada does not expressly teach a monomethine
cyanine dye having a minimum value nmin of its refractive index within the
range of 370 to 425 nm (App. Br. 6), and that such a minimum value is also
not inherent to monomethine cyanine dyes (Reply Br. 3). The Examiner
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finds that because Kasada teaches the use of monomethine cyanine dye in its
recording layer, the claimed characteristics of the dye are inherently present
(Ans. 4).
Appellant’s contentions present us with the following issue:
Has Appellant shown that the Examiner erred in finding that the
combination of Kasada and Sabi teaches a monomethine cyanine dye having
a minimum value nmin of its refractive index within the range of 370 to 425
nm?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns an optical
recording medium that includes a recording layer composed mainly of an
organic compound such that blue-violet semiconductor laser light (390 to
420 nm wavelength) can be used as the recording/reproducing laser light.
The monomethine cyanine dye used as the organic compound has a
minimum value nmin of its refractive index n within the range of 370 to 425
nm and has a refractive index of 1.2 or lower with respect to the wavelength
of the recording/reproducing laser light. When absorbing the laser light, the
dye melts or degrades to bring about a change in the refractive index,
thereby effecting recording of the information (Spec. 1, 5-6).
2. Appellant’s Specification provides examples of optical disks
prepared using monomethine cyanine dyes according to his invention
(Examples 1 and 2), as well as examples of optical disks prepared using
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monomethine cyanine dyes not within the scope of Appellant’s invention
(Comparative Examples 1 and 2) (Spec. 35-38).
3. Appellant’s Table 1 indicates that monomethine cyanine dye
“a” of Comparative Example 1 displays a minimum value nmin of its
refractive index at a wavelength of 356 nm (Spec. 38).
Kasada
4. Kasada teaches organic dye compounds, specifically
monomethine cyanine dyes, having their absorption maxima in a region
ranging from the ultraviolet region to a relatively short wavelength visible
region (Abstract).
5. Kasada is silent with respect to the wavelength corresponding
to the minimum value nmin of the refractive index of the dyes taught therein.
Sabi
6. Sabi teaches an optical recording medium in which the organic
material will not be dissolved into an adjacent layer, and will perform
accurate recording/reproducing (Abstract).
Yanagisawa
7. Yanagisawa teaches a writable recording medium containing
two cyanine dyes, the second dye having an absorption band of a shorter
wavelength region than that of the first dye (Abstract).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
ANALYSIS
CLAIMS 1-3, 5, 7-9, 11, AND 12
Claims 1 and 7, which are the independent claims pending in this
application, each recites a monomethine cyanine dye being included in the
organic compound in the recording layer, said monomethine cyanine dye
having a refractive index of 1.2 or lower with respect to the wavelength of
the recording/reproducing laser light, and having a minimum value nmin of its
refractive index n within the range of 370 to 425 nm.
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The Examiner finds that because Kasada teaches monomethine
cyanine dyes, the dye properties recited in Appellant’s claim are considered
to be inherently present in the patent (Ans. 8).
Appellant argues that the minimum value nmin of the refractive index
of the present claims is not inherent in the monomethine cyanine dyes
covered by Kasada’s disclosure (Reply Br. 2-3). Appellant argues that the
dyes of Chemical Formulae 2 and 5 of Kasada (col. 5, ll. 15-20 and 46-51)
are substantially similar to monomethine cyanine dye “a” of Appellant’s
Comparative Example 1 (see Spec. 38), which has a value of nmin at a
wavelength outside the claimed range. According to Appellant, that
substantial similarity means that the dyes of Formulae 2 and 5 would be
expected to have a similar value of nmin (Reply Br. 3).
We agree with Appellant. Appellant’s Specification provides
examples of optical disks prepared using monomethine cyanine dyes
according to his invention (Examples 1 and 2), as well as examples of
optical disks prepared using monomethine cyanine dyes not within the scope
of Appellant’s invention (Comparative Examples 1 and 2) (FF 2).
Appellant’s Table 1 indicates that monomethine cyanine dye “a” of
Comparative Example 1 displays a minimum value nmin of its refractive
index at a wavelength of 356 nm, which is outside the claimed range of 370
to 425 nm (FF 3). Appellant has thus provided evidence that the minimum
value nmin of the refractive index of a monomethine cyanine dye does not
necessarily occur within the claimed range of 370 to 425 nm. See In re
Robertson, 169 F.3d at 745. Thus, we find that the Examiner erred in finding
that a wavelength for nmin within the claimed range is inherent to the
monomethine cyanine dye taught by Kasada.
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Because Kasada does not teach, expressly or inherently, that its
monomethine cyanine dyes display a wavelength for nmin within the claimed
range, we find that the Examiner has failed to establish the prima facie
obviousness of claims 1-3, 5, 7-9, 11, and 12 over the combination of
Kasada and Sabi. Thus, we will not sustain the rejection of claims 1-3, 5, 7-
9, 11, and 12 under 35 U.S.C. § 103(a).
CLAIMS 6 AND 10
As noted supra, we reverse the rejection of claims 1 and 7, from
which claims 6 and 10 depend respectively. We have reviewed Yanagisawa,
and find that it does not remedy the deficiencies we noted with respect to the
combination of Kasada and Sabi. Thus, we will reverse the rejection of
claims 6 and 10 under § 103, for the same reasons expressed supra with
respect to parent claims 1 and 7.

CONCLUSION OF LAW
Appellants have shown that the Examiner erred in finding that the
combination of Kasada and Sabi teaches a monomethine cyanine dye having
a minimum value nmin of its refractive index within the range of 370 to 425
nm.
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ORDER
The Examiner’s rejection of claims 1-3 and 5-12 is reversed.

REVERSED

ELD

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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