Ex parte Hatwar et al.

Board of Patent Appeals and Interferences

Sep 21, 1998

07963189 (B.P.A.I. Sep. 21, 1998)

Application for patent filed October 19, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TUKARAM K. HATWAR AND DOUGLAS G. STINSON
________________
Appeal No. 95-4066
Application 07/963,1891
________________
ON BRIEF
________________
Before METZ, WEIFFENBACH and OWENS, Administrative Patent
Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner's refusal to allow claims 1, 4, 6, 7, 10, 12, 13, 15,
17 and 20, all the claims in this application.
Appeal No. 95-4066
Application 07/963,189
2
THE INVENTION
The claimed invention is directed to an improved compact
disk capable of having information written thereon by a
radiation beam. The improvement is obtained by substituting
for the prior art reflective gold layer an alloy of silver
with palladium and optionally copper or an alloy of silver
with copper and optionally palladium.
Claims 1 and 7 are reproduced below for a more facile
understanding of appellants' claimed invention.
Claim 1. A compact disk capable of having information
written thereon by a radiation beam, said compact disk
comprising:

a protective overcoat;

a reflecting layer proximate said protective
overcoat, wherein said reflecting layer is a silver-
palladium alloy having a palladium content in the range
of from 1-15 at.%;
a recording layer coupled to
said reflecting layer; and
a plastic substrate
coupled to said recording layer.

Claim 7. A
compact disk capable of having information written
thereon by a radiation beam, said compact disk
comprising:

a protective overcoat;

Appeal No. 95-4066
Application 07/963,189
3
a reflecting layer coupled to said protective
overcoat;
a recording layer coupled to said
layer; and
a plastic substrate
coupled to said recording layer, wherein said reflecting
layer is a silver-copper alloy, wherein said copper
content of said silver copper alloy is in the range of 1-
30 at.%.
THE PRIOR ART
In addition to what the examiner has characterized as
"appellants' admissions", the references of record which are
being relied on by the examiner as evidence of obviousness
are:
Takahashi et al. (Takahashi) 4,717,628 Jan.
5, 1988
Shindo et al. (Shindo) 5,032,470 Jul.
16, 1991
Tomie et al. (Tomie) 03-25737 Feb. 4, 1991
(Japanese Kokai)
Kobayashi et al. (Kobayashi) 01-204243 Aug. 16,
1989
(Japanese Kokai)
Hasegawa et al. (Hasegawa) 04-102241 Apr. 3,
Appeal No. 95-4066
Application 07/963,189
Reference to each of Tomie, Kobayashi and Hasegawa is a reference2
to an English language translation thereof.
4
19922
(Japanese Kokai)
Claims 1, 4, 6, 7, 10, 12, 13, 15, 17 and 20 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
"appellants' admissions" considered with Tomie, and further in
view of Kobayashi, Takahashi and Shindo. Claims 1, 4, 6, 7,
10, 12, 13, 15, 17 and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over "appellants' admissions" in view of
Takahashi, in further view of Hasegawa and Shindo. Claim 7
stands rejected under 35 U.S.C. § 103 as being unpatentable
from "appellants' admissions" considered with Tomie and
Shindo. We shall reverse the first stated rejection under 35
U.S.C. § 103 to the extent it extends to claims 1, 4, 6, 10,
12, 13, 15, 17 and 20 but affirm the first rejection to the
extent it applies to claim 7. We shall reverse the second
stated rejection in its entirety. We shall affirm the sole
rejection of claim 7 under 35 U.S.C. § 103.
APPELLANTS' ADMISSIONS
Appeal No. 95-4066
Application 07/963,189
5
The examiner relies on what he characterizes as
"appellants' admissions" in each of his rejections of
appellants' claims. Rejections founded on evidence of what
appellants have conceded to be prior art with respect to their
claimed invention is not without precedent. See In re Nomiya,
509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975).
Accordingly, we shall first determine the scope and content of
"appellants' admissions."
As "appellants' admissions", it appears that the examiner
relies on appellants' Figure 1 of the drawings which is
characterized by appellants as "an example of the structure of
a typical writable storage medium such as a compact disk."
(page 3, lines 34 through 36 of the specification). In Figure
1 there is described a layered structure comprising a plastic
substrate; an organic dye recording layer; a metal reflector
layer, typically gold; and, a protective overcoat, such as
lacquer (page 1, lines 16 through 24 of the specification).
Appellants allege to have discovered that the problems
associated with a gold reflector layer may be mitigated by
substituting for gold a silver-palladium alloy with a
palladium content of from 1 to 15 atomic percent (claims 1, 4,
Appeal No. 95-4066
Application 07/963,189
6
6, 10, 12, 13, 15, 17 and 20) or a silver-copper alloy with a
copper content of from 1 to 30 atomic percent (claim 7).
THE CLAIMS
There are four independent claims before us for our
consideration. Claim 1 is an independent claim directed to a
compact disk comprising, inter alia, a reflecting layer which
is a silver-palladium alloy having a palladium content of from
1 to 15 atomic percent. Claim 7 is an independent claim drawn
to a compact disk comprising, inter alia, a reflecting layer
which is a silver-copper alloy having a copper content of from
1 to 30 atomic percent. Claim 13 is an independent claim
directed to a method for improving the storage characteristics
of a compact disk having a recording layer proximate to a
reflecting layer comprising depositing a reflecting layer of a
silver-palladium alloy having a palladium content of from 1 to
15 atomic percent on the recording layer of said disk. Claim
17 is an independent claim drawn to a storage medium for
storing information by vertically oriented magnetic domains
comprising, inter alia, a reflecting layer coupled to the
recording layer and including a silver-palladium alloy having
Appeal No. 95-4066
Application 07/963,189
7
a palladium content of from 1 to 15 atomic percent.
Claim 4 depends from independent claim 1 and further
includes in the alloy of claim 1 copper in an amount less than
30 atomic percent. Claim 10 depends from claim 7 and further
includes in the silver-copper alloy of claim 7 from 1 to 15
atomic percent palladium. Claim 15 depends from independent
claim 13 and further requires in the alloy of claim 13 from 1
to 30 atomic percent copper. Claim 20 depends from independent
claim 17 and further includes in the alloy of claim 17 from 1
to 30 atomic percent of copper.
OPINION
The examiner's first stated rejection under 35 U.S.C. §
103 over appellants' admission considered with Tomie,
Kobayashi, Takahashi and Shindo is apparently founded on the
examiner's unsubstantiated position that a person of ordinary
skill in the art would have been motivated to substitute for
the admitted, conventional gold reflector layer, the reflector
layer of Tomie as modified in accordance with Kobayashi,
Takahashi and Shindo. Thus, as a first error in his rejection,
Appeal No. 95-4066
Application 07/963,189
8
the examiner has failed to provide, as was his burden,
evidence establishing that the skilled routineer would have
been motivated to substitute for gold of the admitted prior
art configuration the silver-copper alloy reflector layer of
Tomie as modified by Kobayashi, Takahashi and Shindo.
Secondly, and more significantly, claims 1, 4, 6, 10, 12,
13, 15, 17 and 20 require a silver-palladium alloy and none of
Tomie, Kobayashi or Takahashi is directed to silver-palladium
alloys. Tomie is directed to silver-copper alloys. Kobayashi
is directed to aluminum layers or aluminum alloys covered with
protective layers of tantalum. While Kobayashi does disclose
palladium as a useful metal for alloying metal reflector
layers, the metal to which it is suggested that palladium may
be added is aluminum. Similarly, Takahashi alloys aluminum
with nickel, palladium, platinum, chromium or molybdenum.
Shindo recognizes a problem with the adherence of the
organic dye recording layer to the metal reflector layer and
resolves the problem by further including an organic
heterocyclic compound intermediate layer between the recording
layer and the metal reflector layer. While Shindo does
recognize, in the broadest sense, that alloys of silver and
Appeal No. 95-4066
Application 07/963,189
9
copper make useful metal reflector layers, no alloy within the
range claimed by appellants is described or suggested.
Moreover, Shindo always requires an intermediate layer of an
organic heterocyclic compound between the metal layer and the
recording layer. Claim 1 requires that the recording layer is
coupled to the reflecting layer.
Thus, in his first stated rejection, as it applies to all
claims except claim 7, the examiner has failed to discharge
his burden of persuasion by failing to provide both a factual
basis which supports a legal conclusion of obviousness and by
failing to provide evidence which would establish the
requisite motivation for making the proposed substitution and,
assuming motivation existed, that an ordinarily skilled
routineer would have had a reasonable expectation of success
by making the various selections and substitutions suggested
by the prior art on which the examiner relies.
While there is a modicum of logic to the examiner's
stated position, we find it is flawed for at least two
reasons. First, making the proposed selections and
substitutions does not yield a silver-palladium alloy as
claimed in claims 1, 4, 6, 10, 12, 13, 15, 17 and 20. Second,
Appeal No. 95-4066
Application 07/963,189
10
the examiner has made the proposed selections and
substitutions using appellants' claims as a guide.
Nevertheless, claim 7 stands on a different footing than
all the other claims which the examiner has rejected on the
first stated grounds. Claim 7 requires a compact disk having a
reflective layer which is a silver-copper alloy having from 1
to 30 atomic percent copper. Tomie describes an alloy within
the metes and bounds of claim 7 and Tomie provides motivation
for using said alloy rather than conventional compact disk
metal reflective layers. Specifically, the silver-copper alloy
of Tomie is said to yield a reflective layer with an improved
signal to noise ratio with superior corrosion resistance.
Thus, we are satisfied that a person seeking a reflective
layer of improved signal to noise ratio would have been
motivated to substitute for the prior art gold reflective
layer the silver-copper alloy reflective layer of Tomie.
Accordingly, we shall affirm the rejection of claim 7 under 35
U.S.C. § 103 as being unpatentable from "appellants'
admissions" taken with Tomie. We find Kobayashi, Takahashi and
Shindo to be merely cumulative and represent the state of the
art.
Appeal No. 95-4066
Application 07/963,189
11
The examiner's second stated rejection under 35 U.S.C. §
103 is founded on "appellants' admissions" considered with
Takahashi in further view of Hasegawa and Shindo. Having
discussed above all the prior art on which the examiner relies
here except for Hasegawa, we shall here limit our specific
discussion of the prior art to Hasegawa.
Hasegawa recognizes that a problem exists between the
organic dye recording layers of a compact disk and the metal
reflective layer. Specifically, Hasegawa recognizes that there
is poor adhesion between the metal reflective layer and the
organic dye layer. Hasegawa overcomes this problem by
including a layer of an organic heterocyclic compound
containing at least one of nitrogen or sulfur between the
recording layer and the reflective layer. Appellants' claims,
however, require that the recording layer and reflective layer
are coupled, one to the other. Still further, Hasegawa at best
only generically suggests silver-copper alloys as useful for
the reflective layer. The specific examples of alloys used by
Hasegawa include, in atomic percents: 60/40 gold/copper; 70/30
gold/copper; 70/30 gold/silver; and, 50/50 gold/silver. No
silver-palladium or silver-copper alloys in the atomic
Appeal No. 95-4066
Application 07/963,189
12
percents claimed by appellants are described.
Accordingly, to the extent the rejected claims require
either a silver-palladium alloy or a silver-copper alloy, the
proposed combination of prior art does not make out a prima
facie case of obviousness. As we noted above, Takahashi is
directed to lowering the coefficient of thermal conductivity
of aluminum alloys not silver alloys. Hasegawa does not
describe silver-palladium alloys at all and only broadly
suggests silver-copper alloys to be useful. Additionally,
Hasegawa requires a layer between the recording layer and the
reflective layer we find is excluded by appellants' claims.
Shindo is directed to aluminum-hafnium alloys as reflective
layers and neither describes nor suggests silver-palladium nor
silver-copper alloys. Where the legal conclusion of
obviousness is not supported by facts it cannot stand. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
The examiner's rejection of claim 7 as being unpatentable
under 35 U.S.C. § 103 from "appellants' admissions" considered
with Tomie in further view of Shindo is affirmed for reasons
expressed above with respect to the examiner's first stated
Appeal No. 95-4066
Application 07/963,189
13
rejection.
SUMMARY
The rejection of claims 1, 4, 6, 10, 12, 13, 15, 17 and
20 under 35 U.S.C. § 103 as being unpatentable over
"appellants' admissions" considered with Tomie, and further in
view of Kobayashi, Takahashi and Shindo is, REVERSED. The
rejection of claim 7 under 35 U.S.C. § 103 as being
unpatentable over "appellants' admissions" considered with
Tomie, and further in view of Kobayashi, Takahashi and Shindo
is, AFFIRMED. The rejection of claims 1, 4, 6, 7, 10, 12, 13,
15, 17 and 20 under 35 U.S.C. § 103 as being unpatentable over
"appellants' admissions" in view of Takahashi, in further view
of Hasegawa and Shindo is, REVERSED. The rejection of claim 7
under 35 U.S.C.
§ 103 as being unpatentable from "appellants' admissions"
considered with Tomie and Shindo is, AFFIRMED.
The decision of the examiner is AFFIRMED-IN-PART.
Appeal No. 95-4066
Application 07/963,189
14
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
)
ANDREW H. METZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-4066
Application 07/963,189
15
AHM:yrt
Thomas H. Close
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201