Ex Parte New et al

Patent Trial and Appeal Board

Mar 9, 2015

12003427 (P.T.A.B. Mar. 9, 2015)

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.
12/003,427 12/26/2007 Anthony C. New SONY-00000 1803
102824 7590 03/09/2015
HAVERSTOCK & OWENS, LLP
162 N. WOLFE ROAD
SUNNYVALE, CA 94086
EXAMINER
SASINOWSKI, ANDREW
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
03/09/2015 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 ANTHONY C. NEW, RICHARD SELINFREUND,
and BRIAN D. DIECKMAN
____________

Appeal 2012-009648
Application 12/003,427
Technology Center 2600
____________

Before JAMES R. HUGHES, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–25. (App. Br. 3.)
1
We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1
We refer to Appellants’ Specification (“Spec.”) filed December 26, 2007,
which claims benefit of US 60/878,888 (filed January 5, 2007); Appeal Brief
(“App. Br.”) filed January 30, 2012; and Reply Brief (“Reply Br.”) filed
May 31, 2012. We also refer to the Examiner’s Answer (“Ans.”) mailed
April 25, 2012, and Final Office Action (Final Rejection) (“Final Act.”)
mailed July 20, 2011.
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2

Appellants’ Invention
The invention at issue on appeal concerns devices and methods for a
manufacturing an optical device by deposing a protective layer on to a
substrate (read-side of an optical disc) where the protective layer has the
property of preventing a corrosive solvent from damaging the read-side of
the optical disc and then deposing an optical blocking material on the
protective layer, where the optical blocking material includes a corrosive
solvent (a solvent corrosive to the read-side of the optical disc). (Spec.¶¶ 2
and 12–16; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method of manufacturing an optical device,
comprising:
applying a protective layer over a read-side surface of an
optical disc, the protective layer comprising a material that
prevents corrosive solvents from damaging the read-side
surface of the optical disc;
applying an optical blocking material to at least a
portion of the surface of the protective layer, the optical
blocking material including a corrosive solvent capable of
damaging the read- side surface of the optical disc.
Rejections on Appeal
1. The Examiner rejects claims 1–7, 9–12, 14, 15, and 20–23
under 35 U.S.C. § 103(a) as being unpatentable over Potyrailo (US
2007/0114365 A1, published May 24, 2007 (filed Nov. 21, 2005)) and
Yoshimura (US 6,077,582, issued June 20, 2000).
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2. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Potyrailo, Yoshimura, and Matsuishi (US 5,972,457,
issued Oct. 26, 1999).
3. The Examiner rejects claims 13 and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Potyrailo, Yoshimura, and Imataki (US
4,956,214, issued Sept. 11, 1990).
4. The Examiner rejects claims 16–19 and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Potyrailo, Yoshimura, and Smith (US
2006/0227696 A1, published Oct. 12, 2006).

ISSUES
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding that the combination of
Potyrailo and Yoshimura collectively would have taught or suggested:
applying a protective layer over a read-side surface of an
optical disc, the protective layer comprising a material that
prevents corrosive solvents from damaging the read-side
surface of the optical disc; [and]
applying an optical blocking material to at least a portion
of the surface of the protective layer, the optical blocking
material including a corrosive solvent capable of damaging the
read- side surface of the optical disc
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claim 20?
2. Does the Examiner err in finding that the combination of
Potyrailo, Yoshimura, and Smith, along with “Official Notice,” collectively
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would have taught or suggested the disputed features recited in claims 17–
19?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer, and the Final Office
Action mailed July 20, 2011, as our own, except as to those findings that we
expressly overturn or set aside in the Analysis that follows.

ANALYSIS
The § 103 Rejections of Claims 1–16 and 20–25
Based on Appellants’ arguments (App. Br. 12–19), we find Appellants
argue claims 1–16 and 20–25 together as a group and do not separately
argue with particularity the patentability of independent claim 20 (App. Br.
17–18) or dependent claims 2–7, 9–12, 14, 15, and 21–23 (App. Br. 18).
Appellants also do not separately argue with particularity the rejections of
dependent claim 8 (App. Br. 18), dependent claims 13 and 24 (App. Br. 18),
or dependent claims 16 and 25 (App. Br. 19). Appellants do provide
separate arguments with respect to claims 16–19 (App. Br. 19). (See infra.)
Accordingly, we select independent claim 1 as representative of Appellants’
arguments and groupings with respect to claims 1–16 and 20–25. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2–3 and
10–13; Ans. 4–6), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 14–17) in response to Appellants’ Appeal Brief.
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We concur with the findings and conclusions reached by the Examiner and
we provide the following for emphasis.
Appellants contend that Potyrailo and Yoshimura do not teach the
disputed features of claim 1. (App. Br. 13–17; Reply Br. 3–10.)
Specifically, Appellants contend that “Potyrailo contemplates very specific
types of chemical and mechanical damages” but does not disclose
“‘applying a protective layer over a read-side surface of an optical disc, the
protective layer comprising a material that prevents corrosive solvents from
damaging the read-side surface of the optical disc’ where the corrosive
solvent is described as part of the ‘the optical blocking material.’” (App. Br.
13.) Appellants further contend that Yoshimura does not teach the recited
step of “applying an optical blocking material . . . including a corrosive
solvent . . . .” (App. Br. 16) in that “Yoshimura directs an artisan to use
solvents that are not corrosive” even though “Yoshimura suggests that
solvent-based inks, such as inks that include glycol esters” (App. Br. 17).
Appellants also contend that “an artisan would not be inclined to combine
Potyrailo and Yoshimura, as Potyrailo’s operatively coupling of a RF circuit
96 to a convertible material has no relation to Yoshimura's screen printing.”
(App. Br. 17.)
We disagree with Appellants’ contentions that the combination of
Potyrailo and Yoshimura do not describe the disputed features of
representative claim 1. Potyrailo describes a capping layer (24) (i.e.,
protective layer) applied to (deposed on) an optical data layer (20) of an
optical storage medium (10) (i.e., the read-side surface of an optical disc).
(Potyrailo, ¶ 81; Fig. 1 and 2.) Potyrailo also describes a film (16) (which
“includes a convertible material, such as a bleachable dye” (¶ 81)) applied to
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(deposed on) the capping layer. (Potyrailo, ¶ 81; Fig. 1 and 2.) As
explained by the Examiner, Potyrailo’s capping layer protects against
undesired chemical changes (oxidation) (Potyrailo, ¶ 82) “chemical damage”
(Potyrailo, ¶ 84), and mechanical damage (Potyrailo, ¶¶ 82, 84). (Ans. 5 and
14–15.) As further explained by the Examiner, although Potyrailo does not
explicitly describe that the film (16) includes a corrosive solvent, Yoshimura
describes solvent-based inks (dyes) including a solvent such as “glycol
ether” (Yoshimura, col. 6, l. 61–col. 7, l. 6), which Appellants explicitly
recognize as a “corrosive solvent” (Spec., ¶ 81). (Ans. 5–6 and 14–17.)
We agree with the Examiner (Ans. 5–6 and 14–17) that the
combination of Potyrailo and Yoshimura would have taught or at least
suggested applying a protective layer that protects against a corrosive
solvent (prevents chemical damage) and applying a layer (film/convertible
dye) on the protective layer. Yoshimura, describes the complimentary
optical disc manufacturing method of applying an ink including a solvent
(corrosive solvent) such as glycol ether.
We find that it would have been well within the skill of one skilled in
the art to combine such known techniques to utilize Potyrailo’s disc
manufacturing method utilizing a capping layer and convertible dye with
Yoshimura’s complimentary disc manufacturing method utilizing a solvent-
based ink. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill” (citations omitted)).
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We are not persuaded that combining the respective familiar elements
of the cited references in the manner proffered by the Examiner would have
been “uniquely challenging or difficult for one of ordinary skill in the art” at
the time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
We note that the references cited by the Examiner must be read, not in
isolation, but for what each fairly teaches in combination with the prior art
as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references)
(citation omitted). Here, the Examiner cited the combination of Potyrailo
and Yoshimura as teaching the disputed features of claim 1. Appellants fail
to appreciate the collective teachings of Potyrailo and Yoshimura as a
whole, and also argue features that are not commensurate with the scope of
representative claim 1. (Ans. 14–17.)
Thus, for all the reasons supra, Appellants does not persuade us of
error in the Examiner’s obviousness rejection of representative independent
claim 1. Accordingly, we affirm the Examiner’s obviousness rejection of
representative claim 1, independent claim 20, and dependent claims 2–16
and 21–25, not separately argued with particularity (supra).
The § 103 Rejection of Claims 17–19
Appellants contend that the combination of Potyrailo, Yoshimura,
Smith, and “Official Notice,” collectively do not teach the disputed features
of claims 17–19. (App. Br. 19; Reply Br. 11–12.) Specifically, Appellants
contend that the Examiner failed to provide an affidavit or other
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documentary evidence of the purported “notorious and well known” facts
(see Ans. 12–13). (App. Br. 19.) We agree.
Although “lead-in areas” of an optical disc may be well known (Ans.
12–13), such knowledge does not immediately provide the ranges
(distances) recited in claims 17–19. The facts asserted by the Examiner to
be well known “are not capable of instant and unquestionable demonstration
as being well known” (MPEP § 2144.03). The Examiner should have
provided, but did not, a prior art reference or other documentary evidence
illustrating the purported well known facts. Consequently, we are
constrained by the record before us to find that the Examiner erred in finding
that the combination of Potyrailo, Yoshimura, Smith, and “Official Notice”
teaches the recited features of Appellants’ claims 17–19.
2
Accordingly, we
do not sustain the Examiner’s obviousness rejection of claims 17–19.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1–16 and 20–25 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims
17–19 under 35 U.S.C. § 103(a).

2
We do not address the substantive prior art rejection of claims 17–19 over
Potyrailo, Yoshimura, and Smith, which was not separately argued by
Appellants. We only address the Examiner’s failure to follow proper
procedure as prescribed in MPEP § 2144.03. Upon further prosecution, the
Examiner should provide some documentary evidence supporting the
position that the recited ranges are well known.
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DECISION
We affirm the Examiner’s rejections of claims 1–16 and 20–25. We
reverse the Examiner’s rejections of claims 17–19.

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-IN-PART

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