Ex Parte Poupinet et al

Board of Patent Appeals and Interferences

Oct 15, 2009

10535338 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LUDOVIC POUPINET,
BERANGERE HYOT, and MARIE-FRANCOISE ARMAND
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Appeal 2009-008254
Application 10/535,338
Technology Center 1700
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Decided: October 15, 2009
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-008254
Application 10/535,338

A. Introduction1
Ludovic Poupinet, Berangere Hyot, and Marie-Francoise Armand
(“Poupinet”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection2 of claims 12-16 and 20-22, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to an optical recording medium
having an active layer consisting of a zinc-tellurium alloy that consists, on
an atomic basis, of 60% to 70% zinc and 30 to 40% tellurium. Thin layers
of the material, preferably 15 to 50 nm thick, are said to be readily
deformed, bubbled, or pitted by a laser at storage densities corresponding to
DVD [digital versatile disk] format specifications.
Representative Claim 12 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
12. Optical recording medium comprising an active layer made
of inorganic material, presenting a front face for receiving an
optical radiation during writing operations, and a rear face
wherein the inorganic material is tellurium and zinc
alloy consisting of an atomic percentage of

1 Application 10/535,338, Optical Recording Medium Based on a Tellurium
and Zinc Alloy, filed 19 October 2005, as the national stage under
35 U.S.C. § 371 of PCT/FR03/03547, filed 2 December 2003. The benefit
under 35 U.S.C. § 119(a) is claimed to an application filed in France
on 2 December 2003. The specification is referred to as the
“338 Specification,” and is cited as “Spec.” The real parties in interest are
listed as the Commissariat à L’Energie Atomique, and MPO Int’l. (Appeal
Brief, filed 9 December 2008 (“Br.”), 1.)
2 Office action mailed 22 July 2008 (“Final Rejection”; cited as “FR”).
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between 60% and 70% of zinc and
between 30% and 40% of tellurium.
(Br., Claims App. A-1; indentation and paragraphing added.)
The Examiner has maintained the following grounds of rejection:3
A. Claims 12-14 and 20 stand rejected4 under
35 U.S.C. § 103(a) in view of Takahashi.5
B. Claims 15 and 16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Takahashi and either Stevens6 or Holster.7
C. Claims 20 and 21 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Takahashi and Tamura.8
Poupinet contends the Examiner failed to establish that the general
teachings of Takahashi regarding metal containing heat-mode recording
layers would have taught or suggested the zinc-tellurium alloy recited in
claim 12. More particularly, Poupinet argues that binary alloys, let alone
Zn:Te alloys having the claimed ratio, are not suggested by Takahashi’s

3 Examiner’s Answer mailed 20 February 2009. (“Ans.”)
4 Both the Brief (Br. 8) and the Examiner’s Answer (Ans. 3-4) erroneously
include claims 17-19 in the rejection. However, claims 17-19 were canceled
by the amendment filed after the final rejection on 21 November 2008 and
entered by the Examiner in the Office Action mailed 3 December 2008.
5 Yonosuke Takahashi et al., Optical Information Recording Medium, U.S.
Patent 4,405,706 (1983).
6 Paul Mark Stevens, U.S. Patent 6,177,168 B1 (2001).
7 Peter L. Holster and Johannes M. Wittkämper, U.S. Patent 4,450,553
(1984).
8 Miki Tamura and Tsuyoshi Santoh, U.S. Patent 5,354,590 (1994).
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Application 10/535,338

general list of metals or by the preferred list of seven metals that includes Zn
and Te. The teaching that such metals can be used “individually or in
combination” is not sufficient, in Poupinet’s view, to establish a case of
prima facie obviousness. Moreover, Poupinet argues, Takahashi does not
provide any teaching that the amount of Zn relative to Te is a result-effective
variable. Thus, according to Poupinet, there is no basis in the record to
argue that the range of ratios recited in the claims would have been obvious
as a result of routine optimization. (Br. 12.)
The Examiner maintains that the disclosure by Takahashi of Zn and
Te as “preferred metals” together with the teaching that the metals may be
used “individually or in combination” suffices to describe bimetallic alloys.
(Ans. 8.) Moreover, according to the Examiner, the 127 possible
combinations of metals is “not at all a ‘large number of possible
combinations.’” (Id. at 10.) The Examiner concludes that there would have
been a reasonable expectation of success in making a heat recording layer
within the scope of claim 12 based on the teachings of Takahashi. (Id.) As
for result-effective optimization, the Examiner argues that promoting
sensitivity of the recording layer and “effectuating the largest signal-to-noise
of recorded marks” (id.) would have provided the necessary guidance to one
skilled in the art.
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Application 10/535,338

B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
1. Takahashi describes an optical information recording medium that is
said to have improved adhesion between the heat mode recording layer and a
plastic substrate comprising an acrylic resin. (Takahashi, col. 1, ll. 5-12 and
col. 2, ll. 32-35.)
2. In Takahashi’s words:
[t]he metals used for the heat mode recording layer in this
invention include Mg, Sc, Y, Ti, Zr, Hf, V, Nb, Ta, Cr, Mo,
W, Mn, Re, Fe, Co, Ni, Ru, Rh, Pd, Ir, Pt, Cu, Ag, Au, Zn,
Cd, Al, Ga, In, Si, Ge, Sn, As, Sb, Bi, Se, and Te, which are
used individually or in combination.
(Takahashi, col. 3, ll. 52-56.)
3. According to Takahashi, preferable among these metals are “Mg, Zn,
Al, In, Sn, Bi, and Te because of their low melting poin[t].” (Takahashi,
col. 3, ll. 57-58.)
4. Takahashi teaches further that the metal for the recording layer “may
be incorporated with a substance that promotes the sensitivity or thermal
deformation.” (Takahashi, col. 4, ll. 1-3.)
5. Such substances are said to include oxides such as PbO, WO3, TiO2,
etc.; chalcogenide substances including at least one of Ge, In, Sn, Cu, Ag,
Fe, Bi, Al, Si, Zn, and V, and a chalcogen selected from S, Se, and Te; and
certain metal halides, metal sulfides, and metal oxides. (Takahashi, col.4,
ll. 6-19.)
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6. Takahashi teaches that such compounds are incorporated into the
metal in an amount of 10 to 70 vol%. (Takahashi, col. 4, ll. 20-22.)
7. In the Example, Takahashi forms a recording layer by codepositing In
[indium] and GeS [germanium sulfide] in a 4:3 volume ratio. (Takahashi,
col. 5, ll. 28-31.)
C. Discussion
As the Appellant, Poupinet bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness”) (citation and internal quote omitted). Arguments
not timely raised have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (2009),
second sentence.
A prima facie case of obviousness does not require certainty: a
suggestion, along with a reasonable expectation of success, suffices. In re
Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991). Thus, in the absence of evidence
to the contrary, e.g., in the absence of evidence of unpredictability beyond
the capabilities of persons having ordinary skill to overcome without undue
experimentation, it is prima facie obvious to follow the teachings of a prior
art patent to select components from among those components taught by the
patent to be useful for certain purposes.
The claimed invention, an optical recording medium, is somewhat
unusual in that the critical inorganic recording material is specifically and
narrowly recited to be a ZnTe alloy consisting of 60 to 70 atomic percent
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Application 10/535,338

zinc and 30 to 40 atomic percent tellurium. The transitional phrase
“consisting of” permits no other ingredients in the active layer.
Poupinet argues that considerable picking and choosing among the
various possibilities within the general scope of the teachings of Takahashi
would have been necessary to arrive at the invention covered by the
appealed claims. However, on its face, Takahashi invites the reader to use
any combination of seven low-melting metals as a laser-sensitive writing
layer of an optical recording medium.
Although Poupinet stresses that there are 127 possible combinations
of alloys and single metals arising from the seven-metal short list of
Takahashi, Poupinet has not explained why a person having ordinary skill in
the art would not have considered all 127 possible combinations to have
been equally likely to provide useful optical recording compositions. Put
another way, Poupinet has not come forward with any credible facts or
scientific reasoning indicating why the ordinary worker in the art would
have considered the Takahashi disclosure of 127 possible metal recording
layers not to have been enabling. Poupinet has not explained why the
ordinary worker would have doubted Takahashi’s teachings, or why undue
experimentation would have been required to make and use any of the
suggested optical recording layers.
Similarly, Poupinet’s arguments that a person having ordinary skill in
the art would not have optimized the ratio of two metals, in particular, Zn
and Te, for optimum performance as a memory medium for a given laser
system and for a given substrate, are not supported with citations to any
credible facts or evidence. Indeed, given the teaching by Takahashi that
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Application 10/535,338

both Zn and Te are useful individually and in combination, and the absence
of evidence to the contrary, it is hard to imagine that one of ordinary skill
would not seek to optimize the relative amount of each in a binary alloy of
the two.
Finally, Poupinet has not come forward with credible evidence of
unexpected results or other secondary indicia of non-obviousness. We
conclude, on the present record, that Poupinet has failed to carry its burden
of proving that the Examiner erred harmfully in holding claim 12 obvious in
view of Takahashi.9
Poupinet has not argued substantively for the separate patentability of
the dependent claims, or for the distinct patentability of claims rejected over
the additional applied references. The remaining claims thus fall with
claim 12.

9 We note, as does Poupinet (Br. 11-12), the Examiner’s misplaced
reliance on the supposed teaching by Takahashi at column 4, lines 1-11, that
“zinc and tellurium are known for promoting sensitivity in the recording
layer” (FR 4; emphasis added). The substances described by Takahashi as
promoting “the sensitivity or [sic: of[?]] thermal deformation” include metal
oxides, metal chalcogenides, metal halides, and metal sulfides. Although
zinc and tellurium are mentioned as potential components for the metal
chalcogenide, neither metal is taught per se as a “sensitivity or thermal
deformation” additive. The Examiner’s reliance on this teaching as
additional evidence of the obviousness of selecting zinc and tellurium as
components of a binary alloy, or as evidence supporting the obviousness of
varying the Zn:Te ratio, was thus erroneous. However, because, as
explained supra, the prima facie case does not rely on this erroneous finding,
we conclude that the Examiner’s error was harmless.

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Application 10/535,338

D. Order
We AFFIRM the rejection of claims 12-14 and 17-20 under
35 U.S.C. § 103(a) in view of Takahashi.
We AFFIRM the rejection of claims 15 and 16 under
35 U.S.C. § 103(a) in view of the combined teachings of Takahashi and
either Stevens or Holster.
We AFFIRM the rejection of claims 20 and 21 under
35 U.S.C. § 103(a) in view of the combined teachings of Takahashi and
Tamura.
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

tc

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