Ex parte Aoyama

Board of Patent Appeals and Interferences

Sep 22, 1999

07855442 (B.P.A.I. Sep. 22, 1999)

Application for patent filed March 19, 1992. According to1
appellant, this application is a continuation of Application No. 07/619,815
filed November 29, 1990, now abandoned; which is a continuation of Application
No. 07/327,438 filed March 23, 1989, now abandoned; which is a continuation of
Application No. 07/052,932 filed May 22, 1987, now abandoned; which is a
continuation-in-part of Application No. 06/819,659 filed January 17, 1986; now
U.S. Patent No. 4,801,499 issued January 31, 1989.
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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKIRA AOYAMA
____________
Appeal No. 1996-0442
Application No. 07/855,4421
____________
HEARD: September 16, 1999
____________
Before METZ, JOHN D. SMITH and LIEBERMAN, Administrative
Patent Judges.
LIEBERMAN, Administrative Patent Judge.
Appeal No. 1996-0442
Application No. 07/855,442
The rejection of claim 22 has been withdrawn by the examiner. See2
Answer, page 3. Hence claim 22 is allowable and not before us for
consideration.
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 5 and 7 through
22 which are all of the claims remaining in the application.2
THE INVENTION
Appellants’ invention is directed to an optical recording
medium containing a transparent support, with successive
layers of a dielectric layer atop the support, an optical
recording layer atop the dielectric layer, a second dielectric
layer atop the optical recording layer and a second
transparent support atop the second dielectric layer. An
adhesive is provided between the second composite dielectric
layer and the second transparent support. The dielectric
layers are formed of x mol% of aluminum nitride and (100 - x)
mol% of silicon nitride where x is greater than zero and less
Appeal No. 1996-0442
Application No. 07/855,442
Claims 1 and 13 as they appear in the Appendix to the Brief3
inadvertently omit the word “about” in claim 1, line 18, and claim 13, line 4
respectively. A correct copy of each claim is inserted below.
3
than or equal to 95 mol%. The refractive index of the
composite dielectric layer is between 1.70
and 2.15.
THE CLAIMS
Claims 1 and 13 are illustrative of appellants’ invention
and are reproduced below.3
1. An optical recording medium comprising:
a first transparent support;
a first composite dielectric layer formed on the
transparent support;
an optical recording layer formed on the first composite
dielectric layer;
a second composite dielectric layer formed on the optical
recording layer so that the first transparent support, first
composite dielectric layer, optical recording layer and second
composite dielectric layer form an optical transmission
substrate;
a second transparent support; and
an adhesive provided adjacent the second composite
dielectric layer of the optical transmission substrate and the
second transparent support to adhere the optical transmission
substrate to the second transparent support;
Appeal No. 1996-0442
Application No. 07/855,442
4
wherein the composite dielectric layers are formed of x
mol% of aluminum nitride and (100 - x) mol% of silicon nitride
such that x is greater than 0 and less than or equal to about
95 mol% and the refractive index of the composite dielectric
layer is between 1.70 and 2.15.
13. A composite dielectric layer for use in an optical
recording medium comprising x mol% of aluminum nitride and
(100 - x) mol% of silicon nitride such that x is greater than
0 and less than or equal to about 95 mol% and the refractive
index of the composite dielectric layer is between about 1.70
and 2.15.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the
following references.
Ohta et al. (Ohta) 4,390,600 Jun. 28,
1983
Takahashi et al. (Takahashi) 4,610,912 Sep.
9, 1986
Yamada et al. (Yamada) 4,680,742 Jul. 14,
1987
THE REJECTIONS
Claims 1 through 5 and 7 through 21 stand rejected under
35 U.S.C. § 103 as unpatentable over Yamada in view of
Takahashi and Ohta.
OPINION
Appeal No. 1996-0442
Application No. 07/855,442
5
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, we will not sustain the rejection.
Assuming arguendo that it would have been prima facie
obvious for one of ordinary skill in the art to prepare
appellants’ claimed subject matter, it is necessary for us to
consider appellants’ rebuttal evidence. Appellants urge that
they have presented experimental data wherein it has been
demonstrated that the claimed composite dielectric layer has
unexpected benefits and hence is unobvious over the disclosure
of Yamada and the closest composite dielectric layers
disclosed by Yamada. See Brief, page 14. We agree. We find
the evidence submitted by appellant in both the Declaration of
Akira Aoyama executed December 10, 1993 and Figure 5 of the
specification to be dispositive of the issues before us.
In contrast, the Answer has focused on Yamada’s
dielectric material which may have a refractive index as low
as 2.15. It is the examiner’s position that the dielectric
material and its refractive index effectively anticipate
appellants’ claimed dielectric material. Hence appellants
Appeal No. 1996-0442
Application No. 07/855,442
6
cannot establish unexpected results. See Answer, page 10. We
disagree. The rejection before us is one of obviousness, not
of anticipation. Hence appellants may rebut the examiner’s
prima facie case of obviousness by establishing the existence
of unusual and unexpected properties in the range claimed.
Moreover, it is well settled that appellants may produce
evidence tending to show superior results because of the
selection of a narrower range within a disclosed range. See
In re Reven, 390 F.2d 997, 1001, 156 USPQ 679, 681 (CCPA
1968).
Referring to pages 2 and 3 of the Aoyama Declaration, we
find the difference in the Kerr Rotation Angle in dielectric
layers of the claimed subject matter having a refractive index
of 1.70 to 2.15, as contrasted with either dielectric layers
of greater or lesser refractive index, to be unusual and
unexpected. We are particularly persuaded as the distinction
in Kerr Rotation Angles arises from comparable but closely
spaced data points at refractive indices of 2.15, 2.18 and
2.22 respectively. We find a decrease from 1.0 to 0.9 in the
Kerr Rotation Angle between a refractive index of 2.15 and 2.2
Appeal No. 1996-0442
Application No. 07/855,442
7
to be unusual and unexpected to a person of ordinary skill in
this art.
Our position is further supported by the data presented
in Figure 5. We find that the dielectric layers represented
by Curves 56 and 57 having refractive indices of 2.24 and 2.31
respectively, undergo significant changes in the Kerr Rotation
Angle after as little as ten hours. In contrast, we find
dielectric layers having a refractive index between 1.70 and
2.15 undergo no change in the Kerr Rotation Angle even after
five thousand hours have passed. Moreover, in view of the
Answer’s failure to challenge Declarant’s conclusion that
unusual and unexpected results are evidenced by the change in
Kerr Rotation Angle, outside the refractive index range of
1.70 to 2.15, we are constrained to agree with and accept the
conclusions reached by appellants.
For the above reasons, we conclude, evaluating the
examiner’s prima facie case of obviousness in view of
appellants’ evidence and arguments, that based on the totality
of the record before us, the preponderance of evidence weighs
in favor of non-obviousness within the meaning of § 103. In
Appeal No. 1996-0442
Application No. 07/855,442
8
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
DECISION
The rejection of claims 1 through 5 and 7 through 21
under 35 U.S.C. § 103 as unpatentable over Yamada in view of
Takahashi and Ohta is reversed.
Appeal No. 1996-0442
Application No. 07/855,442
9
The decision of the examiner is reversed.
REVERSED
ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
bae
Appeal No. 1996-0442
Application No. 07/855,442
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