Ex Parte Chapman et al

Board of Patent Appeals and Interferences

Mar 27, 2002

09027074 (B.P.A.I. Mar. 27, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DEREK D. CHAPMAN,
ANN L. CARROLL-LEE,
and
CSABA A. KOVACS
_____________
Appeal No. 2000-1433
Application No. 09/027,0741
______________
ON BRIEF
_______________
Before GARRIS, WALTZ, and KRATZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-11 which are all of the claims in the application.
The subject matter on appeal relates to an optical recording
element having a recording layer which comprises a metallized azo
Appeal No. 2000-1433
Application No. 09/027,074
ether dye having an azo group linking a substituted 3-
hydroxypyridine nucleus to a phenyl nucleus wherein the phenyl
nucleus has an ether substituent ortho to the azo group and the
phenyl nucleus is free of strong electron withdrawing groups.
Further details concerning this appealed subject matter are set
forth in representative independent claim 1 which reads as
follows:
1. An optical recording element having a
transparent substrate and on the surface of said substrate,
a recording layer, a light reflecting layer; wherein the
recording layer (a) comprises a (i) a metallized azo
ether dye having an azo group linking a substituted
3-hydroxypyridine nucleus to a phenyl nucleus wherein the
phenyl nucleus has an ether substituent ortho to the azo
group and said phenyl nucleus is free of strong electron
withdrawing groups and (ii) a cyanine dye and (b) has, when
unrecorded, a refractive index at a selected wavelength from
400 to 660 nm, comprising a real part (n) greater than 1.8
and an imaginary part (k) less than 0.2.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Ichikawa et al. (Ichikawa) 4,906,498 Mar. 6, 1990
Takahashi et al. (Takahashi) 4,939,011 Jul. 3, 1990
Chapman et al. (Chapman) 5,500,325 Mar. 19, 1996
Bailey et al. (Bailey) EP 0 053 037 A2 Jun. 2, 1982
Appeal No. 2000-1433
Application No. 09/027,074
Claims 1 and 8-11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Chapman in view of Bailey; and claims
1-11 stand correspondingly rejected over these references and
further in view of Takahashi and Ichikawa.
We cannot sustain either of the above-noted rejections.
Chapman discloses an optical recording element having a
metallized azo dye of the type here-claimed except that patentee
expressly teaches that the phenyl nucleus of his dye includes an
electron withdrawing group (e.g., see the paragraph bridging
columns 2 and 3 and the paragraph bridging columns 3 and 4)
whereas appealed claim 1 requires that the phenyl nucleus be free
of electron withdrawing groups. In this regard, Bailey discloses
a photographic photosensitive silver halide element having a
metallized azo dye at least similar to those disclosed by Chapman
and claimed by the appellants wherein the phenyl nucleus of the
dye may include various types of substituents some of which are
electron withdrawing and some of which are not electron
withdrawing. According to the examiner “[i]t would have been
Appeal No. 2000-1433
Application No. 09/027,074
ring, such as sulphonamido, alkylsulphonyl used in the examples
of Chapman . . . , other groups [i.e., which are not electron
withdrawing] based upon their disclosed equivalence by the Bailey
. . . reference” (answer, page 4).
It is well established that, when prior art references
require selective combination to render obvious a subsequent
invention (as here), there must be some reason for the
combination other than the hindsight gleaned from the invention
itself. Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 551 (Fed. Cir. 1985). That is, something in
the prior art as a whole must have suggested the desirability,
and thus the obviousness, of making the combination. Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
In the case at bar, the Chapman and Baily references applied
by the examiner would not have suggested the desirability, and
thus the obviousness, of combining their teachings in such a
manner as to replace the electron withdrawing groups on the
Appeal No. 2000-1433
Application No. 09/027,074
groups in question are equivalent to one another. While these
groups may be equivalent in Bailey’s context of a metallized azo
dye in a photographic photosensitive silver halide element, the
Bailey reference certainly does not establish any such
equivalency in Chapman’s context of a metallized azo dye in an
optical recording element.
Particularly when viewed from this last-mentioned
perspective, the modification to Chapman proposed by the examiner
and needed in order to achieve the here-claimed invention is not
supported by the applied reference evidence. Stated otherwise,
the applied references contain nothing to support the conclusion
that an artisan would have found it desirable to replace the
electron withdrawing group in the metallized azo dye of Chapman’s
optical recording element with a group which is not electron
withdrawing in accordance with Bailey’s teachings. The
evidentiary absence of such desirability is particularly
egregious in this instance due to the fact that this modification
of Chapman is directly contrary to patentee’s express teaching
Appeal No. 2000-1433
Application No. 09/027,074
In summary, the Chapman and Bailey references fail to
establish a prima facie case of obviousness with respect to the
optical recording element defined by the appealed claims. For
this reason and because the Takahashi and Ichikawa references
have not been relied upon by the examiner for supplying the above
discussed deficiencies of Chapman and Bailey, we cannot sustain
either of the Section 103 rejections advanced on this appeal.
The decision of the examiner is reversed.
REVERSED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 2000-1433
Application No. 09/027,074
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