Ex parte Chapman et al.

Board of Patent Appeals and Interferences

Mar 27, 2002

09084904 (B.P.A.I. Mar. 27, 2002)

On page 3 of the brief, the appellants indicate that the above1
identified application involves patentability issues similar to those of
related applications 09/027,074 (which is now also on appeal) and 09/027,078
(which is now Patent No. 6,270,943). The appellants and the examiner should
consider whether the claims in these related cases (alone or in combination
with prior art) would support an obviousness-type rejection of the claims
before us in the subject appeal.
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written for publication and is not binding precedent of the Board.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
and
CSABA A. KOVACS
_____________
Appeal No. 2000-1076
Application No. 09/084,9041
______________
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 5-14 which are all of the claims remaining in the
application.
Appeal No. 2000-1076
Application No. 09/084,904
2
The subject matter on appeal relates to an optical
recording element having a recording layer which comprises a
metallized
azo thioether dye having an azo group linking a substituted
3-hydroxypyridine nucleus to a phenyl nucleus wherein the
phenyl nucleus has a thioether substituent ortho to the azo
group and the phenyl nucleus is free of electron withdrawing
groups. Further details concerning this appealed subject
matter are set forth in representative independent claim 5
which reads as follows:
5. 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 comprises a metallized azo
thioether dye having an azo group linking a substituted
3-hydroxypyridine nucleus to a phenyl nucleus wherein the
phenyl nucleus has an thioether substituent ortho to the
azo group and is free of electron withdrawing groups on
the phenyl ring and 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 0.3.
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.
Appeal No. 2000-1076
Application No. 09/084,904
3
19, 1996
Bailey et al. (Bailey) EP 0 053 037 A2 Jun. 2,
1982
(published European Patent Application)
Appeal No. 2000-1076
Application No. 09/084,904
4
Claims 5 and 12-14 stand rejected under 35 U.S.C. § 103
as
being unpatentable over Chapman in view of Bailey; and claims
5-14 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 obvious to
substitute for the electron withdrawing groups on the
Appeal No. 2000-1076
Application No. 09/084,904
5
ring, such as sulphonamido, alkylsulphonyl used in the
examples
Appeal No. 2000-1076
Application No. 09/084,904
6
of Chapman . . . , other groups, such as alkyl, . . . [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 phenyl nucleus of Chapman’s dye with
non-electron withdrawing groups as proposed by the examiner.
In support of his contrary viewpoint, the examiner relies upon
Appeal No. 2000-1076
Application No. 09/084,904
7
Bailey as evincing that the
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 that his dye contains
an electron withdrawing group.
Appeal No. 2000-1076
Application No. 09/084,904
8
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
Appeal No. 2000-1076
Application No. 09/084,904
9
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 )
BRG:hh
Appeal No. 2000-1076
Application No. 09/084,904
10
PATENT LEGAL STAFF
EASTMAN KODAK CO.
343 STATE STREET
ROCHESTER, NY 14650-2201