Ex Parte Dietz et al

Board of Patent Appeals and Interferences

Jan 4, 2010

10324515 (B.P.A.I. Jan. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY ALAN DIETZ, WALID KOBROSLY, and NADEEM
MALIK
____________________

Appeal 2009-004259
Application 10/324,5151
Technology Center 2600
____________________

Decided: January 4, 2010
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is IBM Corporation.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 5, 7, 8, 12, and 13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention relates to a compact optical recording disc and
method of producing the compact optical recording disc including a primary
section having a read-only spiral track of permanent digital data recording
and an ancillary section having a read-write spiral track enabling a user to
digitally record data which personalizes the recording disc to the needs of
the user. Both the read-write and read-only spiral tracks sequence outwardly
from the center of the optical recording disc. The read-only spiral track
comprises a layer of sequential bumps defining the permanent digital data
recording pattern, and the read-write spiral track extension comprises a
smooth layer of laser beam sensitive material, the material reversibly
darkens upon exposure to define the digital data recording pattern (Abstract,
Spec. 4:4-23).
Claim 1 is exemplary:
1. A compact optical recording disc comprising:
a primary section including a read-only permanent digital data
recording on a spiral track comprising a layer
of sequential bumps defining the permanent digital data
recording pattern of an electronic consumer media
presentation; and
an ancillary read-write section, on a spiral track
extension continuous with said spiral track comprising a
smooth layer of laser beam sensitive material, said material
reversibly darkens upon exposure to define the digital data
recording pattern enabling a user to digitally record data
to thereby personalize the recording disc with comments and
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annotations according to the needs of the user;
wherein:
said read-write spiral track extension sequences
outwardly from the center of said optical recording disc;
and
said read-only spiral track sequences outwardly
continuously from the end of said track extension.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ohga US 5,305,301, Apr. 19, 1994
DeCusatis US 6,269,064 B1 Jul. 31, 2001
Zaharris US 6,738,333 B1 May 18, 2004
Hay US 7,020,663 B2 Mar. 28, 2006
Nee US 7,045,188 B2 May 16, 2006

The Examiner rejected claims 1, 7, and 8 under 35 U.S.C. § 103(a)
based upon the teachings of Zaharris, Nee, and Hay.
The Examiner rejected claims 5 and 12 under 35 U.S.C. § 103(a)
based upon the teachings of Zaharris, Nee, Hay, and DeCusatis.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) based upon
the teachings of Ohga, Nee, and DeCusatis.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed Jan. 21, 2008), the Reply Brief
(filed Jun. 16, 2008) and the Examiner’s Answer (mailed Apr. 17, 2008) for
their respective details.

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ISSUES
Appellants contend that there is no suggestion in Nee that the teaching
of Zaharris could be used to form a read-write portion for personalization of
pre-recorded media discs (Ans. 9). Appellants further contend that Hay only
discloses audio annotation (App. Br. 11). Moreover, Appellants contend
that Ohga discloses an area of read-only data and an adjacent area for a
printed record label, which is not the same as an area of read-only data
adjacent to an area of read/write data for personalization of a pre-recorded
media discs (App. Br. 12).
The Examiner finds that Zaharris teaches a compact optical recording
disc that includes a primary section having a read-only spiral track and a
secondary section having a read-write section wherein the user may digitally
record data to personalize the disk (Ans. 3-4). The Examiner finds that Nee
discloses a smooth layer of laser beam sensitive material (organic dye), that
darkens upon exposure of a laser to define a digital data-recording pattern
(Ans. 4). The Examiner finds that Hay teaches a read-write section that
enables the user to annotate the presentation with personal comments and
annotation (Ans. 5). Finally, the Examiner finds that Ohga teaches a pre-
recorded media disc having an area of read-only data adjacent to an area of
read/write data for annotation of the pre-recorded media discs (Ans. 11-12).
The contentions of Appellants and the Examiner present us with the
following three issues:
1. Did Appellants show that the Examiner erred in finding that the
teaching of Zaharris could be combined with the teaching of Nee to form a
read-write portion for personalization of pre-recorded media discs?
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2. Did Appellants show that the Examiner erred in finding that Hay
teaches a read-write section that enables the user to annotate a presentation
with personal comments and annotations in text format?
3. Did Appellants show that the Examiner erred in holding that Ohga
teaches compact optical recording disc having a primary read-only section
and an ancillary read/write section?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a compact
optical recording disc and method of producing the compact optical
recording disc including a primary section having a read-only spiral track of
permanent digital data recording and an ancillary section having a read-write
spiral track enabling a user to digitally record data which personalizes the
recording disc to the needs of the user. Both the read-write and read-only
spiral tracks sequence outwardly from the center of the optical recording
disc. The read-only spiral track comprises a layer of sequential bumps
defining the permanent digital data recording pattern, and the read-write
spiral track extension comprises a smooth layer of laser beam sensitive
material, the material reversibly darkens upon exposure to define the digital
data recording pattern (Abstract, Spec. 4:4-23).
Zaharris
2. Zaharris teaches a writeable system area and a writeable data
area, wherein a write once read many times data zone means that data
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written in area 12 cannot be erased or moved but can be read many times
(col. 2, ll. 14-19, col. 4, ll. 15-36, col. 4, ll.15-18).
3. Zaharris teaches a compact optical disk 10 that contains two
basic areas: the mastered areas, which include areas 102, 104, 106, 108, 125,
126, and 128; and the writable area 12 (col. 6, ll. 47-49).
4. Zaharris teaches that the user may read the mastered data from
the mastered area such as a music video and may write data to the writable
area (col. 4, ll.15-23).
5. Zaharris teaches a phase-change optical material that upon
heating with a laser beam changes from an amorphous to a crystalline phase
(col. 5, ll. 13-18).
Nee
6. Nee discloses a smooth layer of laser beam sensitive material
(organic dye), that darkens upon exposure to a laser (col. 2, l. 58-col. 3, l. 2,
col. 11, ll. 35-54).
Hay
7. Hay teaches a read-write section on computer readable medium
that enables the user to annotate a stored presentation or book with personal
comments and annotation in text format (col. 7, ll. 56-58, and col. 8, ll. 16-
28).
Ohga
8. Ohga discloses forming a layer including a spiral track of
sequential bumps defining a permanent digital data-recording pattern on a
substrate of a disc, masking 6, 7, outermost 5 and innermost 4 portions of
the substrate of a disc, and applying a metallic layer 8 on the unmasked
section of the disc such that the metallic layer 8 does not expand to the
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outermost and innermost portions of the substrate so that the metallic layer is
not exposed to air, wherein it becomes oxidized (Figs.1-3, col. 2, ll. 52 – 61,
col. 3, ll. 18 – 28, and col. 3, ll. 34 - 41).
9. Ohga discloses applying an adhesive layer 10 over the metallic
layer 8 and then applying a protective layer 12 is over the entire surface of
the disc, wherein printed text 13 can be printed on protective layer 12 which
may include music titles, details of artists and composers relating to the
information signal such that the protective layer serves as a record label (see
Figs. 4-6, col. 3, ll. 29-44).
DeCusatis
10. DeCusatis discloses having a plurality of layers superimposed
upon each other in a DVD format, each layer including a spiral track of
sequential bumps defining a permanent digital data-recording pattern (col. 1,
ll. 39 – 60, col. 12, ll. 17 -26).

PRINCIPLES OF LAW
The Supreme Court has stated that “the obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Further, the Court stated “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416. “One of the ways in which a patent’s
subject matter can be proved obvious is by noting that there existed at the
time of the invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” Id. at 419-20.
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The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
Claims 1, 7, and 8
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that the Examiner has erred in combining the
teachings of the references since there is nothing in the three references
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suggestive of the combination of the teachings to provide their claimed
invention (App. Br. 9). Appellants further contend that there is no
suggestion in Nee that the teaching of Zaharris could be used to form a read-
write portion for personalization of pre-recorded media discs (App. Br.. 10).
Appellants contend that Hay only discloses audio annotation (App. Br. 11).
The Examiner finds that Zaharris teaches a compact optical recording
disc that includes a primary section having a read-only spiral track and a
secondary section having a read-write section wherein the user may digitally
record data to personalize the disk (Ans. 3-4, FF 2-4). The Examiner finds
that Nee discloses a smooth layer of laser beam sensitive material (organic
dye), that darkens upon exposure of a laser to define a digital data-recording
pattern (Ans. 4, FF 6). The Examiner finds that Hay teaches a read-write
section that enables the user to annotate the presentation with personal
comments and annotation in text format (Ans. 5, FF 7). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to have combined the concept of adding comments and annotating a CD
taught by Hay to the disc of Zaharris since the disc of Zaharris already
allows users to write data on it (Ans. 9).
We agree with the Examiner’s findings, with one exception.
Although the Examiner indicates that Zaharris does not disclose a read-write
spiral track extension comprising a smooth layer of laser beam sensitive
material, we find that Zaharris does disclose a phase-change optical material
that upon heating with a laser beam changes from an amorphous to a
crystalline phase, which is similar to that which is described in column 11 of
Nee (Ans. 4, FF 5, 6 (emphasis added)). Further, Hay discloses written text
formatted annotation, not just audio annotation (FF 7). We conclude that it
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would have been obvious to combine Zaharris and Nee in order to provide
an efficient means of detecting and recording 1’s and 0’s on the disc (Ans.
5). Further, we conclude that it would have been obvious to combine the
teachings of Zaharris, Nee, and Hay, since it would enhance the learning
experience of the users if they can take notes while having an audio/video
presentation (Ans. 5).
We therefore find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103 and, therefore, affirm the rejection of claims 1, 7, and
8.
Claims 5 and 12
Appellants argue that claims 5 and 12 are patentable over the cited
prior art because the claims respectively depend from claims 1 and 8 (App.
Br. 9). As noted supra, however, we find that the combination of Zaharris,
Nee, and Hay teaches all the features of independent claims 1 and 8. We,
therefore, affirm the Examiner’s rejection of claims 5 and 12 under 35
U.S.C. § 103, for the same reasons expressed with respect to parent claims 1
and 8, supra.
Claim 13
The Examiner finds that Ohga teaches a pre-recorded media disc
having an area of read-only data adjacent to an area of read/write data for
annotation of the pre-recorded media discs (Ans. 11-12).
Appellants contend that Ohga discloses an area of read-only data and
an adjacent area for a printed record label, which is not the same as an area
of read-only data adjacent to an area of read/write data for personalization of
a pre-recorded media discs (App. Br. 12).
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We agree with Appellants’ position. Although Ohga discloses
masking 6, 7 outermost 5 and innermost 4 portions of the substrate of a disc
to apply a metallic layer 8 over the permanent digital data-recording pattern,
the printed text 13 printed on the protective layer 12 serves as a record label
(FF 8, 9). We find that printing printed text 13 on protective layer 12 does
not equate to forming an ancillary read-write section of the disk as required
by claim 13 (FF 8, 9).
We therefore reverse the Examiner’s rejection of claim 13 under 35
U.S.C. § 103.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in finding that the
teachings of Zaharris could be combined with the teachings of Nee to form a
read-write portion for personalization of pre-recorded media discs.
Appellants have not shown that the Examiner erred in finding that
Hay teaches a read-write section that enables the user to annotate a
presentation with personal comments and annotations in text format.
Appellants have shown that the Examiner erred in holding that Ohga
teaches compact optical recording disc having a primary read-only section
and an ancillary read/write section.

ORDER
The Examiner’s rejection of claims 1, 5, 7, 8, and 12 is affirmed. The
Examiner’s rejection of claim 13 is reversed.
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).
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AFFIRMED-IN-PART

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