Ex Parte Dietz et alDownload PDFBoard of Patent Appeals and InterferencesJan 4, 201010324515 (B.P.A.I. Jan. 4, 2010) Copy Citation 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 ____________________ 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. Appeal 2009-004259 Application 10/324,515 2 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 Appeal 2009-004259 Application 10/324,515 3 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. Appeal 2009-004259 Application 10/324,515 4 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? Appeal 2009-004259 Application 10/324,515 5 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 Appeal 2009-004259 Application 10/324,515 6 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 Appeal 2009-004259 Application 10/324,515 7 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. Appeal 2009-004259 Application 10/324,515 8 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 Appeal 2009-004259 Application 10/324,515 9 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 Appeal 2009-004259 Application 10/324,515 10 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). Appeal 2009-004259 Application 10/324,515 11 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). Appeal 2009-004259 Application 10/324,515 12 AFFIRMED-IN-PART gvw IBM CORPORATION INTELLECTUAL PROPERTY LAW 11501 BURNET ROAD AUSTIN, TX 78758 Copy with citationCopy as parenthetical citation