Ex Parte Endoh et al

Board of Patent Appeals and Interferences

May 28, 2010

10239188 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SOHMEI ENDOH and AYUMI KONISHI
____________

Appeal 2009-009218
Application 10/239,188
Technology Center 2600
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Decided: May 28, 2010
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Before JOHN C. MARTIN, MAHSHID D. SAADAT,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, 5, 15, 16, 18, and 19. Claims 3, 6-14, 17, and 20 have been
canceled. An oral hearing was conducted on this appeal on April 20, 2010.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2009-009218
Application 10/239,188

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STATEMENT OF THE CASE
Appellants’ invention relates to an optical recording medium having a
groove and plural pits formed in a circumference direction. The groove has
a U-shaped cross section and is shallower than a depth of the pits.
(Specification 8.)
Independent Claim 1 reads as follows:
1. An optical recording medium comprising:

a substrate having a groove and plural pits formed and
arranged dispersedly in a circumference direction thereon,

wherein the groove is formed to have a U-shaped cross
section which is shallower than a depth of the pits, said U-
shaped cross section having an open end opposite a bottom
including a flat area, the U-shaped cross section being separated
by two opposing sides that taper inwardly, each opposing side
having a first portion tapering at a first angle from the open end
toward a transition point, and a second portion tapering at a
second angle from the transition point toward the bottom, the
second angle being smaller than the first angle, said two
opposing sides being spaced apart by said bottom so as not to
converge, and the groove of the optical recording medium has a
ratio of a bottom width to an aperture width in the U- shaped
groove to be set to 17% or more.

Claims 1, 2, 4, 5, 15, 16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Appellants’ Admitted Prior Art (APA)
shown in Figure 7 of the Application.
We make reference to the Briefs and the Answer for the respective
positions of Appellants and the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments
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Application 10/239,188

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which Appellants did not make in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Under 35 U.S.C § 103(a), has the Examiner erred in determining that
modifying the APA would have been obvious to one of ordinary skill in the
art to teach or suggest the claimed a ratio of a bottom width of the groove to
an aperture width in the U-shaped groove to be 17% or more?

ANALYSIS
The Examiner asserts that the groove 305 in Appellants’ Figure 7 is
shown to have a U-shaped cross section and an open end opposite a bottom
which includes a flat area (Ans. 3). The Examiner acknowledges that APA
does not disclose a ratio of a bottom width of the groove to an aperture width
in the U-shaped groove to be 17% or more (Ans. 4). The Examiner also
asserts that forming a groove having a bottom to aperture width ratio of 17%
or more would have been obvious to one of ordinary skill in the art because
Appellants provided no evidence that such width ratio is critical or yields
unexpected results (id.).
Appellants do not challenge the Examiner’s finding that the grooves
shown in Appellants’ prior art Figure 7 have flat bottoms. Appellants
merely contend (App. Br. 4; Reply Br. 1-2) that the discussion of prior art in
the instant application does not identify that a ratio of a bottom width to an
aperture width in a U-shaped groove is a result effective variable.
Appellants conclude that, following the standard set forth in In re Antonie,
559 F.2d 618, (CCPA 1977), determination of the optimum or workable
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range of such ratio cannot be characterized as routine experimentation (App.
Br. 5; Reply Br. 3).
In response, the Examiner points to page 6 of Appellants’
Specification where the advantages of U-shaped grooves or grooves having
a wide bottom are identified as well known (Ans. 5). The Examiner further
asserts that Appellants’ Specification does not indicate that any unexpected
results are obtained from grooves having a bottom to aperture ratio of 17%
or more (id.).
Upon reviewing the description of the prior art and the prior art Figure
7 in Appellants’ Specification, we find ourselves in disagreement with the
Examiner that the bottom to aperture ratio of 17% or more is non-critical and
would have been obvious as a matter of routine experimentation. In fact, the
Specification does not discuss an opening ratio of the APA’s flat bottom
width to an aperture width and it cannot be determined that such opening
ratio was even important or known at the time of the APA. Therefore, as
argued by Appellants (App. Br. 4-5; Reply Br. 3), modifying the bottom to
aperture ratio would not have been obvious to one of ordinary skill in the art
because the claimed range has not been identified to be a result effective
variable.

CONCLUSION
On the record before us and in view of the analysis above, we find
that the Examiner erred in finding that modifying the APA to arrive at the
claimed invention would have been obvious to one of ordinary skill in the
art. Therefore, we do not sustain the 35 U.S.C. § 103 rejection of claims 1,
2, 4, 5, 15, 16, 18, and 19.
Appeal 2009-009218
Application 10/239,188

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ORDER
The decision of the Examiner rejecting claims 1, 2, 4, 5, 15, 16, 18,
and 19 is reversed.

REVERSED

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OBLON, SPIVAK, MCCLELLAND
MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314