Ex Parte Garcia

Board of Patent Appeals and Interferences

Mar 25, 2011

11145039 (B.P.A.I. Mar. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/145,039 06/06/2005 J. Anthony Garcia 1561 3520
33055 7590 03/25/2011
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
MILLER, BRIAN E
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
03/25/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte J. ANTHONY GARCIA
_____________

Appeal 2009-011669
Application 11/145,039
Technology Center 2600
____________

Before MAHSHID S. SAADAT, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011669
Application 11/145,039

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-7 and 9-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s Figure 1 is reproduced below:

Appellant’s Figure 1 and claimed invention are directed to an optical-
based storage media provided with a raised ring along the outer perimeter to
protect it against damage such as scratches when placed on flat surfaces.
See Fig. 1; Spec. 2, 4.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An optical-based digital storage media comprising:
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Application 11/145,039

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an optical media disc having an access surface through which an
optical reading device accesses digital information stored thereon through a
read or write condition; and,
an outer protective barrier circumscribing an outer perimeter of said
optical media disk, said barrier comprises a width approximating 3/32 inch.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tiefensee US 4,633,458 Dec. 30, 1986
Correa US 2004/0081070 A1 Apr. 29, 2004
The following rejections are before us for review:
1. The Examiner rejected claims 1-7 and 9-20 under 35 U.S.C. §
103(a) as being unpatentable over Correa.
2. The Examiner rejected claims 1-7 and 9-20 under 35 U.S.C. §
103(a) as being unpatentable over Tiefensee.

ISSUE
The pivotal issue is whether either of the individually applied
references of Correa or Tiefensee teaches or suggests “an outer protective
barrier circumscribing an outer perimeter of said optical media disk” as
recited in representative claim 1.

PRINCIPLE OF LAW
“[A] drawing in a utility patent can be cited against the claims of a
utility patent application even though the feature shown in the drawing was
unintended or unexplained in the specification of the reference patent.” In re
Aslanian, 590 F.2d 911, 914 (CCPA 1979) (citations omitted).
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ANALYSIS
Analysis of the rejection of claims 1-7 and 9-20 under 35 U.S.C. §
103(a) as being unpatentable over Correa
Appellant argues claims 1-7 and 9-20 as a group (App. Br. 5-6).
Accordingly, we select independent claim 1 as representative of the group,
and claims 2-7 and 9-10 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant argues (App. Br. 6) that Correa does not teach that the inner
and outer rings are elevated. Appellant (App. Br. 6) argues that while
Correa’s Figure 2 shows an inner ring, such an element is in error based on a
search of the prior art. Appellant further argues that Correa’s and
Appellant’s inventions (App. Br. 6) are distinct because the former’s inner
ring surrounds a non-recording portion between it and a center hole and the
latter’s inner ring directly surrounds the spindle hole.
We are not persuaded by Appellant’s arguments because claim 1 does
not recite that the inner and outer rings are elevated, nor does claim 1 recite
that the inner ring directly surrounds the spindle hole. Thus, Appellant’s
arguments are not commensurate in scope with the claim language. Correa
teaches “an outer protective barrier circumscribing an outer perimeter of said
optical media disk” as recited in claim 1 as shown in Correa’s Figure 2.
We note that Correa’s indication of an inner ring, as shown in
Correa’s Figures 1 and 2, constitutes sufficient evidence to meet the claimed
inner ring in dependent claims because our reviewing court has explained
that a feature shown in the drawing is sufficient evidence even if unintended
or unexplained in the specification of the reference patent. Aslanian, 590
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F.2d at 914. Thus, Figure 2 showing an inner and an outer protective ring is
sufficient evidence to meet the respective claim limitations.
Accordingly, we will affirm the Examiner’s rejections of claims 1-7
and 9-20 under 35 U.S.C. § 103(a) as being unpatentable over Correa.
Analysis of the rejection of claims 1-7 and 9-20 under 35 U.S.C. §
103(a) as being unpatentable over Tiefensee
Appellant argues claims 1-7 and 9-20 as a group (App. Br. 7-8).1
Accordingly, we select independent claim 1 as representative of the group,
and claims 2-7 and 9-10 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant repeats the same arguments as above with respect to the
Correa reference for the Tiefensee reference (App. Br. 7-8). We are again
not persuaded by Appellant’s arguments as they are not commensurate in
scope with claim 1. Appellant’s amendment with respect to a “concentric
elevation” has not been entered by the Examiner, and thus, is not before us
for review.
We also note that Appellant’s argument regarding the “inner ring
having a 1/8 to a 1/64 - inch width” (App. Br. 7) is misplaced, because
Appellant’s claims 4, 6, 11, 13, and 18 which recite the dimensions of 1/64
to 1/8 inch, refer to the “distance” and not width.2 We further agree with the
Examiner’s contention (Ans. 8-9) that one skilled in the art would have

1 Appellant’s arguments regarding Tiefensee appear on labeled pages 1 and
2, but this is an inadvertent error as they should be pages 7 and 8.
2 We note that while claim 20 recites width, this must be an inadvertent error
as the Specification (Spec. 4-5) refers to1/8 to1/64 inch in reference to
height—not width.
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Application 11/145,039

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provided an appropriate width so that the dimension is not so thick as to take
away potential data area or too thin to cause the barrier to break.
Accordingly, we will affirm the Examiner’s rejections of claims 1-7
and 9-20 under 35 U.S.C. § 103(a) as being unpatentable over Correa.

CONCLUSION
The individually applied references of Correa or Tiefensee teach “an
outer protective barrier circumscribing an outer perimeter of said optical
media disk” as recited in representative claim 1.

ORDER
The decision of the Examiner to reject claims 1-7 and 9-20 is
affirmed.
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).

AFFIRMED

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