Ex Parte Jungermann et al

Patent Trial and Appeal Board

Jul 17, 2014

11470073 (P.T.A.B. Jul. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HARDY JUNGERMANN, RALF DUJARDIN, and
STEPHAN VOLKENING
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Appeal 2012-003632
Application 11/470,073
Technology Center 2800
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal1 under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-20. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants’ claimed invention is directed to an optical storage
medium, a method of preparing the storage medium, and a method of using
such a storage medium. The storage medium includes at least one layer
comprising a photoaddessable polymer wherein data in the form of at least
one polarization hologram invisible to the human eye is incorporated into the

1 According to Appellants, the real party in interest is Bayer Innovation,
GmBH. (App. Br. 1).
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layer (Spec. ¶¶ 0002, 0003, 0034, 0047, 0056, and 0081-0088). Claim 1 is
illustrative and reproduced below:
Claim 1. An optical storage medium for storing data comprising at
least one layer comprising a photoaddressable polymer, wherein data in the
form of at least one polarization hologram invisible to the human eye is
incorporated into the layer by exposure.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Moore US 38,321 Apr. 28, 1863
Kim et al. US 6,153,272 Nov. 28, 2000
Stadler et al. US 2003/0165746 A1 Sept. 4, 2003
Uyama et al. US RE38,321 E Nov. 18, 2003
Klug et al. US 2008/0030819 A1 Feb. 7, 2008

S. Xie, A. Natansohn, and P. Rochon (Xie), Recent Developments in
Aromatic Azo Polymers Research, 5 CHEM. MATER. 403-411 (1993).

Rainer Hagen and Thomas Bieringer (Hagen), Photoaddressable Polymers
for Optical Data Storage, 13 ADV. MATER. 1805-1810 (2001).

Appellants rely on a Declaration by Dr. Stephan Völkening (Decl.)
submitted August 19, 2010.
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 7-10, 15, and 19 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Klug. Claims 3 and 4 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Klug in view of Stadler. Claim 14
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Klug.
Claims 5, 6, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klug in view of Hagen and Xie.2 Claims 11-13, 16, and

2 The Examiner refers to Xie as “Natasohn.” Ans. 8.
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17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Klug
in view of Kim. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klug in view of Uyama.
We reverse the stated rejections. Our reasoning follows.
Concerning the Examiner’s anticipation rejection of claims 1, 2, 7-10,
15, and 19, the Examiner refers to paragraphs 0032, 0037-0039, and 0055 of
Klug as describing an optical storage medium (Fig. 2D) including a
photoaddressable polymer-containing layer that stores data (275) in the form
of an invisible polarization hologram incorporated into the layer (Ans. 5).
Appellants argue that the Examiner has not established that the cited
disclosures of Klug describe an optical storage medium that includes at least
one polarization hologram invisible to the human eye that is incorporated
into a storage medium layer as required by independent claim 1, and all of
the other anticipatorily rejected claims (App. Br. 9-13; Reply Br. 4-6). We
agree.
As argued by Appellants, the Examiner’s position that paragraph 0055
of Klug describes data in the form of at least one polarization hologram
invisible to the human eye that is incorporated into a photoaddressable
polymer-containing layer of the storage medium appears to be premised on a
misreading of the cited disclosures of Klug coupled with an overly broad
construction of the subject matter required by claim 1 (App. Br. 9-13; Reply
Br. 4-6).
We determine that claim 1 when given its broadest reasonable
construction when read in light of the subject specification as it would have
been understood by one of ordinary skill in the art, requires that the claimed
optical storage medium includes a layer comprising a photoaddressable
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polymer that has a polarization hologram incorporated therein, which
hologram is invisible to the human eye. In this regard, the Specification
provides that the inventive subject matter pertains to an optical storage
medium having a storage layer comprising a photoaddressable polymer
wherein invisible polarization holograms are stored (Spec. ¶ 0034). One of
ordinary skill in the art would have understood that the claim phrase
“wherein data in the form of at least one polarization hologram invisible to
the human eye is incorporated into the layer by exposure” requires that a
polarization hologram that was invisible to the human eye was incorporated
into the layer (Spec. ¶ ¶ 0002, 0034, 0047).
As for the relied upon disclosures of Klug, the Examiner has not
articulated how the described environmental visualization features, including
the displaying of hidden information 275, that is associated with hologram
(holographic stereogram) 265 of Klug is a description of an invisible
polarization hologram that is incorporated into a layer of an optical storage
medium. As argued by Appellants, the Examiner has not established that
Klug describes a polarization type of hologram that is incorporated into a
layer of an optical storage medium, much less an invisible polarization
hologram as required by claim 1, by the citations directed to various
polarization devices that can be used in association with the hologram
recorder of Klug (App. Br. 12, 13; Reply Br. 4-6; Klug ¶¶ 0032, 0033, 0037-
0039; Spec. ¶¶ 0026- 0029; Decl. ¶¶ 7-9). Indeed, the Examiner’s failure to
specifically address the declaration evidence relied upon by Appellants is
itself reversible error.
It follows that we shall reverse the Examiner’s anticipation rejection,
on this appeal record.
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The several obviousness rejections maintained by the Examiner over
Klug alone or in view of additional prior art do not further address and/or
establish how the deficiencies in the Examiner’s base anticipation rejection
are remedied by establishing the obviousness of the features required by
claim 1. Rather, the Examiner’s obviousness rejections focus on the
additional features of the several separately rejected claims, as variously
subject to the latter rejections.
Accordingly, we shall reverse the Examiner’s obviousness rejections.

CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

cdc