Ex Parte KAM et al

Board of Patent Appeals and Interferences

Jun 25, 2002

08826112 (B.P.A.I. Jun. 25, 2002)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KAM K. KAM,
WILLIAM C. MITCHELL, and MARK A. ARPS
_____________
Appeal No. 2000-1243
Application 08/826,112
______________
ON BRIEF
_______________
Before MARTIN, DIXON, and GROSS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
final rejection of claims 13-28, all of the pending claims. We
reverse.
A. The invention
The invention is a dual-layer pre-recorded optical image
storage disc employing a partially reflective layer formed of
antimony sulfide, which can take the form of antimony (III)
sulfide (Sb2S3) or antimony (V) sulfide (Sb2S5). Specification
Appeal No. 2000-1243
Application 08/826,112
2
at 2, ll. 21-22. Figures 1 and 5, which represent two
embodiments of the invention, are reproduced below.
In
both embodiments, the partially reflective layer (16, 56)
overlies a pit pattern (15, 55) formed in the upper surface of a
transparent substrate (14, 54). Overlying the partially
reflective layer (16, 56) is a transparent spacer layer (18, 58)
whose upper surface has formed therein another pit pattern (19,
59) on which is formed a highly reflective layer (20, 60), such
as aluminum. Specification at 6, ll. 3-8. The term "pit
pattern" refers to "any pattern of pits or grooves that is
capable of storing information, be it data, servo or tracking
information, format information, etc." Id. at 4, ll. 18-20. The
Figure 1 embodiment employs a single detector 32 and a single
laser 30 which can be selectively focused onto either of the pit
Appeal No. 2000-1243
Application 08/826,112
3
patterns. Id. at 5, ll. 4-8. In the Figure 5 embodiment, lasers
70 and 74 and detectors 80 and 84 use different wavelengths (780
nm and 650 nm) to read pit patterns 59 and 55, respectively.
This permits the same disk to be read in either a standard 780 nm
CD-ROM drive or in a standard 650 nm DVD-ROM drive. Id. at 3,
ll. 10-20.
Figure 4, reproduced below, shows the apparent
reflectivities obtained when selectively reading both layers with
a wavelength of 650 nm (the Figure 1 embodiment). The filled
circles represent the apparent reflectivity of the Sb 2S3
partially reflective layer 16 and the open circles represent the
apparent reflectivity of an AlCr highly reflecting layer 20. The
apparent reflectivities vary by less than 0.12 over a range of
thickness of the Sb2S3 layer from about 27 to 80 nm and are even
more closely balanced over the ranges from 30 to 40 nm and 65 to
75 nm. Id. at 9, ll. 19-26.
Figure 6, reproduced
below, shows the apparent
Appeal No. 2000-1243
Application 08/826,112
4
reflectivities of the Sb2S3 partially reflective layer 56 as
measured at 650 nm and of the AlCr highly reflective layer 60 as
measured at 780 nm (the Figure 5 embodiment). For Sb 2S3 layer
thicknesses ranging between 128 and 140 nm, the reflectivities of
the highly reflective layer and the partially reflective layer
are greater than 70% and 20%, respectively, as required by the
CD-ROM and DVD-ROM specifications. Id. at 11, ll. 15-27.
The specification
states that Sb2S3 is
also desirable because of its relatively high melting point,
which simplifies the process of coating by sputtering and makes
the resulting film thermally stable. Id. at 11, ll. 28-30.
Appellants attribute the success of using antimony sulfide
as the partially reflecting layer to the fact that its index of
refraction has a high (>3.0) real component (n) for a range of
wavelengths from 600 to 740 nm and a very low imaginary component
Appeal No. 2000-1243
Application 08/826,112
1 Patent No. 4,360,908 (copy enclosed) explains that the
imaginary component of the index of refraction is also known as
the extinction coefficient or absorption parameter (col. 5, ll.
47-52).
2 Claim 19 is incorrectly reproduced in the Appendix to
Appellants' brief: "antimony (III) sulfide" should read "antimony
(V) sulfide."
5
(K)1 over a range of wavelengths from 600 to 800 nm, as shown in
Figures 2 and 3 (not reproduced below). Id. at 8, ll. 3-10.
B. The claims2
Claim 13, which is broader than the other independent claim,
claim 23, reads as follows:
13. A dual layer pre-recorded optical storage
disc, comprising, in order:
a transparent substrate having a first data pit
pattern in one major surface thereof;
a non-recordable partially reflective layer,
adjacent the first data pit pattern, comprising
antimony sulfide;
a transparent spacer layer;
a second data pit pattern; and
a highly reflective layer provided adjacent the
second data pit pattern.
In view of Horikago's teaching (discussed infra) that data
can be written into an antimony sulfide layer by light having a
wavelength of 400 to 500 nm, the term "non-recordable" as used in
claim 13 is understood to mean that light is not used to write
data into the antimony sulfide layer.
Appeal No. 2000-1243
Application 08/826,112
3 Our understanding of this reference is based on the
English language translation that accompanied the declaration of
inventor Mitchell, entitled "Affidavit of Dr. William C. Mitchell
Under 37 C.F.R. § 132" (hereinafter "Mitchell Decl."), which was
filed with Appellants' "After-Final Response" (Paper No. 10).
6
C. The references and rejections
The examiner relies on the following references:
Yamada et al. (Yamada) 4,383,029 (US) May 10, 1983
Nagashima et al. (Nagashima) 5,134,604 (US) July 28, 1992
Horikago et al. (Horikago)3 6-187662 (Japan) July 8, 1994
Dubs et al. (Dubs), "Double your capacity with DVD,"
September 15, 1995.
Claims 13-18, 23, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable for obviousness over Nagashima in view
of Horikago.
Claims 19 and 28 stand rejected under § 103(a) as
unpatentable for obviousness over Nagashima in view of Horikago
and Yamada.
Claims 20-22 and 24-26 stand rejected under § 103(a) as
unpatentable for obviousness over Nagashima in view of Horikago
and Dubs.
Claims 13, 22, and 23 also stand provisionally rejected for
obviousness-type double patenting over independent claims 12 and
25 and dependent claim 23 of Kam et al. Application 08/826,111
considered with Horikago. Answer at 4. Because claim 23 of the
Appeal No. 2000-1243
Application 08/826,112
4 The Appendix to this decision includes a copy of claims
12, 22, 23, and 25 from the '111 application as amended by the
Amendment Under 37 C.F.R. § 1.116 (Paper No. 9) received on
July 16, 1998, and approved for entry by the examiner in Paper
No. 10 (at 2).
7
'111 application depends on claim 12 via claim 22, the rejection
is being treated as based on claims 12, 22, 23, and 25 of the
'111 application.4
D. The § 103(a) rejections
Nagashima's Figure 1, reproduced below, shows a dual-layer,
pre-recorded, optical data medium which resembles Appellants'
Figure 1 embodiment in that the same wavelength is used for
reading both layers. More particularly, Nagashima's medium
includes a transparent substrate 1 of glass or plastic, a semi-
transparent film 3 overlying a data surface 2 of substrate 1, a
transparent material layer 4 overlying a semi-transparent film 3
and having a data surface 5 therein, a non-transparent reflective
film 6 overlying data surface 5, and a protection layer 10
(unnumbered in figure) over film 6 (col. 3, l. 54 to col. 4,
l. 2). The type of plastic suitable for use as substrate 1 is
not specified.
Appeal No. 2000-1243
Application 08/826,112
8
Nagashima's discussion of semi-
transparent film 3 is limited to
explaining that it is formed on data surface 2 by vacuum
deposition (col. 6, ll. 62-64) and is a dielectric material with
a refractive index that differs from that of the transparent
substrate material (col. 7, ll. 21-22). While Nagashima gives
the index of refraction for the substrate as approximately 1.5
(col. 4, ll. 48-49), no value is given for the index of
refraction of the semi-transparent film.
The examiner cites Horikago as evidence of the obviousness
of forming Nagashima's semi-transparent film 3 of antimony
sulfide. Horikago's Figure 1, reproduced below, shows an optical
recording medium having three recording layers, 2, 4, and 6
responsive to respective laser beams 8-10 having wavelengths of

2,
4, and
6.
Appeal No. 2000-1243
Application 08/826,112
9
The transmissivities
of the recording layers
are described as follows:
[R]ecording layer (2) must transmit lights of (
4) and
(
6). Although it is ideal to transmit 100%, about 50%
will allow operation as well. Then, although recording
layer (4) must transmit light of (
6), it is all right
whether it transmits light of (
2) or not. The last
recording layer (6) may record and replay with laser
beam of (
6); and it is all right that it does or does
not absorb lights of (
2) and (
4).
Translation at 6, 1st full para. As regards wavelength
2, we
understand this passage to mean that it is immaterial whether
layer 2 is partially reflective and partially transmissive with
respect to that wavelength, not as teaching that the materials
disclosed as suitable for forming layer 2 are in fact partially
reflective and partially transmissive with respect to that
wavelength.
Appeal No. 2000-1243
Application 08/826,112
5 We agree with Appellants (Reply Brief at 3) that the
examiner is incorrect to characterize layer 2 when used in the
"write once" mode as being "non-recordable." Answer at 12.
10
Recording layer 2 can be formed of a chalcogenide material
such as Sb2S3, which allows recording and replay with light
having a wavelength from 400 nm to 500 nm. Translation at 7, 1st
para. If rewritability is required, the layer should be
sandwiched between protective films in the manner shown in
Figure 2 (not reproduced herein). Id. If only a "write once"
capability is required, these protective films can be omitted.
Id.5 Recording layer 4 is formed of a different material from
layer 2 and is capable of recording and replay with light of
600 nm, while layer 6 is formed of yet another material and is
capable of recording and replay with light of 780 nm to 830 nm.
Id., 2d para. Horikago additionally discloses that layer 2 can
be formed on a pre-recorded pit pattern representing tracking or
address signals:
As illustrated in the Figure 1, [the invention] uses a
transparent substrate (1) made of polycarbonate
substrate of injection molding, transparent plastic
substrate by (2P method) using UV ray curing resin, or
glass substrate. Laser beams (8), (9), and (10) are
entered from substrate (1) side. On these substrate
surfaces (1), groove or tracking purpose or address
signal pit[s] are transferred (not illustrated in the
Figure 1). On this, first recording layer (2) is
formed through an evaporation method or a sputtering
method.
Appeal No. 2000-1243
Application 08/826,112
11
Translation at 5, last para.
While Horikago's antimony sulfide layer is partially
reflective in the sense that it reflects one wavelength (
2)
while transmitting others (
4 and
6), it is not disclosed as
being partially reflective and partially transmissive with
respect to the same wavelength, as is required of the semi-
transparent film (3) in Nagashima's recording medium, wherein the
same wavelength is used to read the semi-transparent film and the
reflective film (6). The examiner, apparently recognizing this
deficiency, argues that
[k]nowledge of this material [antimony sulfide] was
clearly known by Horikago et al as the index of
refraction would have been required information in the
construction of the disclosed optical disc, as the
index of refraction would play a critical role in the
construction of an optical disc wherein more than one
layer would be read. Therefore Horikago et al. teach a
partially reflective layer in a dual-layer prerecorded
disc with antimony sulfide.
Answer at 11. We agree with Appellants that the examiner’s
argument fails for two reasons. The first is that it cannot be
assumed in the absence of supporting evidence that a person
skilled in the art at the time the invention was made would have
known the values of the real and imaginary components of the
index of refraction of antimony sulfide. See In re Ahlert, 424
F.2d 1088, 1091, 165 USPQ 673, 677 (CCPA 1970):
Appeal No. 2000-1243
Application 08/826,112
12
Assertions of technical facts in areas of esoteric
technology must always be supported by citation to some
reference work recognized as standard in the pertinent
art and the appellant given, in the Patent Office, the
opportunity to challenge the correctness of the
assertion or the notoriety or repute of the cited
reference. Cf. In re Cofer, 53 CCPA 830, 354 F.2d 664,
148 USPQ 268 (1966), In re Borst, 52 CCPA 1398, 345
F.2d 851, 145 USPQ 554 (1965). Allegations concerning
specific "knowledge" of the prior art, which might be
peculiar to a particular art should also be supported
and the appellant similarly given the opportunity to
make a challenge. See In re Spormann, 53 CCPA 1375,
363 F.2d 444, 150 USPQ 449 (1966).
See also In re Lee, 277 F.3d 1338, 61 USPQ2d 1430, 1435 (Fed.
Cir. 2002) (noting that In re Zurko, 258 F.3d 1379, 1385,
59 USPQ2d 1693, 1697 (Fed. Cir. 2002), explains that
"deficiencies of the cited references cannot be remedied by the
Board's general conclusions about what is 'basic knowledge' or
'common sense'").
Second, assuming for the sake of argument that one skilled
in the art would have known the values of the real and imaginary
components of the index of refraction of antimony sulfide,
Nagashima and Horikago fail to demonstrate that one skilled in
the art would have understood those values to mean that antimony
sulfide is capable of reflecting and transmitting sufficient
amounts of light of the same wavelength so as to permit it be
used to form the semi-transparent layer (3) in Nagashima.
Appeal No. 2000-1243
Application 08/826,112
6 As noted above, the term "extinction coefficient" is
another name for the imaginary component of the index of refrac-
tion.
13
Consequently, we are reversing the § 103(a) rejection of
claim 13, which is based on Nagashima in view of Horikago, as
well as the § 103(a) rejection of claims 14-17, 23, and 27, which
is also based on only those two references.
The § 103(a) rejection of claims 19 and 27 is based on
Nagashima in view of Horikago and Yamada. We agree with
Appellants (Brief at 7 n.2) that Yamada, which the examiner cites
for its teaching of using antimony (V), Sb2S5, as a recording
layer, fails to cure the above-noted deficiencies in Nagashima
and Horikago.
The § 103(a) rejection of the remaining claims, i.e., claims
20-22 and 24-26 is based on Nagashima in view of Horikago and
Dubs, which at page 1 describes a dual-layer DVD having a semi-
reflective, semi-transparent layer and a reflective layer. Dubs
explains at page 1 that materials suitable for use as the semi-
reflective layer include: "Metals with a very high ratio of
extinction coefficient k to index of refraction n (k/n>10) or
dielectrics with an index of refraction of more than n=2.59
(reflection >20%) and a small extinction coefficient (k<0.1)."6
Dubs further explains that
Appeal No. 2000-1243
Application 08/826,112
14
[f]or dielectric layers a different n/k relationship is
necessary as compared to metals. A high reflection is
created by a completely different mechanism -
interference instead of conductivity. The condition is
n>2.9 (for reflectivity >30%) with k as small as
possible.
Most dielectric layers easily reach the extinction
coefficient k smaller IE-3 at 635nm but only a few of
them have a refractive index higher than 2.9 at 635nm.
In addition, most materials fail because of massive
absorption in the UV. . . .
Dubs at 2, 1st col. Dubs also describes using a dielectric
material as the semi-reflective layer in a hybrid DVD/CD-ROM:
Dielectrics . . . are attractive because they have very
low absorption and, utilizing the interference
mechanism, may be used to realize a "Hybrid" disc.
This disc combines a conventional CD-ROM information
layer with a semitransparent DVD layer. The thickness
of this semireflective layer is adjusted to realize
semireflective conditions at the DVD wavelength while
acting as an antireflective film at 780nm. This
semireflective layer is therefore invisible in a
conventional CD-ROM player.
Id. However, Dubs does not indicate that antimony sulfide, which
is not mentioned at all, has the requisite index of refraction
and extinction coefficient to function as a semireflective layer.
Consequently, while Dubs cures the second deficiency noted above
with respect to Nagashima and Horikago, viz., their failure to
show that one skilled in the art would have understood the
relationship of the index of refraction and the extinction
coefficient to a material's suitability for use as a
semireflective film, Dubs does not cure the first deficiency,
Appeal No. 2000-1243
Application 08/826,112
7 As noted above, claim 23 of the '111 application depends
on claim 12 via claim 22.
15
viz., the failure of those references to disclose the values of
the real and imaginary components of the index of refraction of
antimony sulfide. As a result, we also cannot sustain the
§ 103(a) rejection of claims 20-22 and 24-26.
E. The provisional double patenting rejection
Claims 13, 22, and 23 stand provisionally rejected for
obviousness-type double patenting over independent claims 12 and
25 and dependent claim 23 of Kam et al.'s '111 application
considered with Horikago.7 As a result of the above-noted
deficiencies in Horikago, the double patenting rejection of
claims 13, 22, and 23 is reversed.
Appeal No. 2000-1243
Application 08/826,112
16
F. Summary
All of the rejections are reversed as to all of the appealed
claims.
REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JCM/sld
Appeal No. 2000-1243
Application 08/826,112
17
cc:
ERIC D. LEVINSON
IMATION LEGAL AFFAIRS
P.O. BOX 64898
ST. PAUL, MN 55164-0898
Enclosure: Patent No. 4,360,908
Appeal No. 2000-1243
Application 08/826,112
APPENDIX
Claims 12, 22, 23, and 25 from Kam et al. Application 08/826,111
12. A dual layer pre-recorded optical storage disc, comprising, in order:
a transparent substrate having a first data pit pattern in one major surface thereof;
a partially reflective layer comprising amorphous selenium, adjacent the first data pit
pattern, having an index of refraction having a real component, n, and an imaginary component,
K, wherein n > 2.6 and K < 0.035 at 650 nm;
a transparent spacer layer;
a second data pit pattern; and
a highly reflective layer provided adjacent the second data pit pattern.
22. The disc of claim 12, wherein the first data pit pattern contains a format designed for
use with a first disc drive having a first laser beam having a first wavelength,
1, and wherein the
second data pit pattern contains a second different format designed for use with a second
different disc drive having a second different laser beam having a second different wavelength,

2, where
2 >
1.
23. The disc of claim 22, wherein the substrate has a thickness of about 0.6 mm and the
entire disc has a thickness of about 1.2 mm.
- App. 1 -
Appeal No. 2000-1243
Application 08/826,112
25. An optical storage system, comprising:
an optical storage medium, comprising, in order:
a transparent substrate having a pattern of pits in one major
surface thereof;
a partially reflective layer comprising amorphous selenium
and having an index of refraction having a real component, n,
wherein n > 2.6, and an imaginary component, K, less than 0.035
at 650 nm;
a transparent polymer spacer layer; and
a highly reflective layer;
a focused laser beam positioned to enter the medium through the substrate;
means for adjusting focal position of the laser beam, whereby the beam may be focused
on either the partially reflective layer or the highly reflective layer; and
a photodetector positioned to detect the reflected laser beam exiting the medium.
- App. 2 -