Ex Parte Khruschchev et al

Patent Trial and Appeal Board

Nov 28, 2016

12737885 (P.T.A.B. Nov. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121737,885 02/25/2011
24336 7590 11/30/2016
TUTUNJIAN & BITETTO, P,C
401 Broadhollow Road, Suite 402
Melville, NY 11747
FIRST NAMED INVENTOR
Sergey Khruschchev
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PD080065 8754
EXAMINER
ALUNKAL, THOMAS D
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
11/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@tb-iplaw.com
sandy@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGEY KHRUSCHCHEV, UWE RESCHKE,
and STEP AN KIMMELMANN
Appeal2016-001083
Application 12/737,885
Technology Center 2600
Before JOSEPH L. DIXON, KAMRAN JIV ANI, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
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DECISION ON APPEAL
Appeal2016-001083
Application 12/737,885
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-9. Claim 14 has been canceled. The Examiner indicates that
claims 10-13 are allowable over the prior art if rewritten in independent
form including all the limitations of the base claims and any intervening
claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a compatible optical recording medium.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A recordable optical recording medium with at least a
recording layer with a single continuous recordable area which
does not have any embossed structures and is sensitive to a
wavelength of a recording light beam for recording data, and a
single continuous guide structure for tracking, which does only
extend over one or a few track spirals or concentric tracks,
wherein the single continuous guide structure is located outside
the single continuous recordable area.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Takazawa et al. US 2006/0188819 Al Aug. 24, 2006
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, 4, and 6-9 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Takazawa.
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Appeal2016-001083
Application 12/737,885
Claims 2 and 5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Takazawa.
ANALYSIS
In this decision, we have considered only those arguments actually
made by Appellants. Arguments that Appellants could have made but did
not make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner's position. See In re Kahn, 441F.3d977,
985-86 (Fed. Cir. 2006).
Appellants present arguments to the claims together. App. Br. 7.
Therefore, we select independent claim 1 as the representative claim for the
group and address Appellants' arguments thereto.
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Appeal2016-001083
Application 12/737,885
Appellants present general arguments to the prior art and a general
discussion of the test for obviousness. App. Br. 7-9. But, we note that the
rejection of representative independent claim 1 is based upon anticipation,
not obviousness. Appellants contend that:
Takazawa is fails to disclose or suggest the subject matter of at
least claim 1. For purposes of this Appeal, Appellant submits that
at the very least, the subject matter of independent claim 1 is
patentable and non-obvious in view of the teachings of Kim (sic,
Takazawa).
App. Br. 8. Appellants further recognize that the Examiner relies upon
Figure 37C and its corresponding description in the rejection of independent
claim 1. App. Br. 10 ("[T]he Examiner specifically rejects these claims
under 35 U.S.C. 102 based on FIG. 37c and the corresponding
description."). We find Appellants' discussion of Figure 37C to be lacking
and Appellants address Figures 31-35, rather than specifically address
Figure 37C. App. Br. 10-11. While Figure 35 discloses an embossed
structure as a guide structure for tracking, Figure 37C does not contain the
same embossed structure, as the Examiner maintains. Ans. 4--5.
Consequently, Appellants' discussion of the non-applied prior art
Figures does not show error in the Examiner's finding of anticipation based
upon Figure 37C. The Examiner further clarifies that Figure 37C was relied
upon in the Examiner's finding of anticipation and Appellants' argument
does not specifically address the specific finding by the Examiner. Ans. 4--
5.
Appellants do not file a Reply Brief to further address Figure 37C or
further respond to the Examiner's clarifications. As a result, Appellants do
not show error in the Examiner's finding of anticipation of representative
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Appeal2016-001083
Application 12/737,885
independent claim 1. Consequently, we sustain the anticipation rejection of
representative independent 1, independent claims 4 and 8, and dependent
claims 3, 6, 7, and 9, which have not been separately argued.
Obviousness
With respect to dependent claims 2 and 5, Appellants do not set forth
separate arguments for patentability with regard to the obviousness rejection.
App. Br. 14--15. As a result, we sustain the rejection for the same reasons
addressed above with respect to representative independent claim 1.
CONCLUSIONS
The Examiner did not err in rejecting claims 1, 3, 4, and 6-9 based
upon anticipation. The Examiner did not err in rejecting claims 2 and 5
based upon obviousness.
DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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