Ex Parte Liao et al

Board of Patent Appeals and Interferences

Apr 28, 2006

09917751 (B.P.A.I. Apr. 28, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte WEN-YIH LIAO,
CHIEN-LIANG HUANG, CHUEN-FUN YAN,
HUEI-WEN YANG, TZUAN-REN JENG,
DER-RAY HUANG, ANDREW TEH HU,
MING-CHIA LEE and CHUNG-CHUN LEE
____________

Appeal No. 2006-0585
Application No. 09/917,751
_____________

ON BRIEF
_____________

Before KIMLIN, GARRIS, and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal which involves claims 30-49.
The subject matter on appeal relates to a data storage media which includes a recording
layer containing a mixture of a first and second cyanine dye-TCNQ complex having particular
formulas. Further details of this appealed subject matter are set forth in representative
independent claim 40 which reads as follows:

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Application No. 09/917,751

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The references set forth below are relied upon by the examiner as evidence of
obviousness:
Sato et al. (Sato) 4,735,839 Apr. 5, 1988
Cho et al. (Cho) 5,579,150 Nov. 26, 1996
Liao et al. (Liao) 5,958,087 Sep. 28, 1999
Ishida et al. (Ishida) 5,998,094 Dec. 7, 1999
Claims 30-49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Liao
taken with Cho in view of Sato alone or further in view of Ishida.1
Rather than reiterate the respective positions advocated by the appellants and by the
examiner, we refer to the brief and to the answer for a complete exposition thereof.

OPINION

We will sustain these rejections for the reasons well stated in the answer. We
add the following comments for emphasis.
With respect to the examiner’s proposed combination of Liao and Cho, the
appellants advance the following argument on page 6 of their brief:
In the formula (I) of Cho et al., R represents a heteroaromatic
residue and R' represents alkyl; η represents a positive integer not
less than 2. Clearly, one of ordinary skill in the art would
appreciate the unequivocal teaching in Cho et al that η must be at
least 2 and R' alkyl. Therefore, one of ordinary skill in the art
would not combine the teachings of Liao et al and Cho et al to
arrive at the presently claimed data storage media as the necessary
motivation to make the modifications to the structural formula is
not present, other than in appellants’ specification which may not
be used as a teaching reference. Clearly, Liao et al. states that the

1 The claims on appeal have not been separately argued in the manner required by 37 CFR § 41.37(c)(1)(vii)(Sept.
13, 2004). Therefore, in our disposition of this appeal, we have focused on independent claim 40 (since this is the
broadest claim before us) with which all other claims will stand or fall.
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R substituents must be identical and are each a 4-
methoxycarbonybenzyl group. One of ordinary skill in the art
would appreciate this teaching and understand that they may not be
alkyl. That is both are required to be 4-methoxycarbonylbenzyl to
obtain the results of the invention. Cho et al on the contrary, teach
that the corresponding substituent both are alkyl and n must be 2.

We cannot agree with the appellants that these distinctions between the teachings of Liao
and Cho would have militated against combining the respective reference teachings in the
manner proposed by the examiner. As correctly indicated by the examiner (e.g., see page 7 of
the answer), the fact that one of Liao’s cyanine dyes corresponds to n=1 in the generic formula
whereas the cyanine dyes of Cho correspond to n=2 or more would have been recognized by an
artisan as relating to a difference involving wavelength absorption only. Therefore, this
distinction would not have discouraged the artisan from combining the cyanine dye structures of
Liao with the TCNQ complex of Cho in order to obtain the benefits taught by Cho as more fully
explained in the answer (e.g., see the paragraph bridging pages 4-5). For similar reasons, this
combination would not have been discouraged by the fact that the respective cyanine dyes of
Liao and Cho include different R substituents for the nitrogen atom.
In this later regard, the appellants argue that these R substituents for Liao’s cyanine dyes
must be identical and accordingly that it would not have been obvious to substitute an alkyl for
one of these R substituents on patentee’s trimethine indolenic cyanine dye (i.e., n=1) to obtain
the benefits of unsymmetry taught by Sato in accordance with the examiner’s rejection. This is
incorrect. While Liao’s aforementioned R substituents are disclosed as being identical, this
reference contains no teachings or suggestion in support of the appellants’ contention that “the R
substituents must be identical and this is necessary to obtain the results of the invention” (brief,
page 5). Therefore, we fully agree with the examiner’s conclusion that an artisan would have
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been motivated to make the previously discussed substituent replacement in order to obtain
unsymmetry and the attendant solubility improvements taught by Sato.
For the reasons set forth above and in the answer, it is our determination that the
examiner has established a prima facie case of obviousness with respect to his proposed
combination of the Liao, Cho and Sato teachings, thereby resulting in a data storage media which
satisfies the requirements of representative independent claim 40. At this point, it is appropriate
to acknowledge that the appellants’ brief includes undeveloped assertions to the effect that their
disclosed and claimed dyes possess certain “advantages” (brief, page 10). However, it is
significant that the appellants do not characterize these advantages as being unexpected, thus
evincing nonobviousness, with respect to the applied prior art discussed above. More
importantly, in the evidence appendix filed (i.e., via facsimile transmission) December 5, 2005
pursuant to 37 CFR § 41.37(c)(1)(ix), it is clearly indicated that no evidence is relied upon by the
appellants in the subject appeal. For these reasons, we consider the appellants’ brief to present
argument but no evidence in opposition to the examiner’s obviousness conclusion.
As previously indicated, we are unpersuaded by the appellants’ arguments for
obviousness. We hereby sustain, therefore, the examiner’s § 103 rejection of claims 30-49 as
being unpatentable over Liao taken with Cho in view of Sato. For analogous reasons, we also
hereby sustain the examiner’s alternative § 103 rejection of claims 30-49 as being unpatentable
over the aforementioned references and further in view of Ishida.2
The decision of the examiner is affirmed.

2 A discussion of the Ishida reference is unnecessary for purposes of resolving this appeal.

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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(iv)(effective Sept. 13, 2004).
AFFIRMED

Edward C. Kimlin )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Bradley R. Garris ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Catherine Timm )
Administrative Patent Judge )

BRG/cam

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