10563935 (B.P.A.I. Apr. 26, 2012)

Ex Parte Martens

Board of Patent Appeals and InterferencesApr 26, 2012

10563935 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HUBERT CECILE FRANCOIS MARTENS ____________ Appeal 2009-015267 Application 10/563,935 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, ERIC S. FRAHM and KRISTEN L. DROESCH, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015267 Application 10/563,935 2 STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellant’s disclosed invention relates to a multi-layer (e.g. dual stack) optical record carrier for recording information (e.g., DVD+R-DL). Spec. 1; see also Abs. Independent claim 1 is illustrative and is reproduced from the Claim Appendix below (disputed limitations in italics): 1. Recordable optical record carrier for recording information using a radiation beam having wavelength  and incident on an entrance surface of the optical record carrier comprising, in this order: - a protective layer facing the entrance surface, - a first recording stack (LO), said recording stack comprising a recording layer of an organic dye material and a groove structure, - a transparent spacer layer sandwiched between neighboring recording stacks, and - a second recording stack (LN) comprising a recording layer, wherein the groove depth of the recording layer of the first recording stack (LO) is in a range from 0.241 * /ns to 0.362 */ns, where ns is a refractive index of a material in a land between grooves on the groove structure. REJECTIONS Claims 1-3, 7, 8, 10-12, 15 and 16 stand rejected under 35 U.S.C. § 102(b) as anticipated by Muramatsu (EP 1067535 A2). Claims 4-6, 9, 13 and 14 stand rejected under 35 U.S.C. § 103(a) as upatentable over Muramatsu. Appeal 2009-015267 Application 10/563,935 3 APPELLANT’S CONTENTIONS 1. Appellant contends that a groove depth expressed in terms of a wavelength  of a radiation beam and refractive index ns of material in a land between grooves of the groove structure as recited in claim 1 is nowhere disclosed or suggested by Muramatsu. App. Br. 11; Reply Br. 4. 2. Appellant contends that Muramatsu does not disclose or suggest any relationship or dependence of the groove depth on  and ns, let alone suggests that the groove depth is related to particular ratios of ns. Reply Br. 4. 3. Appellant contends that Muramatsu’s disclosure of a 140nm groove depth has nothing to with the ratio of ns and would not infringe claim 1 unless the groove depth being from 0.241 */ns to 0.362 */ns is met. Reply Br. 3-5. 4. Appellant contends that a groove width expressed in terms of the wavelength  and the numerical aperature NA as recited in claims 3 and 12 is nowhere disclosed or suggested in Muramatsu. App. Br. 12- 13. 5. Appellant contends that the thickness of the recording leayer at the groove position expressed in terms of the wavelength  and the refractive index nr as recited in claims 10 and 15 is nowhere disclosed or suggested in Muramatsu. App. Br. 13. 6. Appellant contends that a leveling ratio of 0.3 to 0.5 as recited in claims 11 and 16 is nowhere disclosed or suggested in Muramatsu. App. Br. 13. Appeal 2009-015267 Application 10/563,935 4 ISSUES Did the Examiner err in finding that Muramatsu describes: (1) “the groove depth of the recording layer of the first recording stack (LO) is in a range of 0.241 */ns to 0.362 */ns,” as recited in independent claim 1; (2) “the groove width of the recording layer of the first recording stack (LO) is in a range from 0.198 */NA to 0.397 */NA,” as recited in dependent claim 3; (3) “the thickness of the recording layer of at least one recording stack at a groove position is in a range from 0.168 */nr to 0.336 */nr,” as recited in dependent claim 10; and (4) “a leveling ratio in a range from 0.3 to 0.5,” as recited in dependent claim 11? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments in the Appeal Brief presented in response to the Final Office Action and Appellant’s arguments in the Reply Brief presented in response to the Answer. We disagree with Appellant’s conclusions and agree with the Examiner’s findings. Claims 1, 2, 7 and 8 Appellant argues claims 1, 2, 7 and 8 together as a group since Appellant does not present arguments substantively addressing the limitations of dependent claims 2, 7 and 8. App. Br. 10-13. Accordingly, we select independent claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(vii). Appeal 2009-015267 Application 10/563,935 5 We agree with the Examiner’s finding that claim 1 does not specify a range or otherwise limit the value of the wavelength  of the radiation beam or the refractive index ns of the material. Ans. 4-5, 14-16. We further agree with the Examiner’s findings that the claimed range of 0.241 */ns to 0.362 */ns is disclosed by Appellant as corresponding to a groove depth “from 100 to 150 nm” which is met by Muramatsu’s description of a groove depth d1 of 0.14 m which equals 140 nm. Ans. 4-5, 15-16 (citing Appellant’s Specification p. 6, ll. 9-10; Muramatsu ¶¶ 0041, 0050). We agree with the Examiner that claim 1 is anticipated by Muramatsu’s description of a groove depth of 140 nm. Moreover, Appellant acknowledges that “[a] recording layer groove depth of 140 nm may be one embodiment of the present application . . . .” Reply Br. 5. “It is [] an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682 (CCPA 1962)). Claims 3 and 12 Claim 3 depends from claim 1 and recites: “the groove width of the recording layer of the first recording stack (LO) is in a range from 0.198 */NA to 0.397 */NA, where NA is a numerical aperture of the radiation beam incident on the optical record carrier.” We agree with the Examiner’s finding that the claims similarly do not specify a range or otherwise limit the value of the wavelength  or the numerical aperature of the radiation beam and is met by the structural grooves and lands of Muramatsu. Ans. 5. Appeal 2009-015267 Application 10/563,935 6 Appellant does not present arguments substantively addressing the limitations of claim 12. Claims 10 and 15 Claim 10 depends from claim 1 and recites: “the thickness of the recording layer of at least one recording stack at a groove position is in a range from 0.168 */nr to 0.336 */nr, where nr is a refractive index of the recording layer.” We agree with the Examiner’s finding that the claims similarly do not specify a range or otherwise limit the value of the wavelength  or the the refractive index nr of the material and is met by the structural grooves and lands of Muramatsu. Ans. 6. Appellant does not present arguments substantively addressing the limitations of claim 15. Claims 11 and 16 Claim 11 depends from claim 1 and recites: “a leveling ratio in a range from 0.3 to 0.5, said leveling ratio being defined as the difference between the thickness of said recording layer at a groove position and the thickness of said recording layer at a land position normalized by the groove depth.” We agree with the Exmainer that Muramatsu describes the disputed limitations based on Muramatsu’s description of the groove layer thickness dG1, land thickness dL1 and groove depth d1 in paragraph 0041. Ans. 6. We further agree that the difference between Muramatsu’s dG1 and dL1 normalized by d1 is a ratio in the range of 0.3 to 0.5 (i.e., [0.1738 m – 0.1039 m]/0.14m). Appellant does not present arguments substantively addressing the limitations of claim 16. Appeal 2009-015267 Application 10/563,935 7 Claims 4-6, 9, 13 and 14 We agree with the Examiner’s findings addressing the limitations of dependent claims 4-6, 9, 13 and 14 and Appellant does not present arguments separately addressing the limitations of these dependent claims. App. Br. 13-14. DECISION We AFFIRM the rejection of claims 1-3, 7, 8, 10-12, 15 and 16 under 35 U.S.C. § 102(b) as anticipated by Muramatsu. We AFFIRM the rejection of claims 4-6, 9, 13 and 14 under 35 U.S.C. § 103(a) as upatentable over Muramatsu. TIME PERIOD 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 msc