Ex Parte Miura et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10503952 - (D) (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/503,952 08/09/2004 Hideaki Miura 890050.490USPC 4839
500 7590 09/29/2010
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
VERDERAME, ANNA L
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIDEAKI MIURA and TATSUYA KATO
____________________

Appeal 2009-014387
Application 10/503,952
Technology Center 1700
____________________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and CATHERINE Q.
TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 3-6, 8-12, 14-16, 18, and 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and REMAND.
Appellants’ invention relates to a rewritable-type optical recording
media having at least stacked first and second information recording layers
(L0 and L1) (Spec 5:8-11). The layers are initially crystalline and
information is written by aligning the focus of the laser beam to either the
L0 recording layer or L1 recording layer to form recording marks by laser
heating (Spec. 15:24-26). The power of the laser begins at Pe, an erasing
power that heats above the crystallization temperature, and then is
modulated between a recording power (Pw) and a bottom power (Pb) to melt
and quickly cool to obtain an amorphous region (Spec. 16:13 to 17:2); see
also Br. 2, particularly illustration 1).
An issue with optical recording media having multiple recording
layers is that the recording layer closest to the light incidence plane (layer
L0) may be worse at dissipating heat than the other recording layers (farther
layers or L1). As a result, if one writes data to the closest recording layer
(L0) using the same laser power settings as used for the farther layers (L1),
heat generated in the L0 layer may not be dissipated away quickly enough,
and the amorphous regions of the L0 layer may be recrystallized and
deformed (Spec. 4:1-10; Spec. 20:3-8). Appellants solve this problem by
adjusting the power settings for the L0 and L1 layers; specifically, by setting
the ratio of the recording power to the erasing power for layer L0 (Pe0/Pw0)
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to be smaller than the analogous ratio for layer L1 (Pe1/Pw1) (Spec. 20:9-
17). In other words power ratio Pe0/Pw0 is set so it is less than Pe1/Pw1.
Appellants present claims directed to the method for recording
information in the medium (independent claims 1 and 6), to an information
recording apparatus (claim 12), and the optical recording medium upon
which the information is written (claim 16). The method is illustrated by
claim 1, which is reproduced below:
1. An information recording method for recording
information in a data rewritable type optical recording
medium having a plurality of information recording layers by
projecting a laser beam thereonto whose power is modulated
between a plurality of powers including at least a recording
power (Pw) and an erasing power (Pe), the erasing power (Pe)
lower than the recording power (Pw) and in accordance with a
pulse train pattern including a plurality of pulses, via a light
incidence plane, the information recording method
comprising:
setting λ/NA to be equal to or smaller than 700 nm
where λ is a wavelength of the laser beam and NA is a
numerical aperture (NA) of an objective lens; and
when recording information in the optical recording
medium, setting a ratio (Pe/Pw) of the erasing power (Pe) to
the recording power (Pw) when information is to be recorded
in an information recording layer closest to the light incidence
plane to be smaller than that when information is to be
recorded in an information recording layer(s) other than the
information recording layer closest to the light incidence
plane.

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The Examiner rejects claims 1, 3, 5-6, 10-12, 14-16, 18, and 19 under
35 U.S.C. § 103(a) as being unpatentable over Narumi2 in view of Ogawa
(US 6,388,978 B1; issued May 14, 2002). To reject claims 4 and 9, the
Examiner adds Ichihara (US 2002/0006579; pub. Jan. 17, 2002) as evidence
of unpatentability.
Appellants contend that the Examiner failed to establish a prima facie
case of obviousness for the subject matter of any of the independent claims,
i.e., claims 1, 6, 12, and 16 (Br. 7). Appellants contend that Narumi,
contrary to the finding of the Examiner, does not disclose the claimed ratios
of Pe/Pw required by those claims (Br. 8).
The Examiner responds that, based on Figures 2 and 3 of Narumi, one
of ordinary skill in the art would have been motivated to choose
recording/peak powers and erasing/bias powers in the ranges claimed to
obtain the best signal to noise ratio (CNR) and erasability respectively (Ans.
8-9).
The dispute gives rise to an issue with respect to the method claims,
but neither the Examiner, nor Appellants, has adequately addressed the
apparatus and article claims. Therefore, we will resolve the issue advanced
for the method claims, but we find it necessary to remand the application for
further development and/or resolution of the issues for the apparatus and
article claims.
II. DISCUSSION
A. THE METHOD CLAIMS

2 Narumi et al., 45GB Rewritable Dual-layer Phase-change Optical Disk
with a Transmittance Balanced Structure, Technical Digest ISOM’01, Int’l
Symposium on Optical Memory 2001, Oct. 16-19, 2001 pp. 202-03.
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For the method claims, the issue is: Does the evidence support the
Examiner’s finding that Narumi provides a suggestion to one of ordinary
skill in the art to set a ratio of Pe0/Pw0 so it is less than the ratio of
Pe1/Pw1?
For the reasons presented by the Appellants in the Brief at pages 2-3,
we answer this question in the negative.
Narumi reports on the results of measuring the recording
characteristics of the optical recording disk of Figure 1 under two recording
conditions, a 45 GB condition and a 40 GB condition (Narumi, p. 202, § 3,
¶ 1 as informed by § 2). Appellants and the Examiner agree that Figure 2
shows that the highest CNR for the L0 recording layer in the 45 GB medium
occurs at peak powers between 5.5 and 8 mW (Br. 8; Ans. 8). There is also
agreement that the highest CNR for the L1 recording layer occurs at peak
powers of 9-11 mW (Br. 8; Ans. 8). Further, there is no dispute that Figure
3 is a graph showing the dependence of erasability on the bias power for the
45 GB condition for L0 and L1 (Br. 8; Ans. 8). According to the Examiner,
Figure 3 shows that the highest erasability occurs at a bias/erasing power of
2.5 mW for L0 and 3.5 mW for L1 and the two graphs suggest setting the
ratio relationship as claimed (Ans. 8-9).
While we agree with the Examiner that Figure 3 shows the
dependence of erasure levels to bias power settings, we cannot agree that
Narumi discloses applying this bias/erasing power during the process of
recording data. It is simply not clear what, if any, biasing power was used to
generate the data of Figure 2. Narumi simply reports on the results of two
separate tests, one generating signal-to-noise ratios (CNR) while varying
peak power, and the other generating erasability levels while varying bias
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power. We agree with Appellants that Narumi never identifies a Pe/Pw ratio
much less suggests that Pe0/Pw0 should be smaller than Pe1/Pw1 when
recording information onto the optical disk.
The evidence is simply too sparse to support the Examiner’s finding
that Narumi provides a suggestion to one of ordinary skill in the art to set a
ratio of Pe0/Pw0 so it is less than the ratio of Pe1/Pw1. Claim 6 more
narrowly requires a specific range. Therefore, we cannot say the evidence
supports either the rejection of claim 1 or claim 6 (or the rejection of the
claims dependent thereon).
The rejection of claims 4 and 9 suffers from the same deficiencies
discussed above.
B. THE APPARATUS AND ARTICLE CLAIMS
We note that while all the independent claims recite the particular
Pe/Pw ratio limitation argued, the import of that limitation in the various
independent claims differs. Each statutory class of claims must be
considered independently on its own merits. No one rule controls them all.
In re Kuehl, 475 F.2d 658, 665 (CCPA 1973).
In the method claims (e.g., independent claims 1 and 6), the step of
setting the Pe/Pw ratio is a process limitation affecting the power of the laser
and such a step must be found or suggested by the prior art for there to be
obviousness under the law.
However, the limitation “the information recording apparatus being
constituted so as to . . . set a ratio (Pe/Pw) . . . ” recited in claim 12 has a
different import in the context of the apparatus. This is because “[a]
machine is a concrete thing, consisting of parts, or of certain devices and
combination of devices,” see Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570
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(1863) (defining "machine"), and, therefore, claims directed to an apparatus
must be distinguished from the prior art in terms of structure. See In re
Danly, 263 F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus
must distinguish from the prior art in terms of structure rather than
function”); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“It is trite
to state that the patentability of apparatus claims must be shown in the
structure claimed and not merely upon a use, function, or result thereof.”).
In terms of the claims to the apparatus, Appellant has chosen to define
the structure by its function. Choosing to define an element functionally,
i.e., by what it does, carries with it a risk: Where there is reason to conclude
that the structure of the prior art is inherently capable of performing the
claimed function, the burden shifts to the applicant to show that the claimed
function patentably distinguishes the claimed structure from the prior art
structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re
Hallman, 655 F.2d 212, 215 (CCPA 1981). When the claim limitation is
purely functional in nature there may also be questions of indefiniteness
and/or non-enablement. See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207,
1217 (BPAI 2008) (precedential).
Moreover, the limitation of “setting a ratio (Pe/Pw) . . .” with regard to
the laser power in claim 16 has a further different import in the context of
the optical recording medium, which is merely the article being worked
upon by the laser. In order to be patentable, a claimed product must be
different from the product of the prior art. In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).
The Examiner has provided no analysis of how the power ratio
limitation serves to further limit the apparatus of claim 12, nor analyzed how
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the step of setting the power ratio of the laser changes the structure of the
article being worked upon, i.e., the optical recording medium.
Rather than point out any error on the part of the Examiner with
respect to the apparatus and product claims, Appellants merely focus on the
ratio as set forth in the method claims.
Under the circumstances, we do not have the necessary input from the
Examiner and Appellants to allow review of the rejection of the apparatus
and product claims, i.e., claims 12, 14-16, 18, and 19. We, therefore,
remand this application to the Examiner to allow the Examiner to properly
address those claims.
III. CONCLUSION
On the record before us, we do not sustain the rejections maintained
against claims 1, 3-6, and 8-11, and we remand the application for further
consideration of the rejection of claims 12, 14-16, 18, and 19.
IV. DECISION
The decision of the Examiner is reversed and the application
remanded to the Examiner for action consistent with the direction given
above.

REVERSED and REMANDED

cam

Appeal 2009-014387
Application 10/503,952

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SEED INTELLECTUAL PROPERTY
LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE WA 98104