Ex Parte MoscovitchDownload PDFBoard of Patent Appeals and InterferencesNov 21, 201110143497 (B.P.A.I. Nov. 21, 2011) Copy Citation 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. 10/143,497 05/10/2002 Marko Moscovitch GEORP0103USA 1986 23908 7590 11/22/2011 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER ORTIZ CRIADO, JORGE L ART UNIT PAPER NUMBER 2627 MAIL DATE DELIVERY MODE 11/22/2011 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 MARKO MOSCOVITCH ____________ Appeal 2009-010127 Application 10/143,497 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 4-8, 10-14, and 16-21, which are all of the pending claims. Claims 2, 3, 9, 15, and 22-25 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed Jun. 27, 2007), the Answer (mailed Aug. Appeal 2009-010127 Application 10/143,497 2 8, 2007), and the Reply Brief (filed Oct. 8, 2007) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant’s Invention Appellant‟s invention relates to an optical data storage system and method utilizing light sensitive electron trapping media such as an ɑ- Al2O3:C crystal or Cu + -doped quartz. Information is stored and retrieved using different light frequencies and near-field scanning microscopy (NSOM). See generally Spec. 3:1-13. Claim 1 is illustrative of the invention and reads as follows: 1. An optical data storage system comprising a storage medium in which information is written and read by an optical writing and reading device using different light frequencies, wherein the storage medium includes an ɑ-Al2O3:C crystal or Cu + -doped fused quartz in which the information is written and read. The Examiner’s Rejections The Examiner‟s Answer cites the following prior art references: Goldsmith US 5,113,387 May 12, 1992 Weiss US 6,278,679 B1 Aug. 21, 2001 (filed Aug. 5, 1997) Appeal 2009-010127 Application 10/143,497 3 M. S. Akselrod, A. C. Lucas, J. C. Polf, and S. W.S. McKeever, (hereinafter “Akselrod”), “Optically Stimulated Luminescence of Al2O3,” Radiation Measurement, Vol. 29, No. 3-4, 391-99 (1998). B. L. Justus, C. D. Merritt, K. J. Pawlovich, A. L. Huston, and S. Rychnovsky, (hereinafter “Justus”), “Optically Stimulated Luminescence Dosimetry,” Radiation Protection Dosimetry, Vol. 84, Nos. 1-4, 189-92 (1999). Claims 1, 7, 8, 13, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldsmith in view of Akselrod and Justus. Claims 4-6, 10-12, 14, 16, 17, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldsmith in view of Akselrod, Justus, and Weiss. 1 PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C. § 103 leads to three basic factual inquiries: the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the art). Furthermore, “„there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness‟ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject 1 The Examiner has withdrawn the 35 U.S.C. § 112, second paragraph, rejection of claims 7 and 13. Appeal 2009-010127 Application 10/143,497 4 matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS Claims 1, 7, 8, 13, 18, and 19 Appellant‟s arguments with respect to the obviousness rejection of independent claims 1 and 8 focus on the contention that Akselrod and Justus do not overcome Goldsmith‟s deficiency in disclosing the use of an ɑ- Al2O3:C crystal or Cu + -doped fused quartz as the storage medium in which information is written and read as claimed. In Appellant‟s view (App. Br. 8- 12; Reply Br. 3-6), while Akselrod and Justus disclose the use of the claimed materials in OSL dosimetry apparatus involving the trapping and de-trapping of electrons, there is no teaching or suggesting of using the claimed materials for writing and reading of information on a storage medium using a writing and reading tool. According to Appellant (id.), both Akselrod and Justus merely disclose that luminescent material is exposed to radiation and later optically stimulated to provide a measure of the amount of radiation exposure. We do not agree with Appellant as we find that Appellant‟s arguments focus on the individual differences between the limitations of independent claims 1 and 8 and each of the applied references. It is apparent from the Examiner‟s line of reasoning in the Answer, that the basis for the obviousness rejection is, instead, the combination of Akselrod and Justus Appeal 2009-010127 Application 10/143,497 5 with Goldsmith. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In other words, while Appellant contends that Akselrod and Justus lack a teaching of writing and reading of information on an optical storage medium with OSL using different light frequencies, the Examiner has relied upon Goldsmith as providing this teaching which is not disputed by Appellant. We further find that the Examiner (Ans. 4 and 8) has provided a valid articulated line of reasoning to support the conclusion of obviousness for the proposed combination of Goldsmith with Akselrod and Justus. KSR, 550 U.S. at 418. While Akselrod and Justus do not use any kind of laser tool to “write” information on the aluminum-oxide or Cu+ material, both references teach an OSL process which trap and de-trap electrons, as pointed out by the Examiner (Ans. 7-9). In both Akselrod and Justus, information in the form of radiation levels (e.g., gamma rays at a particular range of frequencies) is stored (written) on the aluminum-oxide or Cu+ materials, and the information is retrieved (read) using OSL at a read-out frequency. As such, we agree with the Examiner that the substitution of the known aluminum-oxide and Cu+ electron trapping and de-trapping materials used in the OSL systems of Akselrod and Justus for the electron trapping and de-trapping materials used in the OSL system of Goldsmith would have been obvious and yielded a predictable result. “[W]hen . . . the prior art . . . is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. Appeal 2009-010127 Application 10/143,497 6 Lastly, we find no evidence forthcoming from Appellant that convinces us of any error in the Examiner‟s stated position. While Appellant contends (App. Br. 11-12; Reply Br. 5-6) that it would be unreasonable for the skilled artisan to believe that the aluminum-oxide and Cu+ electron materials of Akselrod and Justus could be used in the optical disk drive system of Goldsmith, no evidence aside from conclusory statements has been presented. The arguments of counsel cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). For the above reasons, we sustain the Examiner‟s 35 U.S.C. § 103(a) rejection of independent claims 1 and 8, as well as dependent claims 7, 13, 18, and 19, not separately argued with any particularity by Appellant. Claims 4-6, 10-12, 14, 16, 17, 20, and 21 The Examiner‟s obviousness rejection, based on the combination of Goldsmith, Akselrod, Justus, and Weiss, of claims 4-6, 10-12, 14, 16, 17, 20, and 21 is also sustained. We find no error in the Examiner‟s application of the NSOM device teaching of Weiss (Figs. 2 and 5; col. 2, ll. 13-39) to the combination of Goldsmith, Akselrod, and Justus. Appellant‟s arguments (App. Br. 14-15) reiterate those asserted against independent claims 1 and 8, which arguments we have found to be unpersuasive as previously discussed. Appeal 2009-010127 Application 10/143,497 7 CONCLUSION OF LAW Based on the analysis above, we conclude that the Examiner did not err in rejecting claims 1, 4-8, 10-14, and 16-21 for obviousness under 35 U.S.C. § 103(a). DECISION We affirm the Examiner‟s decision rejecting claims 1, 4-8, 10-14, and 16-21 under 35 U.S.C. § 103(a). 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) (2010). AFFIRMED rwk Copy with citationCopy as parenthetical citation