Ex Parte Moscovitch

Board of Patent Appeals and Interferences

Nov 21, 2011

10143497 (B.P.A.I. Nov. 21, 2011)

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.
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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)

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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.
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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
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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.
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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.

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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

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