Ex parte Mukawa

Board of Patent Appeals and Interferences

Sep 6, 2000

08434029 (B.P.A.I. Sep. 6, 2000)

Filed May 3, 1995. According to the appellant, it1
is a continuation of application 08/195,976, filed February
10, 1994, which is a continuation of application 07/833,927,
filed February 11, 1992. The real party in interest is Sony
Corporation.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte HIROSHI MUKAWA
__________________
Appeal No. 1998-0599
Application 08/434,0291
________________
ON BRIEF
________________
Before McKELVEY, Senior Administrative Patent Judge., and
SCHAFER and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 31-36. Claims 27 and 29-30
have been allowed. Claims 1-26 and 28 have been canceled.
References relied on by the Examiner
Kato 4,885,653 December
5, 1989
Appeal No. 98-0599
Application 08/434,029
2
Sakaguchi et al. 4,847,826 July 11, 1989
(Sakaguchi)
Appeal No. 98-0599
Application 08/434,029
3
The Rejection on Appeal
Claims 31-34 and 36 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kato.
Claim 35 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kato and Sakaguchi.
The appellant has grouped claims 31-34 and 36 together
for single treatment in this appeal. (Br. at page 5).
The Invention
The claimed invention is directed to an optical disc or
recording medium comprising a single-piece disc-shaped
transparent substrate having a recess formed in a first
surface around a center hole and a magnetic member inserted
into the recess thus closing the center hole. The substrate
has a second surface parallel to the first surface and an
annular rib projecting from the second surface around the
center hole. Claims 31 and 36 are the only independent claims
on appeal and are reproduced below:
31. An optical recording medium comprising:
a single-piece disc-shaped transparent substrate
having a first surface, a second surface parallel to
the first surface, and a center hole formed at a
center of the disc-shaped transparent substrate,
with the center hole extending through the
transparent substrate in a direction from the first
Appeal No. 98-0599
Application 08/434,029
4
surface to the second surface, the transparent
substrate also having a recess portion formed in the
first surface around the center hole and an annular
rib projecting from the second surface around the
center hole;
a recording layer formed on the first surface of
the transparent substrate;
a magnetic member inserted into the recess
portion of the transparent substrate, the magnetic
member closing the center hole of the transparent
substrate; and
a cartridge body for containing the transparent
substrate, the recording layer and the magnetic
member, the cartridge body having a first cartridge
surface opposite the first surface of the
transparent substrate, the cartridge having a second
cartridge surface opposite the second surface of the
transparent substrate, with the second cartridge
surface having a recording/reproducing aperture and
having a central aperture with the annular rib
projected therein.
36. An optical disc comprising:
a single-piece disc-shaped transparent substrate
having a first surface, a second surface parallel to
the first surface, and a center hole formed at a
center of the disc-shaped transparent substrate,
with the center hole extending through the
transparent substrate in a direction from the first
surface to the second surface, the transparent
substrate also having a recess portion formed in the
first surface around the center hole and an annular
rib projecting from the second surface around the
center hole;
a recording layer formed on the first surface of
the transparent substrate; and
Appeal No. 98-0599
Application 08/434,029
5
a magnetic member inserted into the recess
portion of the transparent substrate, the magnetic
member closing the center hole of the transparent
substrate;
wherein the annular rib has a top surface which
is parallel to the second surface of the transparent
substrate, and the annular rib has an outside
diameter,
Appeal No. 98-0599
Application 08/434,029
The examiner made clear his view that in the context2
of the rejection, the flange 18 of Kato is not regarded as a
part of the substrate. (Answer at page 9).
6
the recess portion has a diameter, and the diameter
of the recess portion is smaller than the diameter
of the annular rib.
Opinion
We affirm the rejection of claims 31-34 and 36 and
reverse the rejection of claim 35.
Our affirmance of the prior art rejection is based only
on the arguments presented by appellants in their briefs.
Arguments not raised in the briefs are not before us, are not
at issue, and are considered as waived.
The rejection of claims 31-34 and 36
Central to this rejection is the examiner’s conclusion
that it would have been obvious to one with ordinary skill in
the art, in light of Kato’s multi-member disk substrate
including the disk 16 and the control ring 19, to form a
single-piece substrate as is claimed by the appellant. 2
Citing Howard v. Detroit Stove Works, 150 U.S. 164 (1893), the
examiner stated in the final Office action (Paper No. 24, at
4):
Appeal No. 98-0599
Application 08/434,029
7
It would have been obvious to one having ordinary
skill in the art at the time the invention was made
to create the substrate of Kato as a single piece,
since it has been held that forming in one piece an
article which has formerly been formed in two pieces
and put together involves only routine skill in the
art.
The appellant argues that because Kato’s disk 16 and
control ring 19 are made from different materials, the case
cited by the examiner is not apposite and that it would not
have been obvious to one with ordinary skill in the art to
make Kato’s disk and control ring by a single-piece
construction. That Kato’s magnetic member 18 is made from a
different material is not relevant since the examiner clearly
indicated that the magnetic member 18 is not a part of the
substrate relied on for the rejection. The appellant has not
argued against that position of the examiner.
In rebuttal, the examiner disagrees that Kato discloses
that the material of disk 16 and of control ring 19 are
different. The examiner correctly points out that the
particular material of disk 16 is not specified in Kato, which
states only that element 16 is a circular magnetic sheet. The
examiner further points out that conventional optical disks
are shown in the appellant’s prior art Figure 1 and described
Appeal No. 98-0599
Application 08/434,029
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on page 1 of the appellant’s specification. Where the
specific material is unspecified as is apparently the case
with Kato’s disk, one with ordinary skill in the art would
naturally resort to what is conventional in the art. The
appellant’s specification on page 1 describes known
Appeal No. 98-0599
Application 08/434,029
9
optical recording disk as having a base substrate formed of a
light-transmitting material, such as polycarbonate resin.
Polycarbonate is a well known material. For good reason,
the appellant has not disputed the art-recognized properties
of the material. Polycarbonate is a transparent thermoplastic
resin easily fabricated by thermoforming. See The Condensed
Chemical Dictionary, Eighth Edition, 1971 (copy of definition
enclosed). Kato describes that its control ring 19 is formed
by a compound plastic containing a filler and that the
compound plastic “can be selected mainly from thermoplastic
resins such as polyacetal, nylon, polybutylene terephthalate,
polyester, polypropylene, polyethylene, polyfluoroethylene,
etc.” (Kato, column 2, lines 10-20). Such evidence, from the
perspective of one with ordinary skill in the art, reasonably
would have suggested that Kato’s disk media 16 and control
ring 19 can be made from the same kind of material, e.g., a
thermoplastic like polycarbonate resin. On this record, there
is no reason for one with ordinary skill in the art to suspect
that the presence of a filler would cause the plastic to
become unsuitable as the disk media substrate.
Appeal No. 98-0599
Application 08/434,029
10
Because one with ordinary skill in the art would have
recognized that Kato’s disk media 16 and control ring 19 can
be made from the same material, the examiner is correct that
it would have been obvious to one with ordinary skill in the
art in view of Kato to form the disk media 16 and control ring
19 as a single-piece substrate. Even the appellant has
stated: “The Examiner’s reasoning about modifying Kato to have
a single-piece substrate might have some force if Kato taught
that the pieces of its multiple-piece disk assembly (i.e.,
disk, control ring and flange) were made of the same
material.”
The appellant further argues that the examiner’s proposed
modification of Kato would render Kato’s system inoperative,
because there is no basis for assuming that the compound
plastic material of Kato’s control ring 19 is a suitable
material for recording data. The argument is misplaced
because, as the examiner has explained, it is only important
that the recording layer deposited on top of the plastic
substrate be suitable for recording data, not the plastic
substrate itself. (Answer at 10). Note that each of
independent claims 31 and 36 recite “a recording layer formed
Appeal No. 98-0599
Application 08/434,029
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on the first surface of the transparent substrate.” The
appellant states in footnote 3 of its brief that perhaps the
examiner is suggesting that the disk media 16 and the control
ring 19 in Kato can be formed of a single-piece substrate and
a recording layer can be deposited thereon. The appellant
then argues (Br. at 9) that Kato does not teach or suggest
that such a material is suitable for forming a hub portion of
a disk
Appeal No. 98-0599
Application 08/434,029
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cartridge. But appellant does not point out where in any
claim is a limitation that the hub portion of a disk cartridge
is formed from the material forming the single-piece
substrate. Secondly, to the extent that Kato’s control ring
19 acts as the hub portion of a disk cartridge, Kato discloses
use of material forming the control ring 19 to form the hub
portion of a disk cartridge.
Finally, in footnote 3 of its brief, the appellant argues
that Kato’s disclosures about the mechanical properties of
control ring 19 “teach away from substituting a transparent
optical disk substrate material to form the control ring
portion 19.” The argument is not supported by any further
discussion, explanation, or specific reference to Kato’s
disclosure. We have not been directed to any portion of Kato
or given a meaningful explanation that would indicate that
polycarbonate resin, a known optical disk substrate material
and a thermoplastic, cannot be used to form Kato’s control
ring 19. Counsel’s argument cannot take the place of evidence
lacking in the record. Knorr v. Pearson, 671 F.2d 1368, 1373,
213 USPQ 196, 200 (CCPA 1982); Meitzner v. Mindick, 549 F.2d
775, 782, 193 USPQ 17, 22 (CCPA), cert, denied, 434 U.S. 854,
Appeal No. 98-0599
Application 08/434,029
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195 USPQ 465 (1977); In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972). The appellant
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Application 08/434,029
14
simply has not sufficiently developed the argument by
reference to the underlying evidence for it to be persuasive.
Note also that Kato specifically describes that the plastic
base material for forming the control ring 19 “can be selected
mainly from thermoplastic resins such as polyacetal, nylon,
polybutylene terephthalate, polyester, polypropylene,
polyethylene, polyfluroethylene, etc.” The appellant has made
no explanation as to why polycarbonate resin does not fall
within this class of thermoplastic material.
The rejection of claim 35
We reverse the rejection of claim 35. A reversal of the
rejection on appeal should not be construed as an affirmative
indication that the appellant’s claims are patentable over
prior art. We address only the positions and rationale as set
forth by the examiner and on which the examiner’s rejection of
the claims on appeal is based.
Claim 35 depends from claim 31 and further specifies a
cartridge rib projecting from the second cartridge surface
towards the second surface of the substrate and being formed
around the central aperture. The claim specifies that the
Appeal No. 98-0599
Application 08/434,029
15
cartridge rib is engageable with the annular rib projecting
from the second surface of the substrate.
Kato’s disk cartridge evidently does not include any
cartridge rib on the second surface. However, it does show
annular ribs extending from the second surface of the
substrate. The examiner identifies in Sakaguchi a cartridge
rib extending from the second surface of the disk cartridge
towards the second surface of the disk substrate, but can
point to no annular rib extending from the second surface of
Sakaguchi’s disk substrate.
The examiner concludes, however, that it would have been
obvious to add a cartridge rib to Kato just as it is disclosed
in Sakaguchi, to prevent the entry of dust and other
contaminants at the opening. According to the examiner, “such
protective walls, dams and other structures are widely used to
inhibit the ingress of dust in order to make the cartridge as
airtight as possible without compromising functionality”
(answer at 7). The appellant has not disputed the examiner’s
finding that protective walls, dams, and other structures as
such are widely used to inhibit the ingress of dust. Thus,
the examiner has not been shown to have erred in making that
Appeal No. 98-0599
Application 08/434,029
16
critical finding. Given that ribs are known as a means to
minimize the entry of dust and contaminants into the central
aperture, we agree with the examiner that it would have been
obvious to one with ordinary skill in the art to add a
Appeal No. 98-0599
Application 08/434,029
17
cartridge rib, such as that disclosed in Sakaguchi, to Kato’s
disk cartridge.
We disagree with the examiner’s conclusion (answer at
p.11), however, that incorporating a cartridge rib into Kato’s
cartridge in a similar position as is taught in Sakaguchi,
“would yield” a cartridge rib engageable with the annular rib
projecting from the second surface of Kato’s substrate. No
factual basis has been presented by the examiner to justify
that conclusion. Nothing has been set forth to show that a
cartridge rib extending toward the second surface of the disk
substrate is necessarily engageable with an annular rib
projecting out from the second surface of the disk substrate.
On this record, the examiner’s conclusion appears to be based
on mere speculation and hindsight. We do not address whether
it would have been obvious to have the cartridge rib and
annular rib be engageable with each other, because that is not
the stated position of the examiner who states merely (1) that
incorporating a cartridge rib into Kato’s cartridge “would
yield” a cartridge rib engageable with the annular rib
projecting from the second surface of Kato’s substrate, and
(2) that as incorporated into the cartridge of Kato, the
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Application 08/434,029
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cartridge rib “would be” engageable to the annular rib of the
substrate” (answer at p. 7).
For the foregoing reasons, we do not sustain the
rejection of claim 35.
Conclusion
The rejection of claims 31-34 and 36 under 35 U.S.C. §
103 as being unpatentable over Kato is affirmed.
The rejection of claim 35 under 35 U.S.C. § 103 as being
unpatentable over Kato and Sakaguchi is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)
AFFIRMED-IN-PART
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
)
)
______________________________) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No. 98-0599
Application 08/434,029
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)
)
______________________________)
JAMESON LEE )
Administrative Patent Judge )
Lawrence W. Granatelli
FENWICK & WEST
Two Palo Alto Square
Palo Alto, CA 94306