Ex parte OHTA et al.

Board of Patent Appeals and Interferences

Aug 24, 1999

08054125 (B.P.A.I. Aug. 24, 1999)

Application for patent filed April 27, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being 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(2) is not binding precedent of the Board.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 KENJI OHTA et al.

_____________
Appeal No. 96-1669
Application 08/054,1251
______________
ON BRIEF
_______________
Before HAIRSTON, FLEMING and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 96-1669
Application 08/054,125
2
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1, 3 through 6, and 9 through 13. At the time
of the final rejection, claims 2, 7 and 8 had been cancelled.
On March 21, 1995, Appellants filed an amendment after final
which was entered by the Examiner into the record. This
amendment cancelled claims 11 through 13 and amended claim 1.
Therefore, amended claim 1 is properly before us for our
consideration.
The invention relates to optical discs for recording
and reproducing data by a laser beam. In particular, the
invention is related to using a moisture proof film made of
AlSiN having a thickness that results in a refractive index of
42 nanometers or less. The moisture proof film is placed on
the optical disc so as to avoid the moiré phenomenon.
Independent claim 1 is reproduced as follows:
1. An optical disc comprising a recording film
formed on one surface of a plastic substrate transparent to
light, a first protection film formed on the recording film, a
Appeal No. 96-1669
Application 08/054,125
On October 16, 1995, Appellants filed an appeal brief. 2
On February 10, 1996, Appellants filed a reply brief. On
September 30, 1996, the Examiner mailed a communication stat-
ing that the reply brief has been entered into the record.
The Examiner has filed an Examiner's answer on December3
4, 1998. The record shows that the Examiner had previously
filed three additional Examiner's answers. However, the case
was remanded to the Examiner on October 22, 1998 and in re-
sponse to the remand, the Examiner filed the Examiner's
answer dated December 4, 1998. Therefore, we will consider
only the Examiner's answer dated December 4, 1998 for this
appeal.
3
moisture proof film formed on the other surface of the sub-
strate, and a second protection film formed on the moisture
proof film, wherein the moisture proof film consists of AlSiN,
and wherein a product of the refractive index of the moisture
proof film and the thickness thereof is 42 nanometers or less.

The Examiner relies on the following reference:
Ohta et al. (Ohta) 0,467,705 Jan. 22,
1992
(European Patent Application)
Claims 1, 3 through 6, 9 and 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over Ohta.
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the briefs and answer2 3
for the respective details thereof.
Appeal No. 96-1669
Application 08/054,125
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OPINION
We will not sustain the rejection of claims 1, 3
through 6, 9 and 10 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ
1, 6 (Fed. Cir. 1983). "Additionally, when determining obvi-
ousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the inven-
tion." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc., 73
F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert.
denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assoc., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appeal No. 96-1669
Application 08/054,125
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On page 6 of the brief, Appellants argue that Ohta
fails to teach the two claimed features of claim 1, AlSiN, the
specific material used to make up the moisture proof film, and
the product of the relative index of moisture proof film and
the thickness thereof is 42 nanometers or less. Appellants
emphasize that these limitations are neither shown nor sug-
gested by Ohta. On page 7 of the brief, Appellants point to
the declaration in the record which compares one of the dis-
closed materials for making up the moisture proof film taught
in Ohta with Appellants' material AlSiN. Appellants point to
the fact that Declarant has shown that the Appellants' mate-
rial AlSiN is superior to the material taught in Ohta. Appel-
lants argue that the declaration
provides evidence of superiority of AlSiN, and directly re-
futes the Examiner's position that the skilled artisan would
find it a matter of routine experimentation to choose AlSiN
instead of one of the materials disclosed in Ohta.
On page 5 of the answer, the Examiner states that
Ohta does not expressly show the moisture proof film to be
Appeal No. 96-1669
Application 08/054,125
6
made of AlSiN. The Examiner argues that it would have been
obvious to one of ordinary skill in the art to substitute the
moisture proof film consisting of SiAlON, SiN, etc. of Ohta
with a moisture proof film consisting of AlSiN. The Examiner
provides a rationale that it would be a matter of routine
engineering skill to make this substitution and to achieve the
product of the moisture proof film thickness and its relativ-
ity with its respective refractive index equal to 42
nanometers or less. We note that the Examiner does not
provide any further evidence for this rationale. On pages 7
and 8 of the answer, the Examiner argues that the declaration
is given very little weight because it does not compare
AlSiON, which is one of the materials disclosed in Ohta, with
AlSiN, the Appellants' compound.
We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a
Appeal No. 96-1669
Application 08/054,125
7
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
Turning to Ohta, we find that Ohta teaches on page 3
that the moisture-impermeable film may be selected from
inorganic moisture-impermeable film such as AlN, SiN, ZnS,
Al O , SiO , SiAlON, or from organic moisture-impermeable films2 3 2
such as polyvinylidene chloride and
polytrifluorochloroethylene. Ohta further discloses that
among these materials AlN is particularly preferred.
Furthermore, Ohta teaches that the thickness of the moisture-
impermeable films depends on the material used thereof.
Further, we note that Ohta does not teach using AlSiN nor does
Ohta teach a product of the refractive index of the moisture
proof film and the thickness thereof is 42 nanometers or less.
Appeal No. 96-1669
Application 08/054,125
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The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg., 73 F.3d at
1087, 37 USPQ2d at 1239, citing W. L. Gore, 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-313.
Upon a review of Ohta relied upon by the Examiner,
we fail to find any suggestion or reason to provide a moisture
proof film wherein the moisture proof film consists of AlSiN
and wherein a product of the refractive index of the moisture
proof film and the thickness thereof is 42 nanometers or less.
To the contrary, we find that Ohta's teaching would have led
those skilled in the art to choose from one of the many other
Appeal No. 96-1669
Application 08/054,125
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materials listed as suitable for a moisture proof film.
Appellants' declaration further buttresses our findings in
that the declaration shows that AlSiN is superior to one of
the materials in that group as taught by Ohta. Therefore, we
will not sustain the rejection of claims 1, 3 through 6, 9 and
10 under 35 U.S.C. § 103 as being unpatentable over Ohta.
We have not sustained the rejection of claims 1, 3
through 6, 9 and 10 under 35 U.S.C. § 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
Appeal No. 96-1669
Application 08/054,125
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MRF:psb
Appeal No. 96-1669
Application 08/054,125
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David G. Conlin
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Boston, MA 02109