Ex Parte Saito

Board of Patent Appeals and Interferences

Jan 6, 2011

11281382 (B.P.A.I. Jan. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NAOKI SAITO
____________

Appeal 2010-000941
Application 11/281,382
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON,
and TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-4 and 7-11. We have jurisdiction under 35
U.S.C. § 6.

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.
Appeal 2010-000941
Application 11/281,382

Appellant claims a method of recording and playing back information
on an optical information recording medium by irradiating the medium with
a laser having a wavelength ranging from 390 to 415 nm, wherein a
recording layer of the medium contains a phthalocyanine compound.
Further details of this claimed method are set forth in the following
reproduction of representative claim 1 (taken from the Claims Appendix of
the Brief):

1. A method of recording and playing back information on an
optical information recording medium by irradiating the medium with a laser
having a wavelength ranging from 390 to 415 nm, wherein the medium
comprises a substrate having disposed thereon a reflective layer, a recording
layer, and a protective layer having a thickness of 0.1 to 300 µm disposed in
this order, \information is recordable on the recording layer by irradiating
the medium with a bluish-purple semiconductor laser having a wavelength
ranging from 390 to 415 nm and playing back the information by reading the
recorded information with a bluish-purple semiconductor laser having a
wavelength ranging from 390 to 415 nm, wherein a pre-groove having a
track pitch of 0.2 to 0.5 µm is formed on the surface of the substrate
disposed with the reflective layer of the medium, and wherein the recording
layer contains a phthalocyanine compound represented by Formula (I):

Formula (I):
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Application 11/281,382

wherein Rα1 to Rα8 and Rβ1 to Rβ8 each independently represents one
selected from the group consisting of a hydrogen atom, a halogen atom, a
cyano group, a nitro group, a formyl group, a carboxyl group, a sulfo group,
an alkyl group having 1 to 20 carbon atoms, an aryl group having 6 to 14
carbon atoms, an aralkyl group having 7 to 15 carbon atoms, a heterocyclic
group having 1 to 10 carbon atoms, an alkoxy group having 1 to 20 carbon
atoms, an aryloxy group having 6 to 14 carbon atoms, an acyl group having
2 to 21 carbon atoms, an alkylsulfonyl group having 1 to 20 carbon atoms,
an arylsulfonyl group having 6 to 14 carbon atoms, an aralkylsulfonyl group
having 7 to 15 carbon atoms, a heterylsulfonyl group having 1 to 10 carbon
atoms, a carbamoyl group having 1 to 25 carbon atoms, a sulfamoyl group
having 0 to 32 carbon atoms, an alkoxycarbonyl group having 2 to 21 carbon
atoms, an aryloxycarbonyl group having 7 to 15 carbon atoms, an acylamino
group having 2 to 21 carbon atoms, a sulfonylamino group having 1 to 20
carbon atoms, and an amino group having 0 to 36 carbon atoms; and M
represents two hydrogen atoms, a metal, a metal oxide, or a metal having a
ligand, and wherein all of Rα1 to Rβ8 in the Formula (I) are not
simultaneously hydrogen atoms.

The Examiner rejects all claims under 35 U.S.C. § 103(a) as
unpatentable over Wolleb (US Patent 6,087,492, issued July 11, 2000) in
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Application 11/281,382
view of Kim (US Patent 6,400,655 B1, issued June 4, 2002) and Kuwano
(JP 07-257037, pub. October 9, 1995).
The Examiner also rejects all claims under 35 U.S.C. § 103(a) as
unpatentable over any one of Itoh (US Patent 5,024,926, issued Jun. 18,
1991), Yanagisawa (US Patent 5,424,171, issued Jun. 13, 1995), Aihara (US
Patent 5,633,106, issued May 27, 1997), Shinkai (US Patent 5,776,656,
issued Jul. 07, 1998), Kovacs (US Patent 5,248,538, issued Sep. 28, 1993),
or Yashiro (US Patent 6,045,971, issued Apr. 4, 2000) in view of Wolleb,
Kim, and Kuwano.
We will sustain each of these rejections for the reasons expressed in
the Answer and below.
It is undisputed that Wolleb discloses a method of recording and
playing back information on an optical information recording medium which
contains a phthalocyanine compound including the type of phthalocyanine
compound defined by claim 1 (Wolleb Ex. B1, B2). It is likewise
undisputed that Wolleb discloses recording and reading the information
using lasers having wavelengths which overlap those required by claim 1
(id. at para. bridging cols. 11-12).
In light of these disclosures, we agree with the Examiner that it would
have been prima facie obvious for one with ordinary skill in this art to
practice the method of Wolleb using the specific phthalocyanine compounds
and laser wavelengths disclosed by Wolleb and required by claim 1, based
upon a reasonable expectation of success. We further agree with the
Examiner that this conclusion of prima facie obviousness is reinforced by
Kuwano's undisputed teaching of phthalocyanine compounds which exhibit
absorption characteristics at the relatively short wavelengths under
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Appeal 2010-000941
Application 11/281,382

consideration and by Kim's undisputed teaching of increasing storage
capacity by using relatively short wavelengths.
In support of a nonobviousness conclusion, Appellant argues that

those skilled in the art at the time the present invention was
made would not easily have been able to conceive of
recording information on an optical information medium by
irradiating the medium with a laser having a short
wavelength, specifically, in the range of 390 to 415 nm as
claimed, when the medium uses a phthalocyanine dye in its
information recording layer

(Br. 13). Concerning this argument, the Brief states that Appellant has

submitted a Declaration under 37 C.F.R. § 1.132 which
further explains why one of ordinary skill in the art would
not have been able to easily conceive of recording
information on an optical information medium by irradiating
the medium with a laser having a wavelength of no greater
than 450 nm when the medium uses a phthalocyanine dye in
its information recording layer

(id. at 21)2.

This argument is unpersuasive. Contrary to Appellant’s belief, the
test for unpatentability under 35 U.S.C. § 103(a) is not whether one with
ordinary skill in the art would have been "able to easily conceive" (id.) of the
claimed subject matter. Instead, the test is whether "the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains"

2 Appellant does not provide in the Brief any further discussion of this
Declaration including any specific explanation of why the Declaration is
thought to evince nonobviousness. Our consideration of this Declaration
will be limited to Appellant's above-quoted reference to it.
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Application 11/281,382
(35 U.S.C. § 103(a)). For the reasons stated above and in the Answer, the
subject matter defined by claim 1 would have been prima facie obvious to a
person having ordinary skill in this art.
Appellant further argues that, due to the state of the art at the time of
the invention, "one of ordinary skill in the art would not have considered
recording on an optical information medium by irradiating the medium with
a laser having a wavelength in the range of 390 to 415 nm when the media
uses a phthalocyanine dye in its information recording layer" (Br. 14). As
evidence of this state of the art, Appellant refers to documents including
partial English translations in the Evidence Appendix of the Brief (id. at 14-
16). According to Appellant, these documents evince that

it was commonly known to those skilled in the art at the time
the present invention was made that only an extremely
limited number of examples of organic dye compounds (such
as the porphyrin compounds referred in the above) could be
used for an information recording layer of an optical
information recording medium capable of recording and
reproducing information using laser light with a wavelength
in the blue light region, and that the known compounds such
as these still fail to provide satisfactory optical properties to
the recording layer

(id. at para. bridging 16-17).

This argument is unpersuasive for two fundamental reasons. First,
Appellant's representation of the state of the art at the time of the invention
is inadequate because it fails to include the teachings of Wolleb. Second, the
documents offered by Appellant as representing the state of the art do not
specifically discuss, much less specifically teach away from, the combined
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Application 11/281,382
use of wavelengths and phthalocyanine compounds as disclosed by Wolleb
and required by claim 1.
In light of the foregoing and for the reasons expressed in the Answer,
Appellant's argument and evidence fail to reveal error in the Examiner's
conclusion of prima facie obviousness. We sustain, therefore, each of the
above noted § 103 rejections advanced by the Examiner in this appeal.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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