Ex Parte Sun et al

Patent Trial and Appeal Board

Sep 1, 2016

12861844 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/861,844 08/24/2010 Ching-Cherng SUN
60589 7590 09/06/2016
JAMES O""SULLIVAN
Room 1901, 19/F, Lee Garden One, 33 Hysan Avenue,
Causeway Bay
Hong Kong,
HONGKONG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TWT01500/US 2817
EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
09/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
info@ckc-ip.com
ckchen@ckc-ip.com
josullivan@ckc-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHING-CHERNG and YEH-WEI YU
Appeal2015-003994
Application 12/861,844
Technology Center 2800
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-003994
Application 12/861,844
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1-9 and 11-14 under 35 U.S.C. § 102 as anticipated by
Kawano et al. (US 7,236, 277 B2, issued June 26, 2007 ("Kawano")), claim 10
under 35 US.C. § 103(a) as unpatentable over Kawano in view of Hirao et al. (US
2006/0215528 Al, pub. Sept. 28, 2006), and claim 15 under 35 US.C. § 103(a) as
unpatentable over Kawano in view ofHorimai et al. (US 2004/0165518 Al, pub.
Aug. 26, 2004). 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Independent claims 1 and 7 are representative of the invention and read as
follows (emphasis added):
1. A collinear holographic storage medium comprising:
a plurality of layers; and
a recording layer sandwiched between the layers, wherein the
actual linear thermal expansion coefficient of the recording layer is
substantially the same as the instinct linear thermal expansion
coefficient of the recording layer, the actual linear thermal expansion
coefficient of the recording layer is the linear thermal expansion
coefficient measured when the recording layer is sandwiched between
the layers, and the instinct linear thermal expansion coefficient of the
recording layer is the linear thermal expansion coefficient measured
when the recording layer is not sandwiched between the layers.
7. A collinear holographic storage medium comprising:
a plurality of layers; and
a recording layer sandwiched between the layers, wherein the
actual linear thermal expansion coefficient of the recording layer
1 Appellants identify the real party in interest as National Chiao Tung University.
Appeal Brief filed Oct. 22, 2014 ("App. Br."), 2.
2 Final Office Action mailed June 11, 2014.
3 The Examiner has withdrawn the rejections of claims 1-15 under 35 U.S.C. §
112, first paragraph. Examiner's Answer mailed December 5, 2014 ("Ans."), 2.
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Appeal2015-003994
Application 12/861,844
substantially satisfies:
where aL is the actual linear thermal expansion coefficient of
the recording layer, the actual linear thermal expansion coefficient of
the recording layer is the linear thermal expansion coefficient
measured when the recording layer is sandwiched between the layers,
an is the temperature coefficient of the refractive index of the
recording layer, a is the instinct linear thermal expansion coefficient
of the recording layer, the instinct linear thermal expansion coefficient
of the recording layer is the linear thermal expansion coefficient
measured when the recording layer is not sandwiched between the
layers, and v is the Poisson's Ratio of the material of the recording
layer,
The issues presented on appeal are: did the Examiner reversibly err in
finding Kawano describes a collinear holographic storage medium wherein
( 1) the actual and instinct linear thermal expansion coefficients of the
recording layer are substantially the same, as recited in appealed claim 1?
(2) the actual linear thermal expansion coefficient of the recording layer
m(f (1-·v)+a(l+vl
<."t.1. '::"';' ~n~•~~;;_~:~•~n~n~~~·n~·nw•w•~•~•~n..:'.•
satisfies the equation , as recited in appealed claim 7?
With respect to the recording layer and its actual and instinct linear thermal
expansion coefficients, the Specification describes an embodiment in which
collinear holographic storage medium 100 includes reflection layer 110, dichroic
film 140, and recording layer 120 sandwiched between a pair of substrates 130.
Specification filed August 24, 2010 ("Spec.") 11 :9-13; Fig. 1. The Specification
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Application 12/861,844
discloses that the linear (or instinct linear )4 thermal expansion coefficient of the
material of recording layer 120 is measured when recording layer 120 is not
sandwiched in collinear holographic storage medium 100 and, therefore, thermally
expanded freely without being restrained by the other layers of collinear
holographic storage medium 100. Spec. 10: 15-19. Conversely, the lateral (or
actual)5 linear thermal expansion coefficient of recording layer 120 is measured
when recording layer 120 is sandwiched in collinear holographic storage medium
100 and, therefore, restrained by other layers of collinear holographic storage
medium 100. Spec. 10:7-10. In this embodiment, the hardest layers used in
collinear holographic storage medium 100 are substrates 130. Id. at 12:19-20.
Substrates 130 apply a shear force to recording layer 120 such that the actual linear
thermal expansion coefficient of recording layer 120 is substantially the same as
the linear thermal expansion coefficient of substrates 130. Id. at 10: 11-14.
The Specification discloses that the actual linear thermal expansion
coefficient of recording layer 120 can be controlled to be substantially the same as
the linear thermal expansion coefficient of the material of recording layer 120 by
either (1) removing substrate layers 130 such that the hardest layer in collinear
holographic storage medium 100 is recording layer 120 (id. at 14:22-15:2) or (2)
using substantially the same materials for substrates 130 and recording layer 120,
4 The Examiner determines the claim phrase "instinct linear thermal expansion
coefficient" has the same meaning as the phrase "linear thermal expansion
coefficient" used in the Specification. Ans. 3. Appellants do not disagree with this
determination. See generally Reply Brief filed February 4, 2015 ("Reply Br.").
5 The Examiner determines the claim phrase "actual linear thermal expansion
coefficient" has the same meaning as the phrase "lateral linear thermal expansion
coefficient" used in the Specification. Ans. 3. Appellants do not disagree with this
determination. See generally Reply Br.
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Appeal2015-003994
Application 12/861,844
e.g., "substrates 130 may be made of Polymethylmethacrylate (PMMA), and []
recording layer 120 may be made of a photopolymer including ... (PMMA)" (id.
at 14: 14-18). According to the Specification, the inventors have found that the
actual and instinct linear thermal expansion coefficients of recording layer 120 are
substantially the same when the actual linear thermal expansion coefficient of the
~·£:t. (l-·v)-+-all +v)
(.1. ~· ~n~n~·~:,~n~n~~-~~-~~•~•w••~••~n~n~n~n•..:.•
f, <')
recording layer satisfies the equation ;.:. . Id. at 13: 4-7.
In the prior art disclosure relied on by the Examiner in rejecting claim 1 (see
Final Act. 6), Kawano describes a holographic recording medium having a
recording layer that contains a photorefractive material (Kawano 8:62-64), such as
"a dispersion of diarylethene in polyvinyl alcohol (PV A), polymethylmethacrylate
(PMMA) or the like" (id. at 7: 1--4). The recording layer may be positioned
between a pair of substrates (id. at 9:5-6). Examples of suitable substrate materials
"include glass, polycarbonate, acrylic resin such as polymethylmethacrylate,
vinyl chloride resin such as polyvinyl chloride and vinyl chloride copolymer,
epoxy resin, amorphous polyolefin, polyester, and metals such as aluminum" or
combinations thereof. Id. at 9:30-35. The Examiner finds that because
Kawano et al teaches that the recording layer may be sandwiched
between a pair of substrate layers that may comprise the same PMMA
material, ... the instinct linear thermal expansion coefficients of the
recording layer and the sandwiching substrate layers are the same and
the actual linear thermal expansion coefficient and instinct linear
thermal expansion coefficients of the recording layer should be
substantially the same.
Final Act. 6 (citing Kawano 9:4-6, 30-35). The Examiner further finds although
Kawano does not disclose that the actual linear thermal expansion coefficient of
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Appeal2015-003994
Application 12/861,844
the recording layer should satisfy the equation recited in appealed claim 7,
Kawano's
recording layer is comprised of the PMMA material which has
Poisson's ratio of 0.33, the linear thermal coefficient (a) of
2.5xl0-4/°C and the temperature coefficient of the refractive index (an)
of -3x10-4/°C) which makes the actual linear thermal expansion
coefficient ha[ve] a value of about 2.67xl0-4/°C). This means the
actual linear thermal expansion coefficient is essentially the same as
the instinct linear thermal expansion coefficient of the recording layer
(PMMA), which satisfies the equation.
Id. at 6-7.
Appellants argue the actual linear thermal expansion coefficient of the
recording layer is a function of the instinct linear thermal expansion coefficient of
the hardest layer in the holographic recording medium, and the Examiner has not
made a finding that Kawano' s substrates are the hardest layers in Kawano' s
holographic recording medium. App. Br. 15. Appellants further argue that even if
Kawano' s substrates are the hardest layers, Kawano' s disclosure that the substrates
and recording layer may be made of PMMA materials does not amount to a
teaching that the actual and instinct linear thermal expansion coefficients of
Kawano' s recording layer are substantially the same, because Kawano fails to
disclose that the substrate material and the recording layer material are the same
PMMA material. Id. In this regard, Appellants note that commercial PMMA
materials have different coefficients of thermal expansion ranging from 7x 10-5 to
l lxl0-5. Id. (citing PLEXIGLAS® GS/PLEXIGLAS® XT Product Description
(July 2008), filed as Exhibit A to Appellants' May 25, 2014 Response to Office
Action). Appellants contend, likewise, that given the variability in PMMA
materials, Kawano fails to describe a structure in which the recording layer has an
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Application 12/861,844
actual linear thermal expansion coetlicient that satisfies the equation
.. --· "·((\1 ·0 ·v)+a(! +v)
(.~. ·-· ........................... .,,, .. ~ ...... ..._,., .. ..._,., .. ....., .... ,, .. ,.. ..... ~ ...................................... .
. 2
. Id. at 15-16.
In response to Appellants' arguments, the Examiner finds the
PLEXIGLAS® GS/PLEXIGLAS® XT Product Description "indicates that
essentially all of the commercial PMMA materials shown have the same
CTE value." Ans. 5. We agree with Appellants that the Examiner's finding is not
supported, as evidenced by page 7 of the PLEXIGLAS® GS/PLEXIGLAS® XT
Product Description. See Reply Br. 5.
The Examiner further finds
[ s ]ince the cited Kawano et al reference does not teach specifically to
use different PMMA materials with different CTE values for the
recording layer and for the pair of substrates, it is implicitly true and
reasonable to one skilled in the art to have used the same PMMA
material with same CTE value for both the recording layer and the
substrates simply for the reasons to ease the step of manufacturing the
recording medium.
Ans. 5. The Examiner further finds
it is really a common knowledge in the art to match the linear thermal
expansion coefficients of adjacent layers of a multilayer structure
since by doing so, the adjacent layers will have essentially the same
thermal expansion rate that will eliminate the unwanted distortion of
the multilayer structure due to the different expansion of the adjacent
layer under thermal influence.
Id. The Examiner does not identify support for either of these findings. We are
not persuaded, therefore, that the ordinary artisan necessarily would have selected
the same material for use in forming the recording and substrate layers from
Kawano's lists of suitable materials for use in forming these layers. Further, as
argued by Appellants, even if the ordinary artisan had selected PMMA materials
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Application 12/861,844
for both the recording and substrate layers, the Examiner has not identified
persuasive evidence to support a finding that such person would have selected
PMMA materials having the same coefficients of thermal expansion. See Reply
Br. 5.
In an anticipation rejection, "it is not enough that the prior art reference ...
includes multiple, distinct teachings that [an ordinary] artisan might somehow
combine to achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must "clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the art to
the [invention] without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference." Id. (quoting In reArkley, 455 F.2d 586, 587 (CCPA 1972)). Thus,
while "[s]uch picking and choosing may be entirely proper in the making of a 103,
obviousness rejection ... it has no place in the making of a 102, anticipation
rejection." Arkley, 455 F.2d at 587-88.
For the reasons expressed above and in the Appeal and Reply Briefs, the
Examiner has not shown by a preponderance of the evidence that Kawano
anticipates claims 1-9 and 11-14. The Examiner's rejections of claims 10 and 15
under 35 U.S.C. § 103(a) are based on the same findings of fact. See Final Act.
10-11. Accordingly, the Examiner's decision to reject claims 1-15 is:
REVERSED
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