Ex parte Suwabe

Board of Patent Appeals and Interferences

Jun 30, 1999

08295268 (B.P.A.I. Jun. 30, 1999)

Application for patent filed August 24, 1994. 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journal and (2) is not binding precedent of the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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASATSUGU SUWABE
____________
Appeal No. 96-3961
Application No. 08/295,2681
____________
ON BRIEF
____________
Before HAIRSTON, KRASS and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-8, all of the claims pending in the present
application. An amendment after final rejection was filed
November 13, 1995 and was entered by the Examiner.
Appeal No. 96-3961
Application No. 08/295,268
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The claimed invention relates to an optical disk
recording medium having a hub portion provided on one side of
a single layer disk substrate and a reinforcing plate provided
on the opposite side of the substrate.
Claim 1 is illustrative of the invention and reads as
follows:
1. An optical disk recording medium comprising:
a single layer disk substrate, information data being
writable in a data read/write side thereof, said substrate
further having an opening formed therethrough at a central
portion thereof;
a hub portion provided on one side of said disk and
covering said opening, said hub portion including a circular
magnetic plate having a centering opening provided at a
position corresponding to a center of said disk;
a reinforcing plate provided on a side of said substrate
opposite said one side on which said hub portion is provided,
said reinforcing plate also covering said opening of said
substrate and having a center opening formed therethrough.
The Examiner relies on the following references:
Ommori et al. (Ommori) 4,694,370 Sep. 15,
1987
Kikuchi 4,944,982 Jul. 31,
1990
Ota et al. (Ota) 5,265,086 Nov. 23,
1993
Naito 62-80240 May 22,
1987
Appeal No. 96-3961
Application No. 08/295,268
A copy of the translation provided by the U. S. Patent2
and Trademark Office, June 8, 1999, is included and relied
upon for this decision.
Since both Appellant and the Examiner refer to the3
Japanese patent publication by patent number rather than the
inventor’s name, we will do so also in this decision to
maintain consistency.
3
(Japanese Patent Publication)2
The rejections of the appealed claims are set forth by
the Examiner as follows:
1. Claims 1-3 stand finally rejected under 35 U.S.C. §
103 as being unpatentable over Japanese patent ‘240 in view3
of Ota.
2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103
as being unpatentable over Japanese patent ‘240 in view of Ota
and further in view of Ommori.
3. Claims 6-8 stand finally rejected under 35 U.S.C. §
103 as being unpatentable over Japanese patent ‘240 in view of
Kikuchi.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the
respective details.
OPINION
Appeal No. 96-3961
Application No. 08/295,268
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We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence
of obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s
arguments set forth in the Brief along with the Examiner's
rationale in support of the rejections and arguments in
rebuttal
set forth in the Examiner's Answer. It is our view, after
consideration of the record before us, that the collective
evidence relied upon and the level of skill in the particular
art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims 1-
8. Accordingly, we reverse.
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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner is expected to make the factual
Appeal No. 96-3961
Application No. 08/295,268
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determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
Appeal No. 96-3961
Application No. 08/295,268
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of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claim 1, the Examiner, as the
basis for the obviousness rejection, seeks to modify Japanese
patent ‘240 by relying on Ota to supply the missing teaching of
a reinforcing plate provided on the opposite side of a
substrate from a hub portion. In the Examiner’s view, the
desire to increase stability of the hub arrangement of Japanese
patent ‘240 would serve as a motivating factor to one of
ordinary skill to add a reinforcing plate as taught by Ota.
In response, Appellant attacks the Examiner’s
characterization of the Figure 9 hub 31 of Ota as a reinforcing
plate. Additionally, Appellant contends that Ota’s hub
arrangement does not include a reinforcing plate on the
opposite side of a substrate from a hub portion.
Upon careful review of the cited references, we agree with
both of the above assertions of Appellant. In our opinion,
there is nothing in the disclosure of Ota to suggest that the
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Application No. 08/295,268
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hub 31 serves to reinforce the substrate in any manner.
Further, there is no reasonable interpretation of the hub
construction illustrated in Figure 9 that would support a
finding that a reinforcing plate is provided on opposite sides
of a substrate from a hub portion as claimed. We further agree
with Appellant’s stated position (Brief, page 7) as to the
Examiner’s failure to establish proper motivation for the
proposed combination of references. It is our view that, even
assuming arguendo that the hub structure of Ota could be
considered to include a reinforcing plate situated on the
opposite side of a substrate from a hub portion, no motivation
exists for modifying the Japanese patent ‘240 in the manner
suggested by the Examiner. There is nothing in the disclosure
of Japanese patent ‘240 to indicate that lack of stability was
ever a problem. The 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). The only basis
for applying Ota’s teachings to the Japanese patent ‘240 device
comes from an improper attempt to reconstruct Appellant's
Appeal No. 96-3961
Application No. 08/295,268
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invention in hindsight. Accordingly, we can not sustain the
Examiner's obviousness rejection of independent claim 1. Since
all of the limitations of independent claim 1 are not suggested
by the applied prior art, we can also not sustain the
Examiner's rejection of appealed claims 2 and 3 which depend
therefrom.
With respect to dependent claims 4 and 5, the Examiner
adds Ommori to the combination of Japanese patent ‘240 and Ota
solely to meet the reinforcing plate “groove” limitation.
Ommori, however, does not overcome the innate deficiencies of
the combination of Japanese patent ‘240 and Ota and, therefore,
we do not sustain the rejection of dependent claims 4 and 5
under
35 U.S.C. § 103.
We now turn to the Examiner’s obviousness rejection of
independent claim 6 based on the combination of Japanese patent
‘240 and Kikuchi. Appellant has argued that Kikuchi suffers
from similar deficiencies as Ota with regard to the claimed
reinforcement plate arrangement. We agree. In our opinion,
there is nothing in Kikuchi to suggest that either of the hubs
78a, 78b, reinforce the substrates 73a, 73b or, in any case,
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Application No. 08/295,268
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that any such reinforcement plate is on the opposite side of a
single substrate from a hub portion. Accordingly, since all
the limitations of independent claim 6 are not suggested by the
applied prior art, we cannot sustain the Examiner’s rejection
of independent claim 6 and claims 7 and 8 which depend
therefrom under 35 U.S.C. § 103.
In summary, we have not sustained any of the Examiner’s
rejections of appealed claims 1-8. Therefore, the decision of
the Examiner rejecting claims 1-8 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
jrg
Appeal No. 96-3961
Application No. 08/295,268
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Philip M. Shaw, Jr.
Limbach and Limbach
2001 Ferry Building
San Francisco, CA 94111
Appeal No. 96-3961
Application No. 08/295,268
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