Ex Parte Suzawa et al

Board of Patent Appeals and Interferences

Mar 12, 2004

09551537 (B.P.A.I. Mar. 12, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 22

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUKI SUZAWA, HIROYUKI ARIOKA,
and TOMOKI USHIDA

____________

Appeal No. 2003-1861
Application No. 09/551,537
____________

HEARD: February 19, 2004
____________

Before PAK, DELMENDO and PAWLIKOWSKI, Administrative Patent
Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-5.
Claims 1, 2, and 5 are representative of the subject matter
on appeal and are set forth below:
1. A process for producing an optical recording
medium containing an organic solvent in an organic dye
layer in an amount of 2 to 15% by weight based on an
organic dye, the process comprising applying a
solution, prepared by dissolving the organic dye in
the organic solvent, onto a light-transmittable
substrate by a spin coating method to form the organic
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Application No. 09/551,537

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dye layer, thereafter forming a reflecting layer on
the organic dye layer without performing a drying
treatment of the organic solvent left in the organic
dye layer and further forming a protective layer on
the reflecting layer.

2. A process for producing an optical recording
medium according to claim 1, wherein the spin coating
is performed at a rotating speed of 3500 rpm or more
in the formation of the organic dye layer.

5. An optical recording medium according to
Claims 3 or 4, wherein said organic solvent is mainly
2,2,3,3-tetrafluoro-1-propanol.

Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hurditch.
Claims 2 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hurditch in view of Cunningham.
On pages 3-4 of the brief, appellants set forth their
grouping of the claims. To the extent that a claim is argued
separately, we will consider such claim in this appeal. See
37 CFR § 1.192(c)(7) and (8)(2003).

OPINION
I. The 35 U.S.C. § 103 rejection of claims 1, 3, and 4 as
being unpatentable over Hurditch1

Beginning on page 5 of the brief, appellants argue that
both claims 1 and 3 require that the organic solvent, which is

1 We observe that on page 5 of the brief, appellants indicate that this
rejection is under 35 U.S.C. § 102(e). We believe this is an
inadvertent error because appellants argue this rejection on the issue
of obviousness.
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Application No. 09/551,537

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contained in the organic dye layer, is in an amount of 2% to
about 15% by weight, based on the organic dye. On page 6 of the
brief, appellants argue that Hurditch discloses that the
recording layer is formed by dissolving the dye mixture together
with any additional nickel stabilizer in a coating solvent at a
concentration in the range of 2-10%. Appellants argue that this
amount therefore includes a nickel stabilizer.
We find, in column 10, at lines 15-17 of Hurditch, that
Hurditch indicates that the amount of nickel stabilizer can be
from about 1 to 25% by weight. If, for example, the amount of
about 1% by weight of nickel stabilizer is chosen, then the
amount of organic solvent would be as much as about 9%, which
falls within appellants’ claimed range of from 2 to 15%.
Therefore, we are not convinced by appellants’ arguments in this
regard.
Appellants further argue that their claim 1 does not
require performing a drying treatment step of the organic
solvent. Appellants argue that Hurditch must require a drying
treatment step because of the disclosure found at lines 9-10 of
column 11 of Hurditch. Appellants argue that this disclosure
indicates that because the drying is additional, then it must be
in addition to any drying that is already occurring or has
already occurred.
We disagree with this interpretation of Hurditch and we
refer to the examiner’s comments found on pages 5-6 of the
answer. Here, the examiner correctly states that there is
nothing in Hurditch that discloses additional drying or an
initial drying. We agree. An optional drying step to further
remove residual solvent does not suggest or mean that another
drying step must have occurred or is already occurring.
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Application No. 09/551,537

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In the reply brief, appellants set forth similar arguments
as set forth in their brief. Appellants additionally
specifically argue the rejection of claims 2 and 5 under
35 U.S.C. § 103 as being obvious over Hurditch in view of
Cunningham. Appellants argue that the examiner continues to
misread and misinterpret Hurditch for the reasons discussed
above. We disagree for the same reasons as stated above.
Appellants argue that the rotating speeds are recited in
claim 2. Appellants argue that Cunningham does not make up for
the deficiencies of Hurditch in connection with the amount of
organic solvent in the organic dye layer and the absence of a
drying treatment.
The examiner relies upon Cunningham for appellants’
particularly claimed solvent of 2,2,3,3-tetrafluoro-propanol.
The examiner further states, and the appellants do not dispute
in the brief, that the claimed rotating speed of 3500 rpm is a
choice based upon determining, through routine experimentation,
a workable or even optimum range of rotating speeds, a result-
effective variable. Absent any evidence of any critically of
the particularly claimed rotating speed of 3500 rpm, we agree
with the examiner that the subject matte would have been obvious
to one of ordinary skill in the art.
In view of the above, we affirm each of the rejections.

II. Conclusion
The rejection of claims 1, 3, and 4 under 35 U.S.C. § 103
as being unpatentable over Hurditch is affirmed.
The rejection of claims 2 and 5 under 35 U.S.C. § 103 as
being unpatentable over Hurditch in view of Cunningham is
affirmed.

Appeal No. 2003-1861
Application No. 09/551,537

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

AFFIRMED

CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
)BOARD OF PATENT
) APPEALS AND
ROMULO H. DELMENDO ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
Appeal No. 2003-1861
Application No. 09/551,537

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