Ex Parte Tawa

Board of Patent Appeals and Interferences

Jul 29, 2008

10974162 (B.P.A.I. Jul. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FUMIHIRO TAWA
____________

Appeal 2008-3419
Application 10/974,162
Technology Center 1700
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Decided: July 29, 2008
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Before BRADLEY R. GARRIS, CHUNG K, PAK, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals from a rejection of claims 1-10 and 13-15,
which are all of the pending claims.
THE INVENTION
The Appellant claims a multilayer optical recording medium and a
storage device for recording and/or reproducing to/from the optical
recording medium. Claim 10 is illustrative:

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Application 10/974,162

10. A storage device for recording and/or reproducing
information to/from a multilayer optical recording medium including
a plurality of set structures each consisting of a recording layer, a
photochromic layer, and an optical waveguide layer stacked in this
order from the irradiation side of a light beam for
recording/reproducing information, said storage device comprising:

a rotating mechanism for rotating said multilayer optical
recording medium;

a first optical head for directing a first light beam having a
center wavelength λ1 to said multilayer optical recording medium to
record/reproduce information to/from an arbitrary one of said
recording layers; and

a second optical head for directing a second light beam having a
center wavelength λ2 different from said center wavelength λ1 to a
selected one of said optical waveguide layers;

said first optical head being located in a region where said
second light beam directed from said second optical head propagates
in said selected optical waveguide layer,

wherein said first optical head has a first objective lens for
focusing said first light beam on said arbitrary recording layer, and
said second optical head has a second objective lens for focusing said
second light beam on said selected optical waveguide layer,

said storage device further comprising;

a first photodetector for detecting reflected light of said first
light beam reflected on said photochromatic layer whose reflectance
has been increased by said second light beam propagating in said
selected optical waveguide layer;

a first focus error signal generating circuit for generating a
focus error signal for said first objective lens according to an output
from said first photodetector;
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a first objective lens driving circuit for driving said first
objective lens according to an output from said first focus error signal
generating circuit;

a second photodetector for detecting reflected light of said
second light beam;

a second focus error signal generating circuit for generating a
focus error signal for said second objective lens according to an
output from said second photodetector; and

a second objective lens driving circuit for driving said second
objective lens according to an output from said second focus error
signal generating circuit.

THE REFERENCES
Mizuno US 6,069,860 May 30, 2000
Yajima (Hideo)1 JP 13-184641 Jul. 6, 2001
(as translated)
Ueda US 6,418,108 B1 Jul. 9, 2002
Yonezawa US 2002/1054582 A1 Oct. 24, 2002
Yamashita US 6,628,593 B1 Sep. 30, 2003
Akiyama US 2005/1035218 A1 Jun. 23, 2005
(effective filing date Oct. 5, 1999)

THE REJECTIONS
The claims stand rejected as follows: claims 1, 3-5 and 7 under
35 U.S.C. § 112, first paragraph, enablement requirement; claims 1-9 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter the applicant
regards as the invention; claim 10 under 35 U.S.C. § 102(b) over Mizuno;

1 The Examiner (Ans. 4) and the Appellant (Br. 7) refer to Yajima as
“Hideo”. For consistency, we likewise do so.
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claims 10 under 35 U.S.C. § 102(b) over Yamashita; claims 10 and 14 under
35 U.S.C. § 102(b) over Yonezawa; claims 10 and 13 under 35 U.S.C. § 103
over Yamashita or Yonezawa, in view of Ueda; claims 10 and 14 under
35 U.S.C. § 103 over Akiyama; claims 10, 14 and 15 under 35 U.S.C. § 103
over Akiyama in view of Hideo; and claims 10, 13 and 14 under
35 U.S.C. § 103 over Akiyama in view of Ueda.2
OPINION
We reverse the Examiner’s rejections.
Rejection under 35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
The Appellant’s original Specification discloses a multilayer optical
recording medium having first and second optical waveguide layers as
required by the Appellant’s claims 1, 3-5 and 7 (Spec. 17; fig. 1). The inner
edge of each waveguide layer has an inclined surface that enables a light
beam to be introduced into the waveguide layer such that the layer functions
as a waveguide (Spec. 18, 26; figs. 1, 4).
The Examiner argues that the Appellant’s original disclosure does not
provide enablement except for placing the waveguide layer access along the
inner radius of the optical recording medium (Ans. 4, 9). For other

2 Rejections of claim 10 under 35 U.S.C. § 102(b) over Katayama
(US 5,093,821), and claims 10 and 13 under 35 U.S.C. § 103 over Katayama
in view of Ueda are withdrawn in the Examiner’s Answer (Ans. 3).
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embodiments, the Examiner argues, “undue experimentation would be
needed to bring the light into the waveguiding layer so that it is waveguided
(Snell’s Law)” (Ans. 10).
The Examiner has not provided evidence that more than routine
experimentation would be required for one of ordinary skill in the art to
introduce light beams so as to provide propagation of the light beams
through the Appellant’s waveguide layers. The Examiner’s mere assertion is
insufficient for providing a prima facie case of lack of enablement as to the
Appellant’s claims 1, 3-5 and 7.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claim language, as it would have been interpreted by one of
ordinary skill in the art in light of the Appellant’s Specification, sets out and
circumscribes a particular area with a reasonable degree of precision and
particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner argues that “[c]laims 1 and 7 should indicate that the
order of the layers are recited from the side of the laser incidence” (Ans. 5),
and that “[t]he waveguide layers should indicate that they direct the second
light beam into the photochromic layer, which causes the photochromic
layer to become more reflective.” See id.
The Examiner does not point to any language in the Appellant’s
claims that the Examiner considers to be unclear. Hence, the Examiner has
not established a prima facie case of indefiniteness of the Appellant’s
claims 1-9.
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Rejection of claim 10 under
35 U.S.C. § 102(b) over Mizuno

“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
The portion of Mizuno relied upon by the Examiner is Mizuno’s
discussion of a prior art device (Ans. 6). That device includes two optical
heads (70, 83), each of which records/reproduces information to/from a
different disk (10, 11) (col. 1, l. 64 – col. 2, l. 5; fig. 12).
The Examiner argues (Ans. 11):
In the applicant’s invention, both optical heads are on the same side of
the recording medium (see figure 2), which is the same orientation
found in figure 12 of Mizuno et al.. Therefore the dual head system
taught by Mizuno et al. meets the claim, it is just that there is no
waveguiding layer present, and none is required as the optical
recording medium is not part of the device.

Although the storage device claimed in the Appellant’s claim 10 does
not include an optical recording medium, the claim requires that the first
optical head is capable of focusing a first light beam on an arbitrary
recording layer, and that the second optical head is capable of focusing a
second light beam on a selected optical waveguide layer. The Examiner has
not established that the prior art device disclosed by Mizuno, wherein each
optical head focuses light on a different disk, has that capability. Hence, the
Examiner has not established a prima facie case of anticipation of the
invention claimed in the Appellant’s claim 10 over Mizuno.

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Rejection of claim 10 under
35 U.S.C. § 102(b) over Yamashita

Yamashita discloses a disk drive having an optical head (3) for CDs
and an optical head (4) for DVDs (col. 3, ll. 24-26). The two optical heads
operate simultaneously to determine what type of disk has been loaded, and
then the appropriate head starts the read or write operation and the other
head is halted (col. 5, ll. 36-52).
The Examiner points out that Yamashita’s two optical heads operate
simultaneously to identify the disk (Ans. 6). The Examiner, however, does
not establish that one optical head is capable of focusing a first light beam
on an arbitrary recording layer, and that the second optical head is capable of
focusing a second light beam on a selected optical waveguide layer. The
Examiner, therefore, has not established a prima facie case of anticipation of
the invention claimed in the Appellant’s claim 10 over Yamashita.
Rejection of claims 10 and 14 under
35 U.S.C. § 102(b) over Yonezawa

Yonezawa discloses an optical disk apparatus having a first optical
system that “allows information recording/reproduction using a laser beam
having a wavelength ranging from 650 nm to 780 nm, and is used for
reproduction of a CD or DVD or recording/reproduction of a DVD-RAM or
DVD-R or DVD-RW” (¶ 0041), and a second optical system that “allows
information recording/reproduction using a laser beam having a wavelength
of around 400 nm, and has a surface recording density higher than a DVD or
the like”. See id. After disk discrimination to determine the type of disk
(¶ 0043), “[t]he first and second optical systems are selectively used to
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reproduce/record information from/on these two or more different optical
disks using a plurality of laser beams having different wavelengths”
(¶ 0041).
The Examiner argues that Yonezawa’s optical heads have different
focus control circuitry (23, 28) and operate independently (Ans. 13).
The Examiner has not established that one of Yonezawa’s optical
heads is capable of focusing a first light beam on an arbitrary recording
layer, and that the other optical head is capable of focusing a second light
beam on a selected optical waveguide layer. Thus, the Examiner has not
established a prima facie case of anticipation of the invention claimed in the
Appellant’s claim 10 and its dependent claim 14 over Yonezawa.
Rejection of claims 10 and 13 under 35 U.S.C. § 103
over Yamashita or Yonezawa, in view of Ueda

The Examiner does not rely upon Ueda for any disclosure that
remedies the above-discussed deficiencies in Yamashita and Yonezawa as to
claim 10, and does not explain how the claim requirements missing from
Yamashita and Yonezawa would have been prima facie obvious to one of
ordinary skill in the art over Yamashita or Yonezawa, alone or in
combination with Ueda (Ans. 7, 14). Hence, the Examiner has not
established a prima facie case of obviousness of the inventions claimed in
the Appellant’s claim 10 and its dependent claim 13 over Yamashita or
Yonezawa, in view of Ueda.
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Rejection of claims 10 and 14 under
35 U.S.C. § 103 over Akiyama

Akiyama discloses a recording/reproducing apparatus having, in one
embodiment (fig. 1), optical heads (8a, 8b) arranged at almost the same
radial position with respect to a rotation center such that information is
recorded/reproduced from two layers (3, 5) simultaneously, thereby
doubling the speed of information transfer (¶ 0018). In another embodiment
(fig. 3) a guide groove in a first recording layer (3) is formed spirally from
the recording medium’s inner radius toward the outer radius, and a guide
groove in a second recording layer (5) is formed spirally from the recording
medium’s outer radius toward the inner radius (¶ 0024). One optical head
records/reproduces information to/from the first recording layer at the same
time as another optical head records/reproduces information to/from the
second recording layer, such that the total of the linear velocities of the two
optical heads is almost constant to provide an almost constant recording
density. See id.
The Examiner argues that Akiyama’s optical heads are independent of
each other and allow accessing different layers (Ans. 15).
As pointed out above, Akiyama’s optical heads either
record/reproduce at the same radial position, or one of them
records/reproduces by spiraling inwardly while the other spirals outwardly.
The Examiner has not established that one of Akiyama’s optical heads is
capable of focusing a first light beam on an arbitrary recording layer, and
that the other optical head is capable of focusing a second light beam on a
selected optical waveguide layer, or that Akiyama would have rendered that
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capability prima facie obvious to one of ordinary skill in the art. The
Examiner, therefore, has not established a prima facie case of obviousness of
the invention claimed in the Appellant’s claim 10 or its dependent claim 14
over Akiyama.
Rejections under 35 U.S.C. § 103 of claims 10, 14 and 15
over Akiyama in view of Hideo, and claims 10, 13 and 14
over Akiyama in view of Ueda

The Examiner does not rely upon Hideo or Ueda for any disclosure
that remedies the above-discussed deficiency in Akiyama as to claim 10
(Ans. 8, 9, 15-17). Thus, the Examiner has not established a prima facie
case of obviousness of the inventions claimed in the Appellant’s claim 10
and its dependent claims 14 and 15 over Akiyama in view of Hideo, or
claim 10 and its dependent claims 13 and 14 over Akiyama in view of Ueda.
DECISION
The rejections of claims 1, 3-5 and 7 under 35 U.S.C. § 112, first
paragraph, enablement requirement, claims 1-9 under 35 U.S.C. § 112,
second paragraph, claim 10 under 35 U.S.C. § 102(b) over Mizuno, claim10
under 35 U.S.C. § 102(b) over Yamashita, claims 10 and 14 under
35 U.S.C. § 102(b) over Yonezawa, claims 10 and 13 under 35 U.S.C. § 103
over Yamashita or Yonezawa, in view of Ueda, claims 10 and 14 under
35 U.S.C. § 103 over Akiyama, claims 10, 14 and 15 under 35 U.S.C. § 103
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over Akiyama in view of Hideo, and claims 10, 13 and 14 under
35 U.S.C. § 103 over Akiyama in view of Ueda are reversed.
REVERSED

tf/ls

PATRICK G. BURNS, ESQ.
GREER, BURNS & CRAIN, LTD.
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