Ex parte TYAN et al.

Board of Patent Appeals and Interferences

Mar 24, 2000

08399787 (B.P.A.I. Mar. 24, 2000)

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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YUAN-SHENG TYAN,
PRANAB K. RAYCHAUDHURI, KEE-CHUAN PAN,
and GEORGE R. OLIN
__________
Appeal No. 1997-0495
Application 08/399,787
__________
ON BRIEF
__________
Before GARRIS, OWENS, and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1 through 4 which are all of the claims in the
application.
Appeal No. 1997-0495
Application No. 08/399,787
2
The subject matter on appeal relates to a recordable
element having a substrate and on the surface of the
substrate, a recording layer comprising material having a
certain formula and a light reflecting layer, wherein the
light reflecting layer and the recording layer are selected
such that the element reflectivity is about or greater than
70% at about 780 nm. Further details of this appealed subject
matter are set forth in representative independent claim 1
which reads as follows:
1. A recordable element having a substrate and on the
surface of the substrate, a recording layer and a light
reflecting layer, the improvement comprising:
a) a recording layer including material given by the
formula (Te Ge C H O ), a, b, c, d, and e are atomica b c d e
percents and (c + d) > 40, d > 10, a > 5, b > 5, and e >0
such that
a + b + c + d + e = 100; and
b) the light reflecting layer and the recording
layer being selected such that the element R (element max
reflectivity) is about or greater than 70% at about
780 nm.
The references relied upon by the examiner as evidence of
obviousness are:
Chen et al. 5,242,784 Sep. 7, 1993
(Chen) (filed Jun. 22, 1992)
Yamada et al. 5,273,861 Dec. 28,
1993
Appeal No. 1997-0495
Application No. 08/399,787
As indicated by the appellants on page 4 of the brief,1
the appealed claims will stand or fall together.
3
(Yamada) (filed Dec. 28, 1992)
Kuroiwa et al. 1-137437 May 30,
1989
(Kuroiwa) (JP)
All of the claims on appeal stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Kuroiwa and Chen in view of
Yamada.1
We refer to the brief and to the answer for the
respective positions advocated by the appellants and the
examiner respectively concerning the above noted rejection.
OPINION
For the reasons set forth below, we cannot sustain this
rejection.
The examiner concludes that “[i]t would have been obvious
to one skilled in the art to add a reflective layer alone or
with a dielectric layer as taught by Yamada . . . or Chen . .
Appeal No. 1997-0495
Application No. 08/399,787
4
. to the recording medium of Kuroiwa” (answer, page 6). From
our perspective, however, the examiner has failed to carry his
initial burden of establishing a reason or motivation coupled
with a reasonable expectation of success in support of this
proposed addition. In re O’Farrell, 853 F.2d 894, 903-904, 7
USPQ2d 1673, 1680-1681 (Fed. Cir. 1988).
For example, Chen addresses a temperature problem
exhibited by certain active (i.e., recording) layer materials
which exhibit a lower reflectivity in the amorphous and liquid
states than in the crystalline state whereby the material
absorbs more light and becomes hotter as it transforms from a
crystalline to a liquid phase (e.g., see lines 7 through 27 in
column 2). This problem is avoided by providing an optical
recording media having such an active material layer with a
certain structure including a dielectric layer and a
reflective layer and including certain layer thicknesses such
that the reflectivity of the liquid state is higher than of
the crystalline state thereby avoiding the aforementioned
temperature problem. On this record, there is no basis for
concluding that the recording or active material of Kuroiwa
exhibits the temperature problem addressed and solved by Chen.
Appeal No. 1997-0495
Application No. 08/399,787
5
It follows that Chen’s reasons for providing an optical
recording media with certain layers including dielectric and
reflecting layers and certain thicknesses have no apparent
applicability to the optical recording medium taught by
Kuroiwa. Moreover, we perceive no other reason, and the
examiner points to none specifically, for providing Kuroiwa’s
medium with layers including dielectric and reflecting layers
of the type taught by Chen.
Similar rationale applies to the Yamada patent. While
Yamada’s recording medium includes dielectric and optional
reflecting layers, the examiner refers to no specific teaching
in this reference which would have suggested providing the
optical recording medium of Kuroiwa with such layers.
Certainly, the problem/solution addressed by Yamada (equal
temperature-rise profiles of the recording layer in the
recorded and erased states; see lines 48-54 in column 3) has
no apparent applicability to Kuroiwa’s recording medium.
Even if we were to assume that providing Kuroiwa’s medium
with a reflecting layer would be potentially beneficial for
some unknown reason, the examiner’s obviousness conclusion
still would be improper. This is because the examiner has
Appeal No. 1997-0495
Application No. 08/399,787
We recognize that Chen discloses certain reflectivities. 2
However, these reflectivities relate to the active material in
crystalline, amorphous and liquid states whereas the
reflectivity of the appealed claims relates to the recordable
element reflectivity. Further, as previously indicated, the
6
failed to establish that an artisan with ordinary skill would
have had a reasonable expectation of success in providing
Kuroiwa with a reflecting layer. Indeed, the aforementioned
fact that Kuroiwa’s recording materials do not correspond to
those of Chen or Yamada and seemingly do not suffer the
problems addressed by Chen or Yamada militates against such an
expectation. In re O’Farrell, id.
In addition to the foregoing, the examiner has not
advanced any probative evidence in support of his conclusion
that “[i]t would have been obvious to one skilled in the art .
. . to optimize the thicknesses of the layers [of the modified
Kuroiwa recording medium] to increase the reflectivity in
excess of 70%” (answer, pages 6-7) as required by the appealed
claims. More fundamentally, the examiner has not even pointed
to any specific teaching in the applied prior art which
evinces that the here claimed element reflectivity
characteristic constitutes a perimeter recognized in the prior
art as being result effective. Moreover, the examiner has2
Appeal No. 1997-0495
Application No. 08/399,787
reflectivities and consequent temperature problems addressed
by Chen have no apparent applicability to the optical
recording medium of Kuroiwa.
7
proffered no evidence that reflectivities of the type here
claimed would be desirable (or even possible) in Kuroiwa’s
medium.
For the above stated reasons, we cannot sustain the
examiner’s section 103 rejection of claims 1 through 4 as
being unpatentable over Kuroiwa and Chen in view of Yamada.
Appeal No. 1997-0495
Application No. 08/399,787
8
The decision of the examiner is reversed.
REVERSED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Terry J. Owens ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )
tdl
Appeal No. 1997-0495
Application No. 08/399,787
9
Thomas H. Close
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201