Ex Parte Zhou et al

Board of Patent Appeals and Interferences

Sep 3, 2003

09332240 (B.P.A.I. Sep. 3, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte GUO-FU ZHOU and ROEL VAN WOUDENBERG

Appeal No. 2003-0709
Application No. 09/332,240

ON BRIEF

Before KIMLIN, LIEBERMAN and PAWLIKOWSKI, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-8,
all the claims remaining in the present application. Claim 1 is
illustrative:
1. An optical information medium for rewritable recording at
constant angular velocity by means of a laser-light beam, said
medium comprising a disc-shaped substrate carrying a stack of
layers, which stack comprises in this order:
- a first dielectric layer,
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Application No. 09/332,240
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- a recording layer of a phase-change material which is able to
record amorphous marks when in the crystalline state, the
recording layer forming an annular recording area with an inner
and an outer radius,
- a second dielectric layer,
- a metal mirror layer,
characterized in that the recording layer has a gradually
increasing thickness from the inner to the outer radius.
The examiner relies upon the following reference as evidence
of obviousness:
Sato (JP '827) JP 3-216827 Sep. 24, 1991
(Japanese patent)
Appellants' claimed invention is directed to an optical
information medium for rewritable recording by means of a laser-
light beam. The medium comprises, inter alia, a recording layer
of a phase-change material that forms an annular recording area
having an inner and an outer radius. Also, the recording layer
increases in thickness from the inner to the outer radius.
According to appellants, "by shaping the recording layer in this
manner the increase in the relative linear velocity of the
recording layer is readily compensated for by increasing the
crystallization rate of the recording layer" (page 5 of Brief,
first paragraph). Also, the present specification demonstrates
that "with increasing radial distance r from the center of the
disc, the CET [complete erasure time] of the recording layer
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Application No. 09/332,240
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decreases (i.e., a higher crystallization rate), which meets the
increase of the linear velocity of the recording layer in said
radial direction" (page 10 of specification, first paragraph).
Appealed claims 1-8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over JP '827.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that the examiner has failed to establish a prima facie case of
obviousness for the claimed subject matter. Accordingly, we will
not sustain the examiner's rejection.
Although JP '827 discloses an optical information medium for
rewritable recording comprising the presently claimed first and
second dielectric layers, recording layer and metal mirror layer,
the examiner appreciates that the reference does not disclose
that the recording layer has a gradually increasing thickness
from the inner to the outer radius, as presently claimed.
Indeed, the reference teaches quite the opposite, i.e., a
recording layer wherein its thickness gradually decreases from
the inner to the outer radius. Notwithstanding this lack of a
teaching of the claimed thickness for the recording layer, the
examiner legally concludes that "it would have been an obvious
matter of design choice to change the direction of size change
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Application No. 09/332,240
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from one direction to another direction, since such modification
would have involved a mere change in the size of a component
(from one direction to another direction)" (page 4 of Answer,
fourth paragraph). However, the examiner has not refuted
appellants' argument that "[t]his is not a change in size, as the
Examiner contends, but is a change in shape since the recording
layers of the patent and of the optical recording medium defined
by Claim 1 may have the same weight and surface area but have
different relative thickness" (page 7 of Brief, last paragraph).
Moreover, appellants' specification provides evidence that
changing the relative thickness of the recording layer is not
simply a matter of design choice by stating that JP '827 "relates
to a different problem: the thickness reduction in the radial
direction allows for recording at a constant power when the
medium rotates at a constant angular velocity" (page 8 of
specification, lines 11-13). The examiner has pointed to no
suggestion in JP '827 that the recording layer may have a
gradually increasing thickness from the inner to the outer
radius, nor has the examiner established that one of ordinary
skill in the art would have reasonably expected that modifying
the recording layer of JP '827 in the manner claimed would have
resulted in the effect demonstrated in the present specification.
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Application No. 09/332,240
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Lacking such a suggestion in the prior art or such scientific
reasoning by the examiner, we must conclude that the examiner's
conclusion of obviousness is without the requisite factual
support.
In conclusion, based on the foregoing, we are constrained to
reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
PAUL LIEBERMAN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
BEVERLY PAWLIKOWSI )
Administrative Patent Judge )
ECK:clm
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Application No. 09/332,240
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Corporate Patent Counsel
U.S. Philips Corp.
580 White Plains Road
Tarrytown, NY 10591