Ex Parte Pratt et al

Patent Trial and Appeal BoardApr 29, 2016

11124747 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111124,747 0510912005 Thomas L. Pratt 33438 7590 05/03/2016 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. DC-09240 1270 EXAMINER HEYi, HENOK G ART UNIT PAPER NUMBER 2695 NOTIFICATION DATE DELIVERY MODE 05/03/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): tmunoz@tcchlaw.com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS L. PRATT and CHRISTIAAN STEENBERGEN Appeal2014-005406 Application 11/124,747 Technology Center 2600 Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and JUSTIN T. ARBES, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-005406 Application 11/124,747 STATEMENT OF CASE1 Appellants seek review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1, 12, and 22.2 We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. INVENTION The invention is directed to a multi-laser optical storage medium. Spec. 1 :7-9. Claim 1 is illustrative of the invention and is reproduced below: 1. An optical medium comprising: a material formed as a disc having a thickness and a spindle opening; a data layer disposed in the material at a first depth in the thickness, the data layer having marks representing content information, the marks sized for individual illumination by a first laser focused through the thickness at the first depth; and enabling information disposed in the material at a second depth in the thickness, the enabling information represented by marks sized for individual illumination by a second laser focused through the thickness at the second depth, the enabling information marks not distinguishable by the first laser focused through the thickness at the second depth, wherein the enabling information is needed to read the content information. 1 Our decision makes reference to Appellants' Reply Brief ("Reply Br.," filed May 31, 2011), and Appeal Brief ("App. Br.," filed March 25, 2010), and the Examiner's Answer ("Ans.," mailed May 27, 2011) and Final Office Action ("Final Act.," mailed October 15, 2009). 2 Claims 2-11, 13-21, and 23-30 were canceled previously. 2 Appeal2014-005406 Application 11/124,747 REFERENCES Sako Ito nag a us 5,802,174 US 7 ,233,562 B2 Sept. 1, 19983 June 19, 20074 REJECTION AT ISSUE Claims 1, 12, and 22 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of Itonaga and Sako. Final Act. 4-11; Ans. 4-8. ISSUES Did the Examiner err in finding that the combination of Itonaga and Sako teaches: enabling information disposed in the material at a second depth in the thickness, the enabling information represented by marks sized for individual illumination by a second laser focused through the thickness at the second depth, the enabling information marks not distinguishable by the first laser focused through the thickness at the second depth, wherein the enabling information is needed to read the content information, as recited in independent claim 1, and similarly recited in independent claims 12 and 22? Did the Examiner err by improperly combining Itonaga and Sako to reject independent claims 1, 12, and 22? 3 Application filed June 27, 1996. 4 Application filed July 16, 2004. 3 Appeal2014-005406 Application 11/124,747 ANALYSIS Independent claim 1 recites: enabling information disposed in the material at a second depth in the thickness, the enabling information represented by marks sized for individual illumination by a second laser focused through the thickness at the second depth, the enabling information marks not distinguishable by the first laser focused through the thickness at the second depth, wherein the enabling information is needed to read the content information. Claim 12 recites "applying the enabling information to illuminate a second portion of the optical medium with a red laser to read content information, the content information inaccessible without the enabling information." Claim 22 recites a "read engine operable to illuminate a first portion of the optical medium with a blue laser to read enabling information and to apply the enabling information to illuminate a second portion of the optical medium with a red laser to read content information." Appellants argue that Itonaga and Sako fail to teach the disputed limitation because nothing in either Itonaga or Sako teaches using one type of laser to enable reading of content and using another type of laser to actually read the content. App. Br. 3--4; Reply Br. 1. Appellants specifically contend that the Examiner incorrectly characterized Sako as reading data and reading a key with different lasers. App. Br. 3. We disagree with Appellants. Appellants improperly attack Itonaga and Sako individually, where the Examiner relies upon the combination of Itonaga and Sako. See Final Act. 5; Ans. 8. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 4 Appeal2014-005406 Application 11/124,747 In particular, the Examiner finds Itonaga teaches reading different layers of an optical disc with different wavelength lasers. Final Act. 4-5 (citing Itonaga Fig. 1, 5:25-34, 6:1-8); Ans. 8. Additionally, the Examiner finds Sako teaches a multilayer disc comprising encrypted data on one layer and an encryption key needed to access the encrypted data on another layer. Final Act. 5 (citing Sako 2:57-3:26, 3:63--4:36); Ans. 8. The Examiner concludes that it is the combination of Itonaga's lasers to read two different layers with Sako' s encryption techniques to read information on a second layer that teach the disputed limitation. Final Act. 5; Ans. 8. We agree with the Examiner's findings regarding both the references and the combination of the references. Appellants additionally argue the Examiner erred in combining Itonaga and Sako. App. Br. 3--4; Reply Br. 1. Specifically, Appellants contend that Sako does not "suggest a motivation" to use two different types of lasers to read different recording layers to protect against illegal copying of the content. App. Br. 3--4; Reply Br. 1. We are not persuaded of Examiner error. Appellants' argument that Sako must provide explicit motivation to combine the two references relies on the teaching, suggestion, or motivation standard; such a standard is not required. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Rather, the Examiner's obviousness rejection must be based on "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner's proffered reasoning to combine Itonaga's multilayer disc accessible via lasers of different wavelengths and Sako' s decryption technique is to prevent illegal reproduction of data on a 5 Appeal2014-005406 Application 11/124,747 disc. Final Act. 4-5 (citing Itonaga Fig. 1, 5:25-34, 6:1-8; Sako 2:57-3:26, 3:63--4:36); Ans. 8. Appellants' argument that Sako does not explicitly provide a motivation to use two different types of lasers to read different recording layers to protect against illegal copying of the content does not reveal error in the Examiner's rationale. Thus, we are not persuaded that the Examiner erred by combining Itonaga and Sako. Accordingly, we sustain the Examiner's rejection of independent claim 1. Appellants make the same arguments with respect to claims 12 and 22 as with claim 1. App. Br. 4. As such, we sustain the Examiner's rejection of independent claims 12 and 22 for the same reasons as claim 1. CONCLUSION The Examiner did not err in finding that the combination of Itonaga and Sako teaches: enabling information disposed in the material at a second depth in the thickness, the enabling information represented by marks sized for individual illumination by a second laser focused through the thickness at the second depth, the enabling information marks not distinguishable by the first laser focused through the thickness at the second depth, wherein the enabling information is needed to read the content information, as recited in independent claim 1, and similarly recited in independent claims 12 and 22. The Examiner did not err by improperly combining Itonaga and Sako to reject independent claims 1, 12, and 22. 6 Appeal2014-005406 Application 11/124,747 SUMMARY The Examiner's decision to reject claims 1, 12, and 22 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Itonaga and Sako is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 7