Ex Parte Ren et al

Patent Trial and Appeal Board

Apr 26, 2016

12765900 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121765,900 04/23/2010
94288 7590 04/28/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Zhiyuan Ren
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.
223045-1 1365
EXAMINER
GUPTA, PARUL H
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIYUAN REN, JOHN ERIK HERSHEY,
BRIAN LEE LAWRENCE, and
VICTOR PETROVICH OSTROVERKHOV1
Appeal2014-006726
Application 12/765,900
Technology Center 2600
Before DEBRA K. STEPHENS, JASON V. MORGAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, and 7-14, which constitute all the claims
pending in this application. Claims 3-6 and 15-18 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is General Electric
Company. App. Br. 2.
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Application 12/765,900
We AFFIRM-IN-PART and enter a NEW GROU-NDS OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
Technology
The application is related to data storage using holograms, specifically
to an anti-piracy technique for holographic disks. According to Appellants,
a holographic disk is similar to a DVD or Blu-ray disk in that it can have
multiple tracks between the center of the disk and the outer rim, and it can
have multiple layers from top to bottom. Spec. i-fi-1 6, 23; Fig. 1. Whereas a
DVD or Blu-ray disk only has one or two layers of data storage, the
application discloses holographic disks may have 50 or 100 layers, providing
much greater data storage capacity, such as the ability to hold 50 feature
films. Id. i-fi-1 6-7. In an attempt to avoid the risk of piracy of such a large
amount of data, the invention is directed to inserting a watermark aligned
across multiple tracks and across multiple layers that can be used to
differentiate between an original disk and a pirated copy. Id. i-f 18.
Exemplary Claims
Claims 10 and 1 are exemplary and reproduced below with key
limitations emphasized:
10. A holographic disk comprising:
a recording surface, wherein the recording surface
comprises a photosensitive media comprising a plurality of
micro-holograms, wherein each of the micro-holograms are
aligned at a pre-determined location corresponding to
generation of a characteristic waveform signal; and
wherein the pre-determined location comprises
respective plurality of tracks and respective plurality of layers.
1. A method for encoding in a holographic disk storage
medium, the method comprising:
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Application 12/765,900
recording a plurality of micro-holograms such that the
micro-holograms are aligned across a respective plurality of
tracks and across a respective plurality of layers at a
predetermined location of an original holographic disk;
detecting intensity distribution of a characteristic
waveform signal of a reflected beam from the original
holographic disk in at least one of: a temporal and frequency
domain;
detecting intensity distribution of a second waveform
signal from a second holographic disk in at least one of a
temporal and frequency domain;
comparing the second waveform signal with the
characteristic waveform signal;
determining authenticity of the second holographic disk
based upon comparison.
Rejections
Claims 10-13 stand rejected under 35 U.S.C § 102(b) as being
anticipated by Lawrence et al. (US 2006/0227398 Al, published Oct. 12,
2006) ("Lawrence"). Final Act. 2.
Claims 1, 2, 7-9, and 14 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Lawrence in view of Murakami et al. (US
7,133,792, issued Nov. 7, 2006) ("Murakami"). Final Act. 3.
ISSUES
1. Did the Examiner err in finding Lawrence discloses "each of
the micro-holograms are aligned at a pre-determined location corresponding
to generation of a characteristic waveform signal; and wherein the pre-
determined location comprises respective plurality of tracks and respective
plurality of layers," as recited in claim 1 O?
2. Did the Examiner err in finding Lawrence in view of Murakami
teaches or suggests "detecting intensity distribution of a second waveform
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signal from a second holographic disk in at least one of: a temporal and
frequency domain," as recited in claim 1?
ANALYSIS
Claims 10-13: Anticipation
In rejecting claim 10, the Examiner finds this claim is anticipated by
Lawrence. Final Act. 2. For the limitations disputed on appeal, the
Examiner points to paragraphs 101-102 of Lawrence as disclosing "wherein
each of the micro-holograms are aligned at a predetermined location
corresponding to generation of a characteristic waveform signal" and the
abstract of Lawrence as disclosing "the pre-determined location comprises a
respective plurality of tracks and across a respective plurality of layers
location." Ans. 2. The Examiner further finds that "in paragraphs 0101 and
0102 of Lawrence, the waveform upon which the locations are determined
are disclosed. The locations of the micro-holograms are used as the focus of
the reading beam of Lawrence must rely on the existence of the hologram at
the location to generate a reflected signal." Ans. 6-7.
Appellants contend the Examiner erred because Lawrence's
disclosure of micro-holograms arranged in multiple tracks and multiple
layers is "not the equivalent of micro-holograms that are aligned at a pre-
determined location corresponding to generation of a characteristic
waveform signal; and wherein the pre-determined location comprises
respective plurality of tracks and respective plurality of layers." App. Br. 6.
Appellants also contend that the cited portions of Lawrence (i-fi-f l 01-102)
merely describe the system focusing on a single micro-hologram, not the
micro-holograms aligned as claimed. App. Br. 7; Reply Br. 3. Finally,
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Application 12/765,900
Appellants contend "the Examiner has incorrectly equated the structure and
function of two unrelated technical entities," namely Lawrence's wave-front
2010 and the claimed "characteristic waveform signal." Reply Br. 6.
Appellants' arguments are not persuasive. We agree with both
Appellants and the Examiner that Lawrence teaches a holographic disk with
a plurality of micro-holograms on a plurality of tracks and a plurality of
layers. See, e.g., Lawrence Abstract, Fig. 28; App. Br. 6. The primary
dispute is over whether Lawrence's micro-holograms are "aligned" as
required by the claims. While Figures 2 and 3 of the present application
give examples in which micro-holograms are aligned or mis-aligned as a
group, the specification expressly states those are merely an "illustrated
embodiment." Spec. ,-r,-r 24-25. Nowhere does the Specification explicitly
define the term "aligned" or limit the term to those examples.
We agree with the Examiner that a micro-hologram can be aligned in
other ways. For example, the Examiner points to Lawrence as teaching that
the location of an individual micro-hologram-whether out of focus or off
track-will affect the reflected signal. Ans. 6-7 (citing Lawrence ,-r,-r 101-
102). Lawrence itself describes "out of focus or off track" micro-holograms
as being "misaligned," while on focus and on track micro-holograms are
"properly aligned." Lawrence ,-r,-r 99, 103. We find that an in-focus and on-
track micro-hologram in Lawrence is "aligned" and is used to generate a
characteristic signal. Moreover, the indefinite article "a" in patent parlance
carries the meaning of "one or more" in open-ended claims containing the
transitional phrase "comprising"; therefore, the presence of multiple "pre-
determined locations" or multiple "characteristic waveform signals" would
still fall within the broadest reasonable interpretation of the claims.
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Moreover, nothing in the Specification or claim language suggests limiting
the article "a" to a single predetermined location or a single characteristic
waveform signal.
As discussed above, Lawrence teaches multiple micro-holograms,
each of which is recorded in a fixed location within multiple tracks and
multiple layers in a holographic disk. Lawrence Abstract, Fig. 28. We find
each micro-hologram is used to generate a characteristic waveform signal,
and each must be aligned to be in focus. Accordingly, Appellants have not
persuasively shown error in the Examiner's reliance on Lawrence as
disclosing the claimed limitation "each of the micro-holograms are aligned
at a pre-determined location corresponding to generation of a characteristic
waveform signal; and wherein the pre-determined location comprises
respective plurality of tracks and respective plurality of layers," as recited in
claim 10.
Accordingly, we sustain the Examiner's rejection of anticipation of
claim 10, and of claims 11-13, which Appellants argue are patentable for
similar reasons. See App. Br. 7; 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claims 1, 2, 7-9, and 14: Obviousness
The Examiner finds claim 1 obvious over Lawrence in view of
Murakami. Final Act. 3. Appellants contend the Examiner erred because
Lawrence in view of Murakami does not teach "detecting intensity
distribution of a second waveform signal from a second holographic disk in
at least one of: a temporal and frequency domain" in claim 1 or the
substantially similar limitation in claim 14. App. Br. 10.
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For the limitation at issue on appeal, the Examiner cites
paragraphs 68-69 of Lawrence as teaching "detecting intensity distribution";
paragraph 58 as teaching "a characteristic waveform signal of a reflected
beam from the original holographic disk" and "a second waveform signal
from a second holographic disk"; and paragraph 99 as teaching "in at least
one of: a temporal and frequency domain." Ans. 4. Further, the Examiner
finds, "Murakami teaches details about the characteristic waveform signal
given to be the 'second waveform signal' of the present claims. Lawrence
teaches use of the signal and the reflected beam to detect the intensity based
on location through the interference fringes." Ans. 7.
According to Appellants, Lawrence only describes that light intensity
varies with position, and Murakami merely describes a method for
calibrating a biometric authentication device over time. App. Br. 10.
Appellants argue paragraph 99 of Lawrence merely relates to determining
whether a micro-hologram is in focus or out of focus based on intensity.
App. Br. 11. Appellants also argue that paragraph 69 of Lawrence merely
describes a threshold condition for changing the refractive index, but the
language quoted by Appellants is from paragraph 7 6, not paragraph 69.
App. Br. 11.
Here, the Examiner has not persuasively shown that Lawrence teaches
or suggests detecting intensity distribution "in at least one of: a temporal and
frequency domain." We find that Lawrence does teach measuring intensity
as it varies over position. Lawrence Fig. 6; App. Br. 10. We therefore find
that the Examiner has not persuasively shown how Lawrence teaches either
a "temporal" or "frequency" domain.
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Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and commensurately recited claim 14. Dependent
claims 2 and 7-9 stand with independent claim 1.
Nevertheless, in a new grounds of rejection, we find that Lawrence
and Murakami do teach or suggest this limitation. As Appellants concede,
Lawrence teaches that light intensity varies with position and that the system
monitors changes in intensity. App. Br. 10 (citing Lawrence Fig. 6). We
find in a rotating disk such as the holographic disk in Lawrence, a change in
position also means a change in time occurs, which can be calculated based
upon the number of revolutions per minute of the disk. See also Spec. i-f 27
(discussing "revolutions per minute" of rotating disk systems). Thus, we
find that Lawrence teaches or at least suggests detecting an intensity
distribution in at least a temporal domain.
Murakami also teaches or suggests detecting and analyzing the
characteristic waveform signal "in at least one of: a temporal and frequency
domain." For example, Murakami's signals include measurements based on
either "time" or "frequency," such as "heartbeat waves" and "light rays."
See, e.g., Murakami 10:3-9 ("For example, measurement means includes
measuring various levels of absorbed or deflected light rays, and electrical
impulses and may further include ... measuring ... frequency ... and
luminescence."), 10:22-23 ("The signal data may be collected over any
length of time reasonable for authentication purposes."), 10: 10-11 ("One
embodiment of the present invention comprises a device for capturing and
calibrating a heartbeat wave form"). Thus, in addition to Lawrence,
Murakami also teaches or suggests detecting an intensity distribution of a
characteristic waveform signal in at least one of a temporal and frequency
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domain, and a person of ordinary skill in the art would be motivated to
combine Lawrence and Murakami for the reasons previously set forth by the
Examiner.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection under 35 U.S.C. § 103 for claims 1 and 14.
Although we have rejected claims 1 and 14 under 37 C.F.R.
§ 41.50(b ), we have not reviewed the remaining claims to the extent
necessary to determine whether these claims are unpatentable under 3 5
U.S.C. § 103. We leave it to the Examiner to determine the appropriateness
of any further rejections based thereon.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 10-13, and we reverse the Examiner's decision rejecting claims 1, 2,
7-9, and 14.
In a new ground of rejection, we reject claims 1, 2, 7-9, and 14 under
35 U.S.C. § 103 as obvious over Lawrence in view of Murakami.
TIME TO RESPOND
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 12/765,900
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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