Ex Parte Smith et al

Patent Trial and Appeal BoardJun 5, 2014

11317442 (P.T.A.B. Jun. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/317,442 12/22/2005 Wayne M. Smith 3053/084 US 5280 22440 7590 06/06/2014 GOTTLIEB RACKMAN & REISMAN PC 270 MADISON AVENUE 8TH FLOOR NEW YORK, NY 10016-0601 EXAMINER PENDLETON, DIONNE ART UNIT PAPER NUMBER 2688 MAIL DATE DELIVERY MODE 06/06/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WAYNE M. SMITH, ALAN BELL, and LEWIS S. OSTROVER ____________ Appeal 2012-002385 Application 11/317,442 Technology Center 2600 ____________ Before ROBERT E. NAPPI, JOHN A. EVANS, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1, 5-7, and 21-24. Claim 2 is cancelled, and claims 3, 4, and 8-20 are withdrawn. We affirm. Appeal 2012-002385 Application 11/317,442 2 INVENTION The invention relates to an optical disc having at least two data layers, each layer having a different format. Claim 1, which is illustrative, reads as follows: 1. A multi-format optical disc comprising: a substrate; a first data layer disposed on said substrate, said first data layer conforming to a first protocol defining a first data density defined by first land areas and first pits having pit depths; a second data layer supported on said substrate, said second data layer conforming to a second protocol defining a second data density higher then said first data density, said second data layer including second land areas and second land pits having second pit depths, said first pit depths being substantially equal to said second pit depths; and a transparent protective layer disposed on top of said first and second layers. REJECTIONS AT ISSUE The Examiner has rejected claims 1, 5, and 21-24 under 35 U.S.C. § 103(a) as unpatentable over Takasu (US 6,014,364, issued Jan. 11, 2000) and Raguin (US 2008/0008076 A1, published Jan. 20, 2008 (provisional filed Apr. 16, 2004)) (Ans. 5-8). 1 The Examiner has rejected claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Takasu, Raguin, and Ogawa (US 2005/0041555 A1, published Feb. 24, 2005) (Ans. 9). 1 Throughout this opinion we refer to the Brief (“Br.” filed May 11, 2011) and the Answer (“Ans.” mailed August 17, 2011). Appeal 2012-002385 Application 11/317,442 3 ISSUES Appellants argue on pages 7 through 11 of the Appeal Brief that the Examiner’s rejections under 35 U.S.C. § 103(a) are in error. The dispositive issue presented by these arguments is did the Examiner err in finding Raguin discloses, teaches, or suggests, “said first pit depths being substantially equal to said second pit depths,” as recited in claim 1? ANALYSIS We have reviewed Appellants’ arguments in the Brief, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. We disagree with the Appellants’ contentions that the Examiner erred in finding the combination of Takasu and Raguin teaches or suggests a multi-format optical disc as recited in claim 1. We are not persuaded by Appellants’ arguments that Raguin merely “discusses various existing systems that may be calibrated by the described system.” (See Br. 9.) The Examiner finds Takasu fails to teach expressly that the pit depths of a first data layer that conforms to a first protocol, and the pit depths of a second data layer that conforms to a second protocol, are substantially equal in pit depth. (See Ans. 5.) The Examiner finds: [¶] 39 of Raguin teaches that a pickup unit which is typically used with CD and DVD type disks may be used to read from a holographic media, provided that the pits and grooves used to encode information on the holographic media are similar in size to the pits and grooves typically found in CD and DVD disks. (Ans. 12.) This teaching “corresponds to the claimed limitation of forming on a first data layer (the holographic media) pits having pits depths Appeal 2012-002385 Application 11/317,442 4 substantially equal to a second pit depth ( . . . the pit depth of pits formed in DVD/CD disks)” (Ans. 12). Thus, the Examiner concludes, Raguin teaches that by encoding pits and grooves similar in size to those found in a different protocol such as a CD or DVD protocol, the same optical pickup head typically used for a CD or DVD storage medium may interpret the data read from Raguin’s optical storage medium. (See Ans. 5.) The Examiner has provided a comprehensive response (Ans. 9-13) to Appellants’ remaining arguments, with which we concur. Accordingly, we sustain the Examiner’s rejection of claim 1. Appellants have not presented separate arguments directed to the rejections of claims 5-7 and 21-24. Therefore, we similarly sustain the Examiner’s rejection of these claims. DECISION The decision of the Examiner to reject claims 1, 5-7, and 21-24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED. ELD