Ex Parte Sweeney

Patent Trial and Appeal BoardNov 27, 2012

11057941 (P.T.A.B. Nov. 27, 2012)

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. 11/057,941 02/15/2005 Thomas I. Sweeney 0656/73638 8937 23432 7590 11/27/2012 COOPER & DUNHAM, LLP 30 Rockefeller Plaza 20th Floor NEW YORK, NY 10112 EXAMINER VERDERAME, ANNA L ART UNIT PAPER NUMBER 1722 MAIL DATE DELIVERY MODE 11/27/2012 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 THOMAS I. SWEENEY ________________ Appeal 2011-010925 Application 11/057,941 Technology Center 1700 ________________ Before TERRY J. OWENS, ROMULO H. DELMENDO, and JAMES C. HOUSEL, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010925 Application 11/057,941 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-12, 18, 19, 23 and 25-28, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims methods for manufacturing optical recording media and claims an optical disc manufactured by one of the methods. Claims 1and 19 are illustrative: 1. A method for enhancing yields in an optical recording media manufacturing process, by monitoring dye polymer formation on glass, said method comprising the steps of: (a) coating a glass substrate with a dye polymer layer; (b) scanning the dye polymer coated glass substrate to detect defects; (c) discarding the dye-polymer coated glass without data written on the dye-polymer coated glass if the defects detected in step (b) are at or above an unacceptable threshold level; and (d) writing data on the dye polymer coated glass if the defects detected in step (b) are below the unacceptable threshold level and utilizing the dye polymer coated glass bearing the data in said optical recording media manufacturing process, wherein said scanning in step (b) occurs prior to writing to the dye polymer coated glass, and wherein the scanning in step (b) does not cause marks or pits to be formed in the dye polymer layer, and does not change physical properties of the dye polymer coated substrate. 19. An optical disc produced by a manufacturing process which includes the method of claim 1. Appeal 2011-010925 Application 11/057,941 3 The References Herrick US 3,317,736 May 2, 1967 Teter US 3,813,173 May 28, 1974 Kuriyama US 5,002,455 Mar. 26, 1991 Wilkinson (Wilkinson ‘326) US 2003/0147326 A1 Aug. 7, 2003 Shibata (Shibata ‘247) US 2005/0061247 A1 Mar. 24, 2005 (as translated) (filed Sep. 22, 2004) Shibata (Shibata ‘044) JP 60-136044 A Jul. 19, 1985 (as translated) Noboru (abstract) JP 04-363649 A Dec. 16, 1992 Takamoto (as translated) JP 2000-076713 A Mar. 14, 2000 Richard L. Wilkinson, DVD Mastering Using Dye Polymer Media 90-91, Optical Data Storage Topical Meeting (Apr. 7-9, 1997) (hereinafter the Wilkinson article). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 5, 10-12, 18, 19, 25 and 28 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter and Herrick,1 claims 6-9 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and Noboru, claim 23 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and Kuriyama, and claims 26 and 27 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and Wilkinson ‘326. 1 The Examiner’s Answer incorrectly includes claim 27 instead of claim 28 in the statement of this rejection (Ans. 4) as indicated by the Examiner’s Answer (Ans. 9) and the Appellant’s Brief (Br. 8), Appeal 2011-010925 Application 11/057,941 4 OPINION The rejections are reversed as to claims 1-12, 18, 23 and 25-28 and affirmed as to claim 19. Claims 1-12, 18, 23 and 25-28 We need to address only the independent claims (1, 4 and 10). Each of those claims requires scanning a dye polymer coated glass substrate to detect defects prior to writing to the dye polymer coated glass. For a disclosure of that claim requirement the Examiner relies upon Shibata ‘044 or Shibata ‘247 (Ans. 5-6). Shibata ‘044 discloses that “defects detected by an inspection during the preparation of a pre-grooved disk are written and displayed as they are, so that the defect inspection is not required in the use of the optical disk, thereby being able to save the labor and to improve the reliability” (p. 7). The detected defect signal “is synthesized with a signal from the modulating signal preparing circuit 5 and written by the Ar laser beams 4. For example, while address information such as track number is written, if a defect is detected in a certain sector, the defect may be displayed after writing the section number.” Id. Thus, Shibata ‘044 detects defects during, not before, writing to the disk. The Examiner relies upon Shibata ‘044’s disclosure that “before writing by the Ar laser beams 4, scanning is carried out in advance with the He·Ne laser beams 11 with a wavelength at which the resist is not photosensitized” (p. 6) (Ans. 18). Appeal 2011-010925 Application 11/057,941 5 Although the scanning for a defect is carried out before the defect is written, that scanning takes place while other information is written to the disk, as indicated by Shibata ‘044’s disclosure that the result of the inspection for defects “is fed back to writing of an argon (Ar) laser or helium-cadmium (He·Cd) laser, and the defect information is written along with address information” (p. 5). Also, in the sentence preceding that relied upon by the Examiner, Shibata ‘044 discloses that “[t]he detected signal may be processed in a defect detecting circuit 14, synthesized in a modulating signal preparing circuit 5, and added to the optical modulator 6” (p. 6). The signal to the optical modular 6 to which the detected defect signal is added is the argon laser beam 4 used for writing to the disk (p. 8, figure). Shibata ‘247 discloses “a substrate processing apparatus for performing a predetermined process such as application of a resist solution or development on a substrate which may be a semiconductor wafer or a glass substrate for a liquid crystal display, for example” (¶ 0002). Shibata ‘247 positions an inspection block (IB) anywhere between an indexer block (1), a bottom antireflection coating block (2), a resist coating block (3) and a development block (4) (¶ 0091; Fig. 4). The Examiner argues that it would have been prima facie obvious to one of ordinary skill in the art, in view of Shibata ‘247’s disclosure of inspecting a photoresist layer on a semiconductor wafer or a liquid crystal display before developing the photoresist, to inspect Takamoto’s optical disk master before recording rather than during recording, as is done by Takamoto (¶¶ 0015, 0031, 0034, 0036, 0047), “in order to avoid the presences of defects in later processing stages” (Ans. 15-16). Appeal 2011-010925 Application 11/057,941 6 Establishing a prima facie case of obviousness requires an apparent reason to modify the prior art as proposed by the Examiner. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has not provided evidence or technical reasoning which shows that a disclosure of inspecting a photoresist layer on a semiconductor wafer or a liquid crystal display before developing the photoresist would have provided one of ordinary skill in the art with an apparent reason to inspect an optical disk master before recording rather than during recording. Thus, the record indicates that the rejection is based upon impermissible hindsight. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). For the above reasons we reverse the rejections as to claims 1-12, 18, 23 and 25-28. Claim 19 Claim 19 encompasses an optical disc having defects below an unacceptable threshold level in a dye polymer layer to which data has been written, regardless of whether defects are detected before writing to the dye polymer layer or, as disclosed by the Wilkinson article (Fig. 1), after doing so. Hence, we affirm the rejection of claim 19. DECISION/ORDER The rejection under 35 U.S.C. § 103 of claims 1-5, 10-12, 18, 19, 25 and 28 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter and Herrick is reversed as to claims 1-5, 10-12, 18, 25 and 28 Appeal 2011-010925 Application 11/057,941 7 and affirmed as to claim 19. The rejections under 35 U.S.C. § 103 of claims 6-9 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and Noboru, claim 23 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and Kuriyama, and claims 26 and 27 over Takamoto in view of Shibata ‘044, Shibata ‘247, the Wilkinson article, Teter, Herrick and Wilkinson ‘326 are reversed. It is ordered that the Examiner’s decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART tc