Appeal 2007-3146
Application 10/002,952
medium. Instead, Appellants provided evidence comparing Tachibana’s
resins (US Patent 5,102,709, a patent not relevant to the rejection on appeal)
with Appellants’ UV cured resins. The relevant comparison should have
been between Tajima’s UV cured resins with Appellants’ UV cured resins
used as the protective films. Appellants have not satisfied their burden.
Regarding claims 11, 12, and 13, the issue of inherency discussed
previously with regard to claims 1 and 10 applies to claims 11, 12, and 13 as
well. Specifically, as discussed above, there is a reasonable basis in fact to
believe that Tajima’s optical information recording medium inherently
possesses the claimed physical properties, including the claimed expansion
coefficient under humidity. As such, Appellants bear the burden of
establishing that Tajima’s optical information recording medium does not
possess the claimed characteristic. Best, 562 F.2d at 1255, 195 USPQ at
433-34. Appellants’ proffered evidence (i.e., the Tachibana comparison) is
insufficient to rebut the Examiner’s prima facie case.
Furthermore, claim 12 requires that the “bending moments of the
transparent substrate and the protective film generated in humidity are
balanced with a neutral plane.” We construe the “are balanced” recitation as
permitting variations in the warp of the optical data recording medium (i.e.,
the bending moments need not be exactly balanced). Our claim construction
is reasonable in view of Appellants’ Figure 5, which demonstrates that for
the Figure 11 embodiment, the warp angle varies over time for a given
ambient condition (i.e., the line is not perfectly flat for any particular
ambient condition).
Based on our claim construction and Tajima’s and Appellants’
disclosures previously noted, we interpret Tajima’s warp angle versus time
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