DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In line 10 of claim 1, “100-800 nanometers of the recording stack layer per character” constitutes new matter because, although the specification provides support for 100 nanometers, there is no support for a range extending up to and including 800 nanometers.
Dependent claims 2-10 are also rejected because they depend from claim 1, which contains new matter.
In line 16 of claim 11, “100-800 nanometers of the recording stack layer per character” constitutes new matter because, although the specification provides support for 100 nanometers, there is no support for a range extending up to and including 800 nanometers.
Dependent claims 12-20 are also rejected because they depend from claim 11, which contains new matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lunt et al. US Patent Application Publication Number US20160118077A1 (hereinafter Lunt) in view of Carson U.S. Patent Publication Number US20160055878A1(hereinafter Carson).
Regarding Claim 1: Lunt discloses a storage device, the device comprising: an optical tape having a plurality of layers (Fig. 2A i.e., 200 optical tape; paragraph [0021] i.e., optical tape), including: a substrate layer ( Fig. 2A i.e., 202 substrate; paragraph [0021] i.e., substrate 202); and a recording stack layer (Fig. 2A i.e., 204 recording layer; paragraph [0021] i.e., recording layer 204) but fails to explicitly disclose the recording stack layer includes human language characters inscribed on the recording stack layer, the human language characters occupying 100-800 nanometers of the recording stack layer per character.
In an analogous art, Carson teaches the recording stack layer includes human language characters (claim 9 i.e., ...a human readable document comprising alphanumeric characters...) inscribed on the recording stack layer (paragraph [0028] i.e., embossed onto a substrate), the human language characters occupying 100-800 nanometers of the recording stack layer per character (paragraph [0034] i.e., sizes...on the substrate. ... about 25 μm or less. ).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply human-readable information of Reference Carson to the optical tape device in order to ensure future recoverability regardless of the obsolescence of current generation computer systems and storage formats (Carson, para. 29).
Regarding Claim 2: Lunt as modified by Carson discloses the storage device of claim 1 as discussed above. Lunt further discloses the storage device further comprising an adhesion promotion layer (Fig. 2A i.e., 206 adhesion promotion layer; paragraph [0021] i.e., adhesion promotion layer 206).
Regarding Claim 3: Lunt as modified by Carson discloses the storage device of claim 2 as discussed above. Lunt further discloses the storage device wherein the adhesion promotion layer is disposed on the substrate layer (Fig. 2A; paragraph [0021] i.e., …adhesion promotion layer 206 between the substrate 202 and the recording layer 204.)
Regarding Claim 4: Lunt as modified by Carson discloses the storage device of claim 3 as discussed above. Lunt further discloses the storage device wherein the recording stack layer is disposed on the adhesion promotion layer (Fig. 2A; The recording layer 204 is disposed on the adhesion promotion layer 206.).
Regarding Claim 5: Lunt as modified by Carson discloses the storage device of claim 1 as discussed above. Lunt further discloses the storage device wherein the recording stack layer is disposed on the substrate layer (Fig. 2A; The recording layer 204 is disposed on the substrate layer 202.).
Regarding Claim 6: Lunt as modified by Carson discloses the storage device of claim 1 as discussed above. Lunt further discloses the storage device further comprising a lubricant layer disposed on the recording stack layer (Fig. 2A i.e., 208 lubricant layer; paragraph [0021] i.e., lubricant layer 208; The lubricant layer 208 is disposed on the recording layer 204.).
Regarding Claim 7: Lunt as modified by Carson discloses the storage device of claim 1 as discussed above. Lunt further discloses the storage device wherein the recording stack layer includes at least one sub-layer (paragraph [0007] i.e., the recording layer may comprise a Tellurium, Selenium, Bismuth (TSB) layer).
Regarding Claim 8: Lunt as modified by Carson discloses the storage device of claim 7 as discussed above. Lunt further discloses the storage device wherein the at least one sub-layer is a metal layer (paragraph [0007] i.e.,The recording layer may comprise a metal…).
Regarding Claim 9: Lunt as modified by Carson discloses the storage device of claim 7 as discussed above. Lunt further discloses the storage device wherein the at least one sub-layer is a metal alloy layer (paragraph [0007] i.e.,The recording layer may comprise … a metal alloy…).
Regarding Claim 10: Lunt as modified by Carson discloses the storage device of claim 1 as discussed above but Lunt fails to explicitly discloses the recording stack layer is exposed to one of an electron beam and a focused ion beam to receive the human language characters on the recording stack layer.
In an analogous art, Carson teaches the recording stack layer is exposed to one of an electron beam and a focused ion beam to receive the human language characters on the recording stack layer (paragraph [0075] i.e., written using an electron beam recorder (EBR) type writing device.).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply human language characters of Reference Carson to the optical tape device in order to ensure future recoverability regardless of the obsolescence of current generation computer systems and storage formats (Carson, para. 29).
Claim(s) 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lunt in view of Carson.
Regarding Claim 11: Lunt discloses an optical tape device, the device comprising: a substrate layer ( Fig. 2A i.e., 202 substrate; paragraph [0021] i.e., substrate 202); and a recording stack layer (Fig. 2A i.e., 204 recording layer; paragraph [0021] i.e., recording layer 204) but fails to explicitly disclose the recording stack layer includes human language characters inscribed on the recording stack layer, the human language characters occupying 100-800 nanometers of the recording stack layer per character.
In an analogous art, Carson teaches the recording stack layer includes human language characters (claim 9 i.e., ...a human readable document comprising alphanumeric characters...) inscribed on the recording stack layer (paragraph [0028] i.e., embossed onto a substrate), the human language characters occupying 100-800 nanometers of the recording stack layer per character (paragraph [0034] i.e., sizes...on the substrate. ... about 25 μm or less. ).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply human-readable information of Reference Carson to the optical tape device in order to ensure future recoverability regardless of the obsolescence of current generation computer systems and storage formats (Carson, para. 29).
Regarding Claim 12: Lunt as modified by Carson discloses the optical tape device of claim 11 as discussed above. Lunt further discloses the optical tape device further comprising an adhesion promotion layer (Fig. 2A i.e., 206 adhesion promotion layer; paragraph [0021] i.e., adhesion promotion layer 206).
Regarding Claim 13: Lunt as modified by Carson discloses the optical tape device of claim 12 as discussed above. Lunt further discloses the optical tape device wherein the adhesion promotion layer is disposed on the substrate layer (Fig. 2A; paragraph [0021] i.e., …adhesion promotion layer 206 between the substrate 202 and the recording layer 204.).
Regarding Claim 14: Lunt as modified by Carson discloses the optical tape device of claim 13 as discussed above. Lunt further discloses the optical tape device wherein the recording stack layer is disposed on the adhesion promotion layer(Fig. 2A; The recording layer 204 is disposed on the adhesion promotion layer 206.).
Regarding Claim 15: Lunt as modified by Carson discloses the optical tape device of claim 11 as discussed above. Lunt further discloses the optical tape device wherein the recording stack layer is disposed on the substrate layer (Fig. 2A; The recording layer 204 is disposed on the substrate layer 202.).
Regarding Claim 16: Lunt as modified by Carson discloses the optical tape device of claim 11 as discussed above. Lunt further discloses the optical tape device further comprising a lubricant layer disposed on the recording stack layer (Fig. 2A i.e., 208 lubricant layer; paragraph [0021] i.e., lubricant layer 208; The lubricant layer 208 is disposed on the recording layer 204.).
Regarding Claim 17: Lunt as modified by Carson discloses the optical tape device of claim 11 as discussed above. Lunt further discloses the optical tape device wherein the recording stack layer includes at least one sub-layer (paragraph [0007] i.e., the recording layer may comprise a Tellurium, Selenium, Bismuth (TSB) layer).
Regarding Claim 18: Lunt as modified by Carson discloses the optical tape device of claim 17 as discussed above. Lunt further discloses the optical tape device wherein the at least one sub-layer is a metal layer (paragraph [0007] i.e.,The recording layer may comprise a metal…).
Regarding Claim 19: Lunt as modified by Carson discloses the optical tape device of claim 17 as discussed above. Lunt further discloses the optical tape device wherein the at least one sub-layer is a metal alloy layer (paragraph [0007] i.e.,The recording layer may comprise … a metal alloy…).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lunt in view of Carson as applied to claims 11-19 above, and further in view of Duerig et al. U.S. Patent Number US7397754B1(hereinafter Duerig).
Regarding Claim 20: Lunt as modified by Carson teaches the optical tape device of claim 11 as discussed above. Lunt fails to explicitly disclose the recording stack layer is capable of being physically inscribed with human-readable information by force applied to the recording stack layer by one of an atomic force microscope and an atomic tunneling microscope tip.
In an analogous art, Carson further teaches the recording stack layer (paragraph [0008] i.e., surface of the substrate... recording layer...) is physically inscribed (paragraph [0028] i.e., embossed onto a substrate) with human-readable information (claim 9 i.e., ...a human readable document comprising alphanumeric characters...).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply human-readable information of Reference Carson to the optical tape device in order to ensure future recoverability regardless of the obsolescence of current generation computer systems and storage formats (Carson, para. 29).
In an analogous art, Duerig teaches force applied to the recording stack layer (Col. 1 lines 21-25 i.e., ...tip is heated to a specified temperature and force is applied for writing information in the form of indents…) by one of an atomic force microscope (Col. 1 lines 13-25 i.e., atomic force microscopy (“AFM”)) and an atomic tunneling microscope tip.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the atomic force microscopy (“AFM”) of Duerig into an optical tape device in order to generate nanometer-scale motion (Duerig, Col. 1 lines 10-15).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE J KIM whose telephone number is (571)272-5571. The examiner can normally be reached Mon.-Fri. 11am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571) 270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE J. KIM/Examiner, Art Unit 2688
/STEVEN LIM/Supervisory Patent Examiner, Art Unit 2688