Braat, In re
| Decision Date | 28 June 1991 |
| Docket Number | No. 90-1470,90-1470 |
| Citation | 937 F.2d 589,19 USPQ2d 1289 |
| Parties | In re Josephus J.M. BRAAT. |
| Court | U.S. Court of Appeals — Federal Circuit |
Jack E. Haken, U.S. Philips Corp., Tarrytown, N.Y., argued for appellant. Algy Tamoshunas and John F. Moran, U.S. Philips Corp., Tarrytown, N.Y., were on the brief for appellant.
Jameson Lee, Associate Sol., Office of the Sol., Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol.
Before NIES, Chief Judge, and RICH and CLEVENGER, Circuit Judges.
Braat appeals from the May 30, 1990 decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), Appeal No. 90-0971, affirming the rejection of claims 8-10, 13, and 15-17 of application Serial No. 569,546 (Braat), filed January 10, 1984, entitled "Record Carrier with Optically Readable Phase Structure and Apparatus for Reading," on the grounds of obviousness-type double patenting in view of commonly-assigned U.S. Patent No. 4,209,804 (Dil). We reverse.
The real party in interest in this case is U.S. Philips Corporation (Philips), the assignee of both the Braat application and the Dil patent. The Braat application is based, through two intervening continuing applications, on application Serial No. 925,433 filed July 17, 1978, which in turn claims priority from a Netherlands patent application filed April 3, 1978. The Dil patent issued June 24, 1980, on an application filed January 31, 1979.
Both the Braat application and the Dil patent are concerned with optical record carriers of the type that store information which can be retrieved by scanning the record carrier with a beam of radiation such as a laser beam. One commonly-known example of such a record carrier is the compact disc, or CD.
Record carriers are generally circular, and store the information in tracks extending around the surface of the carrier. The tracks are made up of "information areas" separated by "intermediate regions." For example, the information areas can be pits formed in the track, and the intermediate regions can be lands formed between the pits. Information can be encoded by varying the length or spacing between the pits. A read apparatus is used to retrieve the information by projecting a read beam onto the information tracks and detecting variations in the light transmitted through or reflected from the tracks as the beam passes over the information areas.
The Braat application is concerned with the ability to increase the amount of information which can be stored on a record carrier. One way to do so, of course, is to place the tracks closer together. However, the minimum spacing between the tracks is limited by the ability of the read apparatus to focus the read beam on a single track. If the tracks are placed too close together, then a read beam which is intended to illuminate a certain track may inadvertently illuminate an adjacent track as well, resulting in interference or "cross-talk."
The Braat application discloses a way to reduce the effect of "cross-talk," so that even if more than one track is inadvertently illuminated, the apparatus can still accurately read the stored information. This is done by alternating the "phase depth" 1 of adjacent tracks (or, more generically, of adjacent track portions) and then using two different detection systems, one of which is particularly sensitive to the signal from track portions of one phase depth and the other of which is sensitive to the signal from track portions of the other phase depth. As a result, the tracks can be placed closer together.
In the preferred embodiment described in the Braat application, the phase depth is altered by varying the physical depth of the pits in adjacent tracks. Figure 3 of the Braat application (shown below) is a radial cross-section of the preferred embodiment, and illustrates this concept.
As seen above, the tracks alternate between ones which have information areas (pits) 4 which are of a depth d1 , and ones which have information areas 4' of depth d2 . 2
Claim 8 is illustrative of the claims on appeal. It reads as follows:
8. A record carrier comprising an information structure containing information adapted to be read with a beam of radiation of a single wavelength, said information structure having a plurality of adjacent information track portions each comprising a plurality of areas separated from each other along said track portion by intermediate regions having a different influence on the read beam than said areas, one track portion of a pair of said adjacent track portions containing areas of a first configuration which diffract the read beam of said single wavelength incident thereon into a zero order subbeam and a first order subbeam with a first phase difference therebetween and the other track portion of said pair containing areas of a second configuration which diffract the read beam of said single wavelength incident thereon into said zero and first order subbeams with a second phase difference therebetween which is different from said first phase difference.
The Dil patent is also concerned with controlling the phase depth of information areas on record carriers, but is primarily concerned with the effect that the angle of the side walls of the information areas has on the phase depth. Dil teaches that a particularly useful record carrier is one which has V-shaped information areas with (1) a phase depth in the range between 100? and 125?, and (2) side walls whose angle of inclination is in the range between 65? and 85? (relative to the normal to the carrier surface).
Dil recognizes that this improvement is particularly useful when combined with the invention of the Braat application, which is specifically referred to, and so discloses an embodiment wherein alternating track portions have different phase depths, and the information areas have angled side walls. For example, the Dil patent specification includes the following:
Two types of information areas in one record carrier may for example be used in order to obtain a high information density, as is described in U.S. patent application Ser. No. 925,433, filed July 18, 1978 [Braat]. If in such a record carrier use is made of the concept underlying the invention, said record carrier is characterized in that between first information tracks containing information areas with a phase depth between 100? and 110? second information tracks are formed which contain information areas whose phase depth is approximately 180?.
Claim 1 of Dil is directed to the improvement disclosed in that patent, i.e., a record 1. A record carrier ... characterized in that the cross-section, transverse to the track direction, of the information areas is substantially V-shaped, that the phase depth of the information areas has one value between 100? and 125?, and that the angle of inclination between the walls of the information areas and the normal to the record carrier is substantially constant and has a value between 65? and 85?.
carrier having angled side walls. Specifically, it states in relevant part:
However, dependent claims 5 and 6 of Dil recite as an additional feature the alternating phase depth structure of the Braat application. For example, claim 5 reads as follows:
5. A record carrier as claimed in claim 1, characterized in that between first information tracks containing information areas with a phase depth between 100? and 110? second information tracks are formed which contain information areas whose phase depth is approximately 180?.
The PTO examiner rejected claims 8-10, 13, and 15-17 of the Braat application under the doctrine of obviousness-type double patenting as claiming subject matter not patentably distinct from that claimed in claims 1, 5 and 6 of the Dil patent. On appeal, the Board found that independent claim 1 of Dil alone did not form a proper basis for a double patenting rejection, but that dependent claims 5 and 6 did support the rejection. The following are excerpts from the Board's opinion:
We agree with and sustain the rejection of claims 8, 9, 10, 13, 15, 16 and 17 on the basis of double patenting with respect to claims 5/1 and 6/1 of the Dil patent. The claims here being broader than claims 5/1 and 6/1 in the Dil patent, the double patenting rejection is of the type created by the courts to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the exclusion [sic, extension] is brought about. See In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).
* * * * * *
Appellant has also argued that the Office in granting the Dil patent must have made the determination that those claims are patentably distinct from the claims of the present application, and hence based upon such patentable distinction he is entitled to the claims. Whether or not the claims in Dil are patentably distinct from the claims in the instant application is not the issue. The issue is whether the claims on appeal are patentably distinct over claims 5/1 and 6/1 of Dil. Manifestly, the claims rejected for double patenting with respect to claims 5/1 and 6/1 of Dil are not patentable over those claims.
This appeal followed.
OPINIONObviousness-type double patenting is a judicially created doctrine intended to prevent improper timewise extension of the patent right by prohibiting the issuance of claims in a second patent which are not "patentably distinct" from the claims of a first patent. See In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed.Cir.1985). The doctrine has also been phrased as prohibiting claims in the second patent which define "merely an obvious variation" of an invention claimed in the first patent. In re Vogel, 422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970). We note at the outset the difficulty...
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