Ex Parte Lee et al

Patent Trial and Appeal Board

Jul 25, 2013

10673143 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOUNG-WOO LEE and SANG-WHOOK KIM
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Appeal 2010-0104481
Application 10/673,143
Technology Center 2600
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Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
DANIEL N. FISHMAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Samsung Electronics Co. (App Br. 3.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-8, 15-18, 27-33, and 39-44.2 Claims 9-14, 22-
26, and 34-38 have been withdrawn from this appeal. Claims 19-21 have
been canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for discriminating the type
of a recording medium based upon the amplitude of a groove wobble formed
thereon. (Fig.1, Abstr.) In particular, upon receiving from an RF amplifier
(110) an output signal based on light reflected from the recording medium
(102), a wobble amplitude detector (120) detects therefrom a single wobble
amplitude, which is forwarded to a system controller (130) for subsequent
comparison with a pre-set wobble amplitude to thereby determine the type of
the recording medium. (Fig. 3, [0029], [0030].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A recording medium type discriminating apparatus,
comprising:
a radio frequency (RF) amplifier to output a signal based
on light reflected from a recording medium;

2 The Examiner withdrew the prior art rejection previously entered against
claims 5, 16, and 28. (Ans. 3.) See infra note 3.
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a wobble amplitude detector to detect only one amplitude
of a wobble formed on the recording medium based on an
output signal of the RF amplifier to discriminate a recording
medium type of the recording medium; and
a system controller to discriminate the recording medium
type of the recording medium by comparing the wobble
amplitude with a pre-set wobble amplitude reference value.

Prior Art Relied Upon
Ogihara US 2002/0075780 A1 Jun. 20, 2002

Rejection on Appeal
The Examiner rejected claims 1-8, 15-18, 27-33, and 39-44 under 35
U.S.C. § 103(a) as being unpatentable over Ogihara.3

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 20-29, and the Reply Brief, pages 6-16.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that Ogihara teaches or suggests a wobbler amplitude detector for
detecting only one amplitude of a wobble formed on a recording medium
based on an output signal from an RF amplifier to thereby identify the
recording medium type, as recited in claim 1?

3 Id. Because the Examiner withdrew the rejection of claims 5, 16, and 28,
we will not reach the merit the rejection as it pertains to those claims.
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Appellants argue that the Ogihara does not teach or suggest the
disputed limitations emphasized above. (App. Br. 20-25; Reply Br. 6-14.)
According to Appellants, Ogihara discloses a wobble amplitude detector that
detects two amplitude levels (LV1, LV2) of a wobble formed on a recording
medium based on an output signal obtained from an RF amplifier to thereby
discriminate between a DVD+RW, DVD-RW and a DVD ROM after
comparing LV1 and LV2 at a controller. (App. Br. 20-21.) However,
Appellants argue Ogihara’s disclosure of the two amplitude levels vitiates
the claim limitation, which precludes more than one amplitude level, and
thereby teaches away from the invention. (Id. at 23-24.) Further, Appellants
argue that the Examiner’s proffered modification of Ogihara to remove
therefrom one of the amplitude levels thereby omitting the requirement of
comparing the two levels to identify the recording medium would change the
principle of operation of the Ogihara reference, and would thereby render it
unsatisfactory for its intended purpose. (Id. at 23.) Therefore, Appellants
submit that because the suggested modification of Ogihara would make it
inoperable and undesirable for its intended purpose, Ogihara does not render
claim 1 unpatentable. (Id. at 25.)
In response, the Examiner finds that because one of ordinary skill in
the art, looking at the Ogihara reference, could decide to implement a system
which discriminates only between the DVD ROM standard and either the
DVD+RW standard, or the DVD-RW standard, the omission of one of the
DVD RW standards would not render Ogihara’s system unsuitable of its
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intended purpose. Rather, it would allow the ordinarily skilled artisan to
tailor the Ogihara’s teachings reference to fit his/her needs. Accordingly,
such modification would only require using a single wobble amplitude level,
which is compared against a pre-set value to determine if the recording
medium is writable or read-only. (Ans. 7-10.)
Based upon our review of the record before us, we find no error with
the Examiner’s obviousness rejection regarding claim 1. We note at the
outset Appellants do not dispute the Examiner’s finding that Ogihara
discloses a controller that obtains from a wobble amplitude detector two
detected amplitude levels (LV1 and LV2) of a wobble formed on a recording
medium, whereby LV1 and LV2 are compared with each other to
discriminate between three types of DVD disks as follows:
1) When LV1 > LV2 and LV1 is equal or greater than a pre-set
value, the optical disk is a DVD-RW.
2) When LV2 > LV1 and LV2 is equal or greater than a pre-set
value, the optical disk is a DVD-RW.
3) When LV1 and LV2 are smaller than the pre-set value, the
optical disk is a DVD ROM.
(Ans. 4-5.)
However, Appellants dispute the Examiner’s conclusion that one of
ordinary skill in the art could decide to modify the Ogihara’s system to
discriminate between two DVD types as opposed to discriminating between
the three DVD types expressly disclosed in Ogihara. (App. Br. 23-25; Reply
Br. 12-13.) Therefore, the pivotal issue before us turns on whether the
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modification of the Ogihara reference as proposed by the Examiner would
be proper within the context of obviousness. We answer this inquiry in the
affirmative. The U.S. Supreme Court has held that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418.
Additionally, the Court instructs that:
[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements. Instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.… [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted).
We find that the ordinarily skilled artisan, being a creative individual
would have been able to fit the teachings of Ogihara (including established
knowledge in the art) together like pieces of a puzzle to predictably result in
the disputed limitations. We agree with the Examiner that the proffered
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modification of Ogihara’s wobble detecting section to omit therefrom the
circuitry (121/123/125/127) for one of the levels would predictably result in
a wobble detection section that detects a single wobble amplitude from the
DVD for comparison with a pre-set value to thereby determine whether
DVD is read only or DVD+RW. (Ans. 8-9.) While it may be necessary for
an Examiner to identify a reason for modifying the familiar elements
obtained from the prior art in establishing a prima facie case of obviousness,
the identification of such a reason is not a sine qua non requirement. So
long as the Examiner provides an articulated reasoning with some rational
underpinning to substantiate the obviousness rejection, such a conclusion is
proper. In this case, the Examiner provides more than just a mere
conclusory statement. The Examiner notes that at the time of the claimed
invention, an ordinarily skilled artisan would have been motivated to omit a
level detection section from the wobble detection section to tailor the system
to discriminate between two desired types of DVD as opposed to three.
(Ans. 6.) In our view, such a statement suffices as an articulated reason with
a rational underpinning to support the proposed modification. As noted
above, the case law allows the Examiner to look to the state of the prior art,
including the knowledge of the ordinarily skilled artisan to arrive at such a
reason for combining or modifying the known elements of the prior art.
Consequently, the Examiner’s reliance upon widely available knowledge in
order to arrive at an articulated reason with a rational underpinning to
support the proffered modification is proper within the context of an
obviousness rejection.
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Appellants correctly argue that the comparison of the two amplitude
levels is necessary in the Ogihara system because it helps discriminate
between DVD+RW and DVD-RW types. However, such comparison would
not be needed in the modified wobble section proposed by the Examiner
because it is not concerned with discriminating between these two cited
DVD types. We are satisfied that because the proposed modified system
would only need to compare the single detected amplitude level with the
pre-set value to determine whether the DVD is a read-only type or a writable
type, it teaches or suggests the disputed limitations. Additionally, because
the proposed modification would yield a new system with different
objectives from Ogihara’s, we find unpersuasive Appellants’ argument that
the proposed modification would render Ogihara’s system unsuitable for its
intended purpose. An argument that the system is rendered “unsuitable for
its intended purpose” is a “teach away” argument. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French
teaches away from the board’s proposed modification” because “if the
French apparatus were turned upside down, it would be rendered inoperable
for its intended purpose”). The Federal Circuit has held “[a] reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). We do not find
that Appellants point to anything in Ogihara that can be said to discourage a
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person of ordinary skill in the art from modifying the system as set forth by
the Examiner. It follows that Appellants have not shown error in the
Examiner rejection of claim 1.
Regarding the rejection of claims 2-4, 6-8, 15, 17, 18, 27, 29-33, and
39-44, because Appellants have either not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, claims 2-4, 6-8, 15,
17, 18, 27, 29-33, and 39-44 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).
Further, while Appellants raised additional arguments for patentability of the
cited claims, we find that the Examiner has rebutted in the Answer each and
every one of those arguments by a preponderance of the evidence. (Ans. 6,
10-12.) Therefore, we adopt the Examiner’s findings and underlying
reasoning, which are incorporated herein by reference. Consequently, we
find no error in the Examiner’s rejection of claims 2-4, 6-8, 15, 17, 18, 27,
29-33, and 39-44.
DECISION
We affirm the Examiner’s rejection of claims 1-4, 6-8, 15, 17, 18, 27,
29-33, and 39-44 as set forth above.
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)(iv).

AFFIRMED

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