Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardJul 25, 201310673143 (P.T.A.B. Jul. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YOUNG-WOO LEE and SANG-WHOOK KIM ____________________ Appeal 2010-0104481 Application 10/673,143 Technology Center 2600 ____________________ 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.) Appeal 2010-010448 Application 10/673,143 2 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from the Examiner’s Final Rejection of claims 1-8, 15-18, 27-33, and 39-44.2 Claims 9-14, 22- 26, and 34-38 have been withdrawn from this appeal.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. Appeal 2010-010448 Application 10/673,143 3 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. Appeal 2010-010448 Application 10/673,143 4 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 Appeal 2010-010448 Application 10/673,143 5 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 Appeal 2010-010448 Application 10/673,143 6 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 Appeal 2010-010448 Application 10/673,143 7 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. Appeal 2010-010448 Application 10/673,143 8 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 Appeal 2010-010448 Application 10/673,143 9 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 msc Copy with citationCopy as parenthetical citation