Ex Parte MurataDownload PDFPatent Trial and Appeal BoardFeb 23, 201512534074 (P.T.A.B. Feb. 23, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TATSUYA MURATA ____________________ Appeal 2012-006615 Application 12/534,074 Technology Center 2600 ____________________ Before ELENI MANTIS MERCADER, JOHN A. EVANS, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-006615 Application 12/534,074 2 STATEMENT OF THE CASE Appellant filed a Request for Rehearing on January 16, 2015 (hereafter “Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal mailed November 19, 2014 (hereinafter “Decision”). The Decision affirmed the Examiner's rejections of claims 1, 2, and 5 under 35 U.S.C. § 103(a) as unpatentable over Hitachi1 and Applicant’s Acknowledged Prior Art (AAPA), and of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Hitachi, AAPA, and TEAC.2 We have considered the arguments presented by Appellant in the Request, but are not persuaded the Board has misapprehended or overlooked any points in issuing the Decision. Therefore, Appellant’s Request is DENIED. ISSUES AND ANALYSIS A. Whether the Board overlooked Appellant’s argument that there was no motivation to combine Hitachi and AAPA. Appellant argues the Board “overlooked and did not address appellant’s argument that, not only that neither Hitachi nor AAPA could determine the presence or absence of a transparent disk, ‘neither Hitachi nor AAPA was aware of the problem of not being able to detect a transparent disk quickly and reliably.’” Req. Reh’g 1 (citing App. Br. 5– 6). We disagree. In our Decision, we acknowledged Appellant’s argument that neither Hitachi nor AAPA were directed toward determining whether a loaded disk was a transparent disk, and that there was therefore no motivation to combine the references. Dec. 3. We found Appellant’s 1 Jap. App. Publ. No. 11-213530; Aug. 6, 1999. 2 Jap. App. Publ. No. 2004-164796; June 10, 2004. Appeal 2012-006615 Application 12/534,074 3 argument unpersuasive, however, because it did not address the Examiner’s stated motivation to combine, which was to reduce false positive and false negative disk detection errors rather than to detect transparent disks. Id. Said differently, the issue of whether Hitachi and AAPA were aware of the problem of not being able to detect transparent disks is inapposite to the Examiner’s reason for combining the references. The Examiner did not propose the combination to detect transparent disks, but to reduce the incidence of false-positive and false-negative disk detections. Once the combination is made, however, the Examiner found its natural consequence and predictable result is the truth table shown in Figure 3 of Appellant’s Specification, which can be used to detect the presence of transparent disks. Dec. 5 (citing Ans. 6–7). Because Appellant did not contest the Examiner’s finding that a person of skill in the art at the time of the invention would have been motivated to combine Hitachi and AAPA to reduce false positive and false negative disk detection errors, we agreed with and adopted the Examiner’s conclusion that it would have been obvious to combine Hitachi and AAPA. Dec. 3–4. DECISION We have considered Appellant’s arguments that our Decision misapprehended or overlooked the points raised in Appellant’s Request, and found them unpersuasive. We therefore deny Appellant’s Request. This Decision on Request for Rehearing incorporates our November 19, 2014 Decision on Appeal, and is final for the purposes of judicial review. 37 C.F.R. § 41.52(a)(1). Appeal 2012-006615 Application 12/534,074 4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. REHEARING DENIED dw Copy with citationCopy as parenthetical citation