Ex Parte Van Kollenburg

Board of Patent Appeals and Interferences

May 2, 2012

10014238 (B.P.A.I. May. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERTUS ANTONIUS JOHANNES VAN KOLLENBURG
____________________

Appeal 2009-012809
Application 10/014,238
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, DEBRA K. STEPHENS, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012809
Application 10/014,238

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claims 1 and 6 under appeal read as follows (emphases
added):
Claim 1. A record carrier of the disc-like optically inscribable
type, having a preformed track in which an auxiliary signal
comprising a sequence of codes is recorded by means of a preformed
track modulation, which codes comprise a sequence of address codes
(AC) specifying the addresses of the track portions in which said
address codes (AC) are recorded and special codes (SC) which can be
distinguished from said address codes (AC) specifying control data
for controlling a recording by a recording device and which sequence
can be obtained by replacing in a sequence of address codes (AC)
with consecutive address values a plurality of said address by special
codes (SC), characterized in that, the said sequence comprises a
periodic pattern of address codes and special codes which pattern
has a predetermined positional relationship with respect to a
predetermined reference address.
Claim 6. Device for recording and/or playback a record carry
a of the inscribable type as claimed in claim 1, the device comprising
in reading means for reading the information recorded on the record
carrier and recording means for recording the record carrier in
accordance with an recording process, the reading means comprising
means to read the auxiliary signal recorded on a record carrier,
selecting means for selectively selecting extracting the special codes
and the address codes from the auxiliary signal, control means for
controlling the recording process, characterized in that, the control
means are adapted to determine the predetermined positional
relationship of the periodic pattern of address codes and special codes
and to control the recording process in accordance with said
determination.
Appeal 2009-012809
Application 10/014,238

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Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Roth (US 5,418,764). 1
Appellant’s Contentions2
1. As to claim 1, Appellant “submits that Roth et al. provide no
disclosure or suggestion addresses for a periodic pattern having a
predetermined positional relationship with a predetermined reference
address.” (App. Br 9).
2. As to claim 3, Appellant asserts “[t]here is no disclosure or
suggestion within Roth et al. on column 6, line 1-column 7, line 56 for the
periodic pattern being shifted by a predetermined number of address codes
with respect to the predetermined reference address.” (App. Br 10).
3. As to claim 4, Appellant “submits that the subject matter for a
periodic pattern comprising a first number of distinct special codes separated
by a first number of successive address codes characterized in that the first
number of distinct special codes have a predetermined order is not disclosed
or suggested by Roth et al.” (App. Br 10-11).

1 Roth is assigned to the Real Party in interest of Appellant’s Appeal.
Further, large portions of Appellant’s Specification are copied from Roth.

2 Separate patentability is not argued for claims 2 and 5-20. Rather,
Appellant merely repeats arguments originally directed to claims 1, 3, or 4.
Except for our ultimate decision, these claims are not discussed further
herein. While using an argument for patentability of a first claim as a cut-
and-paste argument for a second claim might outwardly appear to be a
separate argument for patentability of the second claim, such a cut-and-paste
argument is not in fact an argument for “separate patentability.”
Appeal 2009-012809
Application 10/014,238

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Issue on Appeal
Did the Examiner err in rejecting claims 1-20 as being anticipated
because Roth fails to describe the argued limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred.
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner.
As to above contention 1, Appellant repeatedly argues in the Appeal
Brief that “Roth et al. provide no disclosure or suggestion addresses for a
periodic pattern having a predetermined positional relationship with a
predetermined reference address.” We disagree. The Examiner points
in-part to Roth (Ans. 4) at column 4, line 65, through column 5, line 31 to
teach “a periodic pattern of address codes and special codes which pattern
has a predetermined positional relationship with respect to a predetermined
reference address.” We agree with the Examiner that Roth so teaches. See
Roth at column 5, lines 11-22, in particular.
Further, contrary to Appellant’s argument at the bottom of page 4 of
the Reply Brief, we see no patentable difference between a periodic pattern
having a predetermined positional relationship with respect to a
predetermined reference address and one of the periods within the pattern
having a predetermined positional relationship with respect to a
Appeal 2009-012809
Application 10/014,238

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predetermined reference address. We conclude that this is a distinction
without a difference.
As to above contention 2, Appellant’s claim 3 does not limit the
“number” value of the shift. Therefore, the shift value is inclusive of “0.”
We find nothing that precludes this result. Rather, Appellant’s Specification
at Figure 8 actually shows an embodiment with no shift.
As to above contention 3, Appellant’s claim 4 does not limit the two
“number” values of the claim. Therefore, the values are inclusive of “0” and
“1.” We find nothing that precludes this result.
Separately, we note that the appeal before us discloses the genus data
structure to which the data structure species claimed by Roth’s belongs. To
the extent that novel and unobvious species described by Appellant might be
patentable over the species described by Roth, we conclude that claims 1-20
do not exclude the species described by Roth.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
anticipated under 35 U.S.C. § 102(b).
(2) Claims 1-20 are not patentable.
Appeal 2009-012809
Application 10/014,238

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DECISION 3
The Examiner’s rejection of claims 1-20 is affirmed.

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

3 We have decided the appeal before us. However, should there be further
prosecution with respect to claims 6-10 and 16-20, the Examiner’s attention
is directed to the fact that these claims are a “device” that does not require
nor further limit the “article” of the claims from which they depend. See
35 U.S.C. § 112, fourth paragraph.
Should there be further prosecution with respect to claims 6-8 and
16-18, the Examiner’s attention is directed to the fact that the first two lines
of claims 6 and 16 contain a myriad of grammatical errors such as
highlighted above in exemplary claim 6. See 35 U.S.C. § 112, second
paragraph. These errors were introduced by Appellant’s December 09,
2004, amendment and have yet to be noted or corrected.