Ex Parte Deeman et al

Patent Trial and Appeal Board

Jun 30, 2016

11132198 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111132, 198 05/19/2005 NeilDeeman
105639 7590 07/01/2016
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
10-3456-00 6272
EXAMINER
LAMB, CHRISTOPHER RAY
ART UNIT PAPER NUMBER
2695
MAILDATE DELIVERY MODE
07/01/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEIL DEEMAN, DAVIDS. KUO, CHRISTOPHER J.
FORMATO, SUNDEEP CHAUHAN, and LAWRENCE M. BRYANT
Appeal2014-009709
Application 11/132,198
Technology Center 2600
Before: ELENI MANTIS MERCADER, MELISSA A. RAAP ALA, and
SCOTT B. HOWARD, Administrative Patent Judges.
l\1ANTIS l\1ERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009709
Application 11/132,198
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7, 14, and 17-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to writing multiple radial locations
during a single rotation by deflection and modulation of a recording beam.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
rotating a disk recording apparatus a single rotation;
radially deflecting a recording beam across a set of
multiple tracks on the disk recording apparatus during the single
rotation of the disk recording apparatus; and
modulating the recording beam and the radial deflection
of the recording beam across the set of multiple tracks during the
single rotation of the disk recording apparatus to concurrently
form multiple track exposure patterns of a set of multiple track
exposure patterns on the set of multiple tracks on the disk
recording apparatus during the single rotation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Formato
Usa
Masuhara
US 2004/0001415 Al Jan. 1, 2004
US 2004/0080871 Al Apr. 29, 2004
JP 11-283283 Mar. 26, 1998
REJECTIONS
The Examiner made the following rejections:
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Application 11/132,198
Claims 1---6, 14, and 17 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Formato in view ofMasuhara.
Claims 7 and 18-25 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Formato in view ofMasuhara and further in view ofUsa.
THE ISSUES
The pivotal issue is whether the Examiner erred in finding that the
combination of Formato in view of Masuhara teaches the limitation of
"modulating the recording beam and the radial deflection of the recording
beam across the set of multiple tracks during the single rotation of the disk
recording apparatus to concurrently form multiple concentric circular track
exposure patterns" as recited in claim 1 because the combination would
result in inoperability.
ANALYSIS
We adopt the Examiner's findings as our own and add the following
primarily for emphasis.
Appellants argue that Masuhara is limited to patterns of spiral
structure, and does not disclose or suggest concurrently forming multiple
concentric circular track exposure patterns in the claimed fashion (see
Masuhara, 93-94 and Fig. 18) (Br. 7). Appellants further argue that
Formato is directed to deflecting an electron beam to convert a spiral pattern
(pattern without deflection) into a circular pattern (pattern with deflection)
(paras. I 0-12 of Formato) and because Masuhara is directed to deflecting an
electron beam to form multiple spiral-patterned tracks (Figs. 8 and 10 and
para. 90 of Masuhara), the modification of Formato in view of Masuhara
would result in being in an inoperable condition (Br. 8). According to
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Application 11/132,198
Appellants the deflection disclosed in Formato to convert a spiral pattern
into a circular pattern opposes the deflection disclosed in Masuhara to form
simultaneously multiple spiral-patterned tracks (Br. 8).
We do not agree with Appellants' argument. We are unpersuaded by
Appellants' argument that the single reference of Masuhara is limited to
patterns of spiral structure, and does not disclose or suggest concurrently
forming multiple concentric circular track exposure patterns in the claimed
fashion (see Masuhara, 93-94 and Fig. 18) (Br. 7). "[O]ne cannot show
non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F.2d
413, 426 (CCPA 1981). "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . . Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art." Id. at 425.
We agree with the Examiner's findings in the Final Action (Final Act.
3) that Formato teaches modulating a recording beam and the radial
deflection of the recording beam during a single rotation of the disk
recording apparatus to form exposure patterns on the track of the disk
recording apparatus during a single rotation (para. 40) and Masuhara teaches
forming multiple track exposures simultaneously by radially deflecting the
recording beam (paras. 80-82). We further agree with the Examiner that
one skilled in the art at the time of the invention, on the basis of the above
teachings, would modify the signal of Masuhara from oscillating around a
constant value to oscillating around the ramping signal as taught by Formato
(Ans. 10). In an obviousness analysis, it is not necessary to find precise
teachings directed to the specific subject matter claimed because inferences
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Application 11/132,198
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In this regard, "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
We also note that Appellants fail to support their argument with
evidence, and, as Appellants' argument relies only on attorney argument, we
find it unpersuasive and insufficient to rebut the Examiner's prima facie case
of obviousness. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence") (citation omitted).
Accordingly, we affirm the Examiner's rejection of claim 1, and for
the same reasons the rejections of claims 2-7, 14, and 17-25, not argued
separately (see Br. 10-11 ).
CONCLUSION
The Examiner did not err in finding that the combination of Formato
in view of Masuhara teaches the limitation of "modulating the recording
beam and the radial deflection of the recording beam across the set of
multiple tracks during the single rotation of the disk recording apparatus to
concurrently form multiple concentric circular track exposure patterns" as
recited in claim 1. Appellants did not provide any persuasive evidence that
the combination would result in inoperability.
DECISION
For the above reasons, the Examiner's rejection of claims 1-7, 14, and
17-25 is affirmed.
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Appeal2014-009709
Application 11/132,198
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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