Ex Parte Erickson et al

Board of Patent Appeals and Interferences

Jan 31, 2012

10722712 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIRK ERICKSON, ED BEEMAN, THOMAS L. PRATT,
CHRISTIAAN STEENBERGEN, and CHARLES ROBERT WEIRAUCH
_____________

Appeal 2009-009972
Application 10/722,712
Technology Center 2600
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/722,712

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellants’ claimed invention is directed to embedded disc
information (EDI) used to identify optical media associated with a blue laser
embedded in a blue laser medium but readable by a red laser. A blue laser, a
red laser, and an infrared (IR) laser, each one communicates information
with an optical media adapted for high density, DVD or CD formatted
storage, respectively. Upon insertion of an optical medium into an optical
drive, an identification module initiates a recognition process by using the
red laser to attempt to read embedded identification information. If the red
laser reads EDI information that indicates that the optical medium is a blue
laser medium, the optical drive is initiated to use the optical medium
according to the read EDI information and use the blue laser. If the red laser
fails to read EDI information, the optical medium is assumed not to be a blue
laser optical medium and the identification module proceeds with a DVD
detection algorithm to determine whether the inserted optical medium is a
red laser medium. If the DVD detection algorithm detects a red laser optical
medium, the red laser is used by the optical drive, and if the DVD algorithm
fails to detect a red laser optical medium, the optical drive initiates detection
algorithms for remaining lasers, such as IR lasers associated with CD media.
See Spec. 3-4.
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Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added).
1. An information handling system comprising:
plural components operable to process information;
an optical drive interfaced with the plural components and operable to
communicate information between the plural components and an optical
medium, the optical drive having plural lasers, each laser associated with a
type of optical medium; and
an optical medium identification module associated with the optical
drive and operable to illuminate an optical medium with a first of the plural
lasers to detect identification information embedded on the optical medium
that identifies the optical medium as associated with a second of the plural
lasers.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Nishizawa US 2003/0095487 A1 May 22, 2003
The following rejections are before us for review:
1. The Examiner rejected claims 1-19 under 35 U.S.C. § 102(e) as
being anticipated by Nishizawa.
2. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Nishizawa.

ISSUE
The pivotal issue is whether the Examiner erred in finding that
Nishizawa inherently teaches “identification information embedded on the
optical medium that identifies the optical medium” as recited in claim 1
without providing extrinsic evidence.

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Application 10/722,712

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PRINCIPLES OF LAW
The one who bears the initial burden of presenting a prima facie case
of unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
To serve as an anticipation when the reference is silent
about the asserted inherent characteristic, such gap in the
reference may be filled with recourse to extrinsic evidence.
Such evidence must make clear that the missing descriptive
matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of
ordinary skill.
Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir.
1991) (The court went on to explain that “[t]his modest flexibility in the rule
that ‘anticipation’ requires that every element of the claims appear in a
single reference accommodates situations where the common knowledge of
technologists is not recorded in the reference; that is, where technological
facts are known to those in the field of the invention, albeit not known to
judges.”). See also MPEP 2131.01(III).
It would not be appropriate for the examiner to take official notice of
facts without citing a prior art reference where the facts asserted to be well
known are not capable of instant and unquestionable demonstration as being
well-known. For example, assertions of technical facts in the areas of
esoteric technology or specific knowledge of the prior art must always be
supported by citation to some reference work recognized as standard in the
pertinent art. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). See also
MPEP 2144.03(A).
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An assessment of basic knowledge and common sense that is not
based on any evidence in the record lacks substantial evidence support. In
re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
If the applicant adequately traverses the examiner’s assertion of
official notice, the examiner must provide documentary evidence in the next
Office action if the rejection is to be maintained. See also MPEP
2144.03(C).

ANALYSIS
Appellants challenge the Examiner’s explanation (Ans. 7-8) on the
knowledge of one skilled in the art without supporting evidence (Reply Br.
1). Appellants assert that the Examiner’s explanation that the “identification
information” disclosed by Nishizawa is the “size itself” of pre-pits formed in
an optical medium is fundamentally unfair because the explanation was
presented for the first time in the Answer (Reply Br. 1-2). Appellants assert
that absent a supporting reference that specifies a relationship between
Nishizawa’s tracking errors and their relationship to the pre-pit size, the
Examiner’s rejection cannot stand (id.). This is especially true in view of
Nishizawa’s paragraph [0033] which explains identification based on track
pitches by changing the focal point of irradiating laser to generate a tracking
error without any correlation of such a determination to pre-pit sizes (id.).
We are persuaded by Appellants’ arguments. The Examiner’s
reliance on knowledge of one skilled in the art without a supporting
reference to establish that the pre-pit size constitutes “identification
information” and that they correlate with Nishizawa’s tracking error
determinations lacks substantial evidence support. See Zurko, 258 F.3d at
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1385; Cont’l, 948 F.2d at 1268; Ahlert, 424 F.2d at 1091. This is because
assertions of technical facts in the areas of esoteric technology or specific
knowledge of the prior art must always be supported by citation to some
reference work recognized as standard in the pertinent art. See In re Ahlert,
424 F.2d at 1091. See also MPEP 2144.03(A).
Furthermore, the Examiner should have provided such a reference in
response to Appellants’ traversal of the Examiner’s assertion of the inherent
facts, which amounts to Official Notice, but the Examiner did not. See also
MPEP 2144.03(C).
Accordingly, the Examiner did not bear the initial burden of
presenting a prima facie case of unpatentability because the Examiner failed
to show that Nishizawa inherently teaches “identification information
embedded on the optical medium that identifies the optical medium.” See
Oetiker, 977 F.2d at 1445.
For the aforesaid reasons we will reverse the Examiner’s rejection of
claim 1 and for the same reasons the rejections of claims 2-20.

CONCLUSION
The Examiner erred in finding that Nishizawa inherently teaches
“identification information embedded on the optical medium that identifies
the optical medium” as recited in claim 1 without providing extrinsic
evidence.

ORDER
The Examiner’s rejection of claims 1-20 is reversed.

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REVERSED

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