Ex Parte Hanks

Board of Patent Appeals and Interferences

Mar 26, 2012

10347074 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DARWIN MITCHEL HANKS
____________________

Appeal 2009-015414
Application 10/347,074
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015414
Application 10/347,074

2
STATEMENT OF CASE
1

The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-3, 9, 10, 13-16, 21, 22, 25-27, 31, 32, 35-39, 42, and
43, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellant invented a method for determining a radial position on
a trackless surface of an optical disc. Specification 1:5-7.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A processor-readable medium comprising processor-
executable instructions configured for:
[1] locating a reference pattern on a trackless non-data side
of an optical disc at a reference pattern area which is outside a
label area of the non-data side;
[2] scanning the reference pattern with a laser spot; and
[3] based on the scanning, determining an absolute radial
position of the laser spot within the reference pattern area on
the optical disc to which all subsequent radial positioning of the
laser spot to print a text/image label in said label area is
referenced.

1
Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Nov. 10, 2008) and Reply Brief (“Reply Br.,” filed Apr. 5, 2009),
and the Examiner’s Answer (“Ans.,” mailed Feb. 5, 2009), and Final
Rejection (“Final Rej.,” mailed June 13, 2008).
Appeal 2009-015414
Application 10/347,074

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REFERENCES
The Examiner relies on the following prior art:
Black
2

Moriyama
US 3,426,337
US 4,731,680
Feb. 4, 1969
Mar. 15, 1988
Honda US 2002/0191517 A1 Dec. 19, 2002
Ikeuchi JP 57-109144 July 7, 1982

REJECTION
Claims 1-3, 9, 10, 13-16, 21, 22, 25-27, 31, 32, 35-39, 42, and 43
stand rejected under 35 U.S.C. §103(a) as being unpatentable over Honda,
Moriyama, and Ikeuchi.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1-3, 9, 10,
13-16, 21, 22, 25-27, 31, 32, 35-39, 42, and 43 under 35 U.S.C. § 103(a) as
unpatentable over Honda, Moriyama, and Ikeuchi turns on whether the
combination of the cited references teaches or suggests “the reference
pattern and reference pattern area are located on the trackless, non-data side
of an optical disc” and whether a person with ordinary skill in the art would
have been motivated to combine the cited prior art.

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s contentions that the Examiner has erred.

2
The Examiner has listed this reference as “Cordano et al.,” however, the
first inventor listed is Black. Ans. 3.
Appeal 2009-015414
Application 10/347,074

4
We disagree with the 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 the Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.
The Appellant first contends that the combination of Honda,
Moriyama, and Ikeuchi fails to teach or suggest that “the reference pattern
and reference pattern area are located on the trackless, non-data side of an
optical disc,” as required by limitation [1] of claim 1. App. Br. 7-9 and
Reply Br. 1-2. The Appellant specifically argues that the Examiner’s
rejection does not consider the claimed invention as a whole and focuses on
the prior art teaching only parts of the claimed invention. App. Br. 8-9.
We disagree with the Appellant. The Appellant first agrees that
Moriyama describes a “reference pattern area” and Ikeuchi describes a
“reference pattern.” App. Br. 7-8 and Reply Br. 1-2. The Appellant further
agrees that Honda describes a “trackless, non-data side of an optical disk.”
App. Br. 7-8 and Reply Br. 1-2. Honda further describes printing an image
on the non-data, trackless side of an optical disk where the optical pickup is
positioned at a predetermined radial reference position. Honda ¶¶ 0040-
0047. As noted by the Examiner (Ans. 9), the Appellant acknowledges that
the combination of Honda, Moriyama, and Ikeuchi teaches or suggests each
of the limitations of claim 1. As such, the Appellant’s contention that the
prior art fails to teach or suggest the claimed limitations as a whole is
unpersuasive because the Appellant is responding to the rejection by
attacking the references separately, even though the rejection is based on the
Appeal 2009-015414
Application 10/347,074

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combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
While the Appellant argues that the Examiner has picked apart the
limitations of the claimed invention without considering the invention as a
whole (App. Br. 8), the Appellant has not provided any specific rationale or
evidence to support the Appellant’s contention that the features described by
the prior art cannot be combined to describe the claimed invention. The
Appellant merely alleges that the Examiner has broken up the claimed
limitations and not considered the limitations as a whole, without
specifically pointing to any persuasive rationale to demonstrate why the
prior art cannot be combined in the manner proposed by the Examiner.
Absent persuasive evidence or rationale to support the Appellant’s
contention that the Examiner erred by failing to consider the claimed
limitations as a whole, we do not find the Appellant’s arguments to be
persuasive.
The Appellant further contends that a person with ordinary skill in the
art would not have been prompted to modify or combine the cited prior art to
yield the claimed invention. App. Br. 9-12 and Reply Br. 2. We again
disagree with the Appellant. The Examiner found that a person with
ordinary skill in the art would have been motivated to combine the cited
prior art in order to increase accuracy. Ans. 4 and 10. The Appellant has
not provided any rationale or evidence to rebut this finding, nor to illustrate
why the combination of these known elements would not yield predictable
results. Again, absent any persuasive evidence or rationale to support the
Appeal 2009-015414
Application 10/347,074

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Appellant’s argument, we do not find the Appellant’s argument to be
persuasive.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-3, 9, 10, 13-16, 21, 22,
25-27, 31, 32, 35-39, 42, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Honda, Moriyama, and Ikeuchi.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-3, 9, 10, 13-16, 21, 22, 25-27, 31, 32, 35-39,
42, and 43 under 35 U.S.C. § 103(a) as unpatentable over Honda,
Moriyama, and Ikeuchi is sustained.

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) (2010).

AFFIRMED

ELD