Ex Parte Hanks et al

Board of Patent Appeals and Interferences

Jun 19, 2012

10661189 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DARWIN MITCHEL HANKS
and ANDREW L. VAN BROCKLIN
____________________

Appeal 2010-002060
Application 10/661,189
Technology Center 2600
____________________

Before JEAN R. HOMERE, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1, 3,
4, 13, 15-21, 25-35, 38-40, 45, 46, 51, and 52 under 35 U.S.C. § 134(a)
(2007). Claims 2, 5-12, 14, 22-24, 36, 37, 41-44, and 47-50 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2007).
We affirm.
A. INVENTION
According to Appellants, the invention relates in general to sensing
media speed and accurately controlling media speed and accuracy and, more
particularly, to using electromagnetic radiation sensed from the media to
control accurate placement of exposure of the media to electromagnetic
radiation (Spec. 1, ¶ [0002]).

B. ILLUSTRATIVE CLAIM
Claim 13 is exemplary and is reproduced below:

13. A device for interacting with an optical disk having a
tracked data side on which data may be stored and an untracked non-data
side that includes a pattern of reflective and non-reflective regions aligned
circularly about a rim of the disk outside a label area in which images may
be formed on the non-data side of the disk, the device comprising;

a rotation device configured to rotate the disk;

an electromagnetic radiation source directed at the rim, wherein
electromagnetic radiation radiated from the reflective regions of the pattern
originates from the electromagnetic radiation source directed at the rim;

an electromagnetic radiation sensor configured to sense a frequency of
electromagnetic radiation radiated from the reflective regions of the pattern;
and
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a controller coupled to the electromagnetic radiation sensor, the
controller configured to, with a sensed frequency of electromagnetic
radiation radiated from the reflective regions of the pattern, control a
rotational speed of the disk and establish an absolute reference for radial
positioning over the label area on the untracked non-data side of the disk.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Black U.S. Pat. 3,426,337 Feb. 4, 1969
Satoh U.S. Pat. 5,119,363 June 2, 1992
Nakamura U.S. Pat. 5,138,145 Aug. 11, 1992
Honda U.S. Pat. Pub. 2002/0191517 A1 Dec. 19, 2002

Claims 1, 3, 4, 13, 15, 16, 19-21, 25-29, 34, 35, 38-40, 45, 46, 51, and
52 stand rejected under 35 U.S.C. § 103(a) over the teachings of Honda and
Black.
Claims 17, 30, and 32 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Honda, Black and Nakamura.
Claims 18, 31, and 33 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Honda, Black and Satoh.

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II. ISSUES
Has the Examiner erred in finding that the combined teachings of
Honda and Black would have taught or suggested a controller configured to
“control a rotational speed” of a disk “with a sensed frequency of
electromagnetic radiation radiated from the reflections regions” of a pattern,
and “establish an absolute reference for radial positioning” over a label,
wherein the pattern is “outside [the] label area in which images may be
formed” (claim 13)? In particular, the issue turns on whether Black in
combination with Honda would have suggested establishing an “absolute
reference” for radial positioning and controlling the disk’s rotational disk
with the sensed frequency from a pattern “outside a label area.”

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Black
1. Black discloses a positioning system in which the radial and
spiral edges of a pattern on a movable record member are sensed (col.
1, ll. 15-6), wherein the time displacement relationship between paired
pulses is determined by a unique radially varying reference pattern on
the record member, defined by radial areas of differing sensible
properties (col. 2, ll. 48-51), and the radial position is thus defined in
terms of the time displacement between an individual spiral boundary
pulse and the immediately preceding or succeeding radial boundary
pulse (col. 3, ll. 3-6).
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2. The position reference pattern 30 comprises circumferentially
alternating areas 31, 32 of differently reflectivity (col. 4, ll. 26-28),
wherein the reference pattern and the data storage areas are separate
(col. 4, ll. 10-14).

IV. ANALYSIS
Although Appellants admit that “‘absolute’ [of “absolute reference” as
claimed in representative claim 13] is not specifically defined”, Appellants
contend that “its meaning in the context of establishing a reference for radial
positioning is clear – a fixed point or location to which all radial positioning
may be referenced” (App. Br. 7). Appellants then contend that “[n]owhere
does Black teach establishing a fixed point or position on the disk to which
other points or positions are referenced” (Id.). Further, Appellants contend
that “Black expressly teaches away from open loop position control”;
“Black’s reference pattern extends across nearly the entire disk” instead of
“positioned on a rim outside a label area” (App. Br. 9); and “there is no
reason an ordinarily skilled artisan would combine Honda and Black” (App.
Br. 10).
However, the Examiner points out that, although “Appellant insists
that the mere inclusion of the word ‘absolute’ somehow requires” an “open
loop control system where an initial point is established from which all
subsequent radial position is referenced in an open loop system,” the claim
language “does not include any of this subject matter” (Ans. 15). The
Examiner explains that “the word ‘absolute’ can mean ‘perfect in quality or
nature; complete’” (id.), and thus, since the controller [of Honda in view of
Black] is configured to find the current location and based on that location
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perform radial positioning,” “[t]hat current location can be reasonably
considered… ‘an absolute reference’ since it completely defines the current
location on the disc” (Ans. 16).
The Examiner also points out that “open loop position control has not
been claimed,” and thus, Appellants’ argument that Black “teaches away”
from open loop position control “is irrelevant” (id.). The Examiner further
finds that Black discloses that “the ‘data area’ and the pattern may be
separated,” and in combination with Honda, “the ‘data area’ of Black is the
label area of Honda, and therefore the label area and pattern are separate”
(Ans. 17). The Examiner then finds that, contrary to Appellants’ contention
that “the pattern disclosed by Black extends across nearly the entire disc, and
therefore it would cover the label area and make it useless,… [t]here’s
nothing in Black that requires the reference pattern to extend over a large
portion of the disc” (id.).
We find no error in the Examiner’s findings.
Appellants’ contention that “Black teaches away from open loop
position control” is not commensurate in scope with the specifically recited
language of claim representative claim 13. In particular, we agree with the
Examiner that “open loop position control has not been claimed” (App. Br.
16), and thus, Appellants’ argument that Black “teaches away” from open
loop position control will not be considered. Instead, we give the claims as
specifically recited their broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Representative claim 13 does not define what an “absolute reference”
is to mean, comprise or represent other than that the reference is established
“for radial positioning.” Accordingly, we give “absolute” its broadest but
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reasonable definition as “complete” and thus interpret “absolute reference”
to be any complete reference used for radial positioning.
Black discloses defining the radial position by referencing the current
location (FF 1). We find no error in the Examiner’s finding that “since the
controller [of Honda in view of Black] is configured to find the current
location and based on that location perform radial positioning,” “[t]hat
current location can be reasonably considered… ‘an absolute reference’
since it completely defines the current location on the disc” (Ans. 16). Thus,
we find no error in the Examiner’s finding that Black, when in view of
Honda, at the least suggests a controller configured to “establish an absolute
reference for radial positioning” over a label, as recited in claim 13.
Furthermore, Black teaches that the position reference pattern
comprises circumferentially alternating areas of different reflectivity,
wherein the reference pattern and the data storage areas are separate (FF 2).
We find no error in the Examiner’s finding that Black discloses that “the
‘data area’ and the pattern may be separated,” and in combination with
Honda, “the ‘data area’ of Black is the label area of Honda, and therefore the
label area and pattern are separate” (App. Br. 17). Thus, we find no error
with the Examiner’s finding that Black, when in view of Honda, at the least
suggests a controller configured to control a rotational speed of a disk using
a pattern, wherein the pattern is “outside [the] label area in which images
may be formed” over a label, as recited in claim 13.
We note that by arguing that “Black’s reference pattern extends across
nearly the entire disk” instead of “positioned on a rim outside a label area”
(App. Br. 9), Appellants appear to be arguing that Black’s reference pattern
is not positioned on only the rim outside of the label area. However, such
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apparent argument is not commensurate in scope with the language of claim
13 since claim 13 does not preclude that the pattern may also comprise of a
pattern portion inside of the label area as well as a pattern portion on the rim
outside of the label area. Thus, even if Black’s reference pattern extends
across “nearly” the entire disk, we note that claim 13 requires that the
pattern be extended to include being “positioned on a rim outside of a label
area.”
As to Appellants’ argument that “there is no reason an ordinarily
skilled artisan would combine Honda and Black” (App. Br. 10), Appellants
appear to view the references from the different perspective than that of the
Examiner. That is, the question is not whether the ordinarily skilled artisan
would have superimposed Black’s reference on Honda’s disk, but whether
the artisan would have applied Black’s teaching of separating the “data area”
from the pattern to the teachings of Honda, as the Examiner set forth (Ans.
17). We find no error in the Examiner’s finding that, in combination with
Honda, “the ‘data area’ of Black is the label area of Honda, and therefore the
label area and pattern are separate” (id.).
Appellants have provided no evidence that incorporating the teaching
of separating the data area from the pattern was “uniquely challenging or
difficult for one of ordinary skill in the art,” Leapfrog Enterprises, Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor have
Appellants presented evidence that this incorporation yielded more than
expected results. Rather, we find that Appellants’ invention is simply an
arrangement of the known teachings. KSR Int’l Co. v. Teleflex, 550 U.S.
398, 417 (2007).
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Accordingly, we find no error with the Examiner’s rejection of
representative claim 13 over Honda and Black. Appellants provide no
arguments for independent claims 1, 26, 39, and 51, and dependent claims 3,
4, 15, 16, 19-21, 25, 27-29, 34, 35, 38, 40, 45, 46, and 52, separate from
those of representative claim 13 (App. Br. 6-10). Accordingly, claims 1, 3,
4, 15, 16, 19-21, 25-29, 34, 35, 38-40, 45, 46, 51, and 52 fall with claim 13.
As to claims 17, 18, and 30-33, Appellants merely repeat the
argument that “independent Claims 13 and 26 [from which the claims
respectively depend] distinguish patentably over the combination of Honda
and Black” (App. Br. 10-11). However, as discussed above, we find no
error with the rejection of claim 13, and thus, claim 26, over Honda and
Black. Accordingly, we also affirm the rejection of claims 17, 30, and 32
over Honda and Black in further view of Nakamura, and the rejection of
claims 18, 31, and 33 over Honda and Black in further view of Satoh.

CONCLUSION AND DECISION
The Examiner’s rejection of claims 1, 3, 4, 13, 15-21, 25-35, 38-40,
45, 46, 51, and 52 under 35 U.S.C. § 103(a) 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).

AFFIRMED

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