Ex Parte Huang et al

Patent Trial and Appeal Board

Dec 8, 2014

11690864 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHANG-CHENG HUANG and
CHUNG-HUI LIN
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Appeal 2012-004721
Application 11/690,864 1
Technology Center 2600
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Before JAMES T. MOORE, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3–7. App. Br. 3. Claim 2 is cancelled. App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention generally relates to a method for locking a track
in an optical disc drive, and more particularly, to a method for locking onto a

1 The real party in interest is Princeton Technology Corporation.
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track after an optical pickup of an optical disc drive passes through a
defective section of an optical disc. Spec. p. 1, ¶2.
Claim 1 is illustrative and is reproduced below, with key disputed
limitations emphasized:
1. A method for locking a track after an optical pickup of
an optical disc drive passes from an untrackable section to a
trackable section of an optical disc, the method comprising:
generating a control signal for locking a track according
to a tracking zero crossing (TZC) signal generated by the
optical disc drive, comprising
generating a TZC delay signal according to a pulse
delay period of rising edges and falling edges of the TZC
signal generated by the optical disc drive; and
generating the control signal according to the TZC
delay signal; and
adjusting a gain of a tracking drive signal generated by
the optical disc drive according to the control signal when a
tracking error (TE) signal generated by the optical disc drive
shows that the optical pickup of the optical disc drive passes
from the untrackable section to the trackable section of the
optical disc.

THE REJECTIONS2
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Kamiyama US 6,236,032 B1 May 22, 2001
Claims 1 and 3–7 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. Ans. 4–12.

2 We note that Appellants challenge the Examiner’s objection to the
drawings. This, however, is a petitionable issue. See 37 C.F.R. § 1.181; see
also MPEP 1002.02(c)(4).
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Claims 1 and 3–7 stand rejected under 35 U.S.C. § 102 (b) as being
anticipated by Kamiyama. Ans. 12–15.

THE ENABLEMENT REJECTION
When rejecting a claim for lack of enablement, “the [United States
Patent and Trademark Office] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application . . . .” In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d
220, 223-24 (CCPA 1971)). The test for compliance with the enablement
requirement is whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988).
We agree with the Patent Owner that the Examiner has not set forth a
sufficient explanation as to why the scope of the claimed invention is not
adequately enabled by the Specification. In particular, the Examiner appears
to focus on how well the invention would work rather than whether the
disclosure contains sufficient information to enable a skilled artisan to make
and use the claimed invention. For example, the Examiner questions how
delaying the Cout signal “has any benefit on the invention.” Ans. 5–6; see
also Ans. 7–9 (questioning the benefit of other claimed features). The
Examiner also challenges whether stable tracking can be performed because
the invention only uses high and low logic levels with no association to
degree/amount. Ans. 8–9. Finally, the Examiner finds the Specification
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does not describe how the claimed method can be implemented structurally.
Ans. 12.
Appellants, though, persuasively respond to the Examiner’s findings.
Specifically, we find persuasive Appellants’ response set forth on pages 4–5
in their Reply Brief. There, Appellants explain, for example, that “Cout can
be used to correct the optical pickup during the immediate exodus of the
defective region, giving the tracking error signal time to settle before
reverting to using the tracking error to correct movements of the pickup
head” and “that knowing which of the two sides of the track that the pickup
head is believed to be on will allow a quicker response using Cout when
exiting an untrackable section than the traditional method of waiting for TE
and TZC signal to restablize.” Reply Br. 5.
Accordingly, we agree with Appellants that the Examiner erred in
rejecting claims 1 and 3–7 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement.

THE ANTICIPATION REJECTION BASED ON KAMIYAMA
The Examiner here finds that Kamiyama discloses each limitation of
claim 1. Ans. 12-14. Appellants, on the other hand, contend that Kamiyama
fails to disclose adjusting a gain of a tracking drive signal generated by the
optical disc drive according to the control signal when a tracking error (TE)
signal generated by the optical disc drive shows that the optical pickup of the
optical disc drive passes from the untrackable section to the trackable section
of the optical disc. App. Br. 10-12.

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ISSUE
Does Kamiyama disclose adjusting a gain of a tracking drive signal
generated by the optical disc drive according to the control signal when a
tracking error (TE) signal generated by the optical disc drive shows that the
optical pickup of the optical disc drive passes from the untrackable section
to the trackable section of the optical disc, as recited in claim 1?

ANALYSIS
Claims 1 and 3-7
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting the claims as anticipated.
Appellants assert that Kamiyama “teaches inhibiting the damping
signal from the time the defect is detected until a ‘first rise’ after being
powered back on after the defect has passed.” App. Br. 11. Appellants
distinguish this from adjusting the gain of the tracking drive signal when the
tracking error signal shows passing from an untrackable section to a
trackable section. App. Br. 11. According to Appellants, “[w]aiting until a
“first rise” after the defect is different than the moment of passing from an
untrackable section to a trackable section of the disc.” App. Br. 11.
However, Appellants fail to address the Examiner’s findings or
reliance on Kamiyama’s Figs. 5B and 5K. Specifically, the Examiner
explains that when the tracking error signal shows a change from a noise
signal to a tracking error signal at time T3 (Fig. 5B), the gain of Sdr begins
to change, i.e. is adjusted (Fig. 5K). Ans. 23–24. The Examiner also finds
that tracking drive signal Sdr is in accordance with control signal Sbc,
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because control signal Sbc controls switch 10 that outputs tracking drive
signal Sdr. Ans. 23–24.
We have carefully considered Appellants’ arguments;
notwithstanding, we are not persuaded of any error in the Examiner’s
findings. Kamiyama teaches the recited adjusting a gain of a tracking drive
signal (Kamiyama’s Sdr) generated by the optical disc drive according to the
control signal (Kamiyama’s Sbc) when a tracking error (TE) signal (Sfe)
generated by the optical disc drive shows that the optical pickup of the
optical disc drive passes from the untrackable section to the trackable section
of the optical disc.
Therefore, we find that the Examiner did not err in rejecting claims 1
and 3–7 under 35 U.S.C. § 102 (b) as anticipated by Kamiyama.

CONCLUSION
The Examiner erred in rejecting claims 1 and 3–7 for failing to
comply with the enablement requirement, but did not err in rejecting claims
1 and 3–7 as anticipated by Kamiyama.

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DECISION
The Examiner’s decision rejecting claims 1 and 3–7 for failing to
comply with the enablement requirement is reversed, but the decision
rejecting claims 1 and 3–7 as anticipated by Kamiyama 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

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