11146790 (B.P.A.I. Jun. 25, 2012)

Ex Parte Lydegraf et al

Board of Patent Appeals and InterferencesJun 25, 2012

11146790 (B.P.A.I. Jun. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/146,790 06/07/2005 Curt N. Van Lydegraf 5649-3162 6048 20792 7590 06/25/2012 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER NGUYEN, HOA T ART UNIT PAPER NUMBER 2627 MAIL DATE DELIVERY MODE 06/25/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CURT N. VAN LYDEGRAF, DONALD J. FASEN, and RICHARD L. HILTON ____________ Appeal 2010-002469 Application 11/146,790 Technology Center 2600 ____________ Before DAVID M. KOHUT, JASON V. MORGAN, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002469 Application 11/146,790 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-22. App. Br. 4; Reply Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ Invention Appellants invented a data storage device that includes a first read mechanism, a second read mechanism, and a data storage medium movable with respect to the first and second read mechanisms. According to Appellants, the claimed invention positions a first reference path containing reference bits near a first corner of the data storage medium, configures the first read mechanism to read the reference bits of the first reference path, and configures the second read mechanism to read the reference bits of a second reference path. In addition, the claimed data storage device includes a controller that determines whether the first read mechanism and the data storage medium are offset with respect to each other based upon the reference bits read by both the first and second read mechanisms. See Abstract. Illustrative Claim 1. A data storage device comprising: a first read mechanism; a second read mechanism; a data storage medium movable with respect to the first read mechanism and the second read mechanism; a first reference patch positioned substantially at a first corner of the data storage medium, the first reference patch containing reference bits disposed along both sides of at least one track, wherein the first read mechanism is configured to Appeal 2010-002469 Application 11/146,790 3 read the reference bits of the first reference patch as said first read mechanism travels along said at least one track; a second reference patch containing reference bits disposed along both sides of at least one track, the second read mechanism being configured to read the reference bits of the second reference patch as said second read mechanism travels along said at least one track of said second reference patch; and a controller configured to determine whether the first read mechanism and the data storage medium are offset with respect to each other based upon the reference bits read by the first read mechanism and the reference bits read by the second mechanism. Prior Art Relied Upon Seki US 6,195,313 B1 Feb. 27, 2001 Ohinata JP 08-087731 A Apr. 2, 1996 Rejection on Appeal Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Seki and Ohinata. Ans. 3-7. Examiner’s Findings and Conclusions The Examiner finds that since Seki’s controller uses X and Y movements to perform the process of recording/reproduction on a recording medium, Seki discloses that the recorded bits at each end of the reading mechanisms form corners. See Ans. 8. Consequently, the Examiner finds that the recorded bits at each end of the reading mechanisms are substantially at a first, second, third, and fourth corner. See id. Moreover, the Examiner finds that Seki’s Figure 29 illustrates a corner where the patches are recorded with respect to the X and Y perpendicular directions. Ans. 8. Therefore, the Examiner finds that Seki teaches or suggests “a first Appeal 2010-002469 Application 11/146,790 4 reference patch positioned substantially at a first corner,” as recited in independent claim 1. Id. Appellants’ Contentions Appellants contend that Seki’s Figure 29 only illustrates the grouping of bits in X and Y directions, and a probe for reading the bits. Reply Br. 7. In particular, Appellants argue that Seki’s Figure 29 does not show the data storage medium on which the bits are disposed. Id. (Emphasis in original.) Therefore, Appellants allege that it is impossible for Seki’s Figure 29 to teach or suggest the claimed “first corner of the data storage medium” and the relative positioning of the bits with respect to such corner. Reply Br. 7. Moreover, Appellants contend that using Seki’s reference bits to form a corner on the data storage medium is not a corner of the storage medium itself. Id. II. ISSUE The dispositive issue before us is: did the Examiner err in finding that the combination of Seki and Ohinata teaches or suggests “a first reference patch positioned substantially at a first corner of the data storage medium,” as recited in independent claim 1, and similarly recited in independent claims 10, 21, and 22? III. ANALYSIS Claims 1, 10, 21, and 22 Based on the record before us, we find error in the Examiner’s obviousness rejection of independent claim 1, which recites, inter alia, “a first reference patch positioned substantially at a first corner of the data Appeal 2010-002469 Application 11/146,790 5 storage medium[.]” Independent claims 10, 21, and 22 recite a similar claim limitation. At best, we find that Seki’s Figure 29 illustrates two probe groups each constituting five probes that are in contact with a recording medium. Col. 20, ll. 52-61. However, we find that Seki does not teach or suggest positioning the two probe groups near a corner of the recording medium, as claimed. We agree with the Appellants that while the relative orientation of the two probe groups forms a corner, there is no teaching or suggestion in Seki that the positioning of these probe groups is near the corner of the recording medium itself. See Reply Br. 7. Moreover, while Seki may be capable of positioning the two probe groups near a corner of the recording medium, we find no such disclosure in Seki to indicate that this course of action is even contemplated. Such conjecture would require us to resort to speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis in order to support the Examiner’s obviousness rejection. As such, we find that the Examiner has not presented sufficient evidence to warrant that the textual portions of Seki relied upon teach or suggest the disputed claim limitation. Further, we note that Ohinata does not remedy the above-noted deficiency in the Examiner’s obviousness rejection. Since Appellants have shown at least one error in the rejection of independent claims 1, 10, 21, and 22, we need not reach the merits of Appellants’ other arguments. It follows that the Examiner has erred in Appeal 2010-002469 Application 11/146,790 6 concluding that the combination of Seki and Ohinata renders independent claims 1, 10, 21, and 22 unpatentable. Claims 2-9 and 11-20 Since dependent claims 2-9 and 11-20 incorporate by reference the same disputed claim limitation as their underlying base claim, we find that the Examiner erred in rejecting these claims for the same reason set forth in our discussion of independent claims 1 and 10. IV. CONCLUSION The Examiner has erred in rejecting claims 1-22 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We reverse the Examiner’s decision to reject claims 1-22. REVERSED ke