Ex parte Muramatsu et al.

Board of Patent Appeals and Interferences

Oct 22, 1998

08298773 (B.P.A.I. Oct. 22, 1998)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EIJI MURAMATSU, AKIYOSHI INOUE,
SHOJI TANIGUCHI, HIROYUKI TAKAHASHI,
SHIGENORI MURAKAMI, and
TOSHIHIKO TAKISHITA
_____________
Appeal No. 96-1849
Application 08/298,7731
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
2
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C.
§ 134 from the examiner’s rejection of claims 1-8, which
constitute all the claims in the application.
The disclosed invention pertains to a recordable
optical disc suitable for recording signals according to the
Compact Disc Video (CDV) format. The specification notes that
the normal recording of CDV signals on a Recordable Compact
Disc (CD-R) permits the wobble frequency in the video
recording area to interfere with the frequency band of an EFM
modulated digital signal. The invention eliminates this
problem by placing guide grooves in the audio and video
recording areas which have a wobble frequency which will not
interfere with a frequency band of an EFM signal.
Representative claim 1 is reproduced as follows:
1. A recordable optical disc on which information is
recorded by applying a light beam on the surface thereof,
comprising:
a first recording area on which information is recorded
and reproduced while the disc is rotated at a first linear
velocity; and
3
a second recording area on which information is recorded
and reproduced while the disc is rotated at a second linear
velocity, each of the first recording area and the second
recording area comprising guide grooves having a wobble
frequency free from interference with a frequency band of an
EFM signal.
The examiner relies on the following reference:
The admitted prior art as shown in Figures 2A and 2B of the
application.
Claims 1-8 stand rejected under 35 U.S.C. § 102(b) as
being clearly anticipated by the admitted prior art of Figures
2A and 2B.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of anticipation relied upon by the examiner as
support for the rejection. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the
examiner’s rationale in support of the rejection and arguments
4
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure of the admitted prior art does
not fully meet the recitations of claims 1-8. Accordingly, we
reverse.
Anticipation is established only when a single prior
art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228
(1984); W.L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
With respect to independent claims 1 and 5, the
examiner notes that Figure 2B shows that the wobble frequency
in the second area of a disc recorded in CDV format has a
value of 179.55 kHz. The examiner observes that since the
frequency band of EFM signals is 196-720 kHz, there is no
interference between this frequency band and the wobble
5
frequency shown in Figure 2B [answer, page 3].
Appellants respond that the examiner is incorrect
because the wobble frequency of Figure 2B interferes with the
EFM frequency band because (1) the wobble signal produces
second harmonics which may interfere with the EFM signal, and
(2) the component of the wobble frequency has a bandwidth of
+/- 50 kHz [brief, page 4]. The examiner basically questions
the accuracy of the statements made by appellants in support
of their position [answer, pages 4-5]. Appellants respond
that their assertions represent properties of signals which
would be clearly recognized by the person skilled in this art
[reply brief].
We agree with appellants’ position for the same
reasons advanced by them as amplified by the following
comments. If the examiner is going to rely on prior art as
admitted by an applicant for a rejection on anticipation, he
must accept the prior art exactly as offered by the applicant.
The admitted prior art relied on by the examiner includes the
corresponding description of this prior art in the
specification. The specification describes the wobble
frequency of the second area as being 180 kHz which “means
6
that the signal to be recorded interferes with the frequency
band of EFM signal (196-720 kHz), and therefore it is
impossible to record digital signal in the second area”
[specification, pages 5-6]. The examiner cannot accept this
prior art for use in a rejection and assert at the same time
that the prior art has properties different from the very
properties described in the prior art. The admitted prior art
describes an interference which is contrary to the recitations
of independent claims 1 and 5, and the examiner cannot apply
such admitted prior art under 35 U.S.C. § 102 in a manner
inconsistent with its own disclosure.
Since the admitted prior art does not anticipate the
invention of independent claims 1 and 5, such art does not
anticipate the invention as recited in any of the claims on
appeal. Therefore, the decision of the examiner rejecting
claims 1-8 under 35 U.S.C. § 102 is reversed.

REVERSED
7
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JS/dym
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