Ex Parte Murata

Patent Trial and Appeal Board

Nov 19, 2014

12534074 (P.T.A.B. Nov. 19, 2014)

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.
12/534,074 07/31/2009 Tatsuya Murata 900187.459 8908
500 7590 11/19/2014
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
FEILD, JOSEPH H
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
11/19/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TATSUYA MURATA
____________________

Appeal 2012-006615
Application 12/534,074
Technology Center 2600
____________________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006615
Application 12/534,074
2
STATEMENT OF THE CASE
Appellant appeals the Examiner’s rejection of claims 1, 2, 5, and 6
under 35 U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

SUMMARY OF THE INVENTION
The claims are directed to an optical disk processing system for
detecting a transparent optical disk. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An optical disk device comprising:
a driving unit which rotationally drives an optical disk;
a measuring unit which measures inertia of the driving unit;
a detecting unit which detects reflected light of laser light which
is irradiated on the optical disk; and
a judging unit which judges that the optical disk is a transparent
disk when a measurement result by the measuring unit indicates
existence of an optical disk and a detection result by the detecting unit
indicates non-existence of an optical disk.

REJECTIONS
1. Claims 1, 2 and 5 stand rejected as unpatentable under 35 U.S.C
§103(a) in view of Hitachi
1
and Applicant's Acknowledged Prior
Art (AAPA).

2. Claim 6 stands rejected as unpatentable under 35 U.S.C §103(a) in
view of Hitachi, AAPA and TEAC.
2

1
Jap. App. Publ. No. 11-213530; Aug. 6, 1999.
Appeal 2012-006615
Application 12/534,074
3

ISSUES and ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded by
Appellant’s arguments, and sustain the Examiner’s rejections for the reasons
that follow.
A. Whether a person of skill in the art would have been motivated to
combine Hitachi and AAPA.

The Examiner finds Hitachi teaches detecting the presence or absence
of an optical disk by measuring light reflected off the disk, and AAPA
teaches detecting the presence or absence of an optical disk by measuring
the load applied to a motor that drives the disk. Ans. 5. The Examiner
further finds it would have been obvious to combine Hitachi and AAPA “to
ensure proper disc discrimination by having an additional condition in the
determination criteria.” Id. The examiner finds such redundancy would
“eliminate any ‘false’ conditions, either positive or negative.” Final
Rejection 3.
Appellant does not contest these findings. Rather, Appellant argues
that neither Hitachi nor AAPA were directed toward determining whether a
loaded disk was a transparent disk, and neither teaches combining itself with
the other. App. Br. 4–5. Consequently, Appellant argues there was no
motivation to combine Hitachi and AAPA for the purpose of determining the
presence of a transparent disc, and especially by combining a positive signal
from AAPA’s inertial load measurement and a negative signal from
Hitachi’s reflected light measurement. Id. at 5–6. But “[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular

2
Jap. App. Publ. No. 2004-164796; June 10, 2004.
Appeal 2012-006615
Application 12/534,074
4
motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007).
In view of the above, we agree with and adopt as our own the
Examiner’s finding that a person of ordinary skill in the art at the time of
Appellant’s invention would have been motivated to combine the Hitachi
and AAPA tests to further ensure proper disk discrimination by reducing the
number of false positive and false negative identifications.

B. Whether the combination of Hitachi and AAPA would detect the
presence of a transparent optical disk.

Appellant argues that the combination of the Hitachi and AAPA tests
would result in more reliably determining the presence or type of disk, rather
than determining that a present disk was transparent. App. Br. 6. In
response, the Examiner finds the combination of the Hitachi and AAPA tests
would yield a finite number of predictable results, namely, the results table
depicted in figure 3 of Appellant’s application. Ans. 6. Appellant counters
that since the Hitachi test discriminates between six conditions, the
combination of the Hitachi and AAPA tests would not result in the simple
truth table shown in Appellant’s figure 3, but in a more complex truth table
having 12 rather than 4 entries. Reply Br. 2. Appellant further argues that
given the 12 entry table, “it is not at all clear what to conclude from some of
the combinations.” Id. at 3. We are not persuaded by Appellant’s argument.
While we agree the Hitachi test discriminates between six conditions,
five of the six are positive ID’s—indicating that one of five different types
of optical disk are present—and the sixth is a negative ID—indicating the
absence of an optical disk. Thus, we agree with the Examiner’s finding that
the Hitachi test can be used in a binary fashion to indicate the presence or
Appeal 2012-006615
Application 12/534,074
5
absence of an optical disk. Ans. 6. We also agree with the Examiner’s
finding—which Appellant does not dispute—that the AAPA test is a binary
test that indicates the presence or absence of an optical disk. Id. Therefore,
we agree with the Examiner’s finding that combining the two tests would
predictably result in the simple truth table shown in figure 3 of Appellant’s
application, and that “[o]ne of those results, i.e., the no - yes result (no to a
disk focus test, and yes to a disk inertia test) would lead one to an overall
result indicative of the presence of a transparent disk.” Id. at 6–7.
In view of the above, we agree with and adopt as our own the
Examiner’s finding that the subject of Appellant’s claim 1 is obvious in view
of the combined teachings of Hitachi and AAPA. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Appellant does not separately argue for the
patentability of claims 2, 5 and 6. App. Br. 7. Consequently, we also
sustain the Examiner’s rejection of these claims as obvious in view of the
combined teachings of Hitachi and AAPA.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 5, and
6 under 35 U.S.C. § 103(a) in view of Hitachi and AAPA 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) (2009).

AFFIRMED
dw