Ex Parte Rushton et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11123047 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NIGEL KEVIN RUSHTON, LAURA LOREDO SIERRA, and
PAUL FREDERICK BARTLETT
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Appeal 2010-001871
Application 11/123,047
Technology Center 2600
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Before SCOTT R. BOALICK, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001871
Application 11/123,047

2
This appeal under 35 U.S.C. § 134 involves claims 1-12, the only
claims pending in this application.
The Examiner rejected claims 1-5, 7-9, 11, and 12 under 35 U.S.C.
§ 102(b) as being anticipated by Solhjell (US 5,392,170; issued Feb. 21,
1995). The Examiner rejected claims 6 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Solhjell in view of Kosuge (US 5,353,176; issued
Oct. 4, 1994).
Although Appellants nominally argue (App. Br. 12-16) independent
claims 3 and 7 separately from claim 1, the arguments presented for claims 3
and 7 are substantially the same as those presented for claim 1 (App. Br. 6-
8). Accordingly, we treat claims 1, 3-5, 7-9, 11, and 12 as a single claim
grouping, and we select claim 1 as representative of this group. See 37
C.F.R. § 41.37(c)(1)(vii). We address Appellants’ arguments for claim 2
separately.

I.
Claim 1 is reproduced in the “Claims Appendix” of Appellants’ Brief
(App. Br. 18).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s anticipation rejection of claims 1, 3-5, 7-9,
11, and 12 based upon Solhjell.
We provide the following for emphasis only. With respect to claim 1,
we recognize Appellants’ contention that the claim 1 limitations are not met
because Solhjell’s two read elements overlap with respect to the recorded
track (App. Br. 7-8; Reply Br. 3). We are not persuaded by Appellants’
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Application 11/123,047

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contention. Solhjell’s first and second read elements may be reasonably
interpreted as corresponding to the claimed “first and second data transfer
elements being arranged to read the same physical variations from the same
portion of said track at different times” as recited in claim 1. Appellants
have provided no persuasive evidence that it would be unreasonable to
interpret the physical variations contained within the portion of the track
read by both of Solhjell’s overlapping read elements, as disclosed by
Solhjell, as corresponding to the “same physical variations from the same
portion of said track” as recited in claim 1.
Accordingly, we sustain the Examiner’s rejection of claims 1, 3-5, 7-
9, 11, and 12 for the reasons set forth in the Answer, which we incorporate
herein by reference. Claims 3-5, 7-9, 11, and 12 fall together with claim 1.
With respect to the rejection of claims 6 and 10, Appellants provide
no patentability arguments directed to the additional reference of Kosuge
(App. Br. 17; Reply Br. 4). Rather, Appellants repeat arguments directed to
claims 3 and 7 and apply them to the rejections of claims 6 and 10 (App. Br.
17; Reply Br. 4). Accordingly, we also sustain the rejection of claims 6 and
10.

II.
With respect to claim 2, we understand Appellants’ position to be that
the claim requires that “the same physical variations from the track via a
second of the transfer elements” are read “[only] if the error checking step
results in an error signal” (App. Br. 10 (emphasis added); Reply Br. 3-4).
We are not persuaded because Appellants’ argument is not commensurate in
scope with the claim language. Claim 2 merely states: “reading the same
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Application 11/123,047

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physical variations from the track via a second of the transfer elements if the
error checking step results in an error signal” (emphasis added).
Accordingly, for the reasons set forth in the Answer, as well as for the
reasons set forth above, we sustain the rejection of claim 2.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.P.R. § 1.136(a).

AFFIRMED

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