Ex Parte Sako et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10500151 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YOICHIRO SAKO and TATSUYA INOKUCHI
_____________

Appeal 2009-0052671
Application 10/500,151
Technology Center 2600
______________

Decided: October 21, 2009
_______________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and
KARL D. EASTHOM, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sony Corporation.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 35, 38, 39, 42-44, and 46. (Final Action 2.) Claims 1-34
have been canceled. Oral argument was heard on October 6, 2009.2 We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
The Examiner has objected to claims 36-39 and 41 for depending
(directly) on canceled claim 1 and has indicated that “Claim 1” in those
claims should be changed to “Claim 35.” (Final Action 2.)3 Appellants
have stated that “[t]his formal objection will be addressed after the present
appeal is resolved.” (Br. 3 n.1.) Therefore, for purposes of this appeal, we
will treat claims 36-39 and 41 (and thus claims 40 and 42) as depending on
claim 35 rather than on claim 1.
The Examiner has also stated that “[c]laims 36, 37, 40, 41 and 45 are
objected to as being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims.” (Final Action 5.) However,
claim 46, which depends on claim 45, stands rejected over the prior art,
thereby implying that claim 45 is likewise unpatentable over the prior art. A
review of the Final Action (at 5, ¶ 8) reveals that the feature cited as the

2 “[A]rguments not presented in the brief or reply brief and made for the
first time at the oral hearing are not normally entitled to consideration.”
MPEP § 1205.02 (8th ed., rev. 7, July 2008) (citing In re Chiddix,
209 USPQ 78 (Comm’r Pat. 1980)).
3 Claims 40 and 42 depend on claim 39.
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basis for allowability of claims 37 and 45 (i.e., “the first type of
predetermined subcode data is expressed on the recording medium as a
variance in reflectance of a reflective film of the recording medium, the
variance being a component of a unique disc identifier (UDI) to identify the
recording medium”) appears in its entirety only in claim 37. We therefore
assume that claim 45 was incorrectly indicated to be allowable and should
have been rejected over the cited prior art, with the result that the rejected
claims are considered to be claims 35, 38, 39, and 42-46.

A. Appellants’ invention
Appellants’ invention is a recording system that writes data to a
recording medium multiple times. Specification 1:7-9.
Appellants explain by way of background that a recording method in
which the
same data is repetitively recorded (multiple-writing) to improve
resistance of the data to errors has been known. Owing to the
multiple-writing, if there is at least one errorless data among a
plurality of data, such errorless data can be used as data without
an error. Hitherto, sufficient consideration is not given to a
recording position of the data which is multiple-written.
Id. at 1:11-19.
Figure 1 is reproduced below.
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Figure 1 is a schematic diagram for explaining several examples in the
case where Appellants’ invention is applied to a disc having concentric
tracks. Id. at 3:23-25. The examples depicted in this figure represent the
same data being written multiple times as A1, A2, . . . , An, where n=2, n=3,
n=4, n=5, and n=6. Id. at 6:8-11.
Although Figure 1 shows the data A1 to An being multiply written in
the same track, the data can be written in different tracks. Id. at 6:27 to 7:2.
The data can also be multiply written in a helical track (Fig. 2) or in parallel
tracks of a rectangular (card-shaped) recording medium, as shown in
Figure 3. Specification 7:7-16.
The multiply written data can be disc identification information
(UDI). Id. at 8:12-15. “The UDI comprises stamper-unique first data and
disc-unique second data and is information for identifying each disc.” Id. at
18:14-16. The first data includes, for example, the name of a disc
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manufacturer, the name of a disc seller, the name of a manufacturing factory,
the manufacturing year, and the like. Id. at 18:16-18. The second data
includes, for example, a serial number, time information, and the like. Id. at
18:19-20.
Originally filed (now canceled) claims 6-10 specify that the recited
“identification data to identify said recording medium” (claim 6) can take
the form of: (1) “data regarding manufacturing or a sale of said recording
medium” (claim 7), such as “data showing a manufacturer, a manufacturing
factory, a manufacturing year, or a seller of said recording medium”
(claim 8); or (2) “data regarding use of said recording medium” (claim 9),
such as “data showing the user, a use time, or the number of using times of
said recording medium” (claim 10).
The stamper-unique first data can be recorded as a concave/convex
pattern, and the disc-unique second data can be recorded by using the
recording method for the reflective film. Specification 19:3-6.
The UDI can be recorded in a data format of the Q channel of the
subcode on a CD. Id. at 18:20-21.
Appellants’ Figure 6 is reproduced below.
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Figure 6 shows the data construction of one frame of the recorded
signal for a conventional CD. Id. at 11:19-20. The frame consists of thirty-
three symbols, including a subcode of one symbol, data of twenty-four
symbols, a Q parity of four symbols, and a P parity of four symbols. Id. at
11:25 to 12:1.
A subcode frame of ninety-eight symbols, which is expressed by
rearranging ninety-eight frames so as to be continuous in the vertical
direction, comprises: a frame sync portion to identify the head of the
subcode frame; a subcode portion; data; and a parity portion. Id. at 12:20-
24. The bits in the subcode portion construct the P, Q, R, S, T, U, V, and W
channels, respectively. Id. at 13:3-4.
Figure 10A is reproduced below.

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Figure 10A shows a data format of the UDI constructed by the
subcode frame. Id. at 19:24-25. Since the UDI is recorded in the format of
the Q channel of the subcode, one subcode frame (ninety-eight bits)
includes: a sync bit portion of two bits; a control bit portion (CTL) of four
bits; an address bit portion (ADR) of four bits; a data bit portion of seventy-
two bits; and a CRC4 of sixteen bits. Id. at 19:25 to 20:3.

B. The claims
The independent claims before us are claims 35 and 43, of which
claim 35 reads:
35. An optical recording medium configured to provide
data structured per sub-code frame for cooperating with a
recording/reproducing device to provide managed access to the
structured data, and, having two or more groups of sub-code
frames spirally or concentrically recorded thereon, comprising:
a first and second type of predetermined subcode data
repetitively recorded in a circumferential direction at substantially
regular physical intervals of the recording medium, including data
for identifying the recording medium, the intervals at which the
first and second type of predetermined subcode data are recorded
corresponding to a linear velocity for accessing the medium via
the recording/reproducing device.
(Claims App., Br. VIII-i.)

4 Cyclic Redundancy Check. Specification 14:18-19.
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C. The reference and rejection
The Examiner relies on the following reference:
Maeda et al. (“Maeda”) US 5,870,375 Feb. 9, 1999
Claims 35, 38, 39, and 42-46 stand rejected under 35 U.S.C. § 102(b)
for anticipation by Maeda.
Appellants argue independent claim 35 and its dependent claims as a
group (Br. 3) and argue independent claim 43 and its dependent claims as a
group (id. at 4). We accordingly select claims 35 and 43 as representative of
their respective groups. 37 C.F.R. § 41.37(c)(1)(vii).

THE ISSUES
Appellants’ burden on appeal to the Board with respect to a rejection
for anticipation is to identify at least one claimed element that the Examiner
has failed to show is expressly or inherently disclosed in the reference. See
Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (“[W]e expect
that the Board’s anticipation analysis be conducted on a limitation by
limitation basis, with specific fact findings for each contested limitation and
satisfactory explanations for such findings.” (emphasis added)).
The two issues before us are:
(1) Whether Appellants have shown that the Examiner erred in finding
that data in flag fields g3 and g8 in Maeda’s second embodiment, depicted in
Figure 3, satisfy the “physical intervals” requirements of claims 35 and 43;
and
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(2) Whether Appellants have shown that the Examiner erred in finding
that these flag fields g3 and g8 include the recited “data for identifying the
recording medium” (claims 35, 43).

PRINCIPLES OF LAW
Application claims are interpreted as broadly as is reasonable and
consistent with the specification, In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir.
2002), while “taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification,” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997), and without reading limitations from examples given
in the specification into the claims, In re Zletz, 893 F.2d 319, 321-22 (Fed.
Cir. 1989).

ANALYSIS
A. Claims 35, 38, 39, and 42
Maeda discloses a recording apparatus for writing to a disk-shaped
recording medium that has a plurality of readable and writable block areas,
whose (first) address values are prerecorded wobbles or deviations in the
radial direction of the sidewall of the groove. Maeda, col. 3, ll. 41-47.
Maeda’s recording apparatus permits a plurality of sectors to be recorded in
each block by recording, in each sector area, second address information
identifying the sector and sector data. Id. at col. 3, ll. 47-53.
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The Examiner relies on Maeda’s second embodiment, depicted in
Maeda’s Figures 3 and 4, of which Figure 4 is reproduced below.

Figure 4 is a drawing showing an arrangement of address information
used in a disk-shaped recording medium of a second embodiment in
accordance with Maeda’s invention. Id. at col. 6, ll. 8-10. The first address
information (representing the blocks) is provided in advance in the disk 110
as a wobbling groove 111 (shown as areas with slanting lines), of which
only one side wall wobbles in radial directions (R) of the disk. Id. at col. 8,
l. 64 to col. 9, l. 3. Because grooves 111 and the lands 112 between adjacent
parts of grooves 111 have about the same width, it is possible to detect first
address information from a groove 111 and a land 112 and to record
information in a groove 111 and a land 112. Id. at col. 9, ll. 3-8.
The first address information is preferably formed by the constant
linear velocity method, making it possible to control the rotation of the disk
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without using either means for detecting the number of rotation of the disk
or means for detecting the disk “radical” (sic: radial) position. Id. at col. 4,
ll. 61-67.
Maeda’s Figure 3 is reproduced below.

Figure 3 illustrates an arrangement of address information used in the
disk-shaped recording medium of Maeda’s second embodiment. Id. at col.
9, ll. 10-12.
Numeral 2a represents an information sequence comprising the first
address information obtained from the groove wobbling in radial directions
of the disk, while 2b and 2c represent an address allocation of the first
address information in the groove and the adjacent part of the land,
respectively. Id. at col. 9, ll. 12-16. Specifically, the continuous wobbling
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groove has, as shown in 2b, a block b1 that corresponds to a block address
Pa1, a block b2 that corresponds to a block address Pa2, and so on, while the
part of the land adjacent to the continuous wobbling groove has, as shown in
2c, a block c1 that corresponds to a block address Pa1, a block c2 that
corresponds to a block address Pa2, and so on. Id. at col. 9, ll. 33-39.
The recording information recorded in the groove is, as shown in 2d,
divided into groove sectors d1, d2, d3, and so on, id. at col. 9, ll. 53-55,
while the recording information recorded in the land is, as shown in 2e,
divided into land sectors e1, e2, e3, and so on. Id. at col. 9, ll. 63-64.
As shown in 2f, each groove and land sector begins with a header
field f1 that includes a sector address (i.e., second address information), a
gap field f2, a data field d3 in which the recording information, error
detection correction codes, and the like are recorded, and a buffer field d4.
Id. at col. 10, ll. 5-15.
As shown in 2g, each header field f1 includes VFO5 fields g1 and g6,
AM fields g2 and g7, flag fields g3 and g8 “which include property
information and the like of the second address data,” second address data
fields g4 and g9 representing sector addresses, and CRC fields g5 and g10
for detecting errors related with the flag fields and the second address data.
Id. at col. 10, ll. 16-26. The same sector address is recorded twice as the
second address data g4 and g9, id. at col. 10, ll. 26-27, thereby improving
reliability. Id. at col. 11, ll. 13-15. Each of flag fields g3 and g8 can include

5 The acronyms VFO and AM are not explained in Maeda.
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two types of data: (1) data indicating whether the associated second address
data is the first or second of the two recordings thereof (i.e., g4 or g9); and
(2) data indicating whether the second address data (g4, g9) refers to a
groove 2d or a land 2e. Id. at col. 10, ll. 27-33. For example, in the header
fields f1 for the groove sectors (including d1 to d8), each flag field g3 will
contain (1) data identifying associated second address data g4 as the first
occurrence of that second address data and (2) data identifying the
associated recording area as a groove. In those same header fields, each flag
field g8 will contain (1) data identifying the associated second address data
g9 as the second occurrence of that particular address data and (2) data
identifying the associated recording area as a groove.
The argued claim 35 language “a first and second type of
predetermined subcode data repetitively recorded in a circumferential
direction at substantially regular physical intervals of the recording medium”
therefore can be read on flag fields g3 and g8 as follows. The recited “first .
. . type of predetermined subcode data repetitively recorded in a
circumferential direction at substantially regular physical intervals of the
recording medium” reads on flag fields g3, which are identical to each other
and occur once per header, while the recited “second type of predetermined
subcode data repetitively recorded in a circumferential direction at
substantially regular physical intervals of the recording medium” reads on
flag fields g8, which are identical to each other and occur once per header.
Flag fields g3 are recorded at substantially regular intervals in the
circumferential direction (i.e., in the track) because the headers containing
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those flag fields are recorded at substantially regular intervals, i.e., at the
beginning of every groove sector and land sector. That is, although Figure 3
is not described as depicting an entire track, it would have been understood
that a track will include equally spaced sectors, each beginning with a header
field. For the foregoing reasons, flag fields g8 likewise are recorded at
substantially regular intervals in the circumferential direction.
The requirement of claim 35 that “the intervals at which the first and
second type of predetermined subcode data are recorded correspond[] to a
linear velocity for accessing the medium via the recording/reproducing
device” is also satisfied, because the physical intervals of the header fields
(which include flag fields g3 and g8) in a track correspond to (i.e., have a
relationship to) the linear velocity of the track that is being read. Although
Maeda’s use of the constant linear velocity method (col. 4, ll. 61-62) means
that the linear velocity is the same when accessing all tracks, the claim
language does not require recording predetermined subcode data in more
than one track, let alone recording such data with different physical intervals
in different tracks.
Appellants therefore have not shown that the Examiner erred in
finding that data in flag fields g3 and g8 in Maeda’s second embodiment,
depicted in Figure 3, satisfy the “physical intervals” requirements of
claim 35.
Claim 35 further requires that the recited “first and second type of
predetermined subcode data . . . includ[es] data for identifying the recording
medium.” This claim language is not defined in Appellants’ Specification
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and therefore must be given its broadest reasonable interpretation consistent
with the Specification. Thrift, 298 F.3d at 1364; Morris, 127 F.3d at 1054;
Zletz, 893 F.2d at 321-22. The Examiner reads the recited “data for
identifying the recording medium” on the data in flag fields g3 and g8 that
indicates whether the corresponding sector information is recorded in a
groove or a land:
[S]ince Claim 35 does not require how to and what is with respect
to the limitation “for identifying the recording medium”, the
teaching of prior art of Maeda using the g3 and g8 information to
identify the structure of the recording medium’s groove and land
so that the servo circuit 24 has a proper tracking operation read on
Appellant’s [sic] Claim 35 limitation “including data for
identifying the recording medium”.
(Answer 7.) Appellants’ argument to the contrary notwithstanding (Reply
Br. 2), the fact that Maeda fails to explicitly describe flag fields g3 and g8 as
including data for “identifying the recording medium” does not mean that
the rejection is based on inherency. Rather, the Examiner’s position is that
the claim language “identifying the recording medium” is broad enough to
read on identifying the type of structure (i.e., groove or land) in which the
corresponding sector information is recorded in the recording medium.
Appellants responded to the Examiner’s position by arguing that
Maeda describes this information [in g3 and g8] as “identification
information for the groove and the land,” not “identification
information for a recording medium.” Accordingly, it is
respectfully submitted that this information can at best identify a
groove or land, and cannot identify a recording medium. Further,
simply because servo circuit 24 can properly track knowing
whether to look in the groove or the land, as asserted in the
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Examiner’s Answer, this does not result in the servo circuit
“identifying the recording medium,” nor has any explanation been
provided by the Examiner’s Answer as to how a recording
medium can be identified in this manner.
(Reply Br. 1-2 (footnote omitted).) These arguments are unpersuasive
because they fail to take into account that the data in flag fields g3 and g8
which indicates whether the associated sector data is located in a groove or a
land identifies the recording medium as a recording medium having sector
data recorded in grooves and lands.6
For the same reason, we are unpersuaded by the argument that “[i]n
fact, every disk may be manufactured with the same flag fields in every
sector, preventing any identification of any particular recording medium in
this manner.” (Id. at 2.) Furthermore, to the extent Appellants are
suggesting by this argument that the identification data must be unique to a
particular recording medium, we note that unique identification is not
required by claim 35. Although Appellants’ Specification explains (at
18:14-16) that the identification (UDI) can include “disc-unique second data
. . . for identifying each disc,” that is merely a nonlimiting example of
identification data. Also, the Specification gives examples of identification
data that are not disc-unique. For example, as noted above, the originally

6 No such identification data is contained in flag fields g3 and g8 in the first
embodiment, depicted in Figures 1 and 2, in which all sector data is recorded
in grooves, as depicted at 1c in Figure 1. In that embodiment, the data in
flag fields g3 and g8 indicates only whether the associated second address
data (i.e., g4 or g9) is the first or second of the two recordings thereof.
(Continued on next page.)
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filed claims indicate that the “identification data to identify said recording
medium” (claim 6) can take the form of: (1) “data regarding manufacturing
or a sale of said recording medium” (claim 7), such as “data showing a
manufacturer, a manufacturing factory, a manufacturing year, or a seller of
said recording medium” (claim 8); or (2) “data regarding use of said
recording medium” (claim 9), such as “data showing the user, a use time, or
the number of using times of said recording medium” (claim 10).
Appellants therefore have not shown that the Examiner erred in
finding that these flag fields g3 and g8 include the recited “data for
identifying the recording medium.”
For the foregoing reasons, we are affirming the rejection of claim 35
as well as the rejection of dependent claims 38, 39, and 42, which are
grouped therewith.

B. Claims 43-46
Claim 43 reads as follows:
43. A recording/reproducing device configured to access a
recording medium which includes data structured per sub-code
frame, and, having two or more groups of sub-code frames
spirally or concentrically recorded thereon, comprising:
a read/write unit configured to access a first and second
type of predetermined subcode data repetitively recorded in a
circumferential direction at substantially regular physical intervals

Maeda, col. 8, ll. 23-27.
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of the recording medium, including data for identifying the
recording medium, the intervals at which the first type of
predetermined subcode data are recorded corresponding to a linear
velocity for accessing the medium.
(Claims App., Br. VIII-ii.)
Regarding this claim, Appellants rely on only the arguments they
made regarding claim 35, which we have found to be unpersuasive. The
rejection of claim 43 is therefore affirmed.
The foregoing reason for affirming the rejection of claim 43 applies
even assuming the recited physical intervals and content of the recorded data
are entitled to weight. However, for the following reasons we conclude that
they are not. In contrast to claim 35, which recites an optical recording
medium having predetermined subcode data recorded thereon with the
recited intervals and content, claim 43 recites “[a] recording/reproducing
device” comprising “a read/write unit configured to access a first and second
type of predetermined subcode data” (emphasis added) having the recited
intervals and content. However, because claim 43 does not require that the
read/write unit have any data processing capabilities other than the ability to
access recorded data having the recited intervals and content, the claim is
broad enough to read on any read/write unit that is capable of reading such
data, whether or not the read/write unit is also disclosed as being capable of
processing such data. Claim 43 is therefore appears to be broad enough to
read on any of the read/write units disclosed in Maeda (e.g., Figure 5),
whether or not those read/write units are described as being used to read and
process data recorded with the recited intervals and content.
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For the foregoing reasons, the rejection of claim 43 is affirmed, as is
the rejection of dependent claims 44-46, which are grouped therewith.

DECISION
The rejection of claims 35, 38, 39, and 42-46 under 35 U.S.C.
§ 103(a) for anticipation by Maeda 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. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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