Ex Parte Sasaki

Board of Patent Appeals and Interferences

Oct 29, 2009

10169091 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAKUMI SASAKI
__________

Appeal 2009-003944
Application 10/169,091
Technology Center 2100
__________

Decided: October 29, 2009
__________

Before JOSEPH L. DIXON, JAY P. LUCAS, and
JOHN A. JEFFERY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

I. STATEMENT OF THE CASE
The Invention
The invention relates to a method and device for reading and writing
data into the mediums of a mobile unit (Abstract).

The Illustrative Claim
Claim 12, an illustrative claim, reads as follows:
12. A data read/write rate control method for a mobile
electronic device for saving data of a first recording
medium in a second recording medium, wherein
at least one of a read rate for reading the data from the
first recording medium, and a write rate for writing the
readout data in the second recording medium, is variable,
the method comprising:
detecting a force acting on a mobile unit;
detecting an error rate in either one of the read and the
write, and
controlling at least either the variable read or write rate in
accordance with the force or error detection.
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The References
The Examiner relied upon the following references as evidence in
support of the rejections:
Takahashi 5,832,400 Nov. 3, 1998
McKenzie 6,285,522 B1 Sep. 4, 2001
Morris 6,449,116 B2 Sep. 10, 2002
(filed Feb. 12, 2001)
Yoshio 6,567,612 B2 May 20, 2003
(filed May 23, 2001)

The Rejections

The following rejections are before us for review:

1. Claims 17-20 stand rejected under 35 U.S.C. § 112, first paragraph.
2. Claims 17-20 stand rejected under 35 U.S.C. § 112, second
paragraph.
3. Claims 1, 3, 4, 5, 7, 8, 10-12, and 14-161 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Morris in view of McKenzie.
4. Claims 2, 6, 9, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morris and McKenzie, and further in view of
Yoshio.

1 On page 5 of the Examiner’s Answer, the Examiner mentioned that claims
17-20 are rejected as being unpatentable over Morris and McKenzie.
However, in the following detailed rejection of this section, the Examiner
did not mention the rejection of claims 17-20 under Morris and McKenzie.
Thus, we treat, in our review, that claims 17-20 have not been rejected by
the combination of Morris and McKenzie.
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5. Claims 17-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris and McKenzie, and further in view of Takahashi.

II. ISSUES

Claims 1, 3, 4, 5, 7, 8, 10-12, and 14-16
1. Has the Appellant shown the Examiner erred in finding that the
combination of Morris and McKenzie discloses “controlling at least either
the variable read or write rate in accordance with the force or error
detection,” as recited in claim 12?
2. Has the Appellant shown the Examiner erred in finding that the
combination of Morris and McKenzie discloses “at least either one of the
read and the write is controlled in accordance with the prospective end time
and the prospective moving time,” as recited in claim 14?

Claims 2, 6, 9, and 13
3. Has the Appellant shown the Examiner erred in finding that the
combination of Morris, McKenzie and Yoshio discloses “display the
prospective end time,” as recited in claim 13?

Claims 17-20
4. Has the Appellant shown the Examiner erred in finding that
claims 17-20 fail to comply with the written description requirement
under 35 U.S.C. § 112, first paragraph?
5. Has the Appellant shown the Examiner erred in finding that
claims 17-20 fail to comply with 35 U.S.C. § 112, second paragraph?
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6. Has the Appellant shown the Examiner erred in finding that the
combination of Morris, McKenzie, and Takahashi discloses “the second
prediction means receives GPS data of a destination of a vehicle including
the mobile electronic device for prediction the moving time,” as recited in
claim 18?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability

The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) at the USPTO to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).
Scope of Claim
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC., v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (internal citations
omitted).

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Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
In determining obviousness, the Supreme Court states:
Section 103(a) forbids issuance of a patent when
“the differences between the subject matter sought to be
patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” Id. at 419. In KSR, the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” Id. at 415, and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 415–16 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
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Written Description Requirement
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language.” In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted). The written
description requirement serves “to ensure that the inventor had possession,
as of the filing date of the application relied on, of the specific subject matter
later claimed by him; how the specification accomplishes this is not
material.” In re Wertheim, 541 F.2d 257, 262 (CCPA 1976) (citations
omitted). In order to meet the “written description” requirement, an
Appellant does not have to utilize any particular form of disclosure to
describe the subject matter claimed, but “the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed.” See In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
(citation omitted). In other words, “the applicant must . . . convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).

Definiteness
The test for definiteness under 35 U.S.C. § 112, second paragraph is
“whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” See Orthokinetics, Inc. v. Safety
Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In
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the context of a means-plus-function limitation, if one skilled in the art
would be able to identify the structure, material, or acts for performing the
claimed function, then the requirements of 35 U.S.C. § 112, second
paragraph are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198
F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 946-
47 (Fed. Cir. 1997). If there is insufficient disclosure of the structure,
material, or acts for performing the claimed function, however, a rejection
under 35 U.S.C. § 112, second paragraph is appropriate. See In re
Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc); see also
Biomedino, LLC v. Waters Tech. Corp. 490 F.3d 946, 952 (Fed. Cir. 2007).

IV. FINDINGS OF FACT
The following Findings of Fact (FFs) are shown by a preponderance
of the evidence.
1. Morris discloses a method and apparatus for compensating the
repeatable run-out errors in a disc drive (Morris, Abstract).
2. McKenzie discloses a method and system for compensating
rotational vibrations on a disc drive under an enclosure 354 that is operated
in a rich vibration environment (McKenzie, col. 4, ll. 1-27; col. 11, l. 65-col.
12, l. 28).
3. McKenzie also discloses detecting rotational vibration force
applied to the disc drive 100 (McKenzie, Fig. 9; col. 10, ll. 19-27), and
controlling 1) the rotational speed of the servo system when the vibration is
under the normal operating curve (Id. col. 13, ll. 15-54); and 2) the data
transfer if the vibration events exceed the operating curve (Id. col. 13, l. 55-
col. 14, l. 9).
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4. Both Morris and McKenzie do not mention “prospective end
time” or “prospective moving time.”
5. Yoshio discloses displaying highlight of the sub-picture
information to manage the start time and the end time of highlight displays
(Yoshio, Abstract; col. 25, ll. 13-37).
6. Claims 17-20 are drafted in means-plus-function format, i.e.,
“the second prediction means . . . for predicting the moving time.” (App. Br.
Appendix I, 17-20.)
7. The Appellant pointed out that Figure 1 (17) global positioning
system (GPS) antenna, and the corresponding description of the structure are
in conjunction with a Central Processing Unit (CPU), as the corresponding
structure for “the second prediction means” (App. Br. 11, 14).
8. Appellant’s Specification does not mention the term “GPS data
of a destination of a vehicle”, nor does the Specification mention how to
obtain and transmit the GPS data of a destination of a vehicle. (See Spec.
17-18.)
9. The Specification does not mention how to utilize the GPS data
of a destination of a vehicle for predicting the moving time (See Spec. 17-
18).

V. ANALYSIS
Claims 1, 3, 4, 5, 7, 8, 10-12, and 14-16
Among the independent claims 1, 8, 12, and 16, we select claim 12 as
representative claim because the Appellant argued with those claims as the
same group. See 37 C.F.R. § 41.37 (c)(vii). See also In re McDaniel, 293
F.3d 1379, 1383 (Fed. Cir. 2002) (“If the brief fails to meet either
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requirement [of 37 C.F.R. § 1.192(c)(7)], the [BPAI] is free to select a single
claim from each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the appeal of that
rejection based solely on the selected representative claim.”)
Issue 1
The Appellant contends that “neither of the cited references disclose,
or suggest [sic] detecting a vibration or varying a read/write rate in
accordance with a detected vibration.” (App. Br. 20.)
We disagree with the Appellant’s contention. The disputed claim
limitation is “controlling at least either the variable read or write rate in
accordance with the force or error detection.” (App. Br., Claims Appendix I,
12.) We agree with the Examiner’s finding that the scope of the claimed
language is different from the above contention (Ans. 12). We interpret the
“error detection” as any error detected during the process of reading or
writing. We interpret a force as any type of force. Under our claim
construction, we find that Morris teaches the claimed error detection (FF 1).
We also find that McKenzie teaches the vibration compensation of a disc
drive operated in a motion unit (vibration environment enclosure) (FF 2).
The compensation of rotational vibration is conducted either changing the
speed of the disc drive or interrupting the data transfer (i.e., reading and
writing rate) in accordance with detected vibration (FF 3). Thus, the
combination of Morris and McKenzie clearly teaches the disputed claim
limitation.
Accordingly, based on the record before us, we sustain the
obviousness rejection of independent claim 12. Since the Appellant argues
independent claims 1, 8, and 16 within the same grouping as claim 12, we
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also sustain the obviousness rejection of independent claims 1, 8 and 16.
Dependent claims 4, 11, and 15, which are not separately argued, fall with
their respective base claims.
Issue 2
The Appellant further contends that the prior art references do not
teach “the prediction of a prospective end time of a write and a prospective
moving time of the mobile unit” (App. Br. 21).
We agree with the Appellant’s contention. We do not find the
Examiner specifically addresses this claimed limitation (Ans. 5-6), nor do
we find the combination of Morris and McKenzie discloses the claimed
limitations (FF 4).
Accordingly, we cannot sustain the obviousness rejection of claim 14.
Claims 3, 7, and 10 contain similar limitations. Thus, we cannot sustain the
rejection of claims 3, 7, 10, and 14.

Claims 2, 6, 9, and 13
Issue 3
The Appellant contends that the combination of Morris and McKenzie,
and the combination of Morris, McKenzie, and Yoshio do not teach the
claimed the features of the prospective end time is displayed on a display
(App. Br. 22-23).
We agree with the Appellant’s contention. We do not find the
combination of Morris and McKenzie discloses the limitations as the
Examiner admitted (Ans. 7). We find that Yoshio does not teach the argued
limitation (FF 5) because setting the end time of displaying highlight of sub-
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pictures is different from displaying the prospective end time of a writing
operation.
Accordingly, we cannot sustain the obviousness rejection of claim 13.
Claims 2, 6, and 9 contain similar limitations. Thus, we cannot sustain the
rejection of claims 2, 6, 9, and 13.

Claims 17-20
Issue 4
The Appellant contends that the Examiner did not “present ‘evidence
or reasoning to explain why persons skilled in the art would not recognize’ a
disclosure of ‘GPS data of a destination of a vehicle’ in considering the
disclosure ” of the present invention (App. Br. 13).
The Appellant also contends that:
Clearly, this disclosure teaches the worker skilled in the
art that the GPS antenna, in conjunction with the Central
Processing Unit, determines traveling times during
vehicle navigation between a starting point and a
destination. Moreover, it is noted that GPS technology is
considerably well known. Nevertheless, aside from
pointing out that specific claim terminology does not
correspond to the Applicant’s specification, the Examiner
has presented no rationale as to why someone of the skill
in the art would be so unfamiliar with standard GPS
processing systems as to be unable to practice this aspect
of the Applicant’s claimed advancements.

Id. at 14.

The Appellant further contends that the USPTO has failed to provide:
1. Express findings of the fact which support the
lack of the written description conclusion; or
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2. Reasons as to why one of skill in the art at the
time the application was filed would not have recognized
the inventor was in possession of the invention as
claimed in view of the disclosure of the application as
filed.”

Id. at 15.
We disagree with the Appellant’s contentions. Where a claim uses the
term “means” to describe a limitation, we presume that the inventor uses the
term to invoke 35 U.S.C. § 112, sixth paragraph. Altiris, Inc. v. Symantec
Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This presumption can be
rebutted where the claim, in addition to the functional language, recites
structure sufficient to perform the claimed function in its entirety.” Id.
(internal citation omitted.)
We find that claims 17-20 are of means-plus-function form. Thus, the
claims invoke 35 U.S.C. § 112, sixth paragraph (FF 6). The Appellant
pointed out that Fig. 1 (17) GPS Antenna in conjunction with the CPU is the
recited structure to perform the function receiving GPS data of a destination
of a vehicle including the mobile electronic device for predicting the moving
time. (FF 7.) However, it was well known that the destination data could be
input through some input devices or stored in the memory; it was not well
known to a person skilled in the art that the destination data of a vehicle can
be received through a GPS antenna because GPS data received by a GPS
antenna of a vehicle is usually the indication of present position of the
vehicle. There is little discussion or description in the Appellant’s
Specification where and how GPS data of the destination of vehicle is
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obtained and transmitted to the CPU (FF 8). Hence, in our view, claims 17-
20 stand rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter “GPS data of the destination of the vehicle” that is not
described in Appellant’s Specification in such a way as to reasonably convey
to one skilled in the relevant art that the Appellant, at the time the
application was filed, had possession of the claimed invention.
Accordingly, we sustain the rejection of claims 17-20 under 35 U.S.C.
§ 112, first paragraph.
Issue 5
The Appellant contends that “this disclosure teaches the worker skilled
in the art that the GPS antenna, in conjunction with Central Processing Unit,
determines traveling times during vehicle navigation between a starting point
and a destination and would employ a standard algorithm in this regard.”
(App. Br. 17.)
We disagree with the Appellant’s contention. “Because general
purpose computers can be programmed to perform very different tasks in
very different ways, simply disclosing a computer as the structure designated
to perform a particular function does not limit the scope of the claim to ‘the
corresponding structure, material, or acts’ that perform the function, as
required by section 112, paragraph 6.” Aristocrat Tech. Austl. Pty Ltd. V.
Intn’l Game Tech., 521 F.3d 1328, 1333(Fed. Cir. 2008). Moreover, “[f]or
computer-implemented means-plus-function claims where the disclosed
structure is a computer programmed to implement an algorithm, ‘the
disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.’”
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Finisar Corp. v. DirectTV Group, Inc. 523 F.3d 1323, 1340 (Fed. Cir. 2008)
(citations omitted.) As such, the application must disclose “enough of an
algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure
that can be expressed in any understandable terms (e.g., a mathematical
formula, in prose, or as a flowchart). Id. But, “[s]imply reciting ‘software’
without providing some detail about the means to accomplish the function is
not enough.” Id. at 1341-42. (citation omitted.)
We already noted that claims 17-20 are of means-plus-function format,
and invoke 35 U.S.C. § 112, sixth paragraph (FF 6). The second prediction
means is identified as corresponding to the GPS antenna in conjunction with
a CPU that constitutes a general purpose computer (FF 7). Thus, the
Specification does not provide adequate corresponding structure or limit the
scope of the claim to corresponding structure that performs the function as
required by 35 U.S.C. § 112, sixth paragraph. Additionally, Appellant’s
Specification only describes a CPU in conjunction with GPS antenna
calculating the traveling time for controlling the reading and writing rate.
There are few details of the algorithm or process for receiving GPS data of
the destination of the vehicle for predicting the moving time (FF 9).
Because we cannot determine the metes and bounds of claims 17-20
due to those defects, the claims are indefinite.
Accordingly, we sustain the rejection of claims 17-20 under 35 U.S.C.
§ 112, second paragraph.

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Issue 6
Rejections under 35 U.S.C. § 103 should not be based upon
"considerable speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims." In re Steele, 305 F.2d 859, 862
(CCPA 1962). Because the scope of claims 17-20 is indefinite, we cannot
address the merits of whether the Examiner erred in finding that the
combination of Morris, McKenzie, and Takahashi discloses “the second
prediction means receives GPS data of a destination of a vehicle including
the mobile electronic device for prediction the moving time.”

VI. CONCLUSIONS
1. We conclude that the Appellant has failed to show the
Examiner erred in finding that the combination of Morris and McKenzie
discloses “controlling at least either the variable read or write rate in
accordance with the force or error detection,” as recited in claim 12.
2. We conclude that the Appellant has demonstrated the Examiner
erred in finding that the combination of Morris and McKenzie discloses “at
least either one of the read and the write is controlled in accordance with the
prospective end time and the prospective moving time,” as recited in claim
14.
3. We conclude that the Appellant has demonstrated the Examiner
erred in finding that the combination of Morris, McKenzie and Yoshio
discloses displaying the prospective end time of writing, as recited in claim
13.
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4. We conclude that the Appellant has failed to show the
Examiner erred in finding that claims 17-20 fail to comply with the written
description requirement under 35 U.S.C. § 112, first paragraph.
5. We conclude that the Appellant has failed to show the
Examiner erred in finding that claims 17-20 fail to comply with 35 U.S.C. §
112, second paragraph.
6. We do not address the merits of whether the Examiner erred in
finding that the combination of Morris, McKenzie, and Takahashi discloses
the second prediction means receiving GPS data of a destination of a vehicle
including the mobile electronic device for prediction the moving time.

VII. DECISION
We affirm the Examiner’s rejection of claims 1, 4, 5, 8, 11, 12, 15,
and 16 under 35 U.S.C. § 103(a).
We affirm the Examiner’s rejection of claims 17-20 under 35 U.S.C. §
112, first paragraph.
We affirm the Examiner’s rejection of claims 17-20 under 35 U.S.C. §
112, second paragraph.
We reverse the Examiner’s rejection of claims 2, 3, 6, 7, 9, 10, 13, and
14 under 35 U.S.C. § 103(a).
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).

AFFIRMED-IN-PART

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