Ex parte SASAKI et al.

Board of Patent Appeals and Interferences

Oct 29, 1998

08458012 (B.P.A.I. Oct. 29, 1998)

Application for patent filed June 1, 1995. According to appellants,1
this application is a continuation of application 08/111,829, filed August 25,
1993, abandoned, which is a continuation of application 07/640,105, Filed
January 11, 1991, abandoned.
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not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NORIMASA SASAKI, KOJI TAKAGI
_____________
Appeal No. 96-3242
Application 08/458,0121
______________
ON BRIEF
_______________
Before THOMAS, FLEMING and CARMICHAEL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 20 through 25, all of the claims pending in the
application. Claims 1 through 19 have been canceled.
Appeal No. 96-3242
Application 08/458,012
2
The invention relates to a data disc on which text data
such as a dictionary or an encyclopedia is recorded. The text
data recorded on the data disc is retrieved by obtaining
retrieval item data on the basis of index data recorded on the
data disc. The text data is associated with the retrieval
item data which allows for the retrieval of the text data.
Independent claim 20 is reproduced as follows:
20. An optical disc recorded with data in a CD-ROM
format and International Standards Organization
(ISO) format standard 9660, the disc comprising a
volume descriptor including a positioning
information of a route directory and at least one
file name data, a route directory and at least one
file, the route directory including at least
positioning data of the file and length data of the
file, the file having literature supervising data,
main text data including at least letter or
character data and a plurality of index data for
retrieving the main text data and being constituted
as a tree structure, the literature supervising data
being arranged in a lead position of the file and
including address data of the plurality of index
data and the main text data.
The reference relied on by the Examiner is as follows:
Miura et al. (Miura) 5,359,580 Oct. 25, 1994
Claims 20 through 25 stand rejected under 35 U.S.C. § 102
as being anticipated by Miura or in the alternative under 35
U.S.C.
Appeal No. 96-3242
Application 08/458,012
3
§ 103 as being unpatentable over Miura.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claims 20 through 25 are
anticipated by the applied references.
It is axiomatic that anticipation of a claim under § 102
can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326,
231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ
481, 485 (Fed. Cir. 1984).
Appellants argue on pages 3 and 4 of the brief that Miura
fails to teach the Appellants’ claimed limitations as required
Appeal No. 96-3242
Application 08/458,012
4
under 35 U.S.C. § 102. In particular, Appellants argue that
Miura fails to teach a disc having recorded thereon a route
directory including at least positioning data of a file and
length data of the file, a volume descriptor including a
positioning information of a route directory and at least one
file name data, or that the recorded file has literature
super-vising data as per claims 20, 22 and 23. Appellants
further argue that Miura fails to teaches the retrieving
method steps as recited in claims 21, 24 and 25. For example,
claim 21 recites the step of reading out the volume
descriptor, displaying a file name according to the volume
descriptor, reading out and displaying the index data of the
selected file using the literature supervising data and
retrieving and displaying the index data of a lower layer
according to the selected index data of a higher layer.
On page 3 of the answer, the Examiner argues under 35
U.S.C. § 102, that the claim record medium including the
information content of the record medium stored thereon does
Appeal No. 96-3242
Application 08/458,012
5
not make a new record medium. The Examiner argues that the
claimed information content of the record medium as recited in
the claims are not functionally related to the record medium
structure.
We note that claims 21, 24 and 25 are directed to a
method and not a record medium. Upon a careful review of
Miura, we fail to find that Miura teaches these claimed method
steps.
Turning to Appellants' claims 20, 22 and 23, we note the
claims are reciting a disc having record data which performs a
particular function dealing with the retrieval of data from
the disc. Our reviewing court held that patentable weight
must be given to a limitation which defines data stored on a
disc that defines functional characteristics of the memory.
In re Lowry, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994). We find
that the argued limitations recited in claims 20, 22 and 23
define a functional relationship with the memory. Therefore,
we find that Miura fails to teach all of the limitations of
Appeal No. 96-3242
Application 08/458,012
6
claims 20 through 25, and thereby the claims are not
anticipated by Miura.
Claims 20 through 25 also stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Miura. On page 4 of the
answer, the Examiner argues that it would have obvious to
include the claimed information content on the record medium
of Miura.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
Appeal No. 96-3242
Application 08/458,012
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73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996), citing W. L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Upon a review of Miura, we fail to find any teaching or
suggestion to modify Miura to obtain the Appellants' claimed
invention. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing
court requires this evidence in order to establish a prima
facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966).
In view of the foregoing, the decision of the Examiner
Appeal No. 96-3242
Application 08/458,012
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rejecting claims 20 through 25 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
vsh
Appeal No. 96-3242
Application 08/458,012
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Philip A. Girard
Limbach and Limbach
2001 Ferry Building
San Francisco, CA 94111