Ex Parte Steenbergen et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10722268 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIAAN STEENBERGEN, ED BEEMAN,
DIRK ERICKSON, THOMAS L. PRATT, and
CHARLES ROBERT WEIRAUCH
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Appeal 2009-002594
Application 10/722,268
Technology Center 2600
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Decided:1 June 23, 2009
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and CARLA M. KRIVAK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002594
Application 10/722,268

Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants’ invention relates to information storage in optical media
wherein embedded information generally must be readable when the
medium is inserted into an optical drive (Spec. 2). Storing information
includes embedding separate sets of aligned information on an optical
medium that are each readable by an optical drive at start up of an optical
drive read (Spec. 3). Claim 1, which is illustrative of the invention, reads as
follows:
1. An optical medium disc for storing information readable
by an optical disc drive, the optical medium disc comprising:

a first layer having reflective properties, the first layer operable
to store information through manipulation of the reflective properties
by a laser;

a second layer disposed over the first layer;

a first set of embedded information stored at the first layer
within a first range of radii of the optical medium; and

a second set of embedded information stored at the second layer
aligned to substantially overlap the first set of information.

The Examiner relies on the following prior art in rejecting the claims:
Gotoh US 6,278,671 B1 Aug. 21, 2001

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Application 10/722,268

Claims 1, 2, 5-12, and 16-20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Gotoh.
Claims 3, 4, and 13-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gotoh.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.

ISSUE
Appellants’ arguments are focused on the anticipation rejection of
independent claims 1, 11, and 17 and state that Gotoh writes the barcode and
the other information on the same layer, or in case of a two-recording-layer
disk, writes the barcode and the pit data on both layers (App. Br. 3-4).
Therefore, the issue specifically turns on whether Gotoh anticipates
Appellants’ claimed invention by disclosing first and second sets of
embedded information stored in different layers overlapping each other.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
1. Gotoh provides for converting data, such as a disk ID number,
into a barcode and recording the data in a pit area in overwriting fashion,
thereby permitting the use of a single optical pickup to read both the bit data
and barcode data. (Col. 1, ll. 46-51.)
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Appeal 2009-002594
Application 10/722,268

2. Gotoh discloses in Figure 7 the signal waveforms for a two-
recording-layer disk (col. 11, ll. 59-63), wherein the waveform from the
second layer is similar to that from the first layer (col. 11, ll. 65-67).
3. As shown in FIG. 2, the barcode (stripes) 584c-584e are written
over the prescribed region (stripe area) of the pre-pit area; therefore, the
tracking is disturbed in that prescribed region. (Col. 41, ll. 11-14).
4. To avoid this problem, as shown in FIG. 39, Gotoh suggests
forming the marking 941 in a pit area 941a at a radius position different
from the radius position of the stripe area 923a, such that only a few tracks
are destroyed by forming a pinhole marking. (Col. 41, ll. 18-28.)
5. Alternatively, the marking 941 may be recorded in the guard-
band area 999 shown in Figure 30, such that destroying already recorded
data by recording the marking 941 may be avoided since the guard-band
area 999 contains no data, but address information. (Col. 41, ll. 29-33.)
6. Since an ID unique to each individual disk is converted into a
barcode and written in overwriting fashion to an ordinary pit area, both the
pit data and barcode data can be read by using the same optical pickup.
(Col. 41, ll. 53-59.)

PRINCIPLES OF LAW
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30
F.3d 1475, 1478-79 (Fed. Cir. 1994).
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Appeal 2009-002594
Application 10/722,268

ANALYSIS
With respect to claim 1, Appellants argue that Gotoh embeds a
barcode in the optical medium by writing the barcode information over the
stored pit data (App. Br. 3). Appellants further assert that, even in the two-
recording-layer disk of Figure 7 embodiment, the barcode is written on both
layers destroying the already stored information (id.). The Examiner refers
to the description of Figures 2A-2E in column 41 and responds that the
writing of the barcode only destroys the reflectivity of the layer, and not the
data stored therein (Ans. 3-4).
We agree with Appellants and find that Gotoh repeatedly refers to
destroying the stored information when the barcode data is recorded in
overwriting fashion (FF 1) and even suggests ways to avoid destroying the
necessary information by overwriting (FF 4-6). We also disagree with the
Examiner’s assertion (Ans. 3) that the writing of the barcode information in
the embodiment of Figure 7 only destroys the reflectivity of the layer and
therefore, meets the subject matter recited in claim 1. Gotoh makes it clear
that the same information is written in both layers since the waveform for
writing to each layer is the same (FF 2). Also when the barcode information
is written in both layers, Gotoh discloses that such information is recorded in
overwriting fashion over the pit area (FF 1).
As such, we agree with Appellants (Reply Br. 1) that, since Gotoh
uses the same layer for both types of information, or writes the same barcode
information over already stored information in each layer, there is no first
and second set of embedded information at the first and second layers. We
also agree with Appellants’ arguments regarding claims 11 and 17 (App. Br.
3-4; Reply Br. 1-2) that since Gotoh embeds the two sets of information (the
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barcode and the pit data) in the same layer (FF 3-6), Gotoh does not
anticipate these claims.
CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case that Gotoh anticipates claim 1 or the other independent
claims 11 and 17 which include similar limitations. Therefore, in view of
our analysis above, the 35 U.S.C. § 102 rejection of claims 1, 2, 5-12, and
16-20 as anticipated by Gotoh cannot be sustained. Additionally, we do not
sustain the 35 U.S.C. § 103 rejection of claims 3, 4, and 13-15 over Gotoh
since the Examiner has not identified any modification to the reference to
overcome the deficiencies discussed above.

ORDER
The decision of the Examiner rejecting claims 1-20 is reversed.

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Appeal 2009-002594
Application 10/722,268

REVERSED

ELD

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