Ex Parte Suh et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10883667 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/883,667 07/06/2004 Sang Woon Suh 46500-000172/US 6213
30593 7590 01/26/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
ORTIZ CRIADO, JORGE L
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
01/26/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANG WOON SUH and JIN YONG KIM
____________

Appeal 2010-007056
Application 10/883,667
Technology Center 2600
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007056
Application 10/883,667

2

STATEMENT OF THE CASE
A Patent Examiner rejected claims 13-22 and 28-55. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). Claims 1-12 and 23-27 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b). An Oral
Hearing was held on January 19, 2012.
We affirm.
A. INVENTION
The invention at issue on appeal relates to a method of recording
control information in an optical disc that substantially obviates one or more
problems due to limitations and disadvantages of the related art. In one
embodiment, a recording medium having a data structure of a control
information recorded on the recording medium or to be recorded/reproduced
on/from the recording medium, characterized in that the control information
is associated with a specific recording velocity and the control information
includes write strategy information dependent on a type information
indicating whether the control information is associated with CLV (constant
linear velocity) mode or CAV (constant angular velocity) mode. (Spec. 3-
4).

B. ILLUSTRATIVE CLAIMS
Claims 13 and 28, which further illustrate the invention, follow.
13. A computer-readable recording medium having a
data structure of a control information recorded on the
recording medium, wherein the control information is required
for recording data and the control information is associated with
a specific recording velocity and a specific write strategy type
usable at the specific recording velocity and the control
Appeal 2009-007056
Application 10/883,667

3
information includes write strategy information dependent on a
type information for indicating whether the control information
is associated with CLV (constant linear velocity) mode or CAV
(constant angular velocity) mode.
28. A method of recording data on a recording medium.
comprising:
reading a plurality of control information required
respectively for each recording velocity from a management
area of the recording medium;
checking a type information recorded within at least one
control information, wherein the type information represents
whether the corresponding control information is usable for a
CLV (constant linear velocity) mode or a CAV (constant
angular velocity) mode; and
performing a recording of data based on write strategy
parameters included in the control information selected
according to the type information.

C. REFERENCES
The Examiner relies on the following references as evidence:
Kobayashi US 2003/0021201 A1 Jan. 30, 2003
Fujii US 6,480,450 B1 Nov. 12, 2002

D. REJECTIONS
Claims 13-22 and 28-43 and 45-54 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kobayashi in view of Fujii.
Claims 44 and 55 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kobayashi in view of Fujii further in view of
Appellant's admitted prior art.
Appeal 2009-007056
Application 10/883,667

4

PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).

ANALYSIS
Appellants set forth that each of the independent claims 13, 28, 29, 32,
and 47 "rise and fall" separately from each other (App. Br. 11), but
Appeal 2009-007056
Application 10/883,667

5
Appellants merely address the Examiner's rejection with respect to
independent claim 28. Appellants maintain that "claims 13, 29, 32, and 47
and therefore their corresponding dependent claims, all recite similar
language with respect to a recording medium having type information
indicating whether the corresponding control information unit is usable for
CLV mode or CAV mode as discussed above with respect to claim 28."
(App. Br. 19). Therefore, Appellants do not set forth separate arguments for
patentability and all of the claims will stand or fall together.
Since Appellants have set forth arguments with respect to independent
claim 28, we will select claim 28 as the representative claim to correspond to
Appellants’ arguments and will address Appellants arguments thereto. We
note that claim 13 is slightly broader than independent claim 28 and directed
to a "data structure" recorded on a medium. As discussed below, we find the
information stored on the medium to be directed to nonfunctional descriptive
material and language of intended use since no control or function is ever
recited with respect to the use of the information in independent claim 13.
With respect to independent claim 28, Appellants maintain that the
Kobayashi reference which is directed to linear velocity recording only and
has "nothing to do whatsoever with an optical recording medium, or its
associated apparatus and methods, where the optical disc control using CAV
or CLV." (App. Br. 13). We find Appellants' argument does not correspond
in scope to the language of method claim 28. Independent claim 28 sets
forth the steps of "reading a plurality of control information…;" "checking a
type of information recorded within at least one control information,…; and
"performing a recording of data based on write strategy parameters included
in the control information selected according to the type information." We
Appeal 2009-007056
Application 10/883,667

6
find the additional language in the "wherein" clause to not functionally limit
the recited method steps as discussed above.
With respect to the teachings of the Fujii reference, Appellants
contend that the Fujii reference "does not teach, suggest, or otherwise render
obvious a method for recording information on a disc (1) where the control
information contains a DI Type that distinguishes between CAV and CLV
and (2) write strategy parameters (based on the type information.[)]" (App.
Br. 14). We find Appellants' argument does not correspond in scope to the
language of method claim 28 since we find no express step of distinguishing
or determining in the language of independent claim 28. Therefore,
Appellants' argument is not persuasive of error in the Examiner's showing of
obviousness.
Appellants contend that the Fujii reference does not indicate whether
the corresponding control information is usable for CLV mode or CAV
mode and rather Fujii selects a data strategy based in part on an input linear
velocity. (App. Br. 15). Appellants contend that nowhere in Fujii is a
method described including "checking a type information recorded
within at least one control information, wherein the type information
represents whether the corresponding control information is usable for a
CLV (constant linear velocity) mode or a CAV (constant angular velocity)
mode" as recited in claim 28. (App. Br. 15). We disagree with Appellants
and agree with the Examiner that Fujii teaches a recognition that a CLV
(constant linear velocity) mode or a CAV (constant angular velocity) mode
(Fujii column 3 lines 49-53) may be used for a servo system and that
appropriate indication of the mode must be made or determined by the
system. (Ans. 11). Appellants further contend that both Fujii and
Appeal 2009-007056
Application 10/883,667

7
Kobayashi only described strategy data with respect to linear velocity.
(App. Br. 15). While we agree that the discussion in Fujii is not express
with respect to constant angular velocity, we find that Fujii does suggest the
use of constant angular velocity. Fujii at column 3, as discussed above, and
the discussion in column 4 concerning constant linear velocity is merely
indicated as an example which also suggests the constant angular velocity is
similarly applicable. Therefore, Appellants argument is not persuasive of
error in the Examiner showing of obviousness.
Appellants dispute the Examiner's combination of Kobayashi and
Fujii based upon the majority of discussion in these references is basedupon
constant linear velocity. (App. Br. 16-19). As discussed above, we find the
discussion in Fujii to be only exemplary where both pertain to similar
determination of mode, speed, and write strategy. Therefore, Appellants
argument is unpersuasive of error in the Examiner's combination of the
teachings of Kobayashi and Fujii.
Appellants set forth similar arguments in their Reply Brief which we
find unpersuasive of error in the Examiner's showing of obviousness.
(Reply Br. 2-5).
Appellants claim language does not set forth any specific structure for
the data, data structure or management area and the claim language merely
requires that some data is present in some manner. Therefore, we find
Appellants’ argument to be unpersuasive of error in the Examiner's showing
of obviousness. Appellants rely upon the same arguments with respect to
independent claims 13, 29, 32, and 47. (App. Br. 19). Since we found
Appellants arguments to be unpersuasive with respect to independent claim
28, we will sustain the rejection thereof along with its respective dependent
Appeal 2009-007056
Application 10/883,667

8
claims. Since separate arguments for patentability have not been set forth
with respect to independent apparatus claims 13, 29, 32, 47 and their
respective dependent claims, we will group those claims as falling with
independent claim 28.

CONCLUSION
For the aforementioned reasons, the Appellants have not shown that
the Examiner erred in the showing of obviousness of independent claim 28.

VII. ORDER
We affirm the obviousness rejections of claims 13-22 and 28-55.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

tkl