Ex Parte Yoshinari

Patent Trial and Appeal Board

Mar 20, 2014

12058210 (P.T.A.B. Mar. 20, 2014)

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.
12/058,210 03/28/2008 Daisuke Yoshinari 900187.478 2696
500 7590 03/20/2014
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
EHICHIOYA, IRETE FRED
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
03/20/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAISUKE YOSHINARI
____________________

Appeal 2011-012296
Application 12/058,210
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
CATHERINE SHIANG, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012296
Application 12/058,210

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7 and 9. Claims 8 and 10 are objected to as depending from a
rejected base claim but would otherwise be allowable if rewritten in
independent form. We have jurisdiction over the rejected claims under 35
U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to an optical disk drive that recovers data from
a write-once optical disk when a recording operation is interrupted prior to
completion. Abst. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. An optical disk drive comprising:
a unit for reserving an FAT area in a write-once optical
disk;
a unit for recording data in the write-once optical disk;
a unit for recording recovery data in a head of the data
before initiation of recording of the data;
a unit for detecting that recording is interrupted before
completion of recording of the data;
a unit for closing a track where recording operation has
been interrupted when interruption is detected; and
a unit that reads the recovery data recorded in the head of
the data, creates an FAT based on the recovery data and an
ending address of the track, and records the FAT into the FAT
area when interruption is detected.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 12/058,210

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Sasaki
Avraham
US 2004/0057366 A1
US 2004/0103238 A1
Mar. 25, 2004
May 27, 2004
Schulze US 6,836,834 B2 Dec. 28, 2004

REJECTION1
The Examiner rejected claims 1-7 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Schulze, Avraham, and Sasaki. Ans. 4-11.

APPELLANT’S CONTENTIONS
1. Neither Schulze nor Avraham describes units (i) for recording and (ii)
reading recovery data as required by claim 1 or the corresponding
limitations of claim 9. App. Br. 5.
2. Sasaki[] does not describe or suggest “a unit for recording
recovery data in a head of the data before initiation of recording
of the data,” and does not describe or suggest “a unit that reads
the recovery data recorded in the head of the data, [and] creates
an FAT based on the recovery data and an ending address of the
track,” as these elements are recited in claim 1.
App. Br. 6.
3. Sasaki does not describe or suggest a unit for closing a track because
Sasaki describes neither a recording that is interrupted nor closing a track
when the recording is interrupted. App. Br. 7.
4. The combination of Sasaki with Schulze and Avraham is improper. App.
Br. 7-8.

1 Appellant collectively argues the rejection of independent claims 1 and 9.
Merely restating an argument, previously presented with respect to a first
claim, with respect to a second claim is not an argument for separate
patentability of the two claims. Separate patentability is not argued for
dependent claims 2-7. Therefore, based on Appellant’s arguments, we
decide the appeal of claims 1-7 and 9 based on claim 1 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application 12/058,210

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ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 4-8)
and Reply Brief (Reply Br. 1-4), the issues presented on appeal are:
1. Whether the Examiner erred in finding the combination of Schulze,
Avraham, and Sasaki teaches or suggests the disputed limitations of
claims 1 and 9.
2. Whether the Examiner erred in combining Sasaki with Schulze and
Avraham.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4-11) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 11-15) and concur with the
conclusions reached by the Examiner. We highlight the following arguments
seriatim as they are presented in the Appeal Brief, pages 4-8.
Appellant asserts (contention 1) neither Schulze nor Avraham
describes units for recording, prior to initialization, reading recovery data in
a head of the data, and creating a file allocation table (FAT) based on the
recovery data as required by claim 1 or the corresponding limitations of
claim 9. App. Br. 5. Appellant does not explain why the cited portions of
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Schulze and Avraham are deficient.2 In response, the Examiner disagrees
with Appellant’s contention and directs attention to portions of Schulze and
Avraham cited for teaching the disputed limitations with reference to the
Final Office Action. Ans. 12-13 (citing FOA 4-5).
We find Appellant’s contention unpersuasive of error. The Examiner
has set forth a comprehensive explanation addressing, inter alia, the entirety
of the disputed “unit for recording recovery data” and “unit that reads the
recovery data.” See FOA 4-5, 7-9; Ans. 5-6, 9-10, 12-13. We find the
Examiner has established a prima facie case, which Appellant’s generalized
assertions fail to persuasively rebut.
[A]ll that is required of the [Patent O]ffice to meet its prima
facie burden of production is to set forth the statutory basis of
the rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find that the Examiner
has met this burden. The Examiner explains how the cited portions of
Schulze and Avraham teach the disputed limitations. See FOA 4-5, 7-9; Ans.
5-6, 9-10, 12-13. We have reviewed the evidence cited by the Examiner and

2 Appellant contends additional bases of error for the first time in the Reply
Brief including (i) Schulze’s duplication of a primary DOS-FAT fails to
teach “recording recovery data in a head of the data,” and (ii) substantive
argument why Avraham fails to teach disputed claim limitations. However,
because these arguments were first raised in a Reply Brief, were not a
response to a new argument presented by the Examiner, and Appellant has
not shown any good cause why these arguments were first made in the Reply
Brief, they are untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”). Therefore, these bases
for asserting error are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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the Examiner’s rationale supporting the finding that the claims are obvious.
We concur with the Examiner’s findings. Merely citing a claim limitation
and asserting it is not present falls short of identifying an error in the
Examiner’s rejection as required on appeal. See Jung, 637 F.3d at 1365
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”); In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and naked assertion that the corresponding elements
were not found in the prior art.”). Appellant has not provided persuasive
evidence or argument to rebut the Examiner’s prima facie case. Because 37
C.F.R. § 41.37(c)(1)(vii) requires more substantive arguments than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art, we find Appellant’s contention
unpersuasive of Examiner error.
Furthermore, the disputed language includes statements of intended
use, which fail to distinguish the claimed invention from the prior art either
structurally or functionally. For example, the recited feature argued by
Appellant—“a unit for recording recovery data in a head of the data before
initiation of recording of the data” (claim 1 (emphasis added))—essentially
consists of a statement of intended use or purpose of the recited unit. The
intended use does not change the structure of the recited unit and, in this
instance, does not further limit the scope of the claim. A statement of
intended use in an apparatus claim cannot distinguish over a prior art
apparatus that discloses all the recited structural limitations and is capable of
performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477
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(Fed. Cir. 1997). We also note “[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003); In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987) (Although “[s]uch
statements often . . . appear in the claim’s preamble,” a statement of intended
use or purpose can appear elsewhere in a claim.)
Appellant next argues (contention 2) Sasaki does not describe or
suggest the units for recording and reading recovery data argued to be absent
from the teachings of Schulze and Avraham. However, Sasaki is cited only
for teaching a unit for closing a track where a recording operation has been
interrupted before completion of recording of the data (Ans. 5), not for the
disputed limitations. Furthermore, because we agree with the Examiner’s
findings that the combination of Schulze and Avraham teaches or suggests
these limitations for the reasons supra, contention 2 is not persuasive of
error.
In connection with contention 3, Appellant argues:
Just because Sasaki describes that “in response to receipt
of a ‘close track/session command’ as the format interrupt
request from the host, the optical disk apparatus 20 sets a ‘1’ to
the format interrupt request flag under the interrupt process”
does not mean that the claimed “unit for closing a track” is
taught or suggested. For example, not only does Sasaki not
describe the claimed recording that is interrupted, Sasaki also
does not describe the claimed closing a track when the
recording is interrupted.
App. Br. 7.
The Examiner finds Sasaki’s format interrupt request flag triggers
closing a track upon when there is an interrupt, i.e., closing the track if the
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format interrupt request flag is 1, thereby teaching the disputed limitation.
Ans. 14. Furthermore, the Examiner finds Avraham teaches “‘a unit for
detecting that recording is interrupted before completion of recording of the
audio data,’ and ‘a unit for closing the track where recording operation has
been interrupted when interruption is detected.’” Ans. 14 (citing FOA 4-5,
7-9).
We agree with the Examiner’s finding that Sasaki’s closing of a track
when an interrupt flag is 1 teaches the disputed limitation. Furthermore,
Avraham’s steps 403, 406, and 407 teach the disputed limitation for the
reasons found by the Examiner at page 9 of the Answer. Still further, the
combination of Avraham’s teaching a unit for detecting that a recording is
interrupted before completion of recording of data with Sasaki’s teaching a
close track/session command further teaches or suggests the disputed
limitation of a unit for closing a track where recording operation has been
interrupted when interruption is detected. Therefore, contention 3 is not
persuasive of Examiner error.
Finally, we are not persuaded of error by Appellant’s contention that
the Examiner’s reasoning for combining Sasaki with Schulze and Avraham
is deficient. App. Br. 7-8. In the present appeal, the Examiner has provided
the motivation to incorporate the teachings of Sasaki into the combination of
Schulze and Avraham, basing it on Sasaki’s teaching of “reduced waiting
time before user information is allowed to be recorded.” Sasaki ¶ 10; Ans.
7. In contrast, Appellant fails to provide sufficient evidence or argument that
the combination yields anything other than predictable results. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
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no more than yield predictable results.”). We are also not persuaded that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner was “uniquely challenging or difficult for
one of ordinary skill in the art” (see Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Therefore, we find the Examiner’s proffered combination of familiar prior
art elements according to their established functions would have conveyed a
reasonable expectation of success to a person of ordinary skill at the time of
the invention. We further find the Examiner has articulated reasoning with
rational underpinnings sufficient to justify the legal conclusion of
obviousness. Therefore, Appellant’s assertion that the references were
improperly combined is not persuasive of error, and accordingly, the
Examiner has properly relied upon the combination of Sasaki with Schulze
and Avraham in formulating the disputed rejection under 35 U.S.C. § 103(a).
Therefore, for the reasons supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejection of independent claim 1 and, for
the same reasons, independent claim 9 under 35 U.S.C. § 103(a) over
Schulze, Avraham, and Sasaki together with the rejection of dependent
claims 2-7, not separately argued.

CONCLUSIONS
1. The Examiner did not err in finding the combination of Schulze,
Avraham, and Sasaki teaches or suggests the disputed limitations of
claims 1 and 9.
2. The Examiner did not err in combining Sasaki with Schulze and
Avraham.
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3. The Examiner did not err in rejecting claims 1-7 and 9 under 35 U.S.C.
§ 103(a) over Schulze, Avraham, and Sasaki.

DECISION
The Examiner’s decision to reject claims 1-7 and 9 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(a)(1)(iv).

AFFIRMED

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