Ex Parte 6995940 et al

Board of Patent Appeals and Interferences

Oct 19, 2010

90008302 (B.P.A.I. Oct. 19, 2010)

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.
90/008,302 10/27/2006 6995940 PANAP-01075USL 8633
23910 7590 10/19/2010
FLIESLER MEYER LLP
650 CALIFORNIA STREET
14TH FLOOR
SAN FRANCISCO, CA 94108
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/19/2010 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 MATSUSHITA ELECTRIC INDUSTRIAL CO., LTD.
____________________

Appeal 2010-009008
Reexamination Control 90/008,302
Patent 6,995,9401
Technology Center 3900
____________________

Before JAMESON LEE, RICHARD TORCZON, and KARL EASTHOM,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL2

1 The patent under reexamination (hereinafter the “’940 patent”) issued to
Ehrlich on February 7, 2006 from Application 10/897,319 filed on July 22,
2004.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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A. STATEMENT OF THE CASE
This reexamination proceeding arose from a request for ex parte
reexamination filed by Matsushita Electric Industrial Co., LTD.
(“Matsushita”), the owner of the ‘940 patent under reexamination.3
Matsushita appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-37 (Appeal Brief filed November 02, 2009, hereinafter
“App. Br.”; Final Office Action mailed March 16, 2009). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm-in-part.

References Relied on by the Examiner
Schmidt US 6,995,942 B2 Feb. 7, 2002

The Rejections on Appeal
The Examiner rejected claims 1-37 under 35 U.S.C. § 102(e) as
anticipated by Schmidt.

The Invention
The invention relates to servo-writing processes and systems for
writing servo information to a rotatable storage medium. (‘940 patent 3:7-
11.)
Independent claim 1 is reproduced below (App. Br. 25 Claims
App’x.):

3 See Patent Assignment Abstract of Title, Reel 015306, Frame 0500, which
was entered into the record of this proceeding as “Title Report” on October
27, 2006.
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1. A system to write a target track of servo information to a
rotatable storage medium using a reference track of servo information,
comprising:

a write element adapted to write servo information to the
rotatable storage medium;

a control mechanism adapted to control writing of servo
information to the rotatable storage medium, the control mechanism
to:

enable writing of servo information to the target
track of the rotatable storage medium by the write
element during one or more revolutions of the rotatable
storage medium, wherein writing servo information is
inhibited when a location of the write element is not
within a first threshold distance of a desired location, and
wherein writing servo information is resumed after the
location of the write element is determined to be within a
second threshold distance;

determine WORF data from the reference track of
servo information during the one or more revolutions;
and

enable writing of servo information not written to
the target track during the one or more revolutions during
a subsequent revolution using the WORF data.
B. ISSUES
1. Did the Examiner incorrectly find that Schmidt discloses a
system for writing servo information to the target track of a rotatable storage
medium in which writing is “resumed” to the track after the writing was
previously inhibited?
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2. Did the Examiner incorrectly find that Schmidt discloses a
system for writing servo information to the target track of a rotatable storage
medium in which WORF data is determined during one of more revolutions
of a rotatable storage medium and writing of servo information is enabled
during a subsequent revolution using the WORF data?
C. PRINCIPLES OF LAW
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000).
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
D. FINDINGS AND ANALYSIS
The Examiner rejected claims 1-37 as anticipated by Schmidt. Claims
1, 15, 20, 21, 22, 23, 24, 25, 26, and 27 are independent. We focus on the
disputed limitations.
Claim 1
Claim 1 requires a control mechanism that performs the following
operation (App. Br. 25 Claims App’x.):
enable writing of servo information to the target track of
the rotatable storage medium by the write element during one or
more revolutions of the rotatable storage medium, wherein
writing servo information is inhibited when a location of the
write element is not within a first threshold distance of a desired
location, and wherein writing servo information is resumed
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after the location of the write element is determined to be
within a second threshold distance[.]

As set forth in the above-quoted feature, the claim requires that
writing of servo information to a particular target track of a rotatable storage
medium is inhibited when the writing element is positioned beyond a certain
threshold distance. Upon a subsequent revolution of the storage medium,
writing to the track is “resumed” when the writing element is positioned
within a specific threshold distance. According to Matsushita, the term
“resumed” means that writing on the track is not re-started from the
beginning, i.e., no overwriting occurs of previously written information on
the track. Rather, the information that is subsequently written on the track
continues from the point of inhibition. Matsushita contends that resumption
of writing servo information without overwriting already written information
is different from conventional servo-writing practices known in the prior art,
such as in Schmidt, in which information of the track is rewritten. (App. Br.
16:19-17:4.)
We look first to the meaning of the term “resumed.” During
examination, claim terms are given their broadest reasonable interpretation
consistent with the specification. In re Hyatt, 211 F.3d at 1372.
Matsushita’s ‘940 patent describes that known servo-writing techniques
involve restarting a stopped writing process and rewriting of any information
that had been previously written to track. (‘940 patent 1:32-40.) The patent
distinguishes servo-writing that is “re-started,” as in the prior art, from
servo-writing that is “resumed,” as in the invention described in the patent.
(Id. at Abstract.) It is unreasonable in the context of Matsushita’s 940 patent
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to extend the meaning of “resumed” in connection with servo-writing to also
include restarting or rewriting of servo information.
The Examiner’s rejection is not premised on any disagreement with
Matsushita as to the meaning of the term “resumed.” Rather, in rejecting
Matsushita’s claims over Schmidt, the Examiner asserts that Schmidt
discloses resuming or continuing the writing servo information to its
rotatable storage in the same manner as Matsushita’s invention. (Ans. 29:6-
12.) In support of that assertion, the Examiner points to column 3, lines 58-
65 of Schmidt. (Id.) That portion of Schmidt is reproduced below (Schmidt
3:58-66):
For example, a centerline 300 for a given data track can be
“defined” relative to a series of bursts, burst edges, or burst
boundaries, such as a burst boundary defined by the lower edge of A-
burst 302 and the upper edge of B-burst 304 in FIG. 3. The centerline
can also be defined by, or offset relative to, any function or
combination of bursts or burst patterns. This can include, for
example, a location at which the PES value is a maximum, a
minimum, or a fraction or percentage thereof.

The “PES” acronym noted above refers to a “position-error signal”
which is a signal indicative of the position of a writing element relative to a
centerline of a target track. (Id. at 3:54-57.) The above-quoted portion
describes that the centerline of a target track on which information is written
may be adjusted but does not describe any stopping or starting of writing of
the information, much less that the writing is “resumed.”
Matsushita contends that Schmidt discloses a conventional servo-
writing technique and does not describe servo-writing that is resumed after
the writing has been stopped. Matsushita’s contention is persuasive. The
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Examiner does not meaningfully explain how Schmidt accounts for the
requirement in Matsushita’s claims that servo-writing is subsequently
“resumed” on subsequent revolutions of a rotatable storage medium after the
writing was previously inhibited.
A portion of Schmidt’s disclosure does briefly describe that writing to
a track can be stopped after write “faults” occur. (Id. at 5:31-34.) However,
neither that portion nor the remaining disclosure of Schmidt provides any
further detail as to how information is thereafter written to the track after a
fault has occurred.
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d at
708. On this record, the Examiner has not adequately established how
Schmidt accounts for the feature of Matsushita’s claims directed to servo-
writing to the track of a rotatable storage medium that is “resumed” after the
writing has been inhibited. We do not sustain the Examiner’s rejection of
claim 1 as anticipated by Schmidt.
Claims 2-14 are dependent on and require all the limitations of claim
1. Hence, we also do not sustain the anticipation rejection of claims 2-14
over Schmidt.
Claims 15 and 27
Each of claims 15 and 27 includes a feature similar to that discussed
above in connection with claim 1. In particular, each claim requires a
control mechanism that operates to inhibit writing of servo information
when a write element is beyond a threshold distance from the intended
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writing point on the track where the writing is “resumed” when the write
element is within the threshold distance.
For the same reasons given above with respect to claim 1, we are not
persuaded that Schmidt accounts for the above-noted feature of claims 15
and 27. We do not sustain the rejection of claims 15 and 27 as anticipated
by Schmidt.
Claims 16-19 and 28-37 are dependent on, and include all the
limitations of, one of claims 15 and 27. We also do not sustain the rejection
of claims 16-19 and 28-37 as anticipated by Schmidt.
Claims 21, 22, 23, 24, 25, and 26
Claims 21, 22, 23, 24, 25, and 26 are independent and were rejected as
anticipated by Schmidt. Each of those claims requires a control mechanism
that determines if a writing element is within a “threshold distance” from a
position on a target track in which the element is to write servo information.
If the writing element is beyond that threshold distance, writing to the track
is inhibited. Schmidt discloses that its system operates to stop writing to a
target track in situations where the head of a writing element is at a point
that is too far from the center of the track. (Schmidt 5:31-34.) The
Examiner pointed, in part, to that disclosure in Schmidt in supporting his
finding that Schmidt accounts for the threshold distance of Matsushita’s
claims. (Ans. 29-3-6.) Matsushita challenges the Examiner’s finding.
We are not persuaded by Matsushita. Schmidt recognizes that when a
writing element is beyond a certain distance from a track centerline, writing
to the track is halted. That distance from the track centerline is a “threshold
distance.” Schmidt thus discloses that writing to a track is inhibited when a
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writing element is beyond a threshold distance. That is what is required by
the claims and is met by Schmidt.
Matsushita also contends that the final two clauses of each of claims
21-26 recite features that are not found in Schmidt. But for some minor
differences in terminology, the last two clauses of each of those claims are
essentially the same. Those clauses as they appear in claim 21 are
representative and are reproduced below (App. Br. 30-31 Claims App’x.):
determine WORF data from the reference track of servo
information during the one or more revolutions;

enable writing of servo information for each of the servo
wedges for which writing was inhibited during the one or more
revolutions during a subsequent revolution using the WORF data.

Matsushita’s ‘940 patent does not explain the meaning of the acronym
“WORF.” However, that acronym appears in Schmidt as meaning “Wedge
Offset Reduction Field” and is disclosed as a correction value used to align a
write element in its intended position onto a track where information is to be
written. (Schmidt 4:62-5:23.) Matsushita does not dispute that the WORF
data disclosed in Schmidt corresponds to the WORF data recited in each of
claims 21-26.
Matsushita contends that the above-quoted limitations require that the
WORF data is determined after servowriting for a track has already initiated.
(App. Br. 19:13-17.) According to Matsushita, in prior art servowriting
systems, “the use of WORF while servo writing a track is believed to only
use WORF data obtained before servowriting for that track begins.” (Id. at
19:5-8) (emphasis in original). Matsushita further states that “Schmidt is
ambiguous as to the use of WORF for servowriting” (id.) and “[i]n Schmidt,
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the WORF data used to write to a target track is apparently produced before
any writing to the target track is enabled.” (Reply Br. 24:5-6). On that
basis, Matsushita urges that Schmidt does not account for the features of
claims 21-26.
Matsushita’s argument is not persuasive. Matsushita does not explain
why it believes that Schmidt obtains WORF data only before servowriting to
a track begins. Matsushita’s belief amounts simply to speculative argument
by its counsel as to how Schmidt’s system may operate which is
unsupported by objective evidence, such as expert testimony. Argument of
counsel cannot take the place of evidence lacking in the record. Estee
Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
Moreover, Schmidt is not ambiguous as to the use of WORF data for
servowriting. Nor does Schmidt require that its WORF data be produced
before any writing to a target track. Rather, in describing an embodiment of
its invention, Schmidt states the following “[a] WORF value can be recorded
for the position of a head when writing the track, the position of a head when
reading the track, or both.” (Schmidt 7:51-54) (emphasis added). Thus,
Schmidt makes clear that a WORF value may be determined when the head
of a write element is writing to a track. That disclosure renders incorrect
Matsushita’s assessment of the teachings of Schmidt.
In any event, we note that none of Matsushita’s claims recite that
WORF data must be produced “after” writing to a track has already started.
Instead, the claims call for WORF data to be determined “during the one or
more revolutions” of a rotatable storage medium and then writing of servo
information is enabled “during a subsequent revolution.” That does not
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preclude a circumstance where WORF data is determined before any writing
to the track occurs. Thus, even if Matsushita’s characterization of the
disclosure of Schmidt is accurate, i.e., that WORF data is produced before
writing to a track is initiated, Matsushita does not adequately explain why
that disclosure is insufficient to account for its claims.
For the foregoing reasons, we are not persuaded of any error in the
Examiner’s rejection of claims 21-26 over Schmidt. We sustain the
rejection of claims 21-26 as anticipated by Schmidt.
E. CONCLUSION
1. The Examiner incorrectly found that Schmidt discloses a
system for writing servo information to the target track of a rotatable storage
medium in which writing is “resumed” to the track after the writing was
previously inhibited.
2. The Examiner did not incorrectly find that Schmidt discloses a
system for writing servo information to the target track of a rotatable storage
medium in which WORF data is determined during one of more revolutions
of a rotatable storage medium and writing of servo information is enabled
during a subsequent revolution using the WORF data.
F. ORDER
The rejection of claims 1-20 and 27-37 under 35 U.S.C. § 102(e) as
anticipated by Schmidt is not-sustained.
The rejection of claims 21-26 under 35 U.S.C. § 102(e) as anticipated
by Schmidt is sustained.
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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

FLIESLER MEYER LLP
650 CALIFORNIA STREET
14TH FLOOR
SAN FRANCISCO CA 94108