Ex Parte an

Board of Patent Appeals and Interferences

Jan 30, 2012

10847469 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/847,469 05/18/2004 Jong-tae An 1793.1291 2566
21171 7590 01/30/2012
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
FEILD, JOSEPH H
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
01/30/2012 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 JONG-tae AN
____________________

Appeal 2010-006292
Application 10/847,4691
Technology Center 2600
____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 32 and 38.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Samsung Electronics Co., Ltd.
2 Claims 1, 4, 24, 25, and 33 have been cancelled. Claims 2, 3, 5-23, 26-31,
34-37, and 39-46 have been withdrawn from further consideration.
Appeal 2010-006292
Application 10/847,469

2
Appellant’s invention concerns a method of data back-up using a dual
format hybrid storage medium, having a non-recordable section and a
recordable section. If it is determined that abnormal data is being
reproduced from the non-recordable section, error correction is performed
on said abnormal data. If the error corrected data includes a fault, the data
determined to have the fault are recorded in a recordable section of the dual
format hybrid storage medium (Spec. ¶ [0018]).
Claim 32 is exemplary of the claims on appeal:
32. A method of data back-up using a dual format hybrid storage
medium, the method comprising:
reproducing data in a non-recordable section of the dual format hybrid
storage medium;
and
backing up data in the non-recordable section to a recordable section
of the dual format storage medium,
wherein the data to be backed up in the recordable section is
determined to be data having a high probability of error occurrence, and
wherein:
the data to be backed up is determined by determining whether
abnormal data is being reproduced, and
if abnormal data is being reproduced,
performing error correction on the abnormal data,
determining whether the error corrected data has a fault, and,
if the error corrected data has a fault, recording corresponding data
into the recordable section of the dual format storage medium.

Appeal 2010-006292
Application 10/847,469

3
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Fukushima US 5,111,444 May 5, 1992
Ohno US 5,241,531 Aug. 31, 1993
Hashimoto JP 11096655 A Apr. 09, 1999

Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohno in view of Fukushima.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohno in view of Fukushima and Hashimoto.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Aug. 31, 2009), the Examiner’s Answer (“Ans.,” mailed
Dec. 09, 2009), and the Reply Brief (“Reply Br.,” filed Jan. 27, 2010) for
their respective details.

ISSUE
Appellant argues, inter alia, that Fukushima fails to teach performing
error correction on abnormal data, followed by determining whether the
error corrected data has a fault (App. Br. 11).
Appellant’s contentions, and the Examiner’s findings, present us with
the following issue:
Does the combination of Ohno and Fukushima teach, or fairly
suggest, performing error correction on the abnormal data, and determining
whether the error corrected data has a fault, as recited in claim 32?
Appeal 2010-006292
Application 10/847,469

4
FINDINGS OF FACT
Fukushima
1. Fukushima teaches that “the main control unit 2 starts the error
detection and correction circuit 7, and attempts to detect errors contained in
the reproduced data” (col. 14, ll. 63-65).
2. If the degree of error detected by the error detection and correction
circuit 7 is smaller than a specified reference value, the main control unit 2
judges that the verify operation against the target sector has been normally
terminated (col. 14, l. 65 – col. 15, l. 3).
3. When a degree of error exceeding the reference value is detected in
the target sector, the main control unit 2 judges that the target sector is a
defective sector (col. 15, ll. 4-7), and proceeds to store data in an alternative
sector (col. 15, ll. 9-38).

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
Appeal 2010-006292
Application 10/847,469

5
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)

ANALYSIS
CLAIM 32
The Examiner finds that Fukushima teaches error correction of
abnormal data, followed by a determination whether error corrected data
contains a fault (Ans. 7-8). We do not agree with the Examiner’s finding.
Fukushima teaches attempting to detect errors contained in
reproduced data (FF 1). If the degree of error is smaller than a specified
reference value, i.e. if the error can be corrected by the error detection and
correction circuit 7, the main control unit 2 judges that the verify operation
against the target sector has been normally terminated (FF 2). When a
degree of error exceeding the reference value is detected in the target sector,
the main control unit 2 judges that the target sector is a defective sector, and
proceeds to store data in an alternative sector (FF 3).
We agree with Appellant that Fukushima teaches error detection, and
teaches error correction provided the degree of error is sufficiently small, but
does not teach error correction followed by a determination whether
corrected data (still) contains a fault (App. Br. 11). We, therefore, find that
Appeal 2010-006292
Application 10/847,469

6
neither Ohno nor Fukushima teaches the claim limitation “determining
whether the error corrected data has a fault.”
Because the combination of Ohno and Fukushima fails to teach all the
limitations of claim 32, we find that the Examiner erred in rejecting claim 32
under § 103. We will not sustain the Examiner’s rejection.
CLAIM 38
We have reviewed the further reference to Hashimoto and find that it
does not remedy the deficiencies of Ohno and Fukushima. Therefore, we
will not sustain the § 103 rejection of claim 38 for the same reasons given
with respect to claim 32, supra.

CONCLUSION
The combination of Ohno and Fukushima does not teach or fairly
suggest performing error correction on the abnormal data, and determining
whether the error corrected data has a fault, as recited in claim 32.

ORDER
The Examiner’s rejection of claims 32 and 38 is reversed.
REVERSED

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