Ex parte BACv.PHAM

Board of Patent Appeals and Interferences

Jan 7, 2000

08385253 (B.P.A.I. Jan. 7, 2000)

Application for patent filed February 8, 1995.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte BAC V. PHAM
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Appeal No. 1998-0587
Application 08/385,2531
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ON BRIEF
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Before McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of appellants’ claims 1-32. Claims
1, 17 and 25 are independent claims.
References relied on by the Examiner
Squires et al. Patent No. 5,121,262 June 9,
1992
(Squires)
Abbott et al. Patent No. 5,341,249 August 23,
1994
(Abbott)
Appeal No. 1998-0587
Application 08/385,253
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Application 08/385,253
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The Rejections on Appeal
Claims 1-10, 12-23, 25, and 27-32 stand rejected under
35 U.S.C. § 103 as being unpatentable over Squires.
Claims 11, 24 and 26 stand rejected under 35 U.S.C. § 103
as being unpatentable over Squires and Abbott.
The Invention
The invention is directed to a system for capturing an
output signal from a selected one of a plurality of components
which receive and process information read by an interactive
element from a storage medium. Claims 17 and 25 specifically
require a data capture circuit which includes an input
multiplexer circuit and an output sample and hold circuit. As
is described in the specification, based on the respective
signals detected from the plurality of components in response
to a test signal, optimization can be made with respect to the
components. Independent claim 1 is representative and is
reproduced below:
1. For use in a storage device including a storage
medium for storing data, an interactive element for reading
information from and writing information on the storage medium
and a processor for performing control functions in the
storage device, a read channel, which comprises:
a set of electronic components for receiving and
Appeal No. 1998-0587
Application 08/385,253
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processing information read by the interactive element from
the storage medium;
each component of the set of electronic
components having an output and being coupled in a
predetermined arrangement to other components of the set of
electronic components to process the read information;
a data capture circuit including an input
circuit and an output circuit;
the input circuit coupled to the output of each
component of the set of electronic components;
the output circuit coupled to the input circuit
to capture a signal from a preselected one of the outputs
coupled to the input circuit, and being adaptable to transfer
the captured signal to the processor.
Opinion
The rejection of claims 1-10, 12-23, 25, and 27-32 under
35 U.S.C. § 103 as being unpatentable over Squires cannot be
sustained. The rejection of claims 11, 24 and 26 under 35
U.S.C. § 103 as being unpatentable over Squires and Abbott
also cannot be sustained.
A reversal of the rejection on appeal should not be
construed as an affirmative indication that the appellant’s
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
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Application 08/385,253
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based.
Each of appellant’s independent claims 1, 17 and 25
includes an input circuit which is coupled to the respective
outputs of a set of electronic components. The difference
between the appellant’s claimed invention and Squires is not
disputed. The examiner acknowledges that Squires “only
discloses one output coupled to the input circuit” (answer at
pages 4, 7 and 8) and “does not disclose a signal from a
preselected one of the outputs coupled to the input circuit”
(answer at page 3) (emphasis added).
According to the examiner, however, “[a]dding additional
outputs will allow for individual optimization of each
electronic component” (answer at pages 4, 7 and 8). The
examiner cites no evidence to support this finding which
appears to be based solely on hindsight in light of the
appellant’s own disclosure. Any optimization revealed by
Squires, as applied by the examiner, is based on a single
output collectively generated by a set of electronic
components. The examiner has not demonstrated that Squires
would have reasonably suggested to one with ordinary skill in
the art that a separate output should be received by the input
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Application 08/385,253
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circuit from each component within the set of electronic
components that process information read from a storage
medium.
The examiner further takes the position that “adding
additional outputs is merely a duplication of parts” (answer
at pages 4, 7 and 8). But going from a system having a single
output produced by a set of components which interact with
each other to a system having separate outputs from each of
the components within the set of components is not a mere
duplication of parts. A mere duplication of the output signal
would have resulted in two identical signals being produced by
the same set of components and they cannot be regarded as
separate outputs from respective parts within the set. The
appellant is correct that the one output from Squires does not
distinguish between the functions of the individual components
within the set of components but represents an amalgamation of
the output functions of all the components within the set.
For the foregoing reasons, we do not sustain the
rejection of claims 1-10, 12-23, 25, and 27-32.
As for dependent claims 11, 24 and 26, the examiner’s
reliance on Abbott does not make up for the deficiency of
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Squires. Abbott was applied only to meet the further feature
of partial response maximum likelihood detection channel
added by claim 11 to claim 1, claim 24 to claim 17, and claim
26 to claim 25. Accordingly, we also do not sustain the
rejection of claims 11, 24 and 26.
Conclusion
The rejection of claims 1-10, 12-23, 25, and 27-32 under
35 U.S.C. § 103 as being unpatentable over Squires is
reversed.
The rejection of claims 11, 24 and 26 under 35 U.S.C. §
103 as being unpatentable over Squires and Abbott is also
reversed.
REVERSED
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
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Application 08/385,253
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)
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) BOARD OF PATENT
RICHARD SCHAFER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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JAMESON LEE )
Administrative Patent Judge )
Appeal No. 1998-0587
Application 08/385,253
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