Ex Parte BANG

Board of Patent Appeals and Interferences

Jan 31, 2003

08861157 (B.P.A.I. Jan. 31, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HO-YUL BANG
____________
Appeal No. 2001-1847
Application No. 08/861,157
____________
HEARD: November 7, 2002
____________
Before BARRETT, RUGGIERO, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 26, which are all of the claims
pending in this application.
Appellant's invention relates to a recording medium having a
data recording disk with plural concentric tracks, each track
having servo sectors in which servo information for use in
positioning a transducer head is written, each servo sector
having a first subpart for all of the synchronization information
for reading data recorded on the data sector, an identification
region, and a second subpart including a data address mark
Appeal No. 2001-1847
Application No. 08/861,157
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region, a data field, and an error correction code region. Claim
1 is illustrative of the claimed invention, and it reads as
follows:
1. A method for forming a data sector of a recording
medium in a disk drive, the data sector including an
identification region for containing identification information
for the data sector and including a data region for containing
data transferred from an external communication device,
comprising the steps of:
recording a first subpart of the data region at a first
position on the disk drive;
recording a second subpart of the data region at a
separately located second position on the disk drive, said second
subpart of the data region containing the data transferred from
the external communication device; and
recording the identification region at a third position on
the disk drive interposed between the first and second subparts
of the data region, the first subpart of the data region
containing all of first synchronization information for reading
the identification information contained in the identification
region, and containing all of second synchronization information
for reading data contained in the data region.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Greenberg et al. (Greenberg) 4,656,532 Apr. 07, 1987
Gold 5,475,540 Dec. 12, 1995
Prins et al. (Prins) 5,627,695 May 06, 1997
(filed Jan. 12, 1995)
Park 5,631,783 May 20, 1997
(filed May 31, 1995)
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Greenberg.
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Application No. 08/861,157
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Claims 2, 3, and 17 through 26 stand rejected under
35 U.S.C. § 103 as being unpatentable over Greenberg in view of
Gold.
Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Greenberg in view of Gold and Prins.
Claim 22 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Greenberg in view of Prins.
Claims 4 and 7 through 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Park in view of Greenberg.
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Park in view of Greenberg and Gold.
Reference is made to the Examiner's Answer (Paper No. 17,
mailed January 14, 2000) for the examiner's complete reasoning in
support of the rejections, and to appellant's Brief (Paper
No. 16, filed November 3, 1999) and Reply Brief (Paper No. 18,
filed March 13, 2000) for appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will affirm the anticipation rejection of claim 1 and reverse the
obviousness rejections of claims 2 through 26.
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Application No. 08/861,157
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Regarding claim 1, Greenberg shows in Figure 1, a
synchronization section, followed by an identification section,
further followed by a data and error correction code section.
Figure 2 indicates that the identification portion further
includes a displacement.
Appellant argues (Brief, pages 26-28) that the ID field of
Greenberg includes a "DISPLACEMENT" subpart which includes
synchronization information. Appellant (Brief, page 26) directs
us to Greenberg's statement in column 3, lines 7-9, that
"displacement is a number which completes the information needed
to calculate the physical address from the logical address."
Appellant asserts that Greenberg's definition of displacement
indicates that the ID field includes synchronization information,
which is contrary to the requirements of claim 1.
As the examiner states (Answer, page 12),
Greenberg et al describes the displacement information
as "the number of defective sectors between some
reference point and the physical sector" and "the
offset from the beginning of the track to beginning of
the logical track." Greenberg et al does not teach or
suggest that the displacement information is sync or
timing information. Hence, Greenberg et al does teach
the first subpart of the data information containing
all the sync information,
as recited in claim 1. Also, as Greenberg discloses
synchronization information, the fact that he uses a different
Appeal No. 2001-1847
Application No. 08/861,157
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term, displacement, for other information suggests that
displacement differs from synchronization. Accordingly, we agree
with the examiner that Greenberg discloses the first subpart of
the data information containing all of the synchronization
information, and, thus, that claim 1 is anticipated by Greenberg.
We reach a different conclusion for the obviousness
rejections. As to the rejection of claims 2, 3, and 17 through
26, the examiner explains (Answer, page 4) that although
Greenberg fails to teach the second subpart of the data region
including a data address mark, Gold discloses such a mark. The
examiner contends that "[i]t would have been obvious ... to
modify the teachings of Greenberg et al to include the teachings
of Gold, motivation being to provide an improved disk format as
set forth in col. 2 lines 45-48 of Gold."
After reviewing the referenced portion of Gold we find no
nexus between the inclusion of a data address mark and the
"improved disk format." In fact, we find no suggestion or
motivation in either reference to add the claimed data address
mark to the second subpart data region of Greenberg.
Consequently, we cannot sustain the obviousness rejection of
claims 2, 3, and 17 through 26 over Greenberg in view of Gold.
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For claim 25, the examiner (Answer, page 9) adds Prins to
the combination of Greenberg and Gold. Since Prins fails to cure
the deficiencies of the primary combination, we cannot sustain
the obviousness rejection of claim 25 over Greenberg, Gold, and
Prins.
The examiner (Answer, pages 8-9) rejects claim 22 over
Greenberg in view of Prins, pointing for motivation to combine to
Prins' teaching (column 5, lines 46-58) to eliminate the sector
ID field from the header associated with each sector to eliminate
both micro-positioning during normal write operations and also
offsetting of a duplicate header. However, Greenberg states
(column 2, lines 14-20) that the combination of the ID field and
the data field associated with a sector reduces sector overhead
(the goal of the invention) because "the one sync field and the
read/write gap eliminated are larger than the amount of
information that must be added to the ID field." Thus, the
examiner's proposed combination would eliminate the ID field that
must be modified for Greenberg's invention, thereby destroying
the function of Greenberg invention. The Federal Circuit has
held that "a proposed modification [is] inappropriate for an
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Application No. 08/861,157
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obviousness inquiry when the modification render[s] the prior art
reference inoperable for its intended purpose." In re Fritch, 23
USPQ2d 1780, n. 12, citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Accordingly, we cannot sustain
the obviousness rejection of claim 22 over Greenberg in view of
Prins.
Regarding the obviousness rejection of claims 4 and 7
through 14 over Park in view of Greenberg, appellant argues that
Park fails to disclose the claimed servo timing generator (see
Brief, pages 10-13), the claimed mode selection signal generator
(see Brief, pages 13-16), and the claimed pre-amplifier and
read/write channel circuit (see Brief, pages 16-19). Appellant
further challenges the combination of Park and Greenberg (see
Brief, page 19). Although we do not necessarily agree with all
of appellant's arguments, for the reasons which follow, we agree
at least that Park fails to disclose the claimed mode selection
signal generator, that Greenberg fails to remedy this
shortcoming, and that the claims, therefore, would not have been
obvious over the combination of Park and Greenberg.
Claim 4 recites, in pertinent part, "a mode selection signal
generator coupled to receive said read gate input signal and said
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Application No. 08/861,157
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write gate input signal from said disk data controller, for
generating a read gate output signal and a write gate output
signal." The examiner (Answer, pages 5-6) asserts that elements
28 and 20 together form the claimed mode selection signal
generator. We disagree.
Park's elements 20 and 28 are the WID reader and the disc
data controller, respectively. As shown in Figure 7, WID reader
20 receives the read gate input signal from the disk data
controller, thereby satisfying part of the requirements for the
mode selection signal generator. However, pre-amplifier 12, not
disk data controller 28, receives the write gate input signal
from the disk data controller, as required by claim 4. To find
that the disk data controller receives signals that it generates
would be ridiculous. Therefore, elements 20 and 28 cannot form
the claimed mode selection signal generator as proposed by the
examiner. Further, although element 12 receives the write gate
input signal from the disk data controller, pre-amplifier 12 does
not generate a write gate output signal, and therefore fails to
meet other limitations for the mode selection signal generator.
Upon review of Park, we find that no element or combination of
elements would satisfy all of the limitations claimed for the
mode selection signal generator.
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Greenberg was relied upon by the examiner (Answer, page 6)
for the structure of the data sector. Greenberg adds nothing to
the teachings of Park to cure the deficiencies thereof.
Therefore, we cannot sustain the obviousness rejection of claims
4 and 7 through 14 over Park in view of Greenberg. In addition,
as Gold does not remedy the above-noted shortcomings of the
primary combination of Park and Greenberg, we cannot sustain the
obviousness rejection of claims 5, 6, 15, and 16 over Park in
view of Greenberg and Gold.
CONCLUSION
The decision of the examiner rejecting claim 1 under
35 U.S.C. § 102(b) is affirmed. The decision of the examiner
rejecting claims 2 through 26 under 35 U.S.C. § 103 is reversed.
Thus, the examiner's decision is affirmed-in-part.
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Application No. 08/861,157
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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-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 2001-1847
Application No. 08/861,157
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