Ex parte Cloke

Board of Patent Appeals and Interferences

Mar 13, 2002

08815352 (B.P.A.I. Mar. 13, 2002)

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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written for publication and is not binding precedent of the Board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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT LESLIE CLOKE
____________
Appeal No. 2000-0379
Application No. 08/815,352
____________
ON BRIEF
____________
Before MARTIN, LEVY, and BLANKENSHIP, Administrative Patent
Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5,
all of the pending claims, under 35 U.S.C. §§ 102 and 103. We
reverse.
A. The invention
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The invention relates to the format of the data sync mark
in a disk drive system. Specification Figure 3B, reproduced
in part
below, shows a data sector 92a which includes: (a) a constant-
frequency, AGC bit stream 96a for enabling an AGC circuit to
establish a desired signal level before detection of the data
sync mark, DSM 100a; (b) a sequence of PLL bits 98a having
sufficient consecutive flux reversals to permit phase
synchr on-ization
before detection of
the data sync
mark; (c) the data
sync mark 100a;
(d) user data
94a; and (e) optional data fields 101a and 106a (Specification
at 25, l. 27 to p. 26, l. 19).
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The following example, taken from page 5 of the specification,
demonstrates how errors during read-out of the data sync mark
and preceding (i.e., preamble) bits can result in false
detection of the data sync mark:
Line 27 shows the sync word pattern, which occupies bit
positions -08 to -00. Line 28 shows the sync word pattern
preceded by the expected "1" bits in bit positions -11 to -09.
Lines 29 and 30 show that if read errors occur in bit
positions -11 and -04, the bits in positions -11 to -03 of the
read-out signal will be incorrectly detected to be the sync
word pattern. In order to reduce the chance of such an
occurrence, Appellant uses a data sync mark write string which
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is an ordered set of m expected symbols selected to have the
maximum distance from all non-mark substrings of m consecutive
expected symbols that exist in the concatenated string of
expected symbols formed by the preamble write string and data
sync mark string.
B. The claims
Claim 1, the sole independent claim, reads as follows:
1. A disk drive having a pattern detector for providing
fault-tolerant detection of a data sync mark represented by a
substring of a concatenated string of error-prone read symbols
and for providing a reduced risk of detection error, the disk
drive comprising:
a disk having a plurality of track segments;
write means having an input for receiving bits;
means operative during a first operation for supplying a
sequence of write bits that are received at the input of the
write means;
the sequence of write bits defining a preamble write
string, a data sync mark write string, and a user data write
string;
the preamble write string and the data sync mark write
string corresponding to a concatenated string of expected
symbols;
the write means having means responsive to each write bit
received at the input of the write means for magnetically
defining a respective bit cell of a sequence of bit cells
along a track segment;
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a sampled-data read channel;
the sampled-data read channel including read means
operative during a second operation for responding to the
sequence of bit cells defined during the first operation to
produce a sequence of error-prone symbols that are subject to
error in duplicating the concatenated string of expected
symbols;
the data sync mark write string corresponding to an
ordered set of m expected symbols selected to have maximum
distance from all non-mark substrings of m consecutive
expected symbols that exist in the concatenated string of
expected symbols;
means for enabling the pattern detector during an
enabling interval within the second operation beginning after
the read means has produced a portion of the sequence of
error-prone read symbols; and
the pattern detector including fault-tolerant means
operative during the enabling interval for producing a sync
mark detection signal.
C. The reference and rejections
The rejections are based on the following U.S. patent:
Dudley et al. (Dudley) 5,729,396 Mar. 17,
1998
Claims 1-4 stand rejected under 35 U.S.C. § 102(e) as
anticipated by the reference.
Claim 5 stands rejected under § 103 for obviousness over
the reference.
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The Dudley et al. inventors are Trent O. Dudley,1
Richard T. Behrens, and Christopher P. Zook. The Dudley
patent is assigned to Cirrus Logic, Inc. ("Cirrus").
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Both rejections are based on Dudley's disclosure of a
disk drive wherein "the sync mark (70,7) is selected to have a
minimum correlation with the sync mark (70,7) concatenated
with the preamble (68,5)" (col. 7, ll. 2-4), which the
examiner correctly characterizes as satisfying claim 1's
requirement that the data sync mark write string be an ordered
set of m expected symbols selected to have the maximum
distance from all non-mark substrings of m consecutive
expected symbols that exist in the concatenated string of
expected symbols formed by the preamble write string and data
sync mark string. Answer at 3-4.
Appellant does not deny that all of the elements of claim
1 find correspondence in Dudley. Instead, Appellant argues
that the subject matter relied on in the Dudley patent is not
available as § 102(e) prior art against his claims because he
is the inventor of that subject matter. As proof, Appellant
offers a 37 CFR § 1.132 declaration by Richard W. Hull, who is
not Appellant or one of the Dudley inventors, citing In re1
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Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969), In re Katz,
678 F.2d 450, 215 USPQ 14 (CCPA 1982), and Manual of Patent
Examining Procedure (MPEP) § 716.10, which in addition to the
foregoing decisions cites In re Costello, 717 F.2d 1346, 1350,
219 USPQ 389, 392 (Fed. Cir. 1983), In re DeBaun, 687 F.2d
459, 214 USPQ 933 (CCPA 1982), In re Carreira, 532 F.2d 1356,
189 USPQ 461 (CCPA 1976), and Ex parte Kroger, 218 [sic, 219]
USPQ 370 (Bd. Pat. App. 1982). We note that of the foregoing
cases, Katz and Kroger concern references which are articles
rather than U.S. patents.
The examiner held Hull's declaration insufficient for the
following reasons:
All of the case law cited by Appellant and in the
MPEP section 716.10 pertains to overlapping
inventors or assignees. For instance, at least one
of the inventors or assignee is common to the
authors of the reference in [sic] which the
declaration addresses. In the instant case, there
are no common inventors or assignee. Hence, the
fact pattern of [A]ppellant's case does not follow
the fact pattern of the case law cited by the MPEP
section 716.10. There must be some collaboration
from the inventors or assignee of the Dudley
reference and the 132 declaration as it is presently
written is not sufficient to prove the portion of
the Dudley reference relied upon by the examiner is
Appellant's own disclosure and not prior art.
Furthermore, the declaration is not written by the Appellant.
There is no statement from the Appellant or the inventors of
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the Dudley patent declaring that the teachings cited by the
examiner are Appellant's own invention. This declaration is
merely hearsay.
Answer at 6.
The examiner's objection to the declaration as containing
hearsay is misplaced because hearsay is admissible in PTO
ex parte proceedings. In re Epstein, 32 F.3d 1559, 1565-66,
31 USPQ2d 1817, 1821 (Fed. Cir. 1994).
As for the rest of the examiner's objections, while it is
true that each of the above court decisions which concerns a
reference U.S. patent involves (a) an application and
reference patent that are commonly owned, (b) an application
whose inventive entity overlaps the inventive entity named in
the reference patent, (c) a § 1.132 affidavit or declaration
executed by the applicant, or (d) a disclaiming § 1.132
affidavit declaration executed by the patentee(s), none of
these factors is described as a requirement for demonstrating
that the applicant is the inventor of the subject matter
relied on in the reference patent. More particularly, while
in two of the decisions it is noted that the application and
the reference patent are commonly assigned (see Facius, 408
F.2d at 1400, 161 USPQ at 297; Mathews, 408 F.2d at 1394, 161
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Application No. 08/815,352
While DeBaun notes that Air Monitor Corporation is2
the assignee of the DeBaun application and was the employer of
Noll, who is named as a coinventor along with DeBaun in the
reference patent (687 F.2d 461 & n.4; 214 USPQ at 934 & n.4),
the court does not indicate that the patent is assigned to Air
Monitor Corp. Carreira does not indicate whether the
application or reference patent, which have overlapping
inventive entities, are commonly assigned.
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USPQ at 277), the court ascribes no importance to this fact. 2
Nor has the court required a patentee to submit a § 1.132
affidavit or declaration disclaiming the subject matter at
issue. See DeBaun, 687 F.2d at 461 n.4, 214 USPQ at 934 n.4
(holding that a disclaiming affidavit by coinventor Noll of
reference patent to DeBaun and Noll is not required). Cf.
Katz, 687 F.2d at 455, 215 USPQ at 18 ("The board and the
examiner held that 'disclaiming affidavits or declarations by
the other authors are required to support appellant's position
that he is, in fact, the sole inventor of the subject matter
described in the article and claimed herein.' This was clear
error. Submission of such affidavits or declarations would
have ended the inquiry, but we do not agree that they are
required by the statute or Rule 132. What is required is a
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In Kroger, the Board distinguished over Katz on3
the ground that Knaster, one of the authors of the reference
publication, had refused to sign a § 1.132 declaration
attributing the invention to Kroger and also had submitted a
letter claiming to be a coinventor of the subject matter
relied on in the publication. 219 USPQ at 372.
Because the reference in Kroger was an article
rather than a patent, the Board's construction of Facius,
Mathews, and Carriera as requiring a patentee to "disclaim the
subject matter and attribute it to the applicant," 219 USPQ at
372, constitutes non-binding dictum, which we note is not
mentioned in MPEP § 716.10.
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reasonable showing supporting the basis for the applicant's
position."). 3
Finally, that the court has not required an applicant to
file a § 1.132 affidavit or declaration is evident from the
fact that in Mathews the applicant successfully overcame the
reference patent based on a § 1.132 affidavit by the patentee,
Dewey, and on Mathews' original oath which accompanied the
application. Mathews, 408 F.2d at 1396, 161 USPQ at 279.
For the foregoing reasons, in our view it is only
necessary that the evidence submitted by the applicant
demonstrate (1) that the patentees derived that subject matter
relied on in the rejection from the applicant and (2) that the
applicant is the
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MPEP § 716.10 is consistent with this conclusion. 4
That section gives as Example 2 a reference in which "the
author or patentee is an entity different from applicant" and
explains that "[i]n the situation described in Example 2, an
affidavit under 37 CFR 1.132 may be submitted to show that the
relevant portions of the reference originated with or were
obtained from the applicant."
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inventor of that subject matter. See Facius, 408 F.2d at
1407, 161 USPQ at 302 ("The real question is whether, in
addition to establishing derivation of the relevant disclosure
from himself, appellant has also clearly established the fact
that he invented the relevant subject matter disclosed in the
patent."). 4
We begin by noting that the "minimum correlation"
encoding technique described in the Dudley patent and relied
on by the examiner (corresponding to Appellant's claimed
"maximum distance" encoding technique) is not claimed in the
Dudley patent, which instead is directed to apparatus for
controlling enablement of the sync mark detector (col. 4, ll.
10-49). As a result, there is no presumption that that
encoding technique is the invention of the Dudley inventors.
See DeBaun, 687 F.2d at 463, 214 USPQ at 936 (quoting Facius,
408 F.2d at 1406, 161 USPQ at 301)("[T]he existence of
combination claims does not evidence inventorship by the
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patentee of the individual elements or sub-combinations
thereof if the latter are not separately claimed apart from
the combination. It is clear that the inventor of a
combination may not have invented any element of that
combination, much less each of the elements."). See also
Aktiebolaget Karlstads Mekaniska Werkstad v. United States
Int'l Trade Comm'n, 705 F.2d 1565, 1574, 217 USPQ 865, 871
(Fed. Cir. 1983) ("there is no presumption, or any reason to
assume, that everything disclosed in a patent specification
has been invented by the patentee. In re Clemens, 622 F.2d
1029, 1036, 206 USPQ 289, 297 (CCPA 1980). See In re DeBaun,
687 F.2d 459, 214 USPQ 933 (CCPA 1982)."). Moreover, the
"minimum correlation" encoding technique is first described in
the patent in the "Background of the Invention," at column 3,
lines 49-64.
Although Appellant's original declaration filed with the
application identifies Appellant as the inventor of the
subject matter claimed therein and the appealed claims are the
originally filed claims, that declaration fails to demonstrate
derivation of that subject matter from Appellant by the
patentees. See Carreira, 532 F.2d at 1359, 189 USPQ at 463
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("Appellants contend that their declarations are consistent
with the declarations submitted by [patentees] Tulagin and
Clark, and are sufficient to support a finding that the
patentees derived the relevant subject matter from them. We
do not find these declarations sufficient to discharge
appellants' burden of proof to establish that the patentees
derived the relevant subject matter from them. Nothing in the
declarations of record precludes the possibility that the
relevant subject matter was disclosed to the patentees by some
third party."). Nor is such a requirement implied by DeBaun's
holding that the record in that case, including applicant's
"unequivocal declaration [under § 1.131] that he conceived
anything in the '768 [reference] patent disclosure which
suggests the invention claimed in his present application,"
was sufficient to establish that the subject matter at issue
was conceived by DeBaun.
However, Hull's declaration clearly demonstrates both
inventorship by the Appellant and derivation by the patentees.
Hull explains that he has been continuously employed by
Western Digital Corporation (WDC), the assignee of Appellant's
application, since April 1981; that he is familiar with
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various aspects of the construction and operation of certain
read channel chips that are custom-made for the disk drives
manufactured by WDC; that during a series of meetings between
July 1993 and December 1993, he, Mr. Cloke (the inventor), and
other WDC engineers worked as a team to develop a performance
specification (the "WDC Performance Specification") for a
proposed custom read channel chip, which specification
included a performance specification for robust frame
synchronization detection (the "WDC robust sync mark detection
specification"); and that during these meetings Mr. Cloke
disclosed to Hull a criterion (the "Cloke Criterion") for
selecting a robust sync mark appropriate for the WDC robust
sync mark detection specification, which criterion involved
providing a preamble write string and a sync mark write string
that correspond to a concatenated string of expected symbols,
where the sync mark write string corresponds to a set of "m"
expected symbols that are selected to have the maximum
distance from all non-mark substrings of "m" consecutive
expected symbols that exist in the concatenated string of
expected symbols formed by the preamble write string and data
sync mark string. Hull Decl. ¶¶ 2-5.
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Hull further explains that in April 1994, WDC selected
Cirrus as the vendor to develop for WDC a custom read channel
chip to comply with the WDC Performance Specification; that
Hull was WDC's Program Manager responsible for disclosing WDC
technical information relating to the read channel chip to
employees of Cirrus, including two of the inventors in the
Dudley patent, i.e., Richard T. Behrens and Christopher P.
Zook; that the technical information Hull disclosed to Cirrus
personnel, including Behrens, in April 1994 did not include
the Cloke Criterion or any proposed implementation for
complying with the WDC robust sync mark detection
specification; and that the WDC Performance Specification
included a note stating that "WDC has a possible
implementation of this feature, but we are open to suggestions
from the vendor." Id. at ¶¶ 6-7.
Hull also states that in May 1994, he visited Cirrus at
its Colorado facilities to discuss various development matters
concerning the read channel chip; that during this visit
Behrens, on behalf of Cirrus, disclosed to Hull proposed
implementing structure for elements of the read channel chip,
including the structure of the chip for sync mark pattern
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detection (the "Cirrus Proposed Implementation"), which
structure involved a "triplet" pattern detector and other
structure not compatible with a sync mark in accordance with
the Cloke Criterion; that on behalf of WDC Hull informed
Behrens that the Cirrus Proposed Implementation was not
satisfactory to WDC; and that Hull then disclosed the Cloke
Criterion to Behrens and instructed him to incorporate, in the
read channel chip, structure compatible with the Cloke
Criterion in order to comply with the WDC robust sync mark
detection specification. Id. at ¶¶ 8-9.
Hull next explains that during a period between May 1994
and November 1994, he continued to work closely with employees
of Cirrus to develop the custom read channel chip for WDC in
accordance with the WDC Performance Specification; that Zook,
one
of the Dudley inventors, was designated by Cirrus for
selecting a sync mark in accordance with the Cloke Criterion;
and that Cirrus and WDC eventually agreed to incorporate into
the custom read channel chip an implementation compatible with
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a sync mark pattern in accordance with the Cloke Criterion.
Id. at ¶ 10.
Finally, Hull states that in preparation for making the
declaration, he reviewed the Dudley patent and noted that
portions thereof, including the Background of the Invention at
column 3, lines 49-64, and the Detailed Description of the
Preferred Embodiment at column 6, line 65 to column 7, line
11, constitute a disclosure of the invention Cloke disclosed
to him and which he thereafter disclosed to certain employees
of Cirrus, including Behrens. Id. at ¶ 11.
The foregoing declarations, which are uncontroverted by
any other evidence of record, clearly demonstrate that the
"minimum correlation" encoding technique disclosed in the
Dudley patent and relied on by the examiner was invented by
Appellant and thereafter derived from Appellant by the
patentees through Hull. Consequently, we cannot sustain the §
102 rejection of claims 1-4 or the § 103 rejection of claim 5,
both of which are based on that subject matter in the Dudley
patent.
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REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
STUART S. LEVY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JCM/cam
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Leo J. Young
Western Digital Corp.
Intellectual Property Law Plaza 3
8105 Irvine Center Drive
Irvine, CA 92618
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