Ex Parte Coker et alDownload PDFPatent Trial and Appeal BoardSep 24, 201512653874 (P.T.A.B. Sep. 24, 2015) Copy Citation 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. 12/653,874 12/18/2009 Jonathan Darrel Coker HSJ920090068US1 6683 41482 7590 09/24/2015 MARLIN KNIGHT P. O. BOX 1320 PIONEER, CA 95666 EXAMINER WONG, KIN C ART UNIT PAPER NUMBER 2688 MAIL DATE DELIVERY MODE 09/24/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JONATHAN DARREL COKER and DAVID TIMOTHY FLYNN ____________ Appeal 2013-003168 Application 12/653,874 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–20. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the obviousness-type double patenting rejection, and reverse the anticipation rejection, of claims 1–20. OBVIOUSNESS-TYPE DOUBLE PATENTING All claims have been rejected for provisional obviousness-type double patenting over Application 12/653,863. Final Act., Dec. 29, 2011, pp. 2–3. After filing of the Appeal Brief and Answer, Application 12/653,863 issued as U.S. Patent No. 8,422,161 B2. Because the ’863 application has issued as Appeal 2013-003168 Application 12/653,874 2 the ’161patent, the Examiner’s provisional obviousness-type double patenting rejection is no longer “provisional” — it has “ripened” into an obviousness-type double patenting rejection over the corresponding claims in the ’161patent. See Manual of Patent Examining Procedure (MPEP) § 804 (Rev. 7, July 2008), Chart II-B, p. 800-16. We need not review the obviousness-type double patenting rejection substantively because Appellants do not dispute the rejection. We therefore sustain this obviousness-type double patenting rejection pro forma. ANTICIPATION All claims are rejected under 35 U.S.C. § 102(e) as anticipated by Chue (US 7,710,676 B1; filed Mar. 27, 2008). Final Act. 3–5. For the reasons below, we do not sustain this rejection. Claim 1 requires sequences each consisting of encoded bits and arranged in patterns encoding location information (e.g., sector or track). Claim 1’s use of “consist” and antecedent basis plainly requires that the sequences, in addition to forming patterns encoding location information, are themselves entirely comprised of encoded bits. Thus, the sequences provide two types of encoding. First, the patterns formed by the arranging of the sequences. Second, the encoded bits forming each of the sequences. The Examiner reads claim 1’s sequences on Chue’s servo bursts. Ans. 4−5. In support, the Examiner explains: “Chue describes the decoding or demodulating the servo bursts and servo bursts pattern into Gray code bits for the location address and digital head positioning (and/or centering) information.” Ans. 5. Appeal 2013-003168 Application 12/653,874 3 Appellants argue: [T]here is no variable internal structure in the bursts. (See for example Chue’s Figs. 3 & 4). Chue’s servo bursts each have one of four permissible phases, i.e. positions as shown in Figs. 3 & 4, and, therefore, do not contain encoded bits. Without variations in the internal structure, the bursts are inherently incapable of encoding a plurality of bits of information as claimed. Br. 10. Appellants’ argument is persuasive; particularly insofar that Chue’s servo bursts do not each consist of encoded bits, as is required of claim 1’s sequences. As further explained by Appellants, “it is only [Chue’s] Gray code field that can be considered to be a sequence of encoded bits.” Br. 10. Thus, we agree with Appellants that “Chue shows one Gray code field per track per servo sector, and the Gray code field encodes a number, e.g. 1 to 16.” Br. 10. Finally, we also agree with Apellants that “Chue does not teach patterns of Gray code fields to encode location identifiers” (Br. 10), as required by claim 1.1 We accordingly do not sustain the anticipation rejection. 1 Insteade, claim 1 recites that “the sequences [are] arranged in patterns that encode location identifiers” (claim 1). Appeal 2013-003168 Application 12/653,874 4 DECISION The rejection of claims 1–20 for obviousness-type double patenting is affirmed. The rejection of claims 1–20 under 35 U.S.C. § 102(e) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ACP Copy with citationCopy as parenthetical citation