Ex Parte Creel et al

Board of Patent Appeals and Interferences

Oct 27, 2011

10752767 (B.P.A.I. Oct. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH R. CREEL, DAVID M. KWASNY,
and PAUL J. MCCLELLAN
___________

Appeal 2009-014769
Application 10/752,767
Technology Center 2600
____________

Before MAHSHID D. SAADAT, JEFFREY S. SMITH, and
JULIE K. BROCKETTI, Administrative Patent Judges.

BROCKETTI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE

Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of
claims 22-43 and 62-64. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Exemplary Claim
Exemplary independent claim 22 under appeal reads as follows:

22. A compact disc drive comprising:
an optical pickup for reading data from and writing data to a compact disc
and for reading media control features on a disc,
wherein said drive is configured to automatically read media control features
on a disc that indicate whether an opposite side of said disc is configured to receive
a visual label that corresponds to data to be stored on said disc, wherein said drive
is configured to read said media control features when a data-bearing side of said
disc, rather than said opposite side, is presented to said optical pickup of said disc
drive.

Rejections on Appeal
(1) The Examiner rejected claims 22, 23, 27, 28, 31, 34, 37, 38, 41, and
43 under 35 U.S.C. § 103(a) as unpatentable over Oshima (US 2001/0021144 A1)
in view of Morishima (US 2003/0179679 A1).
(2) The Examiner also rejected claims 22, 26, 28, 36, 38, and 42 under 35
U.S.C. § 103(a) as being unpatentable over Fuentes (US 5,862,117) in view of
Morishima.
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(3) The Examiner rejected claims 29, 39, and 62 under 35 U.S.C. § 103(a) as
being unpatentable over Oshima, in view of Morishima, and in further view of
Ando (US 6,671,243 B2).
(4) The Examiner rejected claims 30 and 40 under 35 U.S.C. § 103(a) as
being unpatentable over Oshima in view of Morishima, and in further view of
Nakajo (US 5,502,702).
(5) The Examiner rejected claims 24, 32, 33, and 35 under 35 U.S.C.
§ 103(a) as being unpatentable over Oshima in view of Morishima, and in further
view of Smith, II (US 5,884,298).
(6) The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over Oshima in view of Morishima and Smith, and in further view of
Kajiyama (US 6,646,966 B2).
(7) The Examiner rejected claims 63 and 64 under 35 U.S.C. § 103(a) as
being unpatentable over Oshima in view of Morishima, and in further view of
McFarland (US2003/0142199 A1).

Appellants’ Contentions

With respect to claim 22, Appellants contend that “Oshima and Morishima
do not teach or suggest the claimed compact disc drive „configured to
automatically read media control features on a disc that indicate whether an
opposite side of said disc is configured to receive a visual label that corresponds to
data to be stored on said disc.‟”
(App. Br. 10).
Rather, Morishima teaches the opposite of this subject
matter. Morishima teaches reading a disc ID "that has
been written to the image surface of the optical disc" that
indicates how to label that image surface of the disc.
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(Morishima, paragraph 0168). Morishima does not teach
or suggest anything about the claimed media control
features that indicate "whether an opposite side of said
disc is configured to receive a visual label" "when a data-
bearing side of said disc, rather than said opposite side, is
presented to said optical pickup of said disc drive.

(App. Br. 12) (emphasis omitted).

“[T]he Office Action has mischaracterized Morishima which does not, in fact,
teach or suggest this missing subject matter, but rather teaches away from what is
claimed.” (App. Br. 17).
If one combines the teachings of Oshima and Morishima,
the result is a disc that may have data on both sides and
an indicator that data stripes are written on both sides
(per Oshima) or that has a label side with an indicator on
that label side to be detected when the label side is
presented (Morishima). There is nothing in the prior art
that suggests using Oshima's indicator for where data is
written to instead indicate that an opposite side of the
disc is a label side. This teaching comes only from
Appellant's own specification, and the Examiner's
"combination" of Oshima and Morishima to reach the
claimed invention is achieved only using by reading
teachings into the references that are not there and are
based entirely on impermissible hindsight in light of
Appellant's disclosure.

(Reply Br. 7).

Issues on Appeal

Did the Examiner err in rejecting claim 22 because Oshima and Morishima
fail to teach or suggest the disputed claim limitation of media control features on a
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disc that indicate whether an opposite side of the disc is configured to receive a
visual label?
Did the Examiner err in rejecting the claims because Morishima teaches
away from Appellants‟ invention?

ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellants‟
arguments (Appeal Brief) that the Examiner has erred.
We disagree with Appellants‟ conclusion. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this appeal
is taken and (2) the reasons set forth by the Examiner in the Examiner‟s Answer
(Ans. 11-15) in response to the Appellants‟ Appeal Brief. We concur with the
conclusion reached by the Examiner.
Appellants argue that “Oshima and Morishima do not teach or suggest the
claimed compact disc drive „configured to automatically read media control
features on a disc that indicate whether an opposite side of said disc is configured
to receive a visual label that corresponds to data to be stored on said disc.‟” (App.
Br. 10). We disagree. We find, as the Examiner did, that Oshima discloses control
features which include reverse-side stripe existence identifier 948 which indicates
whether information exists on the reverse side of the disc (¶ [0199]), and that
Morishima teaches control information which includes a Disc ID which indicates
to the drive whether a disc is configured to receive a visual label. (Ans. 12).
Appellants mischaracterize the Examiner‟s combination of the references (Reply
Br. 7). The Examiner‟s combination of Oshima and Morishima is to simply place
the control information of Morishima (Disc ID with visual label information) onto
the data side of the disc of Oshima so that the disc drive would be able to read the
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Disc ID of Morishima when the data side of the disc is facing the optical reader.
(Ans. 12). In analyzing whether the combination of these references renders
Appellants claims obvious, our reviewing court has stated, “What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416. We find
that Appellants‟ claims are merely the combination of familiar elements that are
known to one skilled in the art and are not hindsight.
Appellants have not provided evidence or persuasive arguments to show that
placing the media control features indicating whether or not a disc can receive a
label as taught by Morishima onto a data-bearing side of said disc which also
includes control features as taught by Oshima would be “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Adding media control features that
indicate whether a side of a disc is configured to receive a visual label as taught by
Morishima to the control features on the data-bearing side of a disc as taught by
Oshima yields the predictable result of data control features on a data-bearing side
of a disc that when read by an optical pickup indicate whether the opposite side
(image side) of the disc is configured to receive a visual label. Appellants have
therefore failed to provide evidence or persuasive arguments to rebut the
Examiner‟s conclusion of obviousness.
Appellants‟ further argue that Morishima teaches away from Appellants‟
claimed invention because Morishima teaches the opposite of the claimed subject
matter (App. Br. 10, 12, 17). We do not find this argument persuasive because
Appellants have not supported this contention with any showing of how Morishima
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criticizes, discredits, or discourages placing control features on the data-bearing
side of the disc as taught by Oshima. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). As noted above, while Morishima teaches that the control features
(Disc ID) for indicating whether an image can be placed on the image side of a
disc is on the image side of the disc and not on the opposite side of the disc,
Morishima does not characterize which side of the disc the control features are on
as critical or disparage other possible areas of the disc to store the Disc ID. Simply
that the placement of the control features of Morishima differs from Appellants‟
invention is not sufficient to establish that Morishima teaches away from placing
control features on a data-bearing side of a disc as taught by Oshima. See In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992) (simply that there are differences
between two references is insufficient to establish that such references teach away
from any combination thereof).
Appellants‟ arguments regarding the rejection of claims 26, 28, 36, 38, and
42 over the combination of Fuentes and Morishima are the same as stated above
regarding claim 22 for the combination of Oshima and Morishima in that
Morishima does not teach control features that indicate whether an opposite side of
said disc is configured to receive a visual label that corresponds to data to be stored
on said disc (App. Br. 16, 17). For the same reasons discussed above regarding the
combination of Oshima and Morishima, we agree with the Examiner that the
rejection is proper.
It is noted that Appellants‟ arguments pertaining to dependent claims 23-27,
29-37, 39-43, and 62 all relate to Appellants‟ main argument that the cited prior art
does not teach or suggest the claimed media control features “that indicate whether
an opposite side of said disc is configured to receive a visual label that corresponds
to data to be stored on said disc” are due to the fact that the cited prior art does not
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teach this element (App. Br. 15- 19). Appellants‟ arguments have been found
unpersuasive for the reasons mentioned above.
Regarding dependent claims 63 and 64, Appellants argue that McFarland
does not teach “prompting a user to select or design a visual label based on the
identification of the control features that „indicate said opposite side of said disk is
configured to receive said visual label‟” (App. Br. 20). We disagree. As pointed
out by the Examiner, McFarland teaches a user selecting a background or artwork
for a label and by presenting the user with the options for selecting a label, the
references teaches prompting a user for a response. (Ans. 15). We agree with the
Examiner and find that under the broadest reasonable interpretation of the claims,
giving a user selections for choosing a label in McFarland meets the recited feature
of prompting a user to select a visual label, within the meaning of claims 63 and
64.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 22-43 and 62-64 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 22-43 and 62-64 are not patentable.

DECISION
The Examiner‟s rejections of claims 22-43 and 62-64 are affirmed.
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
ELD