Ex Parte Cundiff

Board of Patent Appeals and Interferences

Jan 26, 2006

10217378 (B.P.A.I. Jan. 26, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RAYMOND M. CUNDIFF, SR.
____________
Appeal No. 2006-0455
Application No. 10/217,378
____________
ON BRIEF
____________
Before THOMAS, LEVY, and SAADAT, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-20, which are all of the claims pending in
this application.
We AFFIRM-IN-PART.
BACKGROUND
The appellant's invention relates to a system and apparatus
for off-axis loading/unloading an optical disc in a disc drive
Appeal No. 2006-0455
Application No. 10/217,378
Page 2
(specification, page 1).
Claim 1 is representative of the invention, and is reproduced as
follows:
1. An optical drive comprising:
means for reading an optical disc; and
means for receiving an optical disc to be transported to
said means for reading an optical disc, wherein said means for
receiving is oriented off-axis at an angle › that is an acute
angle from a vertical axis to maintain said optical disc within
said means for receiving and wherein said means for reading is
oriented off said vertical axis at said angle › during operation
thereof.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Mitsui et al 5,930,218 Jul. 27, 1999
Iwata JP63271754 Nov. 9, 1988
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mitsui in view of Iwata.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mitsui.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (mailed July 27,
2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed June 2, 2005) and reply brief
Appeal No. 2006-0455
Application No. 10/217,378
Page 3
(filed September 27, 2005) for the appellant's arguments
thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant’s arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with the rejection of
claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over
Mitsui. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
Appeal No. 2006-0455
Application No. 10/217,378
Page 4
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
Appeal No. 2006-0455
Application No. 10/217,378
Page 5
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (answer, page 4) is that Mitsui does
not expressly show an angle that lies between vertical and
horizontal, but that it would have been inherent or obvious to
have oriented the disk drive at an angle.
Appellant’s position (brief, page 5) is that it is not
inherent in Mitsui that the means for receiving the disc can be
oriented at an angle between the vertical and horizontal axes
because to be inherent, the teaching must necessarily flow from
the reference, and that (brief, page 6) the teachings of Mitsui
are that the receiving means are either completely horizontal or
completely vertical. It is further argued (brief, page 8) that
although the examiner identifies various applications of tilting
objects, such as tilting a store-bought fruitcake in a grocery
cart or tilting a last book in a row of books on a shelf, there
is no motivation for orienting the disk tray of Mitsui at an
acute angle off of the vertical angle.
The examiner responds (answer, page 7) that it is well known
to high school science students, that by tilting the item, the
center of gravity is spread over a larger base, minimizing the
Appeal No. 2006-0455
Application No. 10/217,378
Page 6
possibility that the contents of a tipped box will spill out.
The examiner (answer, page 8) additionally relies upon basic
physics, everyday intuition and established scientific
laws/principles underlying such intuition as the basis for a
suggestion to modify Matsui to arrive at the claimed invention.
From our review of the record, we find, for the reasons
which follow, that the examiner is essentially relying upon
common knowledge or common sense as a basis for establishing the
obviousness of claims 1-20 over Mitsui. Even if we agreed with
the examiner that it would have been obvious, through common
knowledge and common sense, to have tilted the device having the
optical drive and operating the optical drive while tilted, we
note that common knowledge and common sense are not the standard
for establishing obviousness. In In re Lee, 277 F.3d 1338, 1341,
61 USPQ2d 1430, 1432 (Fed. Cir. 2002) the Board held that “[t]he
conclusion of obviousness may be made from common knowledge and
common sense of a person of ordinary skill in the art without any
specific hint or suggestion in a particular reference.” As
stated by our reviewing court in deciding the case (In re Lee,
277 F.3d 1338, 1341, 61 USPQ2d 1430, 1432 (Fed. Cir. 2002)):
The foundation of the principle of judicial
deference to the rulings of agency tribunals is
that the tribunal has specialized knowledge and
Appeal No. 2006-0455
Application No. 10/217,378
Page 7
expertise, such that when reasoned findings are
made, a reviewing court may confidently defer to
the agency’s application of its knowledge in its
area of expertise. Reasoned findings are critical
to the performance of agency functions and judicial
reliance on agency competence. See Baltimore and
Ohio R. R. Co. v. Aberdeen & Rockfish R. R. Co.,
393 U.S. 87, 91-92 (1968)(absent reasoned findings
based on substantial evidence effective review would
become lost “in the haze of so-called expertise”).
The “common knowledge and common sense” on which the
Board relied in rejecting Lee’s application are not
the specialized knowledge and expertise contemplated
by the Administrative Procedure Act. Conclusory
statements such as those here provided do not fulfill
the agency’s obligation. This court explained in
Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697, that
“deficiencies of the cited references cannot be
remedied by the Board’s general conclusions about
what is “basic knowledge” or “common sense.” The
Board’s findings must extend to all material facts
and must be documented on the record, lest the
“haze of so-called expertise” acquire insulation
form accountability. “Common knowledge and common
since,” even if assumed to derive from the agency’s
expertise, do not substitute for authority when the
law requires authority. . .. Thus when they rely on what
they asset to be general knowledge to negate
patentability, that knowledge must be articulated
and placed on the record. The failure to do so is
not consistent with either effective administrative
procedure or effective judicial review.
As common knowledge and common sense are not the standard
for establishing non-obviousness, we cannot sustain the rejection
of claims 1-20. The rejection of claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Mitsui is reversed.
Appeal No. 2006-0455
Application No. 10/217,378
Page 8
We turn next to the rejection of claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Mitsui in view of Iwata. The
examiner’s position (answer, pages 3-5) is that Mitsui does not
expressly disclose that the drive is oriented at an angle.
To overcome this deficiency of Mitsui, the examiner turns to
Iwata for a teaching of orienting the disc receiving receptacle
at an angle between the vertical and horizontal orientations of
the drive.
Appellant’s position (brief, page 17) that “it is not
apparent how providing such a rotatable disk tray would improve
the operability of the optical disk drive of Mitsui, as the
operation of floppy drives and optical disk drives are
different.” It is argued that the proposed modification is in
direct conflict with Mitsui’s desire to orient the drive in an
upright position in order to reduce the size of the computer
unit, and (brief, page 18) that an artisan would not be motivated
to make the modification.
From our review of Mitsui, we find disclosed that for the
purpose of reducing the size of the computer unit, some CD-ROM
drives are built into the unit in an upright position. It is
further disclosed that in a conventional CD-ROM drive, if the CD
is put in a upright position, it slips out of the disc tray (col.
Appeal No. 2006-0455
Application No. 10/217,378
Page 9
1, lines 26-31). However, Mitsui is silent as to orienting the
drive unit at an angle other than vertical or horizontal.
From the disclosure of Iwata, we find that the reference
discloses (page 2) that:
Problems to be solved by the invention. In a
personal computer system, computer main body 3
is usually arranged horizontally under display
device 1 as shown in Figure 4(A) or arranged
vertically beside display device 1 as shown in
Figure 4(B). Therefore, FDD 4 is used either
horizontally or vertically concerning direction
of disc inserting port 4a on its operating surface.
Since a computer main body 3 is not set or used
obliquely, the use angle of FDD 4 is limited to a
horizontal or vertical angle. However, there are
various requirements for the angle of FDD 4 depending
on the preference of the user or the situation of the
application site. The aforementioned limitation can
cause problems in using FDD 4.
We find from this disclosure that it was known to orient the disc
drive in a horizontal or vertical fashion. Iwata further
recognizes that a computer is not set or used obliquely, and that
the use angle of the disc drive is limited to a vertical or
horizontal angle. In addition, Iwata recognizes that there are
various requirements for the angle of the disc drive “depending
on the preference of the user,” and that limiting the angle of
the disc drive to vertical or horizontal orientations can cause
problems in using the disc drive. Iwata’s solution, as shown in
Appeal No. 2006-0455
Application No. 10/217,378
Page 10
figures 1 and 2, is to allow for the disc drive to be oriented at
various angles between vertical and horizontal orientations.
From the disclosure of Iwata, we find that an artisan would have
be motivated to allow the disc drive of figures 10 or 11 of
Mitsui to be oriented at different angles from the vertical axis,
as recited in claim 1.
We are not persuaded by appellant’s assertion (brief, page
17) that “it is not apparent how providing such a rotatable disk
tray would improve the operability of the optical disk drive of
Mitsui, as the operation of floppy drives and optical disk drives
are different.” Whether the disc drive is an optical drive or a
floppy drive, an artisan would have been taught by Iwata that a
disc drive can be oriented at different angles from the vertical
axis.
Nor are we persuaded by appellant’s assertion (brief, page
18 and reply brief, pages 4 and 5) that the modification would
not have been obvious because it would be in direct conflict with
Mitsui’s express desire to reduce the size of the overall
computer. In Iwata, the adjustable disc drive is configured such
that the amount of space required in the computer for the disc
drive does not change when the disc drive is oriented between the
vertical or horizontal positions, or in the gradients between the
Appeal No. 2006-0455
Application No. 10/217,378
Page 11
vertical and horizontal positions. In addition, we note that
Mitsui discloses (col. 1, lines 31 and 32) that the compact disc
will slip out of place if placed in a vertical position, but does
not indicate that slippage will occur in any position other than
vertical. Accordingly, upon modifying Mitsui as taught by Iwata,
the tray tabs will only be needed when the disc is in the
vertical position. However, even if the tabs were present when
the disc was in a position other than the vertical position, the
disc would be kept in place by the offset angle of the drive and
the tabs would be surplussage. Nothing in the language of the
claim precludes the use of tabs, as long as the disc was kept in
place by the off-axis angle of the drive.
From all of the above, we find that the combined teachings
of Mitsui and Iwata would have suggested to an artisan the
limitations of claim 1, and are not convinced of any errors on
the part of the examiner. The rejection of claim 1 under 35
U.S.C. § 103(a) as being unpatentable over Mitsui in view of
Iwata is affirmed. As claims 2-4, 8-14 and 16-18 have not been
specifically argued with respect to this ground of rejection,
these claims fall with claim 1. Accordingly, the rejection of
claims 2-4, 8-14 and 16-18 under 35 U.S.C. § 103(a) is affirmed.
Appeal No. 2006-0455
Application No. 10/217,378
Page 12
We turn next to claim 5. Appellant’s position (brief, page
15) is that Iwata does not teach or suggest a receptacle that
transports a disk to a means for reading the disc. We are not
persuaded by appellant’s argument because Mitsui discloses the
loading tray, and because the combined teachings of Mitsui and
Iwata, as we found, supra, would have taught orienting the disc
drive mechanism of Mitsui, including the loading tray, at an
angle from the vertical. Accordingly, the rejection of claim 5
under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 6. Appellant’s position (brief, page
16) is to rely upon the dependency of claim 6 from claim 1, and
asserts that Iwata does not have a receptacle for transporting
the disc. We are not persuaded by appellant’s argument because
the receptacle, having a cavity for receiving the disc and
transporting the disc to the reading means, is taught by Mitsui,
see, e.g., figure 12. Accordingly, the rejection of claim 6
under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 7. Appellant’s position (brief, page
16) is that Iwata does not disclose a receptacle that has a
cavity with a base having a vertex at a lower portion of the
cavity. From our review of the prior art, we find that neither
Appeal No. 2006-0455
Application No. 10/217,378
Page 13
reference teaches or suggests this feature. From the lack of any
response by the examiner to this argument of appellant, we find
that the examiner has failed to establish a prima facie case of
obviousness of claim 7, The rejection of claim 7 under 35 U.S.C.
§ 103(a) is reversed.
We turn next to claim 15. We cannot sustain the rejection
of claim 15 for the same reasons as we reversed the rejection of
claim 7. The rejection of claim 15 under 35 U.S.C. § 103(a) is
reversed.
We turn next to claim 19. Appellant’s position (brief,
pages 14 and 15, and reply brief, pages 3 and 4) is that the
prior art does not teach that the angle 2 maintains the optical
disc in the cavity, and that maintaining the disc in the slot is
not an issue for Iwata as it is for maintaining the optical disc
in the tray of Mitsui. We are not persuaded by appellant’s
assertion because Mitsui discloses the receiving tray having a
cavity for receiving the disc. As we stated, supra, upon
modifying the disc drive of Mitsui to be at an angle as taught by
Iwata, the entire disc drive of Mitsui, including the loading
tray, will be at the angle 2. Accordingly, the rejection of
claim 19 under 35 U.S.C. § 103(a) is affirmed.
Appeal No. 2006-0455
Application No. 10/217,378
Page 14
We turn next to claim 20. Appellant argues (brief, page 15)
that claim 20 is allowable based upon its dependency from claim
19, and because of its novel claim features. From our review of
claim 20, we find that the claim recites that the angle 2 has a
value selected from approximately 5 degrees to approximately 15
degrees from the vertical axis. From the disclosure of Iwata of
providing several angles between the vertical and horizontal
positions, we find that the specific range set forth, in the
absence of any unexpected result, would have been within the
level of ordinary skill of an artisan. Accordingly, the
rejection of claim 20 under 35 U.S.C. § 103(a) is affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-20 under 35 U.S.C. § 103(a) as being unpatentable over Mitsui
is reversed. The decision of the examiner to reject claims 1-6,
8-14 and 16-20 under 35 U.S.C. § 103(a) as being unpatentable
over Mitsui in view of Iwata is affirmed. The decision of the
examiner to reject claims 7 and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Mitsui in view of Iwata is reversed.
Appeal No. 2006-0455
Application No. 10/217,378
Page 15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(i)(iv).
AFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
SSL/kis
Appeal No. 2006-0455
Application No. 10/217,378
Page 16
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