10727804 (P.T.A.B. Feb. 27, 2014)

Ex Parte Dee

Patent Trial and Appeal BoardFeb 27, 2014

10727804 (P.T.A.B. Feb. 27, 2014)

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. 10/727,804 12/04/2003 Richard H. Dee 2003-072-TAP 6825 51344 7590 02/28/2014 BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK 1000 TOWN CENTER, TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER RENNER, CRAIG A ART UNIT PAPER NUMBER 2688 MAIL DATE DELIVERY MODE 02/28/2014 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 RICHARD H. DEE ____________ Appeal 2011-010643 Application 10/727,804 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-3, 6, 7, 10-12, 15, 16, 19, and 21-24. Br. 2. Claims 1- 4, 6, 7, 10-13, 15, 16, 19, and 21-24 are pending. Id. Claims 4 and 13 are withdrawn. Id. Claims 5, 8, 9, 14, 17, 18, and 20 are canceled. Reply to Office Action (December 8, 2008) 2-4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2011-010643 Application 10/727,804 2 ILLUSTRATIVE CLAIM Illustrative claim 1 is reproduced below. 1. A data storage system, comprising: a plurality of read/write heads, each read/write head of said plurality of read/write heads having a plurality of read/write elements; a plurality of data channels, a subset of said plurality of data channels coupled to a read/write head of said plurality of read/write heads; and a storage medium, said storage medium including a plurality of storage bands, wherein each read/write head is uniquely associated with a single storage band such that the read/write heads are alignable with a single mode of operation, and each read/write element is associated with a corresponding one of said plurality of data channels and operable to read and write data from or to corresponding tracks of a corresponding storage band. REJECTIONS The Examiner rejected claims 1, 2, 7, 10-12, 15, and 16 under 35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 3,426,338 to Gerding. Ans. 4-7. The Examiner rejected claims 1, 7, 10, 16, and 19 under § 102(b) as anticipated by U.S. Patent No. 5,761,005 to McKay. Id. at 7-9. The Examiner rejected claims 1-3, 6, 7, 10-12, 15, 16, 19, and 21-23 under § 102(e) as anticipated by U.S. Patent No. 6,778,359 to Iwama. Id. at 11-15. The Examiner rejected claims 1, 2, 6, 7, 10, 11, 16, 21, and 22 under § 102(b) as anticipated by U.S. Patent No. 5,831,798 to Muller. Id. at 9-11. Appeal 2011-010643 Application 10/727,804 3 The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as unpatentable over Muller. Id. at 15-17. ANTICIPATION REJECTION OF CLAIMS 1, 2, 7, 10-12, 15, AND 16 OVER GERDING Claims 1, 2, 7, 10-12, 15, and 16 are rejected as anticipated by Gerding. Claims 1 and 10 are independent. Each of remaining claims 2, 7, 11, 12, 15, and 16 depends from one of claims 1 and 10. Claims 1 and 10 Claims 1 and 10 mutually require read/write (herein “RW”) heads that each: (i) include RW elements; and (ii) are uniquely associated with a single storage band of tracks. And, claims 1 and 10 mutually require that each RW element can operate on tracks of the corresponding band. For easier comparison with Gerding, the claimed “plurality” of heads are referenced in this section as first and second RW heads and the claimed “plurality” of RW elements are referenced as first, second, third, and fourth RW elements. The Examiner finds that all claim features are taught by the assembly of Gerding’s figure 1, reproduced below, particularly reading the claimed first RW head on the components of channels A and B; the claimed second RW head on the components of channels C and D; and the claimed four RW elements respectively on the paired read and write surfaces 4, 6 of the four channels A-D (i.e., one claimed RW element per channel pair of read and write surfaces 4, 6). Ans. 4-5. Appeal 2011-010643 Application 10/727,804 4 Gerding’s figure 1 is reproduced below: Gerding’s figure 1 illustrates a perspective view of a prior art assembly cited by the Examiner. Appellant argues: “To the extent that ‘channel A’ is proposed as a ‘read/write head’ it does not include a plurality of read/write elements. Rather, it includes one read element 4a and one write element 6a.” Br. 4. The argument mischaracterizes the rejection. As explained above, the rejection reads the claimed first RW head on the components of channels A and B, collectively; not on the components of only channel A, as argued. And likewise, the rejection reads the claimed second RW head on the components of channels C and D. Appellant further argues: To the extent that [the Examiner finds] data channels are inherent in the device disclosed by Gerding, there is no disclosure of any relationship between data channels and Appeal 2011-010643 Application 10/727,804 5 read/write heads or read/write elements as disclosed and claimed by Appellant. The Examiner’s assertion that it is inherent to have a subset of a plurality of data channels coupled to a read/write head is mere speculation. Id. The argument does not meaningfully address the rejection. The Examiner clearly reads the claimed subset of channels on either of Gerding’s identified pairs of channels; that is, on channels A and B and/or channels C and D. Thus, Appellant can traverse the finding only by establishing that the claimed subset of channels requires a characteristic distinguishing over Gerding’s identified pairs of channels. See In re Jung, 637 F.3d 1356, 1362- 63 (Fed. Cir. 2011) (addressing the burdens of production for examiners and applicants); Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (addressing the Board’s standard of review). Appellant presents no such evidence. Rather, Appellant merely states that Gerding describes each of the channels A-D as corresponding to a respective RW “head” and, in turn, fails to teach the claimed “subset of . . . data channels coupled to a read/write head” (claims 1 and 10; emphasis added). Br. 4. Even assuming arguendo that Gerding describes a one-to-one “head” per “channel” relationship (but cf., Gerding col. 2, ll. 4-15 (describing read and write heads per channel)), Appellant’s argument would not establish that the Examiner erred in finding each claimed RW head is broad enough in scope to encompass components of multiple channels. The argument would, rather, insufficiently establish only that Gerding uses the term “head” to reference components of each channel A-D. That is, the argument would not establish that Gerding fails to teach the claimed structure of an RW head, but rather insufficiently establish that Gerding and the claims employ different meanings of “head.” See In re Bond, 910 F.2d 831, 832-33 (Fed. Appeal 2011-010643 Application 10/727,804 6 Cir. 1990) (For anticipation, the prior art “elements must be arranged as in the claim under review, . . . but this is not an ‘ipsissimis verbis’ test[.]”) (citations omitted). In sum, absent a self-evident difference between an asserted claim limitation and cited prior art feature, merely presenting the limitation (i.e., the claim recitation) and the cited feature (i.e., the reference’s description) cannot alone satisfy an Appellant’s burden of meaningfully comparing the claim/s against the prior art. Cf., Jung, 637 F.3d at 1365 (affirming partly because appellant “merely argued that the claims differed from [the prior art], and chose not to proffer a serious explanation of this difference.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted [37 C.F.R. § 41.37(c)(1)(vii)] 1 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.”); see also 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, Appellant’s above argument is not persuasive. Appellant further argues: The Examiner improperly conflates storage bands and tracks in interpreting Gerding, which does not differentiate between storage bands and tracks. … Because Gerding does not disclose a plurality of read/write elements for each read/write 1 Now 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2011-010643 Application 10/727,804 7 head, Gerding is not capable of writing to multiple tracks within a storage band. Br. 4-5. The argument does not meaningfully address the Examiner’s rejection. The Examiner clearly reads the claimed bands respectively on Gerding’s tracks read/written by the upper and lower halves of the assembly (i.e., one claimed band per the identified pairs of channels A, B and C, D). And, the Examiner clearly reads each claimed track on a respective one of Gerding’s tracks (i.e., one claimed track per channel). Appellant fails to present any evidence that the claimed bands and/or tracks require a characteristic distinguishing over the above reading of claims 1 and 10 on Gerding. See supra 5-6 (addressing Appellant’s burden of production). Indeed, as noted by the Examiner’s Answer, “[A]ppellant has not distinguished the claimed storage band from just a mere grouping of tracks[.]” Ans. 24. No Reply Brief has been filed to address the Examiner’s comment. For the foregoing reasons, we sustain this rejection of claims 1 and 10. Claim 12 Claim 12 depends from claim 10 and adds: “at least one read/write head having a read/write element configured for read after write operation . . . in a first direction and . . . a write/read element configured for read after write operation . . . in a second direction.” Appellant argues: Gerding does not disclose that the magnetic tape can travel in a first and second direction (see Fig. 1) and does not disclose read/write heads that include a first configured for read after write operation when the storage medium travels in a first direction and a second read/write head configured for read after Appeal 2011-010643 Application 10/727,804 8 write operation when the storage medium travels in a second direction. Br. 5. The Examiner responds: Note that the limitation in claim 12 does not require that the second direction be “opposite the first direction” as in claim 3, for instance, and is therefore different in scope and does not preclude an interpretation of the second direction being parallel to or in the same direction as the first direction. Ans. 19. Appellant’s argument is not persuasive, particularly for failing to address the Examiner’s clear finding that the claimed tape directions can be respectively read on the parallel movements of Gerding’s tracks aligned with the identified RW elements 4a-d, 6a-d (i.e., one tape direction for RW element 4a, 6a, etc.). Instead, the argument merely restates the claim language and generally asserts that Gerding does not teach the claimed limitations. Such a mere general allegation of patentability does not constitute a specific/meaningful argument for consideration on appeal. See supra 5-6 (addressing Appellant’s burden of production). Therefore, we sustain this rejection of claim 12. Claims 2, 11, 15, and 16 Appellant does not present additional separate arguments for remaining claims 2, 11, 15, and 16. Therefore, grouping these claims as falling with base claims 1 and 10, we sustain this rejection of claims 2, 11, 15, and 16. Appeal 2011-010643 Application 10/727,804 9 Conclusion The anticipation rejection of claims 1, 2, 7, 10-12, 15, and 16 over Gerding is sustained. ANTICIPATION REJECTION OF CLAIMS 1, 7, 10, 16, AND 19 OVER MCKAY Claims 1, 7, 10, 16, and 19 are rejected as anticipated by McKay. Claims 1 and 10 are independent. Each of remaining claims 7, 16, and 19 depends from one of claims 1 and 10. Claim 1 The requirements of claim 1 are explained above. See supra 3. The Examiner finds that all claim features are taught by the assembly of McKay’s figure 4, reproduced below, particularly reading: the claimed RW heads respectively on McKay’s sliders 60; and the claimed RW elements respectively on McKay’s transducers 62 (i.e., one claimed element per transducer 62). Ans. 7-8. McKay’s figure 4 is reproduced below: Appeal 2011-010643 Application 10/727,804 10 McKay’s figure 4 illustrates a perspective view of a prior art assembly cited by the Examiner. As to claim 1, Appellant argues: [McKay’s] transducer-slider assembly 24 is moved from one track to another for read or write operations and is required to be properly positioned over the desired track and reach that track in a minimum amount of time. This is clearly contrary to the Examiner’s interpretation that each read/write head is uniquely associated with a single storage band and alignable with a single mode of operation as disclosed and claimed by Appellant[.] Br. 6. The argument does not meaningfully address the rejection. The Examiner clearly reads the claimed bands respectively on the pairs of tracks read/written by McKay’s sliders 60 (i.e., one claimed band per all tracks read/written by a slider 60). Ans. 20. In turn, the Examiner clearly reads the claimed tracks respectively on the tracks read/written by McKay’s transducers 62 (i.e., one claimed track per transducer 62). Id. Appellant merely alleges that the claimed single-mode aligning distinguishes over the above track alignments of McKay’s sliders 60 and transducers 62, thus failing to present evidence that the claimed single-mode aligning requires a distinguishing characteristic. For example, Appellant implicitly asserts but presents no evidence that the claimed single-mode aligning precludes a coarse alignment of RW elements, such as McKay’s coarse alignment noted by the argument (see above block quote). Cf., Spec., abst. (confirming that an absence of coarse alignment is merely an exemplary (“e.g.,”) – not required – characteristic of the invention’s single-mode aligning). As previously discussed, mere general allegations of patentability are not specific/meaningful arguments for consideration on appeal. See supra 5-6 Appeal 2011-010643 Application 10/727,804 11 (addressing Appellant’s burden of production). Therefore, we sustain this rejection of claim 1. Claims 7, 10, 16, and 19 As to remaining claims 7, 10, 16, and 19, Appellant generally states that McKay fails to teach various claim features, thus again failing to present any evidence of required characteristic distinguishing over McKay’s cited teachings. Br. 7. For example, despite that the Examiner has clearly read the claimed channels respectively on the conductor circuitry 66 of McKay’s transducers 62 (i.e., one claimed channel per transducer 62), Appellant fails to present a required distinguishing characteristic of the claimed channels or even mention McKay’s cited conductor circuitry 66. As discussed, mere general allegations of patentability are not specific/meaningful arguments for consideration on appeal. See supra 5-6 (addressing Appellant’s burden of production). Therefore, we sustain this rejection of claims 7, 10, 16, and 19. Conclusion The anticipation rejection of claims 1, 7, 10, 16, and 19 over McKay is sustained. ANTICIPATION REJECTION OF CLAIMS 1-3, 6, 7, 10-12, 15, 16, 19 AND 21-23 OVER IWAMA Claims 1-3, 6, 7, 10-12, 15, 16, 19, and 21-23 are rejected as anticipated by Iwama. Claims 1, 10, and 21 are independent. Each of remaining claims 2, 3, 6, 7, 11, 12, 15, 16, 19, 22, and 23 depends from one of claims 1, 10, and 21. Appeal 2011-010643 Application 10/727,804 12 Claims 1 and 10 The requirements of claims 1 and 10 are explained above. See supra 3. The Examiner finds that all claim features are taught by the assembly of Iwama’s figure 5, reproduced below, particularly reading: the claimed RW heads respectively on Iwama’s RW heads 1c, 2c; and the claimed RW elements on Iwama’s read gaps 11 and write gaps 21 of the RW heads 1c, 2c (i.e., one claimed element per each of the gaps 11, 21). Ans. 11-12. Iwama’s figure 5 is reproduced below: Iwama’s figure 5 illustrates a diagrammatic view of a prior art assembly cited by the Examiner. As to claims 1 and 10, Appellant argues that each of Iwama’s heads 1c, 2c includes only a single read element and a single write element and, thus, fails to teach multiple RW elements per RW head, as claimed. Br. 10. Appeal 2011-010643 Application 10/727,804 13 The Examiner responds that any component of a RW head can be reasonably construed as an RW element. Ans. 26. Appellant’s argument is persuasive insofar that the claim terminology “read/write element” plainly requires each of the claimed RW elements to read and write data (accord Spec. 11, 18), whereas the Examiner neglects this plain meaning. Absent a presented justification, the Examiner cannot neglect this apparent “read/write” restriction of each claimed RW element. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). Therefore, we do not sustain this rejection of claims 1 and 10. Claim 21 Appellant presents further argument as to independent claim 21, which recites the following at-issue limitation: “wherein each of the plurality of read/write heads is displaced along a direction of travel of the magnetic storage.” Appellant argues that “each of [Iwama’s] read/write heads lc, 2c are not displaced along a direction of travel of the magnetic storage medium relative to an adjacent read/write head.” Br. 10. The Examiner responds: “Note that head 1c is tilted clockwise and thus the right side thereof is displaced to the right of head 2c, head 8 is displaced to the right of head 1c Appeal 2011-010643 Application 10/727,804 14 and is tilted clockwise and thus the left side thereof is displaced to the left of head 9.” Ans. 27-28. 2 Appellant’s argument is persuasive insofar that the Examiner’s response acknowledges Iwama’s tilted upper RW head 1c is not displaced from the lower RW head 2c along a tape direction. The response particularly acknowledges that, as opposed to trans-locating the upper RW head 1c along a tape direction, the cited tilting of the upper RW head 1c rather moves the diagonally opposing edges of the upper RW head 1c in offsetting directions. Therefore, we do not sustain this rejection of claim 21. Claims 2, 3, 6, 7, 11, 12, 15, 16, 19, 22, and 23 In addition to claims 1, 10, and 21, the Examiner’s above errors respectively apply to their dependent claims 2, 3, 6, 7, 11, 12, 15, 16, 19, 22, and 23. Therefore, we do not sustain this rejection of claims 2, 3, 6, 7, 11, 12, 15, 16, 19, 22, and 23. Conclusion The anticipation rejection of claims 1-3, 6, 7, 10-12, 15, 16, 19, and 21-23 over Iwama is not sustained. 2 The Examiner also responds that “there may be an additional set of [Iwama’s] read/write heads (2c and 8)” that are displaced as claimed. Id. at 28 (emphasis added). Mere possibilities are immaterial to the issue of anticipation. See Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[An anticipating] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures[.]” (citation omitted)). Appeal 2011-010643 Application 10/727,804 15 ANTICIPATION REJECTION OF CLAIMS 1, 2, 6, 7, 10, 11, 16, 21, AND 22 OVER MULLER Claims 1, 2, 6, 7, 10, 11, 16, 21, and 22 are rejected as anticipated by Muller. Claims 1, 10, and 21 are independent. Each of remaining claims 2, 6, 7, 11, 16, and 22 depends from one of claims 1, 10, and 21. Claims 1 and 10 The requirements of claims 1 and 10 are explained above. See supra 3. The Examiner finds that all claim features are taught by the assembly of Muller’s figure 8b, reproduced below, particularly reading: the claimed RW heads respectively on Muller’s left-side digital RW head face 86a and right- side analog RW head face 86b (one claimed RW head per head face 86a-b); and the claimed RW elements respectively on the transmission gaps 89, 88 of the head faces 86a-b (one claimed RW element per gap 89, 88). Ans. 7, 23. Appeal 2011-010643 Application 10/727,804 16 Muller’s figure 8b is reproduced below: Muller’s figure 8b illustrates a diagrammatic view of a prior art assembly cited by the Examiner. As to claims 1 and 10, Appellant argues: “[t]he Examiner relies on 86a and 86b as being a plurality of read/write heads contrary to the description in Muller et al. that item 29b is the magnetic read/write head and element 86a denotes one half of the head face and 86b is another half of the head face (Col. 7, ll. 22-33).” Br. 7. The argument does not meaningfully address the Examiner’s clear finding that the claimed RW heads respectively read on Muller’s digital and analog head faces 86a-b (Ans. 7, 23), but rather merely establishes that Muller’s description of “head faces” 86a-b is not an ipsissimis verbis teaching of the claimed RW “heads.” See supra 5-6 (addressing Appellant’s burden of production). Appeal 2011-010643 Application 10/727,804 17 Appellant also argues: To the extent that the Examiner’s interpretation of the faces 86a, 86b are heads and transmission gaps 89 are elements, Muller et al., the disclosures is inconsistent with the claim limitation that each read/write head is uniquely associated with a single storage band. This is clear from Figure 8b in that the tape travels horizontally in the Figure and the purported read/write heads 86a and 86b are parallel to one another. As such . . . the “heads” 86a and 86b . . . are not uniquely associated with a single storage band[, as claimed]. Br. 7-8. The argument does not meaningfully address the Examiner’s clear finding that Muller’s transmission gaps 88, 89 associate their head faces 86a-b with different storage bands, particularly such that: the digital head face 86 is associated with a band of tracks respectively read/written by the included gaps 89 during their operation; and the analog head face 86 is associated with another band of tracks respectively read/written by the included gaps 89 during their operation. For example, the argument does not evidence a required characteristic of claim 1’s and 10’s “uniquely associated” limitation that distinguishes over the above reading of the claimed inventions on Muller. Appellant also argues: “[t]he Examiner’s interpretation improperly conflates the tracks and storage bands as well as the read/write heads and elements.” Id. 8. The argument does not meaningfully address the Examiner’s clear reading of the claimed RW heads on Muller’s head faces 86a-b, claimed RW elements on Muller’s transmission gaps 88-89, claimed bands on tracks operated on by the head faces 86a-b, and claimed tracks on the tracks operated on by the gaps 88-89. Cf., supra 6-7 (addressing Appeal 2011-010643 Application 10/727,804 18 Appellant’s similar failure to distinguish the claimed bands and tracks over Gerding’s teachings). Appellant further argues: [T]here is no disclosure in Muller et al. that the read/write heads are alignable with a single mode of operation as claimed. Rather, Muller et al. discloses the opposite in Col. 7, ll. 50-52, i.e. “For auto-reverse operation, the magnetic heads 25, 28 and 29 can be rotated through 180º about the axis 101 to cooperate with the track pattern of the information on the magnetic tape for the purpose of reading and/or writing in the reverse direction of the tape transport, see FIG. 7a.” Br. 8. The argument does not meaningfully address the rejection, but rather merely alleges that the claimed single-mode aligning distinguishes over the track alignments achieved by Muller’s rotation of the head faces 86a, 86b. For example, Appellant does not present evidence that the claimed single- mode aligning precludes a coarse alignment such as achieved by the noted rotation. See supra 9-10 (addressing Appellant’s similar failure to distinguish the claimed single-mode aligning over Gerding’s teachings). 3 For the foregoing reasons, we sustain this rejection of claims 1 and 10. Claims 21 and 22 Appellant does not present separate arguments for independent claim 21, but rather merely restates (i) the arguments presented for claims 1 and 10 (Br. 8-9) and (ii) the language of claim 21 (id. at 9). 3 Note also that Muller’s figure 11 embodiment auto-reverses the tape without rotating the head faces 86a-b. Muller col. 8, ll. 29-37. Appeal 2011-010643 Application 10/727,804 19 Claim 22 depends from claim 21 and adds: “read/write elements for reading from and writing to, respectively, a corresponding one of a plurality of data channels associated with each of the plurality of storage bands[.]” Appellant argues: “[t]o the extent that [the Examiner finds] Muller et al. inherently includes data channels[,] the specific relationship between the data channels and storage bands is clearly not a proper inherency rejection as the relationship does not necessarily flow from the mere existence of the data channels.” Br. 9. The argument is not persuasive, particularly failing to explain the claimed “specific relationship between the data channels and storage bands” that is asserted as distinguishing over Muller. 4 For the foregoing reasons, we sustain this rejection of claims 21 and 22. Claims 2, 6, 7, 11, and 16 Appellant does not present separate arguments for claims 2, 6, 7, 11, and 16. Therefore, grouping these claims with base claims 1 and 10, we sustain this rejection of claims 2, 6, 7, 11, and 16. Conclusion The anticipation rejection of claims 1, 2, 6, 7, 10, 11, 16, 21, and 22 over Muller is sustained. 4 Note also that the relationships of the claimed RW heads, RW elements, band, and tracks appear to be taught by Muller insofar that: the head faces 86a-b are respectively aligned with different bands of tracks and respectively utilize different channels (digital or analog); and the transmission gaps 88-89 are respectively aligned with different tracks and respectively utilize only one channel (again, digital or analog). Appeal 2011-010643 Application 10/727,804 20 OBVIOUSNESS REJECTION OF CLAIM 24 OVER MULLER. Claim 24 is rejected as obvious over Muller. Claim 24 depends from claim 21 and adds that “at least one” RW element is capable of a read-then- write operation in one tape direction and “at least one” RW element (e.g., the same or a second RW head) is capable of a read-then-write operation in an opposing tape direction. See Spec. 19, ll. 1-3 (defining “read-after- write”). Appellant contests the Examiner’s official notice that such RW elements were notoriously well known (Ans. 16), arguing: Muller et al. states that “For auto-reverse operation, the magnetic heads 25, 28 and 29 can be rotated through 180º about the axis 101 to cooperate with the track pattern of the information on the magnetic tape for the purpose of reading and/or writing in the reverse direction of the tape transport, see Fig. 7a.” This directly contradicts the Examiner’s assertion that it is so notoriously well known to configure the read/write heads with read/write elements as claimed by Applicant. Br. 11. In response, the Examiner presents a second reference supporting the official notice – U.S. Patent No. 4,685,005 to Fields. Appellant’s argument fails to present evidence that the noticed fact was not common knowledge at the time of the invention, rather merely establishing that alternative configurations (such as alternatively rotating an RW element) were available to implement opposing read-then-write operations. See In re Boon, 439 F.2d, 724, 728 (“[A] challenge to judicial notice … creates a reasonable doubt regarding the circumstances justifying the judicial notice.”). Further, the argument fails to address Fields’ clear Appeal 2011-010643 Application 10/727,804 21 evidence that the claimed use of respective RW elements for opposing read- then-write operations was well known. 5 See Fields, abst. For the foregoing reasons, Appellants have not shown error in the Examiner’s conclusion of obviousness, and the obviousness rejection of claim 24 over Muller is sustained. DECISION The Examiner’s decision rejecting claims 1, 2, 6, 7, 10-12, 15, 16, 19, 21, 22, and 24 is affirmed. The Examiner’s decision rejecting claims 3 and 23 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-IN-PART ELD 5 Appellant has not argued that the submission of Fields presents a new grounds of rejection under 37 CFR § 41.39(a)(2). Cf., In re Biedermann, 733 F.3d 329, 338-339 (Fed. Cir. 2013) (addressing whether reliance on a new reference, in response to arguments, constitutes new grounds of rejection). Such argument could have been presented to the Director by petition. See 37 C.F.R. § 1.181(a) (2010); see also MPEP § 1207.03 (IV) (“If appellant believes that an examiner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a)[.]”).