Ex parte DOODSON

Board of Patent Appeals and Interferences

Sep 30, 1998

08601896 (B.P.A.I. Sep. 30, 1998)

Application for patent filed February 15, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PIETER J. DOODSON
____________
Appeal No. 98-0003
Application No. 08/601,8961
____________
ON BRIEF
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-4, 6-12 and 15-17. Claim 5, the only other claim
Appeal No. 98-0003
Application No. 08/601,896
This element is also termed a “cartridge” in the appealed2
claims.
2
remaining in the application, has been indicated by the
examiner as being allowable if rewritten in independent form
to include all of the limitations of the base claim. Two
amendments have been filed subsequent to the final rejection.
The first (Paper No. 12), filed March 7, 1997, has been
entered. The second (Paper No. 15), filed April 17, 1997, has
been denied entry.
Appellant’s invention pertains to a support (element 1 in2
appellant’s drawings) for accommodating an information
containing disc (element 19) during both a storage mode, and
an operational, or scanning, mode in a playback or recording
device, without requiring the disc to be removed from the
support. Also disclosed is a holder (element 3 in appellant’s
drawings) for use with the support when the disc is in a
storage mode. Independent claim 1, a copy of which is found
in the aforementioned first amendment (i.e., the amendment
filed March 7, 1997), is illustrative of the appealed subject
matter.
Appeal No. 98-0003
Application No. 08/601,896
In the final rejection, claims 1-4, 6-12 and 15-17 were3
also rejected under 35 U.S.C. § 112, second paragraph. Since
these claims have been amended by the first amendment filed
subsequent to the final rejection in such a manner so as to
apparently overcome the examiner’s criticism of the claims,
and since no mention of this rejection has been made by the
examiner in the answer, we presume that the examiner has
withdrawn the final rejection thereof on this ground. Ex
parte Emm, 118 USPQ 180, 181 (Bd. App. 1957). Additionally,
the rejection of claim 16 under 35 U.S.C. § 102(b) made in the
final rejection has been withdrawn in view of entry of the
first amendment filed subsequent to the final rejection.
3
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 103 are:
Ouwerkerk et al. (Ouwerkerk) 5,093,823 Mar.
3, 1992
Karakane et al. (Karakane) 5,370,224 Dec. 6,
1994
European Patent (Einhaus) 0,315,255 May 10,
1989
The following rejections under 35 U.S.C. § 103 are before
us for review:3
(a) claims 1-4, 6-12, 16 and 17 as being unpatentable
over Ouwerkerk in view of Karakane; and
Appeal No. 98-0003
Application No. 08/601,896
4
(b) claim 15 as being unpatentable over Ouwerkerk in view
of Karakane, and further in view of Einhaus.
The rejections are explained in the examiner’s answer
(Paper No. 18, mailed June 30, 1997).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 17, filed May 7, 1997).
The § 103 rejection based on Ouwerkerk and Karakane
(rejection (a))
At the outset, we note that appellant states on page 5 of
the brief that claims 1-4, 6-12 and 17 stand or fall together.
We therefore select claim 1 as representative of this group of
claims, and decide the appeal of these claims based on that
claim alone. See 37 CFR § 1.192(c)(7).
The examiner’s rationale in support of the rejection of
claim 1, as set forth on pages 3 and 4 of the brief, is not a
model of clarity. However, to the extent understood, we
cannot support that rationale. Nevertheless, for reasons
Appeal No. 98-0003
Application No. 08/601,896
5
explained infra, we believe the reference evidence adduced by
the examiner in support of the rejection is sufficient to
establish a prima facie case of obviousness of the subject
matter of representative claim 1. Accordingly, we will affirm
the § 103 rejection thereof, and because of the altered thrust
of our reasoning, designate our affirmance to be a new ground
of rejection under 37 CFR § 1.196(b) in order to provide
appellant a fair opportunity to react thereto (See In re
Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA
1976)).
Considering first Ouwerkerk, this reference pertains to a
cartridge 2 for containing a disc 1 during both a storage
mode, and an operational, or scanning, mode in a playback or
recording device, without requiring the disc to be removed
from the cartridge. Accordingly, Ouwerkerk’s cartridge
corresponds to appellant’s claimed “support” or “cartridge”
(element 1 in appellant’s drawings). Like appellant’s
cartridge, the cartridge of Ouwerkerk includes a window
through which the read head of the playback device accesses
the disc. The cartridge of Ouwerkerk is equipped with
Appeal No. 98-0003
Application No. 08/601,896
6
shutters 8 for covering the window to prevent dust and grime
from entering the window and damaging the disc. Figure 2 of
Ouwerkerk shows the cartridge in the storage mode, with the
shutters covering the window, while Figure 3 of Ouwerkerk
shows the cartridge in the operational mode, with the shutter
pulled back to expose the window and allow access to the disc.
Turning to Karakane, this reference pertains to a disc
holder for storing and carrying an information storage disc.
With reference to Figure 2 and column 3, lines 34-56,
Karakane’s disc holder 7 comprises a base member 9 and a sheet
member 10 formed of resin material. The sheet member 10 is
joined to the base member to form a pocket 11 having a
circular line along the edge of the joint, so that the edge of
a disc 13 housed in the pocket 11 is in contact along its edge
with this circular joint line. In this way, the disc 13 is
securely housed in the pocket 11. As can be seen in Figure 2,
when housed in the pocket, a major portion of the disc is
covered by the base member and the sheet member so that the
adhesion of dust or grime to the disc 13 is prevented.
Appeal No. 98-0003
Application No. 08/601,896
7
Although not specifically stated, it is clear from a
reading of Karakane’s specification that the above noted disc
holder 7 is intended only for use in storing the disc. That
is, when the disc is to be used in its operational mode in a
player device, it must first be is removed from the disc
holder. Karakane further discloses a case 8 for cooperating
with the disc holder 7. According to Karakane (column 4,
lines 22-24), the disc holder 7 may be received in the case 8
to securely store the disc. Also, the case may be modified to
receive a plurality of holders 7 (column 4, lines 25-31). In
that Karakane’s disc holder 7 and case 8 only house the disc
when it is in the storage mode, Karakane’s disc holder 7 and
case 8 more or less correspond to appellant’s claimed “holder”
(element 3 in appellant’s drawings).
As we understand it, the examiner has taken the position
in rejecting claim 1 that it would have been obvious to one of
ordinary skill in the art to provide the cartridge 2 of
Ouwerkerk with a sliding holder like that disclosed by
Karakane at case 8 “to . . . cover the window portion of the
container [of Ouwerkerk] to prevent the accumulation of dust
Appeal No. 98-0003
Application No. 08/601,896
8
and scratches” (answer, page 4). Presumably, cartridge 2 of
the proposed Ouwerkerk/Karakane combination would correspond
to the “support” of claim 1 and the case 8 of the proposed
Ouwerkerk/Karakane combination would correspond to the
“holder” of claim 1. However, in that the shutters 8 of
Ouwerkerk’s cartridge 2 already provide protection from dirt
and grime, there is no apparent need for providing Karakane’s
case to cover the window thereof, as proposed by the examiner.
Accordingly, there is simply no cogent reason for the
examiner’s proposed reference combination, as we understand
it.
Returning to the Ouwerkerk reference, Ouwerkerk’s support
2 comprises two parallel rigid main walls 3A, 3B, with said
main walls having inwardly facing spaced apart inner surfaces
for loosely receiving the disc 1 so as to allow it to rotate
freely during playback. Main wall 3A has a window 6A and main
wall 3B has a window 6B for allowing access to the disc.
Thus, Ouwerkerk’s cartridge responds to all the requirements
of claim 1 regarding the “support” or “cartridge.” Appellant
is not understood to argue otherwise.
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9
As to the claim 1 requirements regarding the holder, as
noted above, shutters 8 cover the windows in their Figure 2
position. These shutters may collectively be considered a
“holder” having a wall portion for covering the windows, as
broadly claimed in claim 1. Viewed in this sense, Ouwerkerk
provides response for all the limitations of appellant’s claim
1, making the teachings of Karakane cumulative in this
rejection. While a rejection over a single reference such a
Ouwerkerk that responds to all the limitations of a claim
would ordinarily be based on 35 U.S.C. § 102 rather than 35
U.S.C. § 103, the practice of nominally basing rejections on §
103 when, in fact, the actual ground of rejection is that the
claim is anticipated by the prior art has been sanctioned by a
predecessor of our present review court in In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982) and In re
Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
For these reasons, appellant’s arguments of nonobviousness are
simply not germane to the novelty issue discussed above.
Appeal No. 98-0003
Application No. 08/601,896
10
We therefore will sustain the examiner’s rejection of
representative claim 1 under 35 U.S.C. § 103, noting however
that the reference to Karakane is cumulative. We will also
sustain the standing § 103 rejection of claims 2-4, 6-12 and
17 since appellant expressly states that claims 1-4, 6-12 and
17 stand or fall as a group.
Claim 16 is directed to “[a] support for a disc-shaped
recording medium for use with a holder in a combination as
claimed in claim 1.” For purposes of this appeal, we
interpret claim 16 as being directed to a support per se which
is capable of being used with the holder of claim 1.
Ouwerkerk’s cartridge comprises a support having the required
capability, as broadly claimed. Accordingly, Ouwerkerk’s
cartridge responds to all the limitations of claim 16, as
interpreted, such that claim 16 lacks novelty over Ouwerkerk.
We therefore will sustain the examiner’s rejection of claim 16
under 35 U.S.C. § 103, with the reference to Karakane once
again being cumulative. Appellant’s argument on page 12 of
the brief with respect to claim 16 is moot in that it is
directed to limitations to claim 16 that were to be effected
Appeal No. 98-0003
Application No. 08/601,896
11
by the second amendment filed subsequent to the final
rejection, which has not been entered.
The § 103 rejection based on
Ouwerkerk, Karakane and Einhaus
(rejection (b))
Claim 15 is directed to a system including the cartridge
and holder combination of claim 1 and a scanning device, with
the cartridge having locating apertures and the scanning
device having locating pins for cooperation with the locating
apertures of the cartridge.
In rejecting this claim, the examiner states on page 4 of
the answer that Ouwerkerk does not disclose locating pins on
the scanning device, as recited in claim 15. The examiner
then goes on to make findings with respect to Einhaus.
However, the examiner does not point out how Einhaus makes up
for the locating pin deficiency of Ouwerkerk. Finally, the
examiner concludes that it would have been obvious in view of
Einhaus “to provide a disc-record player with locating pins .
. .” (answer, page 5).
Appeal No. 98-0003
Application No. 08/601,896
12
This rejection cannot be sustained. Because the examiner
has failed to point out where in the combined teachings of the
references the claimed locating pins are to be found, and
because it is not apparent to us where the applied references
teach or suggest the claimed locating pins, appellant’s
general argument that claim 15 is patentable over the combined
teachings of Ouwerkerk, Karakane and Einhaus is well taken.
New rejection pursuant to 37 CFR § 1.196(b)
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new rejection:
Claims 16 and 17 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 16 and 17 read as follows:
16. A support for a disc-shaped recording medium for
use with a holder in a combination as claimed in
claim 1.
17. A holder for use in a combination with a support
as claimed in claim 1.
A first possible interpretation of claim 16 is that it is
directed to a support per se that is capable of being used
Appeal No. 98-0003
Application No. 08/601,896
This is apparently in accord with appellant’s4
understanding of the scope of claim 16. See page 12 of the
brief.
The exact quote is: “Applicant’s claim 1, upon which all5
other claims depend, specifically claims the combination of
these two parts, the support and the holder . . . ” (brief,
page 7; emphasis added).
Of course, if claims 16 and 17 are directed to,6
respectively, a support per se and a holder per se, and if
they are dependent claims depending from claim 1, they are
improper dependent claims because they do not further limit
the subject matter of the claim from which they depend. See
35 U.S.C. § 112, fourth paragraph.
13
with the holder of claim 1. Similarly, a first possible4
interpretation of claim 17 is that it is directed to a holder
per se that is capable of being used with the support of claim
1. However, the “in a combination” language appearing in each
of the claims casts doubt on these interpretations and raises
the possibility that the claims are actually intended to cover
a support (or holder) in combination with a holder (or
support). Our uncertainty is compounded by appellant’s
statement on page 7 of the brief that claim 1 claims the
combination of the support and the holder, and that all other
claims depend therefrom.5,6
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Application No. 08/601,896
14
The purpose of the requirement stated in the second
paragraph of 35 U.S.C. § 112 is to provide those who would
endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate
notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection
involved and
evaluate the possibility of infringement and dominance. In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
For the reasons stated above, we do not believe claims 16 and
17 meet this requirement.
Summary
The rejection of claims 1-4, 6-12, 16 and 17 as being
unpatentable over Ouwerkerk in view of Karakane (rejection(a))
is affirmed, our affirmance being designated a new ground of
rejection under 37 CFR § 1.196(b).
Appeal No. 98-0003
Application No. 08/601,896
15
The rejection of claim 15 as being unpatentable over
Ouwerkerk in view of Karakane, and further in view of Einhaus
(rejection (b)) is reversed.
Pursuant to our authority under 37 CFR § 1.196(b), a new
rejection of claims 16 and 17 under 35 U.S.C. § 112, second
paragraph, has been made.
The decision of the examiner is affirmed-in-part.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Appeal No. 98-0003
Application No. 08/601,896
16
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
Appeal No. 98-0003
Application No. 08/601,896
17
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/jlb
Appeal No. 98-0003
Application No. 08/601,896
18
Corporate Patent Counsel
U S Philips Corporation
580 White Plains road
Tarrytown, NY 10591