Ex parte FITZGERALD et al.

Board of Patent Appeals and Interferences

Jul 28, 1998

08090921 (B.P.A.I. Jul. 28, 1998)

Application for patent filed July 12, 1993. According to the appellants, the1
application is a continuation of application 07/776,201, filed October 15, 1991, now
Patent No. 5,255,251, which is a continuation-in-part of application 07/602,631, filed
October 24, 1990, now Patent No. 5,123,000.
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TIMOTHY P. FITZGERALD, and
DAVID J. ROTHER
_____________
Appeal No. 95-3161
Application 08/090,9211
______________
ON BRIEF
_______________
Before URYNOWICZ, LEE and CARMICHAEL, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 1, 5 and 9. Claims
2-4, 6-8 and 10-17 have been canceled. No claim has been
allowed.
Appeal No. 95-3161
Application 08/090,921

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References relied on by the Examiner
Taylor et al. (Taylor) 5,153,862 Oct. 06, 1992
Tamachi JA 64-50275 Feb. 27,
1989
(Japanese patent)
The Rejections on Appeal
Claims 1, 5 and 9 stand finally rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 1, 5, and 9 also stand finally rejected under 35
U.S.C. § 103 as being unpatentable over Tamachi and Taylor.
The Invention
The invention is directed to an optical disk cartridge
handling apparatus. The sole independent claim, claim 1, is
reproduced below:
1. An optical disk cartridge handling apparatus for
storing, handling, reading and writing of optical discs
stored in cartridges which store data, comprising:
(a) an enclosed cartridge magazine for
protection of the cartridges with an open front
removable from the apparatus for loading and
unloading all the cartridges as a group in the
apparatus, the magazine having slots and
cartridge retainer means therein for vertically
storing and releasably holding the cartridges,
and a cartridge magazine alignment means, to
index and guide the magazine in one way only
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into and out of the apparatus for proper
orientation of the open front within the
apparatus;
(b) a flipper mechanism adapted to receive one
of the cartridges from both the magazine and a
vertically oriented optical disk drive with a
vertical cartridge slot and a flipper cartridge
retainer mechanism to releasably hold the
cartridge within the flipper.
(c) a picker mechanism comprised of a cartridge
pusher and picker mounted along, below and
adjacent the flipper mechanism for moving the
cartridge into and out of the flipper mechanism
from both the magazine and the optical disk
drive cartridge slot; and
(d) a horizontal traverse mechanism below the
picker mechanism for supporting and moving the
flipper mechanism along a horizontal axis of
motion to locate the flipper mechanism adjacent
from both the magazine and the optical disk
drive.
Opinion
We do not sustain either rejection of claims 1, 5 and 9.
Our consideration of the rejections does not go beyond the
reasons and rationale as presented by the examiner in support
of the rejections.
The rejection for indefiniteness
We do not sustain the rejection of claims 1, 5 and 9 for
indefiniteness.
Appeal No. 95-3161
Application 08/090,921

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Claim 1 recites, in pertinent part: "a cartridge magazine
alignment means to index and guide the magazine in one way
only into and out of the apparatus for proper orientation of
the open front within the apparatus" (emphasis added).
According to the examiner (answer at pg. 4), the above-quoted
claim language is vague and indefinite because it is unclear
how "into and out of the apparatus" can be considered "in one
way only."
Obviously, the reference "in one way only" does not refer
to the direction of motion relative to the apparatus, since
the same clause specifies the motion to be into and out of the
apparatus.
It is unreasonable to insist on reading the claim that way,
since the specification does not support that reading and
since an alternative reasonable reading exists which is
consistent with the specification. The alignment means
provides only one way for moving the magazine into and out of
the apparatus, in proper orientation, not many different ways
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Application 08/090,921

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for doing the same. In other words, the claim requires that
there be no choices in what to do for moving the magazine into
and out of the apparatus if
the magazine is to be oriented properly in the apparatus. For
instance, with respect to claim 1, it can be seen in Figure 1
that the tong 82 must be aligned with and fit within groove
64, if the magazine 70 is to be properly oriented with the
apparatus.
Accordingly, claims 1, 5 and 9 are not vague or
indefinite. We do not sustain the rejection of claims 1, 5
and 9 on the ground of indefiniteness.
The rejection of claims 1, 5 and 9
as being unpatentable over Tamachi and Taylor
We reject the appellants’ argument that the examiner
ignored the claim requirement that the magazine alignment
means is for proper orientation of the open front of the
magazine within the apparatus. Even if Taylor’s magazine is
designed to be moved
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into and out of the carrier 18 either end first, which the
appellants have not established to be the case, the resulting
orientation of the magazine in the apparatus would
nevertheless be the proper orientation by design. Either end
of Taylor’s magazine can reasonably be considered as the open
front. Taylor contemplates only one way for moving the
magazine into and out of carrier 18 in the apparatus, i.e., by
alignment of rails 110 on the magazine with flanges 112 on the
carrier (column 7, lines 29-32). The "only one way" as
claimed by the appellants is met by alignment of Taylor’s
rails and flanges. The claims are not so specific as to
require that reversing the ends of the magazine
necessarily constitutes a different way of moving the magazine
into and out of the apparatus. The claim term "way" does not
have to be read so narrowly. Thus, the only way provided by
Taylor for moving the magazine into and out of the apparatus
and in proper orientation is that of aligning the rails 110 on
the magazine with the flanges 112. It should be noted that
during examination, claim terms are properly construed
according to their broadest reasonable interpretation
consistent with the specification. In re Zletz, 893 F.2d 319,
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321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1990); In re Yamamoto,
740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984); In re
Pearson, 494 F.2d 1399,
1404, 181 USPQ 641, 645 (CCPA 1974); In re Prater, 415 F.2d
1393, 1404, 162 USPQ 541, 550 (CCPA 1969). It cannot be
disputed that the point or focus is on ensuring the proper
orientation of the magazine.
We also reject the appellants’ argument that Tamachi does
not disclose a flipper cartridge retainer mechanism to
releasably hold the cartridge within the flipper. While it is
true that the part 41 referenced by the examiner is a portion
of the picker mechanism which pulls a cartridge from the
stacker into the flipper 26, the same part continues to hold
the cartridge in the flipper while the cartridge is being
carried or moved by the flipper. The examiner is correct that
Tamachi discloses a flipper mechanism 26 which includes a
flipper cartridge retainer mechanism. Undoubtedly, part 41 is
a portion of the flipper
mechanism 26. It is inconsequential that the same structure
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serves additional functions as a part of another mechanism.
We are persuaded by the appellants, however, that the
examiner erred in finding that Tamachi discloses a picker
mechanism which is along, below, and adjacent the flipper
mechanism. As is clearly shown in Tamachi’s drawings, and as
pointed out by the appellants, Tamachi discloses an integrated
flipper and picker mechanism wherein the picker mechanism is
actually contained within the flipper mechanism 26. No
portion of parts 41a, 41b, 41c, 41d, or 30-46 inclusively, can
reasonably be deemed to be below the flipper mechanism 26.
The examiner has not demonstrated the reasonableness of his
finding that Tamachi’s picker mechanism is below the flipper
mechanism 26 which includes the entirety of the structure
shown in Tamachi’s Figures 3 and 4. While the claim does not
preclude having portions of the picker mechanism level with or
above the flipper mechanism, at least a significant or
substantial portion of the picker mechanism, if not the bulk
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thereof, must be placed below the flipper mechanism. That,
however, the examiner has not shown to be so in Tamachi.
For the foregoing reasons, we do not sustain the
rejection of claims 1, 5 and 9 as being unpatentable over
Tamachi and Taylor.
Conclusion
The rejection of claims 1, 5 and 9 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.
The rejection of claims 1, 5 and 9 under 35 U.S.C. § 103
as being unpatentable over Tamachi and Taylor is reversed.
REVERSED
Appeal No. 95-3161
Application 08/090,921

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STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge
Appeal No. 95-3161
Application 08/090,921

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Paul L. Sjoquist
Palmatier, Sjoquist,
Helget & Voigt, P.A.
6600 France Avenue South
Suite 501
Minneapolis, MN 5535