Ex Parte Fujii et al

Patent Trial and Appeal Board

Mar 31, 2016

13155987 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/155,987 06/08/2011
23373 7590 04/04/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Jun Fujii
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql24994 4104
EXAMINER
POLO,GUSTAVOD
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
04/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN FUJII and SHINT ARO TAMURA
Appeal2014-005940
Application 13/155,987
Technology Center 2600
Before ELENI MANTIS MERCADER, JEFFREY S. SMITH, and BRUCE
R. WINSOR, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1---6, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest identified by Appellants is Showa Denko K.K.
(App. Br. 2.)
Appeal2014-005940
Application 13/155,987
STATEMENT OF THE CASE
Appellants' disclosed invention "relates to a method of inspecting a
magnetic recording medium typified by a hard disk drive, especially to a
method which is suitable for certification testing adopted in the inspecting
method, and further to a process for producing a magnetic recording medium
utilizing the inspection method." (Spec. i-f. 1.) Claim 1, which is
illustrative, reads as follows:
1. An improvement in a method for inspecting a
magnetic recording medium wherein prescribed signals
recorded in a disk-shaped magnetic recording medium are
reproduced by using magnetic heads while the disk-shaped
magnetic recording medium is rotated, and the magnetic
recording medium is inspected on the basis of the reproduced
signals;
said improvement comprising writing high-frequency
signals in magnetic recording/reproducing tracks, and then,
either (i) conducting DC erasing or AC erasing to inspect extra
pulse signals reproduced from the erased tracks, or (ii)
inspecting concurrently occurring signals of missing pulse and
spike pulse, which are reproduced from the written signals,
whereby defects of the tracks are detected.
Claims 1-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Alexander (US 6,292,317 B 1; Sept. 18, 2001 ). (See Final
Act. 2--4.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Dec. 3, 2013; "Reply Br." filed Apr. 21, 2014) and the
Specification ("Spec." filed Sept. 1, 2011, as amended Dec.26, 2012 and
Jan. 16, 2013) for the positions of Appellants and the Final Office Action
("Final Act." mailed May 10, 2013) and Answer ("Ans." mailed Feb. 21,
2014) for the reasoning, findings, and conclusions of the Examiner.
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Appeal2014-005940
Application 13/155,987
ISSUES
The dispositive issues presented by Appellants' contentions are as
follows:
Issue 1 - Does Alexander disclose "writing high-frequency signals in
magnetic recording/reproducing tracks," as recited in claim 1?
Issue 2 - Does Alexander disclose "inspecting concurrently
occurring signals of missing pulse and spike pulse, which are reproduced
from the written signals, whereby defects of the tracks are detected, " as
recited in claim 1?
PRINCIPLES OF LAW
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). "These elements must be arranged as in the claim
under review, but this is not an 'ipsissimis verbis' test". In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990) (citation omitted). "The identical invention
must be shown in as complete detail as is contained in the ... claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
ANALYSIS
Issue 1
The Examiner finds Alexander discloses "writing high-frequency
signals in magnetic recording/reproducing tracks," as recited in claim 1.
(Final Act. 2 (citing Alexander col. 1, 11. 10-55).) Appellants contend the
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Application 13/155,987
cited passage of Alexander "do[ es] not refer to high frequency signals."
(App. Br. 7 .) Rather, Appellants contend the cited passage "merely
disclose[ s] the writing of signals by delivering a write signal with polarity-
switching write current to a head while the head is above the desired track,
and inducing magnetically polarized transitions into the desired track."
(App. Br. 7-8.) We agree with Appellants for the reasons stated by
Appellants.
We find no mention in the cited passage of Alexander of the
frequency of signals written to the tracks. Appellants' Specification
provides a limiting definition of the claimed "high frequency signals." The
Specification states "[b ]y the term 'writing high frequency signals' as used
in the present invention, we mean writing of signals with a frequency in the
range of 600 kFCl (0.042 µm/bit) to 1,000 kFCl (0.025 µm/bit), preferably
with a frequency of 800 kFCl (0.032 µm/bit)." (Spec. i-f 37.) Alexander
does disclose that "during the servo track writing operation, the test pattern
can be written in the user data areas at the appropriate frequency to detect
single bit flaws." (Alexander col. 17, 11. 29-32.) However, we find no
disclosure in Alexander as to the actual frequency of writing the test pattern.
In particular, the Examiner does not explain how Alexander discloses a
frequency in the range of 600 kFCl (0.042 µm/bit) to 1,000 kFCl (0.025
µm/bit) as required by claim 1.
Accordingly, the Examiner does not establish that Alexander discloses
"writing high-frequency signals in magnetic recording/reproducing tracks,"
as recited in claim 1.
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Appeal2014-005940
Application 13/155,987
Issue 2
Claim 1 recites, after the writing step, "either (i) conducting DC
erasing or AC erasing to inspect extra pulse signals reproduced from the
erased tracks, or (ii) inspecting concurrently occurring signals of missing
pulse and spike pulse, which are reproduced from the written signals,
whereby defects of the tracks are detected." The Examiner correctly
concludes that to demonstrate anticipation of this claim element, the
Examiner need only demonstrate that Alexander discloses one of the two
alternative steps, identified by (i) or (ii). (Ans. 4.) The Examiner finds
Alexander discloses "inspecting concurrently occurring signals of missing
pulse and spike pulse, which are reproduced from the written signals,
whereby defects of the tracks are detected," i.e., alternative step (ii). (Final
Act. 2 (citing Alexander col. 3, 11. 47-57, col. 9, 1. 44- col. 10, 1. 8); Ans. 4.)
The Examiner maps the recited "missing pulse" to Alexander's missing
pulse detection (Ans. 4 (citing Alexander col. 9, 11. 63---66)) and the recited
"spike pulse" to Alexander's peak pulse detection (id. (citing Alexander col.
9, 11. 52-55).
Appellants contend as follows:
The Examiner's cited portions of Alexander merely
disclose missing pulse detection and does not mention spike
pulses which are reproduced from the written signals. Step (ii) of
the present claims recites inspecting concurrently occurring
signals of missing pulse and spike pulse. Since Alexander does
not disclose or even mention spike pulses, it cannot be said that
Alexander fairly teaches concurrently occurring signals of both
missing pulse and spike pulse.
(App. Br. 7.) We agree with Appellants for the reasons stated by Appellants.
The Specification diagrammatically defines a "spike pulse" as a pulse
having a magnitude greater than the average reproduced signal level. (Spec.
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Appeal2014-005940
Application 13/155,987
if 23 ("Fig. 2(2) is a diagrammatic illustration of spike pulse reproduced
signals detected in the present invention."); Fig. 2(2).) Alexander discloses
that "where there is no flaw, the read signal is a sine wave signal which is
expected to have positive and negative peaks within a predetermined range
for each cycle of the write signal." (Alexander col, 3, 11. 18-21). In other
words, Alexander's "peaks" are the expected average amplitude peaks
analogous to the "signal of upwardly and downwardly projected
innumerable peaks occurring in Fig. 5 of the [Appellants' Specification]."
(Reply Br. 7.)
The Examiner does not establish that Alexander discloses "inspecting
... [a] signal[] ... of spike pulse .... reproduced from the written signals,"
as recited in claim 1. It follows, therefore, that the Examiner does not
establish that Alexander discloses "inspecting concurrently occurring
signals of missing pulse and spike pulse, which are reproduced from the
written signals, whereby defects of the tracks are detected" (emphasis
added), as recited in claim 1, read in light of the Specification. (See Spec.
irir 31, 57.)
Summary
On the record before us, we find the Examiner errs in finding claim 1
anticipated by Alexander. Accordingly, we do not sustain the rejection of
claim 1, claim 3, which recites substantially the same limitations as claim 1
(compare App. Br. 10-11 with App. Br. 10) and was rejected on
substantially the same bases (compare Final Act. 2-3 with Final Act 2) and
claims 2, and 4---6, each of which incorporates the limitations of claim 1 or 3
(see App. Br. 10-12).
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Application 13/155,987
DECISION
The decision of the Examiner to reject claims 1---6 is reversed.
REVERSED
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