Ex parte Fujisawa

Board of Patent Appeals and Interferences

Apr 20, 2000

08249700 (B.P.A.I. Apr. 20, 2000)

1
Paper No. 31
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HIROTOSHI FUJISAWA
______________
Appeal No. 1997-3960
Application 08/249,700
_______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 12 and 14, which
constitute all the claims remaining in the application. An
amendment after final rejection was filed on March 31, 1997 in
response to a new ground of rejection set forth in the examiner’s
answer. This amendment was entered by the examiner.
Appeal No. 1997-3960
Application 08/249,700
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The disclosed invention pertains to a disc cartridge for
use with a disc apparatus which is capable of determining whether
the inserted cartridge contains an optical disc or a magneto-
optical disc. More particularly, the type of disc is determined
by discriminating the height of a recess on a lateral side of the
disc cartridge.
Representative claim 12 is reproduced as follows:
12. A disc cartridge for use with a miniature disc shaped
recording medium, the disc shaped recording medium having a
diameter of 64 mm, comprising:
a cartridge main body for accommodating the disc shaped
recording medium, the cartridge main body defining a plurality of
positioning pin engagement holes on a major surface thereof; and
a discriminating section formed in the cartridge main body
for discriminating the type of disc shaped recording medium
accommodated within the cartridge main body, wherein the
discriminating section is a recess which is formed in a lateral
side of the cartridge main body adjacent one of said positioning
pin engagement holes, the lateral side of the cartridge main body
being different from, and perpendicular to, the major surface of
the cartridge main body, a height of the recess designating the
type of disc shaped recording medium accommodated within the
cartridge main body, the height of the recess being detectible by
external detecting means to control a position of an external
magnetic field generating means of a disc recording and
reproducing apparatus as a function of the detected height of the
recess when the cartridge main body is loaded into the disc
recording and reproducing apparatus.
The examiner relies on the following references:
Motoyama et al. (Motoyama) 4,837,758 June 06, 1989
Suzuki 4,876,619 Oct. 24, 1989
Appeal No. 1997-3960
Application 08/249,700
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Claims 12 and 14 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness the examiner offers Motoyama in view
of Suzuki. A first basis for this rejection was set forth in the
final rejection, and a second basis for this rejection was set
forth in the examiner’s answer as a new ground of rejection. The
new ground of rejection was withdrawn in the supplemental
examiner’s answer in response to the amendment noted above.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answers.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
Appeal No. 1997-3960
Application 08/249,700
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particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 12 and 14. Accordingly, we reverse.
Appellant has indicated that for purposes of this appeal
claims 12 and 14 will stand or fall together as a single group
[brief, page 4]. Consistent with this indication appellant has
made no separate arguments with respect to either of the claims
on appeal. Accordingly, claims 12 and 14 will stand or fall
together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983). Therefore, we will consider the rejection
against independent claim 12 as representative of both of the
claims on appeal.
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
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
Appeal No. 1997-3960
Application 08/249,700
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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.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); 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 and the relative persuasiveness of the
arguments. See Id.;
In re Hedges, 783 F.2d 1038, 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). Only those arguments actually made by
Appeal No. 1997-3960
Application 08/249,700
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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 § 1.192(a)].
With respect to representative, independent claim 12, the
examiner cites Motoyama as teaching a disc cartridge for use with
a disc apparatus which is capable of determining whether the
inserted cartridge contains an optical disc or a magneto-optical
disc. In other words, the Motoyama device makes the very same
discrimination as the disclosed invention. The examiner
acknowledges, however, that Motoyama fails to teach the disc
having a diameter of 64 mm, the recess formed in the lateral side
of the cartridge, the height of the recess determining the type
of disc within the cartridge, and the positioning pin engagement
holes as recited in claim 12 [answer, pages 3-4]. The examiner
cites Suzuki as teaching the use of positioning pin engagement
holes in a disc cartridge, and the examiner asserts the
obviousness of using such pin positioning holes in the Motoyama
apparatus. With respect to the remaining acknowledged
differences between the invention of claim 12 and the teachings
of Motoyama, the examiner simply declares that each of these
differences would have been obvious to the skilled artisan [id.,
pages 5-6].
Appeal No. 1997-3960
Application 08/249,700
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Appellant argues that the examiner has failed to
establish a prima facie case of obviousness. More specifically,
appellant argues that the examiner has simply dismissed all the
differences between the claimed invention and the teachings of
the prior art as obvious within the meaning of 35 U.S.C. § 103
without any teaching or suggestion within the applied references
[brief, pages 5-13]. Appellants argue that the examiner’s
rejection is nothing more than an attempt to reconstruct the
invention using hindsight.
We essentially agree with appellant’s position as set
forth in the main brief. Although the examiner’s rejection
attempts to find rationales for modifying the applied prior art,
these rationales are all based on achieving appellant’s invention
rather than on suggestions coming from the prior art. The mere
fact that the prior art may be modified in the manner suggested
by the examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In re
Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). We agree with appellant that the only suggestion on this
record for modifying the disc cartridge of Motoyama in the manner
Appeal No. 1997-3960
Application 08/249,700
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proposed by the examiner comes from appellant’s own
specification.
Since the applied prior art and the examiner’s analysis
do not establish a prima facie case of the obviousness of the
claimed invention, we do not sustain the examiner’s rejection of
claims 12 and 14 based on Motoyama and Suzuki. Therefore, the
decision of the examiner rejecting claims 12 and 14 is reversed.
REVERSED
Jerry Smith
Administrative Patent Judge )
)
)
)
Lee E. Barrett ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lance Leonard Barry )
Administrative Patent Judge )
JS/cam
Appeal No. 1997-3960
Application 08/249,700
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Philip M. Shaw, Jr.
Limbach & Limbach
2001 Ferry Bldg.
San Francisco, CA 94111