Ex Parte Go et al

Board of Patent Appeals and Interferences

Jan 26, 2012

10400618 (B.P.A.I. Jan. 26, 2012)

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.
10/400,618 03/28/2003 Sung-ro Go 1293.1655 2096
21171 7590 01/26/2012
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
LAMB, CHRISTOPHER RAY
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
01/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SUNG-RO GO and SEUNG-UN YANG
____________________

Appeal 2009-012120
Application 10/400,618
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM and KRISTEN L.
DROESCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012120
Application 10/400,618

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 5, 6, 9-11, and 15-18. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim(s)
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. An apparatus for changing a recording speed of an
optical recording medium, the apparatus comprising:
a signal process unit which outputs a cyclic redundancy check
(CRC) signal that checks for a generation of errors on the optical
recording medium, from absolute time in pregroove (ATIP)
information which is output from the optical recording medium during
a recording operation;
a detection unit which detects a state of the optical recording
medium from the ATIP information and the CRC signal output from
the signal process unit, and counts the number of errors on the optical
recording medium after checking the CRC signal;
a comparison unit which compares a number of errors detected
by the CRC signal with the reference value;
a storage unit which stores information on a zone where the
errors occur;
a recording start/stop control unit which, when the number of
errors is at least equal to the reference value, stops recording of the
optical recording medium in a zone where no errors occur, and
restarts the recording operation at a lowered recording speed in the
zone where the errors occur; and
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a recording speed control unit which, when the recording of the
optical recording medium is stopped, outputs a recording speed
control signal in order to lower the recording speed in the zone where
the errors occur and restarts the recording operation at the lowered
recording speed using the recording start/stop control unit in the zone
where the errors occur.

Rejections on Appeal
1. The Examiner rejected claims 1, 5, 6, 9-11, and 15-18 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
2. The Examiner rejected claims 1, 5, 6, and 9-11 under
35 U.S.C. § 102(b) as being anticipated by Tsukihashi (US 2001/0003519
A1).
3. The Examiner rejected claims 15-18 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Tsukihashi and
Yoshiyama (US 5,335,215).
Appellant’s Contentions
1. Appellants contend that the Examiner erred in rejecting claims
1, 5, 6, 9-11, and 15-18 under 112, first paragraph, because:
Applicants respectfully note that the standard for 35 U.S.C.
§ 112, first paragraph, is to enable one of ordinary skill in the
art to make and use the claimed invention. The U.S. Supreme
Court has interpreted this clause by providing the “undue
experimentation” standard. Specifically, the question to be
considered is whether the experimentation needed to practice
the invention is undue or unreasonable. Mineral Separation v.
Hyde, 242 U.S. 261 270 (1916).
(App. Br. 12).
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Application 10/400,618

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2. Appellants contend that the Examiner erred in rejecting
claims 1, 5, 6, and 9-11 under 35 U.S.C. § 102(b) as being anticipated,
because as to claim 1 “Tsukihashi discloses stopping immediately
after the error occurs and restarting at a position immediately before
the portion where the error occurred. These are essentially the same
position, and even to the extent these positions differ, there is no
teaching that the positions are within different „zones‟ on the disc.”
(App. Br. 16). Further as to claim 6 “[a]s discussed above with
respect to claim 1, Tsukihashi does not disclose stopping and
restarting in different zones. Thus, independent claim 6 distinguishes
over Tsukihashi at least for similar reasons as discussed with respect
to claim 1.” (App. Br. 16).
3. Further, Appellants contends that the Examiner erred in
rejecting claims 15-18 under 35 U.S.C. § 103(a), because “[a]t least for the
reasons discussed above with respect to claim 1, Tsukihashi does not teach
or suggest these features. Yoshiyama also does not teach or suggest these
features, but instead is cited for the general teaching of an integrated
circuit.” (Reply Br. 17).
Issues on Appeal
Whether the Examiner has erred in rejecting claims 1, 5, 6, 9-11, and
15-18 under 35 U.S.C. § 112, first paragraph?
Whether the Examiner has erred in rejecting claims 1, 5, 6, 9-11, and
15-18 as being anticipated (or obvious) because Tsukihashi fails to teach the
argued claim limitations as the Examiner found?
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Application 10/400,618

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Whether claims 1, 5, 6, 9-11, and 15-18 are obvious over Tsukihashi
alone or in combination with Yoshiyama because Tsukihashi suggests the
argued claim limitations?

PRINCIPLES OF LAW
MPEP 2164.01 Enablement
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the
subject matter of the claims as to enable one skilled in the pertinent art
to make and use the claimed invention. The standard for determining
whether the specification meets the enablement requirement was cast
in the Supreme Court decision of Mineral Separation v. Hyde, 242
U.S. 261, 270 (1916) which postured the question: is the
experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Accordingly, even though the statute does not use the term “undue
experimentation,” it has been interpreted to require that the claimed
invention be enabled so that any person skilled in the art can make
and use the invention without undue experimentation. In re Wands,
858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988).

MPEP 2164.01.

ANALYSIS
We agree with the Appellants‟ above contention 1. We find no
“undue experimentation” analysis in the Examiner‟s § 112, first paragraph,
rejection as set forth in the rejection from which appeal is taken.
As to Appellants‟ above contentions 2-3, we agree with Appellants to
the extent that Tsukihashi does not teach the argued “stopping” limitation as
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set forth by the Examiner‟s analysis.
1
Therefore, Appellants have
established that the Examiner erred with respect to the § 102 and § 103
rejections as presented in the rejection from which appeal is taken.
However, we agree with the remainder of the Examiner‟s § 102
analysis and § 103 analysis, and we conclude that the argued “stopping”
limitation would have been obvious at the time of Appellants‟ invention
given the teachings of Tsukihashi. As Appellants point out in their argument
(See above contention 2), “Tsukihashi discloses stopping immediately after
the error occurs” (i.e., stopping recording in the zone where the errors
occur). Given (A) that the recording medium only has a limited number of
types of zones (e.g., where errors occur, where no errors occur), (B) that
those types of zones are well-known, and (C) that Appellants point to no
particular benefit from choosing one type of well-known zone over another
for the stop recording position; we deem to be obvious the selection of the
“no error” zone to stop recording.
Given the Examiner‟s § 102 and § 103 analysis and our analysis
above, claims 1, 5, 6, and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over Tsukihashi, and claims 15-18 are unpatentable under 35 U.S.C.
§ 103(a) over the combination of Tsukihashi and Yoshiyama. We designate
these as new grounds of rejection.

1
Tsukihashi teaches the “restarting” limitation required by claims 1, 6, and
15. (See above contention 2).
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37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 5, 6, 9-11, and 15-18 as failing to comply with 35 U.S.C. § 112,
first paragraph.
(2) Appellants have established that the Examiner erred in rejecting
claims 1, 5, 6, and 9-11 as being anticipated under 35 U.S.C. § 102(b).
(3) Appellants have established that the Examiner erred in rejecting
claims 15-18 as being unpatentable under 35 U.S.C. § 103(a).
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Application 10/400,618

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DECISION
The Examiner‟s rejections of claims 1, 5, 6, 9-11, and 15-18 are
reversed.
Claims 1, 5, 6, and 9-11 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Tsukihashi.
Claims 15-18 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over the combination of Tsukihashi and Yoshiyama.
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).

REVERSED
37 C.F.R. § 41.50(b)

ELD