Ex parte Hayashi

Board of Patent Appeals and Interferences

Feb 6, 2002

08588020 (B.P.A.I. Feb. 6, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.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 NOBUHIRO HAYASHI
_____________
Appeal No. 1999-0170
Application No. 08/588,020
______________
ON BRIEF
_______________
Before RUGGIERO, LALL, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-24. An amendment filed January 8, 1998 after
final rejection, which canceled claims 11, 12, 18, and 19, was
approved for entry by the Examiner. Accordingly, the
rejection of claims 1-10, 13-17, and 20-24 is before us on
appeal.
The claimed invention relates to a data reproducing
apparatus for reproducing data from a magnetic disk in which
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plural tracks having data recorded thereon are concentrically
or spirally formed on a recording surface of the disk.
Address information specifying the tracks is recorded on the
corresponding tracks by changing a direction of magnetization
in a circumferential direction of the disk. In a terminal
region of the address information, terminal information is
also formed by magnetization in a predetermined direction.
Claim 1 is illustrative of the invention and reads as
follows:
1. A magnetic disk having plural tracks for
recording data concentrically or spirally formed on a
recording surface thereof,
wherein address information for specifying the
tracks is recorded on the corresponding tracks as a
direction of magnetization in a circumferential direction
of the disk, so that a first polarity in a first
circumferential direction of the disk represents a one,
and an opposite polarity in an opposite circumferential
direction of the disk represents a zero, of the address
information corresponding to a Grey code between
neighboring tracks, and wherein terminal information
magnetized in a predetermined direction is recorded in a
terminal region of the address information.
The Examiner relies on the following prior art:
Duffy et al. (Duffy) 5,262,907 Nov. 16,
1993
Fisher 5,384,671 Jan. 24,
1995
(filed Dec. 23, 1993)
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Application No. 08/588,020
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Emori 5,442,499 Aug. 15,
1995
(filed Jan. 25, 1994)
Kuromiya et al. (Kuromiya) 5,585,989 Dec. 17,
1996
(filed Nov. 23, 1994)
Claims 1-10, 13-17, and 20-24 stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the Examiner offers
Duffy in view of Emori with respect to claims 1 and 5, adds
Fisher to the basic combination with respect to claims 2-4, 8,
and 13-17, and adds Kuromiya to the basic combination with
respect to claims 3, 6, 7, and 9. With respect to claims 10
and 20-24, both Fisher and Kuromiya are added to the basic
combination of Duffy and Emori.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner, the arguments
in support of the rejection and the evidence of obviousness
relied upon by the Examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
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Application No. 08/588,020
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reaching our decision, Appellant’s arguments set forth in the
Brief along with the Examiner’s rationale in support of the
rejection and arguments in rebuttal set forth in the
Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill
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in the art the obviousness of the invention as set forth in
claims 1-10, 13-17, and 20-24. Accordingly, we reverse.
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
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,
Appeal No. 1999-0170
Application No. 08/588,020
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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
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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).
With respect to independent claims 1, 6, 15, and 22, the
Examiner, as the basis for the obviousness rejection, applies
against the appealed claims various combinations of the Duffy,
Kuromiya, and Fisher references, each of which are directed to
recording device structures. As recognized by the Examiner,
these references do not disclose Appellant’s claimed feature
of having terminal information “ . . . recorded in a terminal
region of the address information,” a specific recitation of
which is present in each of the independent claims on appeal.
To address this deficiency, the Examiner turns to Emori and,
in particular, Emori’s illustrations in Figures 7 and 11(a)
and accompanying description at column 7, lines 1-49.
According to the Examiner (Answer, page 4), Emori provides a
teaching of terminal information, which the Examiner has
identified as the illustrated “timing pattern,” being recorded
in the terminal region of the address information. The
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Examiner asserts the obviousness to the skilled artisan of
modifying the applied prior art “ . . . to
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include the teachings of Emori, motivation being to detect
servo information more precisely even when noises are included
as set forth in col. 3, lines 28-30 of Emori.” (Id.)
In response, Appellant asserts a failure of the Examiner
to establish a prima facie case of obviousness since all the
claim limitations are not taught or suggested by the prior
art. In making this assertion, Appellant, rather than
attacking the combinability of Emori with the other applied
references, instead contends that, contrary to the Examiner’s
interpretation, Emori does not provide a disclosure of
terminal information recorded in a terminal region of the
address information as required by each of the appealed
independent claims. In particular, Appellant argues (Brief,
page 4) that Emori’s timing pattern, which the Examiner
identifies as the terminal information, is at the end of the
AGC field, not at the end of the Grey code zone which contains
Emori’s address information.
After reviewing the disclosure of the Emori reference, in
light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Brief. Our
interpretation of the disclosure of Emori coincides with that
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of Appellant, i.e., the timing bit terminal information is
located at the end of the AGC field as illustrated in Emori’s
Figure 7. We are persuaded by Appellant’s contention (Brief,
page 4) that, since Emori provides a clear disclosure that the
check code pattern containing the address information and the
timing pattern are formed in separate zones, there is no basis
for the Examiner’s conclusion that Emori’s timing pattern is
located in the terminal portion of the address information
region.
We have taken note of the Examiner’s argument (Answer,
page 15) that contends that Emori’s timing pattern appears
after the track address just as Appellant’s disclosed terminal
information. We do not find such argument to be persuasive.
While there is no doubt that Emori’s timing pattern appears
after the address information, it is equally true that, as
discussed supra, such timing pattern terminal information is
not in the terminal region of the address information as
required by the claims on appeal.
Since all of the claim limitations are not taught or
suggested by the applied prior art, it is our opinion that the
Examiner has not established a prima facie case of obviousness
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with respect to appealed independent claims 1, 6, 15, and 22.
Accordingly, the Examiner’s 35 U.S.C. § 103 rejection of
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independent claims 1, 6, 15, and 22, as well as claims 2-5, 7-
10 13, 14, 16, 17, 20, 21, 23, and 24 dependent thereon, is
not sustained. Therefore, the decision of the Examiner
rejecting claims 1-10, 13-17, and 20-24 is reversed.
REVERSED

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR:hh
Appeal No. 1999-0170
Application No. 08/588,020
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GREGORY J. MAIER
OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1755 JEFFERSON DAVIS HIGHWAY
ARLINGTON, VA 22202