Ex parte Horigome

Board of Patent Appeals and Interferences

Sep 8, 1999

08048117 (B.P.A.I. Sep. 8, 1999)

The application was filed on April 14, 1993.1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JUNICHI HORIGOME
____________
Appeal No. 1996-0774
Application No. 08/048,1171
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-9. The appellant filed
an amendment after final rejection on December 19, 1994, which
was entered. We reverse.
Appeal No. 1996-0774 Page 2
Application No. 08/048,117
BACKGROUND
The invention at issue in this appeal is an automatic
gain control (AGC) circuit for an optical disc drive.
Conventional AGC circuits normalize tracking and focusing
signals by employing analog dividers to divide the signals by
another signal corresponding to a total amount of light
reflected from a disc. Variations in temperature and supplied
power, however, subject the analog dividers to problems. The
invention employs a digital-to-analog (D/A) converter to
normalize tracking and focusing signals. Accordingly, the
invention is less affected by variations in temperature and
power.
Claim 1, which is representative for our purposes,
follows:
1. An AGC circuit for an optical disc drive
including means for generating a tracking and
focusing error signal by utilizing an output signal
supplied from an optical pickup detector, and an
actuator for correcting an error, which is driven by
a servo drive signal generated by a normalized error
signal, the AGC circuit comprising:
Appeal No. 1996-0774 Page 3
Application No. 08/048,117
detecting means for determining an amount of
light reflected from an optical disc and outputting
a total light amount signal corresponding to the
amount of reflected light;
table means for generating reciprocal data which
is a reciprocal of the total light amount signal
output from said detecting means; and
a D/A converter to which said tracking and
focusing error signal is supplied as its reference
signal, and said reciprocal data is supplied as its
digital input, with the D/A converter outputting the
normalized error signal.
The abstracts relied on by the patent examiner in
rejecting the claims follow:
Fumiaki et al. 3269829 Mar. 4,
1992
(Patent Abstract of Japan)
Kenzo et al. (Kenzo) 63166318 Nov. 14, 1988
(Patent Abstract of Japan)
Maruta 59-113531 June 30, 1984
(Patent Abstract of Japan)
Yasuaki 63124228 Oct. 12, 1988.
(Patent Abstract of Japan)
Claims 1, 5, and 6 stand rejected under 35 U.S.C. §
102(b) as anticipated by Fumiaki. Claim 2 stands rejected
under 35 U.S.C. § 103 as obvious over Fumiaki in view of
Appeal No. 1996-0774 Page 4
Application No. 08/048,117
Kenzo. Claims 3, 4, and 7 stand rejected under 35 U.S.C.
§ 103 as obvious over Fumiaki in view of Maruta. Claim 8
stands rejected under 35 U.S.C. § 103 as obvious over Fumiaki
in view of Yasuaki. Claim 9 stands rejected under 35 U.S.C.
§ 103 as obvious over Fumiaki in view of Yasuaki further in
view of Maruta. Rather than repeat the arguments of the
appellant or examiner in toto, we refer the reader to the
briefs and the answers for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections and evidence
advanced by the examiner. We also considered the arguments of
the appellant and examiner. After considering the record
before us, we cannot say that the evidence anticipates the
invention of claims 1, 5, and 6. We also cannot say that the
evidence and level of skill in the art would have suggested
the invention of claims 2-4 and 7-9. Accordingly, we reverse.
We address the anticipation of claims 1, 5, and 6 and the
obviousness of claims 2-4 and 7-9 seriatim.
Appeal No. 1996-0774 Page 5
Application No. 08/048,117
Anticipation of Claims 1, 5, and 6
Regarding the anticipation of claims 1, 5, and 6, the
appellant argues that Fumiaki “does not teach or suggest that
ROM 16 or any of its other elements generate a reciprocal of
the total light amount.” (Appeal Br. at 7-8.) He further
argues that the reference’s disclosure “is not sufficient to
teach or suggest that ... this reciprocal is used as a digital
input to a D/A converter as claimed in claim 1.” (Reply Br.
at 5.) In response, the examiner opines, “either signal 20 is
a reciprocal of signal 13 or at some point in element 18 it
becomes reciprocal, dependent on the particular implementation
of element 18. At some point it must be reciprocal in order
to normalize signal 19.” (Examiner’s Answer at 5.)
We cannot find that Fumiaki teaches the reciprocal data
of claim 1. A prior art reference anticipates a claim only if
the reference discloses expressly or inherently every
limitation of the claim. Absence from the reference of any
claimed element negates anticipation. Rowe v. Dror, 112 F.3d
473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Appeal No. 1996-0774 Page 6
Application No. 08/048,117
The claim recites in pertinent part “table means for
generating reciprocal data which is a reciprocal of the total
light amount signal output from said detecting means; and a
D/A
Appeal No. 1996-0774 Page 7
Application No. 08/048,117
converter to which ... said reciprocal data is supplied as its
digital input ....” In short, the claim specifies generating
a reciprocal of the total amount of light and using this
reciprocal as a digital input to a D/A converter.
Fumiaki stabilizes a tracking servo system of an optical
recording and reproducing device. Purpose, Constitution. The
reference teaches a gain 20, which corresponds to a digital
value 33. An AGC circuit 18 employs the gain 20 for gain
control of a track shift difference signal 19. Constitution.
In short, Fumiaki teaches an AGC circuit that performs
gain control based on a gain. It mentions nothing about a
reciprocal of the total amount of light. Accordingly, the
reference does not teach generating the reciprocal and using
it as a digital input to a D/A converter. The examiner’s
comment that signal 20 is either a reciprocal of signal 13 or
at some point it becomes the reciprocal amounts to
speculation. He cannot base a rejection on speculation.
Appeal No. 1996-0774 Page 8
Application No. 08/048,117
For the foregoing reasons, we cannot find that Fumiaki
teaches the claimed reciprocal data. The absence of the
claimed element from the reference negates anticipation.
Therefore, we reverse the rejection of claims 1 and 5-6 under
35 U.S.C. § 102. Next, we consider the obviousness of claims
2-4 and 7-9.
Obviousness of Claims 2-4 and 7-9
We begin our consideration of the obviousness of claims
2-4 and 7-9 by recalling that in rejecting claims under 35
U.S.C. § 103, the patent examiner bears the initial burden of
establishing a prima facie case of obviousness. A prima facie
case is established when the teachings from the prior art
itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art. If the
examiner fails to establish a prima facie case, an obviousness
rejection is improper and will be overturned. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
Appeal No. 1996-0774 Page 9
Application No. 08/048,117
The addition of Kenzo in the rejection of claim 2; Maruta
in the rejection of claims 3, 4, and 7; Yasuaki in the
rejection of claim 8; and Yasuaki and Maruta in the rejection
of claim 9 does
Appeal No. 1996-0774 Page 10
Application No. 08/048,117
In this opinion, we have based our findings on the 2
abstracts of Fumiaki, Kenzo, Maruta, and Yasuaki. Because the
complete disclosures of these references have neither been
provided to us nor applied by the Examiner in the rejections,
we have not considered the entire disclosures. We make no
judgment as to the teachings or suggestions that the complete
references may present.
not cure the aforementioned defect of Fumiaki. The examiner
has not identified anything in these references or the prior
art as a whole that would have suggested generating a
reciprocal of the total amount of light and using this
reciprocal as a digital input to a D/A converter. Therefore,
we find that the examiner’s rejections do not amount to a
prima facie case of obviousness. Because the examiner has2
not established a prima facie case, the rejections of claim 2
over Fumiaki in view of Kenzo; claims 3, 4, and 7 over Fumiaki
in view of Maruta; claim 8 over Fumiaki in view of Yasuaki;
and claim 9 over Fumiaki in view of Yasuaki further in view of
Maruta are improper. Therefore, we reverse the rejection of
claims 2-4 and 7-9 under 35 U.S.C. § 103.
Appeal No. 1996-0774 Page 11
Application No. 08/048,117
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 5, and 6 under 35 U.S.C. § 102 is reversed. His
decision to reject claims 2-4 and 7-9 under 35 U.S.C. § 103 is
also reversed.

REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1996-0774 Page 12
Application No. 08/048,117
LLB/dal
PHILIP M. SHAW, JR.
LIMBACH & LIMBACH
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