Ex Parte Iwasaki

Board of Patent Appeals and Interferences

Aug 28, 2003

08826744 (B.P.A.I. Aug. 28, 2003)

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written for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YASUO IWASAKI
__________
Appeal No. 2001-2119
Application No. 08/826,744
__________
ON BRIEF
__________
Before THOMAS, RUGGIERO, 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 1-18. An amendment filed January 3,
2000 after final rejection, which was approved for entry by
the Examiner, canceled claims 1, 7, 10, 11, 17, and 18.
Accordingly, only the Examiner’s rejection of claims 2-6, 8,
9, and 12-16 is before us on appeal.
Appeal No. 2001-2119
Application No. 08/826,744
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The claimed invention relates to an audio and/or video
data recording and reproducing apparatus which receives a
multiplexed input data stream having plural channels of at
least one of audio and video data, the input data stream
being subsequently demultiplexed and recorded. In a
reproducing mode, the recorded data is reproduced and
multiplexed in a predetermined order to generate an output
data stream. In a particular embodiment, the recording
structure utilizes a mirror configuration in which plural
recording devices record the same audio and/or video data.
Representative claim 2 is reproduced as follows:
2. An audio and/or video data recording and
reproducing apparatus comprising:
a receiving means for receiving an input data
stream having a plurality of channels of at least one
of audio data and video data being multiplexed in a
predetermined order;
a demultiplexing means for demultiplexing each one
of said plurality of channels from the received input
data stream;
a plurality of recording means for recording the
demultiplexed each one so that random access is
possible, wherein one of said plurality of recording
means is configured to record exactly one of said
plurality of channels;
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a reproducing means for reproducing the recorded
each one from said plurality of recording means; and
a multiplexing means for multiplexing the
reproduced each one in said predetermined order and
generating an output data stream,
wherein each of said plurality of recording means
adopts a mirror configuration having a plurality of
recording apparatuses for recording the same audio
and/or video data.
The Examiner relies on the following prior art:
Nakayama et al. (Nakayama) 4,947,271 Aug. 07, 1990
Windrem et al. (Windrem) 5,754,730 May 19, 1998
(effectively filed Sep. 21, 1992)
Kassatly 5,790,177 Aug. 04, 1998
(filed May 25, 1995)
Morimoto et al. (Morimoto) 5,841,941 Nov. 24, 1998
(filed Aug. 10, 1995)
Claims 2-6, 8, 9, and 12-16 stand finally rejected
under 35 U.S.C. § 103(a). As evidence of obviousness, the
Examiner offers Kassatly in view of Windrem with respect to
claims 2, 3, 8, 9, 12, and 13, and Kassatly in view of
Nakayama with respect to claims 4 and 14. The combination
of Kassatly in view of Nakayama and Morimoto is offered with
respect to claims 5 and 15, and Windrem is added to this
combination with respect to claims 6 and 16.
Appeal No. 2001-2119
Application No. 08/826,744
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Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the Brief (Paper No. 19)
and the Answer (Paper No. 20) 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 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. Only those
arguments actually made by 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)).
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 have suggested to one of
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5
ordinary skill in the art the obviousness of the invention
as set forth in claims 2-6, 8, 9, and 12-16. Accordingly,
we affirm.
Appellant’s arguments in response to the Examiner’s
rejection of the appealed claims are organized according to
a suggested grouping of claims indicated at page 4 of the
Brief. We will consider the appealed claims separately only
to the extent separate arguments for patentability are
presented. Any dependent claim not separately argued will
stand or fall with its base claim. 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).
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an Examiner is under a
burden to make out a prima facie case of obviousness. If
that burden is met, the burden of going forward then shifts
to Appellant 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 In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
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Application No. 08/826,744
6
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,
1051-52, 189 USPQ 143, 147 (CCPA 1976).
With respect to independent claim 2, the representative
claim for Appellant’s first suggested grouping (including
claims 2, 8, 9, and 12), Appellant asserts a failure by the
Examiner to set forth a prima facie case of obviousness
since proper motivation for the proposed combination of
Kassatly and Windrem has not been established. In
particular, Appellant contends (Brief, pages 9 and 10) that
the Examiner has provided no motivation to modify the
storage devices of Kassatly to become disk drives.
Appellant further asserts (id.) a lack of motivation to then
further modify the disk drives to provide a mirrored
configuration.
After careful review of the Kassatly and Windrem
references in light of the arguments of record, we are in
agreement with the Examiner’s position as stated in the
Answer. In particular, we find Appellant’s arguments to be
misplaced related to the issue of obviousness of the
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modification of the storage devices of Kassatly to be disk
drives. Initially, we would point out that, although “disk
drive” language appears in independent claim 12, which is
part of Appellants’ first suggested claim grouping, no such
language is recited in representative claim 2, the claim
specifically argued by Appellant in the Brief.
Notwithstanding this lack of disk drive recitation in claim
2, we are in agreement with the Examiner (Answer, page 10)
that no motivation is needed to modify the storage devices
of Kassatly to become disk drives since Kassatly clearly
discloses a system which is applicable to and encompasses
disk drive storage systems (e.g., Kassatly, column 61, lines
23-50).
We also find, contrary to Appellant’s contention, that
the Examiner’s line of reasoning establishes clear
motivation for modifying Kassatly with the mirrored disk
array of Windrem. We find no convincing arguments from
Appellant that would convince us of any error in the
Examiner’s assertion of obviousness to the skilled artisan
of adding a mirrored storage device configuration providing
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redundancy in case of failure of a drive in the array,
especially in view of an explicit suggestion to do so at
column 2, lines 28-40 in Windrem.
In view of the above discussion, since the Examiner’s
prima facie case of obviousness has not been rebutted by any
convincing arguments from Appellant, the Examiner’s
35 U.S.C. § 103(a) rejection of representative claim 2, and
claims 8, 9, and 12 which fall with claim 2, is sustained.
We also sustain the Examiner’s obviousness rejection of
claim 3 as well as claim 13 which falls with claim
13 according to Appellant’s claim grouping. We find to be
unpersuasive Appellant’s assertion that the Examiner’s
comments (Answer, page 6) concerning the increased bandwidth
feature of the disk array of Windrem is merely “a statement
of operability” and not a motivation for the combination
with Kassatly. In our view, Appellant has mischaracterized
the Examiner’s comments regarding Windrem’s disk array
feature as providing the basis for the proposed combination.
It is apparent to us, as pointed out by the Examiner (id.,
at 11), that the Examiner’s asserted motivating factor for
combining Kassatly with Windrem with regard to claim 3 is
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the same as with claim 2 discussed supra, i.e., the mirrored
disk drive arrangement provides redundant protection in case
of a drive failure.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of representative independent claim 4,
and claims 5, 14, and 15 which fall with claim 4 according
to Appellant’s grouping, in which Kassatly is combined with
Nakayama, we sustain this rejection as well. Appellant’s
arguments in response (Brief, pages 15 and 16) focus on the
contention that, in contrast to the language of claim
4 which requires the demultiplexing of control data before
the recording process, the control data in Nakayama is added
during the recording process. In a related argument (id.,
at 17), Appellant asserts that, as set forth in appealed
claim 4, the recording operation is controlled based on the
demultiplexed control data while Nakayama does not teach or
suggest that demultiplexed control data is used to control
recording.
We do not find these arguments from Appellant to be
persuasive. Contrary to Appellant’s contention, we do not
interpret the Examiner’s position as suggesting the bodily
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incorporation of Nakayama’s recording/reproducing system
into the system of Kassatly. In our reading of the
Examiner’s analysis, it is the technique taught by Nakayama
of adding ID control data to the input data and multiplexing
the data signals with the control data signals to facilitate
the recovery of the data signals during reproduction that is
being relied upon as a suggestion for the proposed
combination. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ
385, 389 (Fed. Cir. 1983), and In re Nievelt, 482 F.2d 965,
968, 179 USPQ 224, 226 (CCPA 1973). In our view, as also
pointed out by the Examiner (Answer, page 12), when
Kassatly’s input data signals are modified with the addition
of control data, as taught by Nakayama, these signals would
then be demultiplexed and recorded in storage device 230-234
in accordance with the disclosed operation of Kassatly and
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in accordance with the requirements of appealed claim 4.
Lastly, we also sustain the Examiner’s obviousness
rejection of claims 6 and 16 in which the disk array
teachings of Windrem are relied upon to address the
particular features of these claims. For all of the reasons
previously discussed, we remain convinced of the obviousness
to the skilled artisan of modifying the applied prior art
references with the addition of redundant disk drives as
taught by Windrem to protect against disk drive failure. We
are further unpersuaded by Appellant’s assertion (Brief,
page 21) that the Examiner has not shown how Windrem
provides for a plurality of recording and reproducing
devices, with each device having all of the components such
as the receiving means, the demultiplexing means, etc., as
set forth in base claims 1 and 14. We agree with the
Examiner (Answer, page 14) that, in contrast to Appellant’s
assertion, the language of Appellant’s claims 6 and 16 does
not require that the plurality of recording and reproducing
devices each have all of the various components recited in
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the base claims. In our view, Appellant’s arguments
improperly attempt to narrow the scope of the claim by
implicitly adding disclosed limitations which have no basis
in the claim. See In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027-28 (Fed. Cir. 1997).
In summary, we have sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of all of the claims on appeal.
Therefore, the decision of the Examiner rejecting claims 2-
6, 8, 9, and 12-16 is affirmed.

Appeal No. 2001-2119
Application No. 08/826,744
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR:hh
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