Ex Parte Jo et al

Patent Trial and Appeal Board

Feb 25, 2013

10942770 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/942,770 09/17/2004 Sang-hyun Jo 1793.1462 2419
21171 7590 02/26/2013
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HOFFNER, LINH NGUYEN
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
02/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANG-HYUN JO and SEUNG-CHUL KIM
____________

Appeal 2010-010402
Application 10/942,7701
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Samsung Electronics Co., Ltd.
Appeal 2010-010402
Application 10/942,770

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-16, which are all the claims
pending in the application. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to a method of designating
disk recording capacity capable of designating a maximum disk recording
capacity by measuring external disturbance at disk regions. See Spec., 1:
¶ [0002].
Claim 1 is illustrative:
1. A disk recording method, comprising:
partitioning a disk into a plurality of disk regions, and
measuring for an external disturbance at each of the disk regions;
setting a disk speed based on the measured external
disturbance, and designating disk regions, excluding the disk regions
where the external disturbance is measured, as recordable disk
regions; and
calculating a maximum disk recording capacity based on
the designated recordable disk regions.

Appellants appeal the following rejections:

R1. Claims 1-6 and 8-16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yamamoto (JP 11167773A, published June 22,
1999), Hatae (US Patent Pub. 2002/0003941 A1, published Jan. 10, 2002),
and Na (US Patent Pub. 2001/0019524 A1, published Sept. 6, 2001); and
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Application 10/942,770

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R2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamamoto and Na.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Claims 1, 3, 4, 6, 7, 9, 10, and 14

Issue 1: Did the Examiner err in finding that Yamamoto alone or
combined with Hatae and/or Na teaches and/or suggests the limitations as set
forth below?

Appellants contend that “Yamamoto does not teach or suggest that an
external disturbance is measured ‘at each of the disk regions.’” (App. Br.
22.) Appellants further contend that “Yamamoto has not been shown to
discuss or suggest ‘designates recordable disk regions.’” (App. Br. 36).
Appellants also contend that “Hatae fails to describe the claimed ‘calculating
a maximum disk recording capacity based on the designated recordable disk
regions’” (App. Br. 26).
The Examiner found that “Yamamoto et al teaches measuring for an
external disturbance (jitter is a form of disturbance) at each of the disk
regions” (Ans. 9). The Examiner further found that “Yamamoto et al
teaches as shown in Fig. 4 designating disk regions (marking the region of
file B is negative)” (id. at 10). In addition, the Examiner found that “Hatae
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Application 10/942,770

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et al discloses calculating a maximum disk recording capacity based on the
designated recordable disk regions” (id. at 4).
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 essentially for the reasons
indicated by the Examiner.
Specifically, Yamamoto discloses:
To obtain an information recording and reproducing device which can
detect surely deterioration of a recording layer of an optical disk and
can utilize a recordable region of an optical disk efficiently . . . a jitter
detecting means 200 for detecting quantity of jitter of read out coded
data is provided, data recorded in a sector of a data region in which
quantity of jitter detected by the jitter detecting means 200 exceeds
the prescribed threshold value are recorded in a new sector of the data
region . . .
(Abstract.)
In other words, Yamamoto detects external disturbances, i.e., jitter, in
a sector exceeding a threshold and utilizes a new recordable region for
recording the data. Yamamoto further discloses partitioning a disk into
sectors and marking sectors when a sector’s quality deteriorates (see Fig. 4
and ¶¶ [0076]-[0096]). As a result, we find that the Examiner has
sufficiently shown that Yamamoto discloses measuring for an external
disturbance, such as jitter, at each of the disk regions and designating disk
regions as recordable disk regions as the data is recorded in a new sector of
the data region.
Furthermore, Hatae discloses a method for providing users with
“reliable remaining recordable time of a recording medium” (see Abstract).
In Hatae, “the time calculation unit 12 obtains the size of free area in the
optical disk 6 . . . subtracts already recorded compressed stream data size . . .
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Application 10/942,770

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from the total capacity of the optical disk 6” ¶ [0069]. Hatae also subtracts
an error value from the free area in order to obtain the unwritable area (see
¶ [0071]). Thus, we find that the recited calculating a maximum disk
recording capacity based on the designated recordable disk regions is
strikingly similar (at least conceptually) to Hatae’s teachings noted supra,
and the Examiner’s reliance on this functionality is therefore persuasive.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Yamamoto, Hatae, and Na, the Examiner’s 35 U.S.C. § 103(a)
rejection of representative independent claim 1, as well as claims 3, 4, 5, 7,
9, 10, and 14 for similar reasons, is sustained.

Claims 2, 11, 12, 15
Issue 2: Did the Examiner err in finding that Na discloses measuring
tilt, as set forth in claim 2?

Appellants contend that “Na is silent regarding ‘measuring tilt’” (App.
Br. 32).
The Examiner found that “Na discloses measuring tilt and eccentric
center” (Ans. 4). The Examiner further found that “when measuring
eccentric of a disk, which inherently measure[s] tilt because the measuring
[of] eccentric is the measure of the disk being in the center or imbalance
from the center, hence causing a tilt” (id. at 14). We disagree.
While Na discloses that “the disk eccentricity can be measured” (¶
[0028]), the Examiner has not shown where Na also discloses measuring the
tilt, as required by claim 2. Instead, the Examiner relies upon inherency (see
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Ans. 14). When relying upon a theory of inherency, the Examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
Examiner's determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1463-64 (BPAI 1990). Here, we find that measuring tilt
does not necessarily flow from measuring eccentricity, as one of ordinary
skill in the art would recognize that a “tilt” signifies a sloping surface and
“eccentricity” signifies a location elsewhere than at the geometrical center.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claim 2. We highlight that claims 11, 12, and 15
do not necessarily require measuring the tilt as this is only an alternative
limitation in these claims given that tilt or eccentric center can be measured.
Appellants fail to dispute the Examiner’s findings regarding measuring of
the disk eccentricity.
As such, while we reverse the rejection of claim 2, we affirm the
rejection of claims 11, 12, and 15 for at least the reasons noted above
regarding claim 1.

Claims 5, 8, 13, 16
Issue 3: Did the Examiner err in finding that Hatae discloses
calculating the maximum disk recording capacity based on a recordable disk
region address corresponding to an outmost circumference of the disk, as set
forth in claim 5?

Appellants contend that the cited art “has not been shown to discuss or
suggest that a ‘maximum disk recording capacity,’ is calculated ‘based on a
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recordable disk region address corresponding to an outmost circumference
of the disk’” (App. Br. 33). We agree with Appellants.
The Examiner found that Yamamoto discloses dividing the disk into
regions and Hatae discloses calculating a maximum disk recording capacity
(Ans. 14-15). While we agree with these particular findings of the
Examiner, we note that the Examiner has not specifically addressed where
the combined teachings show calculating the maximum disk recording
capacity based on a recordable disk region address corresponding to an
outmost circumference of the disk, as set forth in claim 5.
The one who bears the initial burden of presenting a prima facie case
of unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). An Examiner cannot entirely ignore any limitation in a claim
while determining whether the subject matter of the claim would have been
obvious. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Here, we find
that the Examiner has at least ignored portions of claim 5 regarding basing
the calculation on the region address corresponding to an outmost
circumference of the disk (see claim 5).
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claim 5. We highlight that claims 8, 13, and 16
do not require the above noted limitation.
As such, while we reverse the rejection of claim 5, we affirm the
rejections of claims 8, 13, and 16 for at least the reasons noted above
regarding claim 1.

DECISION
We reverse the Examiner’s § 103 rejections of claims 2 and 5.
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We affirm the Examiner’s § 103 rejections of claims 1, 3, 4, and 6-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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