Ex parte JUSO et al.

Board of Patent Appeals and Interferences

Sep 24, 1997

08065773 (B.P.A.I. Sep. 24, 1997)

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journal and (2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROMI JUSO, YUKIHIKO HAIKAWA,
and YUKIHARU HOSONO
____________
Appeal No. 96-1421
Application 08/065,773
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HEARD: 17 September 1997
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Before THOMAS, JERRY SMITH, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-15. (Paper 14.) No other claims are
pending. (Paper 7 at 1.) We reverse.
FINDINGS OF FACT
We have reviewed the record in its entirety in light of the
arguments of Applicants and the examiner. Our decision presumes
familiarity with the entire record. A preponderance of the
evidence of record supports each of the fact findings.
1. The application is entitled "Information reproducing
apparatus by which reading operation from recording medium is
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Application 08/065,773
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controlled based on amount of data in memory". The subject
matter of the invention is an apparatus and a method for reading
out and time-base expanding information from a recording medium.
(Paper 1 at 1.)
2. An example would be a portable mini disk (MD) player
used for audio recordings. Information can be read from an MD
into a semiconductor memory (e.g., random access memory or RAM)
much faster than it can be expanded and read out from the RAM.
(Paper 1 at 1.) The data being expanded is stored in the
semiconductor memory. (Paper 1 at 2.)
3. The difference in the output rate of the disk and the
output rate of the semiconductor memory permits the MD to be made
"shock proof", i.e., resistant to physical shocks and other
disruptions. Since disk output is much faster, the disk-reading
apparatus can use the idle time (time spent waiting for the
semiconductor memory to catch up) to correct mistakes in position
caused by disruptions. (Paper 1 at 2-3.)
4. Applicants note that power for portable MD players
usually comes from batteries. Hence, power conservation is a
concern. (Paper 1 at 3-4.) They propose to address this problem
by turning the power to the disk-reading apparatus off during at
least some of the idle time. (Paper 1 at 5.)
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Application 08/065,773
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5. The examiner finally rejected claims 2-4 under
35 U.S.C. § 112 (Paper 7 at 4), but has since withdrawn this
rejection (Paper 12).
6. The examiner finally rejected claims 1-15 under
35 U.S.C. § 103 (Paper 7 at 5) as unpatentable over the following
references:
Sako EP 0 463 183 A1 2 Jan. 1992
Smith et al. (Smith) 5,167,204 24 Nov. 1992
(eff. filing date 8 Sep. 1989)
7. We find, and Applicants' counsel at oral argument
conceded, that Sako is essentially identical to Applicants'
admitted prior art.
8. Smith teaches a power manager for a laptop computer.
(3:13-14.) The power manager monitors the activity of devices in
the laptop and deactivates the idle ones to conserve battery
power. (3:33-41.)
9. We find that Sako is directed to the same field of
endeavor as the subject matter of the invention and that Smith is
directed to the problem facing the inventor: reducing power
consumption in a battery-powered device by cutting off power to
idle devices.
10. Neither reference teaches what claim 12 describes as:
a control circuit for controlling an amount of
power provided by the power supply and consumed by the
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Application 08/065,773
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information reproducing apparatus based on an amount of
data stored in the memory to be read out.
11. We agree that Smith's teaching of turning off idle
devices can properly be applied to Sako's device in order to save
power. What we do not see is what would motivate the person
having ordinary skill in the art to control power to the disk-
reading apparatus based on the contents of Sako's shock-proof
memory. One would first have to decide that, despite Sako's
stated advantages for using the idle time to maintain track
position (8:40-56), that the idle time should instead be used to
save power. Second, one would have to decide to use the contents
of the shock-proof memory as a guide to the activity of the disk-
reading apparatus. Neither of these modifications are taught or
suggested.
12. We do not agree with Applicants, however, that Sako
teaches away from the claimed invention. The fact that Sako does
not contemplate using the idle time for power conservation simply
shows that it does not anticipate Applicants' invention.
Contrary assumptions in a reference do not, by themselves,
establish a teaching away at the time of the invention. In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir.
1997). Indeed, Applicants disclose operating in an exclusively
shock-proof mode, which is Sako's mode of operation, as part of
their invention. (Paper 1 at 14-15.) Thus, the fact that Sako
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continuously, if usually idly, continues to read the disk does
not, by itself, teach away from the claimed invention.
13. Secondary considerations and the level of skill in the
art are not contested issues in this appeal.
CONCLUSIONS OF LAW
1. All of the independent claims contain some form of
control circuit limitation of claim 12. All of the dependent
claims necessarily contain this limitation.
2. Since the combined references, read as a whole, would
not have taught or suggested the limitation of controlling the
power supply based on an amount of stored information, we must
conclude that the claimed invention would not have been obvious
to a person having ordinary skill in the art at the time of the
invention in view of Sako and Smith.
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DECISION
The rejection of claims 1-15 under section 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-1421
Application 08/065,773
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John R. Lastova
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