Ex parte KATO et al.

Board of Patent Appeals and Interferences

Feb 13, 2000

08397648 (B.P.A.I. Feb. 13, 2000)

Appellant relies upon a foreign priority filing date under 35 U.S.C. 1
§ 119 of March 10, 1994.
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SHINICHIRO KATO and SHUICHI KIKUCHI
__________
Appeal No. 1997-3478
Application 08/397,6481
___________
HEARD: January 24, 2000
___________
Before KRASS, RUGGIERO and FRAHM, Administrative Patent
Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 to 6, which constitute all of the
pending claims in the case before us.
Appeal No. 1997-3478
Application 08/397,648
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BACKGROUND
The subject matter on appeal is directed to a disc
cassette for use in a disc player, wherein the cassette
housing has an opening for disc recording/playback which has a
sliding shutter for exposing or concealing the disc (see
appellants’ Figure 11 and page 1 of the specification). As
indicated in the specification (see page 3), when several disc
cassettes are stacked for playing in succession (Figures 13
and 14), the shutter of one disc suffers from the problem that
it gets hung on the disc below it (see Figures 15 and 16).
To overcome this problem with conventional disc cassettes,
appellants provide a disc cassette as shown in Figure 5 which
has an angled back wall 3a’ at the opening 3 of the disc
housing, thus preventing disc cassettes stacked on each other
from hanging up (e.g., see Figures 6 and 7). Thus,
appellants’ invention of a disc housing having an angle back
wall, as recited in claims 1 to 6 on appeal, provides an
important advantage over prior art disc cassettes.
As further discussed, infra, we find that the applied
Appeal No. 1997-3478
Application 08/397,648
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reference to Fujita fails to teach or suggest at least the
feature of a disc cassette and shutter where the disc housing
has an angled back wall as defined in claims 1 to 6 on appeal.
Representative independent claim 1 is reproduced below:
1. A disc cassette comprising:
a case in which a disc-like recording medium having an
information recording area is rotatably received, said case
having an opening through which at least a part of said
information recording area of said medium is exposed;
means for defining a rectangular recess on a front area
of said case where said opening is positioned, said
rectangular recess being defined by two opposed side walls, a
back wall and a bottom wall, said back wall being oriented to
face forward; and
a shutter slidably engaged with said rectangular recess
in a manner to selectively open and close said opening, said
shutter being slidable in a direction parallel to a direction
in which said back wall extends,
wherein said back wall of said rectangular recess has a
surface inclined relative to said bottom wall, said back wall
and said bottom wall forming an obtuse angle, and wherein a
height of said back wall defines a depth of said rectangular
recess, said depth being greater than a thickness of said
shutter.
The following reference is relied on by the examiner:
Fujita et al. (Fujita) 5,084,862 Jan. 28,
1992
Claims 1 to 6 stand rejected under 35 U.S.C. § 103. As
Appeal No. 1997-3478
Application 08/397,648
4
evidence of obviousness, the examiner relies upon Fujita.
Rather than repeat the positions of appellants and the
examiner, reference is made to the Brief and the Answer for
the respective details thereof.
OPINION
It is our view, after consideration of the record before
us, that the reference to Fujita and the level of skill in the
particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1 to 6. In reaching our conclusion on the issues
raised in this appeal, we have carefully considered
appellants’ specification and claims, the applied reference,
and the respective viewpoints of appellants and the examiner.
As a consequence of our review, we find that the applied prior
art to Fujita fails to teach or suggest the feature of
representative claim 1 on appeal of a disc cassette having a
rectangular recess with an inclined or angled back wall of
claim 3 of a back wall having perpendicular and inclined
portions, and of claim 4 of a back wall having an inclined
Appeal No. 1997-3478
Application 08/397,648
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surface with a contoured convex curve. Accordingly, we will
reverse the examiner’s decision rejecting claims 1 to 6 on
appeal as being obvious under 35 U.S.C. § 103.
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, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
Appeal No. 1997-3478
Application 08/397,648
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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
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part 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).
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 appellants
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 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, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appeal No. 1997-3478
Application 08/397,648
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We find that the examiner, at pages 3 to 5 of the Answer,
has met his burden of establishing a prima facie case of
obviousness. The examiner, by pointing to Figure 9 of Fujita,
has established a reasonable likelihood that the back wall 41
of the rectangular recess of Fujita’s disc cassette 40 is
inclined or angled. Accordingly, the burden is then shifted
to appellants to demonstrate nonobviousness based on the
evidence as a whole and the relative persuasiveness of the
arguments.
We find, however, that appellants have successfully
rebutted the prima facie case presented by the examiner. We
are persuaded by the weight of the evidence and appellants’
arguments that Fujita does not fairly teach or suggest an
angled or inclined back wall. Specifically, we agree with
appellants (Brief, pages 8 to 9) that because Figure 5 of
Fujita fails to show two lines corresponding to the back wall
of the rectangular recess, no incline of that wall is
disclosed. In addition, we note our agreement with appellants
(Brief, page 6) that nowhere in the text of Fujita is the back
wall described as being angled or inclined. Furthermore, we
find that there is no motivation or suggestion in Fujita for
Appeal No. 1997-3478
Application 08/397,648
8
the back wall to be inclined, since Fujita is not concerned at
all with the same problem as appellants of preventing two disc
cassettes having shutters from catching on each other. This
is due to the fact that Fujita concerns a single disc
cassette, whereas appellants’ invention pertains to the
shuffling of multiple discs in a disc player such as that
shown in appellants’ Figure 13. Accordingly, we cannot
sustain the rejection of claims 1 to 6 under 35 U.S.C. § 103.
Appellants argue (Brief, pages 6 to 7) that the feature
of claim 3 of a perpendicular/inclined back wall combination
is also neither taught nor suggested by Fujita. Appellants
also argue (Brief, page 9) that the feature of claim 4 of an
inclined back wall having a contoured convex curve is also
neither taught nor suggested by Fujita. Because we have
found, as discussed supra, that Fujita would not have fairly
taught or suggested even an angled or inclined back wall as
recited in representative claim 1, we are in agreement with
appellants that Fujita would not have taught or suggested any
further modification of the back wall to include a
perpendicular/inclined combination as recited in claims 3 and
6, or a contoured convex curve as recited in claim 4. We
Appeal No. 1997-3478
Application 08/397,648
9
agree with appellants that one of ordinary skill in the art
would not have found it obvious to "optimize" in order to
achieve these shapes for the back wall, especially since
Fujita is not concerned with sticking of multiple disc
cassette shutters as are appellants.
Although we find that the examiner originally set forth a
prima facie case of obviousness, we must agree with appellants
that a disc cassette having an inclined back wall is not
specifically taught or suggested by the applied references.
Thus, we find that appellants have successfully rebutted the
examiner’s prima facie case, and we will reverse the
rejection.
In view of the foregoing, the decisions of the examiner
rejecting claims 1 to 6 under 35 U.S.C. § 103 are reversed.
REVERSED

Appeal No. 1997-3478
Application 08/397,648
10
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )
EF/pgg
Jay H. Maioli
Cooper and Dunham
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