Ex parte Kawamura et al.

Board of Patent Appeals and Interferences

Dec 17, 2001

08909349 (B.P.A.I. Dec. 17, 2001)

Application for patent filed August 11, 1997, entitled1
"Data Recording Medium and Record/Playback Apparatus Using the
Data Recording Medium," which is a continuation of Application
08/562,428, filed November 24, 1995, now abandoned, which
claims the foreign filing priority benefit under 35 U.S.C.
§ 119 of Japanese Application 6-321602, filed
November 30, 1994.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MAKOTO KAWAMURA,
YOSHIYUKI AKIYAMA, YASUSHI FUJINAMI,
JUN YONEMITSU, and TOMIHIRO NAKAGAWA

Appeal No. 1999-2240
Application 08/909,3491

ON BRIEF

Before BARRETT, DIXON, and GROSS, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-2240
Application 08/909,349
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 3, 5, 7, 9, 12, 13, 15, 16,
18, 19, and 21.
We reverse.
BACKGROUND
The disclosed invention relates to a disk-shaped data
recording medium and a recording apparatus for recording
data on a disk-shaped data recording medium.
Claim 1 is reproduced below.
1. A disk-shaped data recording medium on which an
amount of data is to be recorded, comprising:
at least a first and a second recording layers;
a first recording direction from the inner side to
the outer side of said medium and a second recording
direction from the outer side to the inner side of said
medium being determined as directions for recording
data;
one of said first and second recording directions
being used as the recording direction of said first
recording layer;
the other of said first and second recording
directions being used as the recording direction of
said second recording layer;
each of said recording layers including a data
area in which data has a sector structure, and each
sector containing at least a layer number for
identifying said first recording layer and said second
recording layer; and
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Application 08/909,349
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wherein substantially one half of said amount of
data to be recorded on said medium is recorded to a
predetermined data area in said data area of said first
recording layer, said predetermined data area being
smaller than said data area available for recording the
data, and the remainder of the data is recorded in said
data area of said second recording layer such that a
start position of the data in one of said first and
second recording layers is substantially at the same
radial position as a final position of the data in the
other of said first and second recording layers.
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Application 08/909,349
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The Examiner relies on the following prior art:
Satoh et al. (Satoh) 5,428,597 June 27, 1995
(filed January 12, 1994)
Best et al. (Best) 5,513,170 April 30, 1996
(effective filing date June 4, 1991)
Claims 1, 3, 5, 7, 9, 12, 13, 15, 16, 18, 19, and 21
stand rejected under 35 U.S.C. § 112, first paragraph, based
on a lack of written description.
Claims 1, 3, 5, 7, 9, 12, 13, 15, 16, 18, 19, and 21
stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Best and Satoh.
We refer to the Office action (Paper No. 16), the final
rejection (Paper No. 21), and the examiner's answer (Paper
No. 26) (pages referred to as "EA__") for a statement of the
Examiner's position, and to the brief (Paper No. 25) (pages
referred to as "Br__") and the reply brief (Paper No. 27)
(pages referred to as "RBr__") for a statement of
Appellants' arguments thereagainst.
Appeal No. 1999-2240
Application 08/909,349
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OPINION
Grouping of claims
The claims are grouped to stand or fall together (Br9).
Claim 1 is analyzed as representative for each ground of
rejection.
35 U.S.C. § 112, first paragraph, lack of written
description
The rejection is based on the written description
requirement of 35 U.S.C. § 112, first paragraph, not the
enablement requirement as stated by Appellants (Br11: RBr2).
The written description rejection under 35 U.S.C.
§ 112, first paragraph, is used to reject when a claim is
amended to recite elements thought to be without support in
the original disclosure. In re Rasmussen, 650 F.2d 1212,
1214-15, 211 USPQ 323, 326 (CCPA 1981). "Satisfaction of
the description requirement insures that subject matter
presented in the form of a claim subsequent to the filing
date of the application was sufficiently disclosed at the
time of filing so that the prima facie date of invention can
fairly be held to be the filing date of the application."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562,
Appeal No. 1999-2240
Application 08/909,349
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19 UPSQ2d 1111, 1115 (Fed. Cir. 1991), citing In re Smith,
481 F.2d 910, 914, 178 USPQ 620, 623 (CCPA 1973). "Although
the exact terms need not be used in haec verba, . . . the
specification must contain an equivalent description of the
claimed subject matter." Lockwood v. American Airlines, 107
F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
Written description is a question of fact. Vas-Cath,
935 F.2d at 1563, 19 USPQ2d at 1116.
The Examiner finds a lack of written description in the
specification for the limitation "said predetermined data
area being smaller than said data area available for
recording the data" as recited in independent claims 1, 5,
7, and 9.
Appellants point to portions of the specification which
describe that the amount of data to be recorded is divided
into two substantially equal portions which are recorded to
the two recording layers such that the final end of data
from the first layer and the start end of data from the
second layer are at approximately the same radial position
(Br11). In this way, the divided data portions are recorded
to the recording layers almost symmetrically, regardless of
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Application 08/909,349
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the capacity of each recording layer (Br11). Because
program areas of respective layers coincide, sector
addresses at the same radial position can be converted by a
simple XOR operation (Br11).
The specification does not expressly state that one
half the amount of the data to be recorded, (the amount of
data that fits in the predetermined data area), is smaller
than the data area available for recording. However, the
description in the specification that the total amount of
data to be recorded is calculated and the pickup is turned
back and moved to a lower layer upon recording a half amount
of data (specification, p. 8, lines 7-13) implies that one
half the data does not completely fill a layer because it
does not describe recording to the end of the first layer.
Thus, we find that Appellants were in possession of
recording one half the data to be recorded to a
predetermined data area, "said predetermined data area being
smaller than said data area available for recording the
data." This limitation means that data is not recorded to
completely fill the first recording layer with the remainder
recorded on the next layer. It is, of course, possible in
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Application 08/909,349
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some cases that one half the amount of data to be recorded
exactly fills the data area available for recording on a
layer; this situation is excluded by the claims.
The rejection of claims 1, 3, 5, 7, 9, 12, 13, 15, 16,
18, 19, and 21 under § 112, first paragraph, is reversed.
35 U.S.C. § 103(a)
Appellants make four main arguments.
First, Appellants argue that Best describes arrangement
of non-data tracking marks and does not describe data
portions arranged in the same manner as the tracking marks
(Br16).
The Examiner responds that it is notoriously well known
that the tracking tracks on the disk are representative of
the data tracks as shown in Figs. 3A-3D of Best (EA6).
Appellants' argument is without merit. The tracking
marks are used to keep the light beam on track (col. 6,
lines 15-16). Focus, tracking, and data signals are derived
from the beam from the optical head (col. 8, lines 58-67),
shown as beam 144 in Fig. 3A. Data is recorded on land 134
between tracking grooves 132 and on land 138 between inverse
tracking grooves 136 (raised ridges) (Fig. 3A) (col. 6,
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Application 08/909,349
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lines 16-19). It is clear that the data lands 134, 138 are
arranged in exactly the same manner as the tracking marks
(the grooves or inverse grooves) because they are
interleaved with the tracking marks. Thus, Best's
statements with respect to the tracking marks (col. 6,
lines 41-56) apply equally to data tracks.
Second, Appellants argue that Best does not mention
recording substantially half the data to be recorded in the
data area of the first recording area (Br16). As to the
Examiner's assertion that half the data would be recorded on
each recording layer (Paper No. 16, pp. 2-3), Appellants
argue that Best nowhere teaches or suggests recording half
the data on the first recording layer, and the Examiner
gratuitously assumes such fact (Br18).
The Examiner responds by first interpreting the claim
limitation (EA6):
The examiner interprets the limitation "substantially
one half of the amount of data to be recorded on the
medium in [sic, is] recorded to a predetermined data
area in the data area of the first recording layer" as
a multi layer disc to record data therein, wherein said
data is divided between the first layer and the second
layer because the first layer in [sic] not sufficient
to record the whole data on said first layer so that
the remainder of the data that could not be recorded on
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Application 08/909,349
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the first layer is recorded on the second layer of the
disk.
It is not understood why the Examiner interprets the
limitation, because the claim is clear on its face: one
half of the data to be recorded is recorded on the first
recording layer and the remainder of the data (the other
half) is recorded on the second recording layer. The claim
limitation of recording substantially one half the data to
the first recording layer says nothing about the size of the
data relative to the capacity of the recording layer. Thus,
the Examiner errs in interpreting the limitation to mean
that the first recording layer is not sufficient to record
the whole amount of data. The data to be recorded could be
less than the data capacity of a recording layer; the claim
requires the data to be divided between the two recording
layers even though it could be recorded on one side. The
data to be recorded could be greater than the data capacity
of one recording layer and less than the data capacity of
both layers together, but this has nothing to do with
dividing the data in half.
The Examiner finds that Best teaches recording data on
a first layer and then continuously on a second layer,
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Application 08/909,349
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"[t]herefore recording part of the data on the first layer,
and the remaining part on the second layer is present in the
reference as shown in column 6 lines 42-56" (EA6-7).
This reasoning does not address the claim limitation.
It is possible to record part of the data on the first layer
and the remainder of the data on the second layer without
recording half of the data on each recording layer. Best
does not describe how data is distributed when recorded and,
thus, Best does not teach or suggest recording half the data
in each recording layer. The limitation of recording half
the data in each recording layer, coupled with the later
limitation of the end and start positions being at
substantially the same radial position, means that program
areas of respective layers coincide so that sector addresses
at the same radial position can be converted by a simple XOR
operation. The Examiner has failed to establish a prima
facie case of obviousness as to the limitation of recording
half the data on each recording layer.
Third, Appellants argue that the Examiner has ignored
the feature of the predetermined data area of the first
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Application 08/909,349
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recording layer area being smaller than the data area
available for recording the data (Br16).
It appears that the Examiner ignores this limitation in
the obviousness rejection because of the 35 U.S.C. § 112,
first paragraph, written description rejection. This
rejection has been reversed and, thus, the limitation must
be addressed.
The limitation of "one half of said amount of data to
be recorded on said medium is recorded to a predetermined
data area in said data area of said first recording layer,
said predetermined data area being smaller than said data
area available for recording the data" requires that one
half of the data to be recorded is less than the capacity of
the data area of the first recording layer. This limitation
distinguishes over recording data until the first recording
layer is filled and then recording the remainder on the
second recording layer. Best does not describe how data is
distributed when recorded and, thus, Best does not teach or
suggest recording half the data in a predetermined data area
which is smaller than the data area of the first recording
layer. Accordingly, the Examiner has failed to establish a
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Application 08/909,349
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prima facie case of obviousness as to this additional
limitation.
Fourth, Appellants argue that neither Best nor Satoh
teaches the limitation that the start position of the data
in one of the recording layers is substantially at the same
radial position as a final position of the data in the other
recording layer (Br17).
The Examiner's position is (EA5):
[Best] shows a multi layer disk wherein the layer[s]
alternate between clockwise and counter clockwise
(therefore the starting position on the first layer
have [sic, has] the same radial position as that of the
finishing position of the second layer), in order to
continuously record a data amount (movie) on the first
and second layers meeting applicant's claimed invention
as cited in column 6 lines 42-56.
See also Paper No. 8, pp. 2-3 ("[Best] also recites that
where one spiral track ends the other spiral track begins .
. . .").
Best discloses (col. 6, lines 44-56):
[T]he spiral pattern . . . may alternate between
clockwise and counter-clockwise spiral patterns on
consecutive data layers. This alternating spiral
pattern may be preferable for certain applications,
such as storage of video data, movies for example,
where continuous tracking of data is desired. In such
a case, the beam tracks the clockwise spiral pattern
inward on the first data surface until the spiral
pattern ends near the inner diameter, and then the beam
Appeal No. 1999-2240
Application 08/909,349
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is refocused on the second data surface directly below
and then the beam tracks the counter-clockwise spiral
pattern outward until the outer diameter is reached.
We find that this description of "continuous tracking
of data" informs one of ordinary skill that the start
position of the data on the second data surface is at
substantially the same radial position as the final position
of the data on the first data surface because only
refocusing on the second data surface (i.e., a focus jump)
is required to go to the second data surface when the first
data surface ends. Tracking would not be continuous if the
system had to hunt for the beginning of the second data
surface at a greater or lesser radius from the end of the
first data surface. Appellants do not address this teaching
of Best.
For the reasons discussed above, we find that Best does
not teach or suggest the limitations of: (1) "substantially
one half of said amount of data to be recorded on said
medium is recorded to a predetermined data area in said data
area of said first recording layer . . . and the remainder
of the data is recorded in said data area of said second
recording layer"; and (2) "said predetermined data area
Appeal No. 1999-2240
Application 08/909,349
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being smaller than said data area available for recording
the data." Therefore, the rejection of claims 1, 3, 5, 7,
9, 12, 13, 15, 16, 18, 19, and 21 under 35 U.S.C. § 103(a)
is reversed.
CONCLUSION
The rejections of claims 1, 3, 5, 7, 9, 12, 13, 15, 16,
18, 19, and 21 are reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1999-2240
Application 08/909,349
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