Ex Parte KAYL

Board of Patent Appeals and Interferences

Mar 7, 2003

08685162 (B.P.A.I. Mar. 7, 2003)

1 Application for patent filed July 23, 1996.
0The 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for publication and is not binding precedent of the Board.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 THOMAS A. KAYL
____________
Appeal No. 2000-2293
Application No. 08/685,1621
____________
ON BRIEF
____________
Before FLEMING, GROSS, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-32, which are all of the claims pending in
this application.
We reverse.
BACKGROUND
Appellant’s invention is directed to a disc operating device
in which a housing and a disc holding tray are connected by a
break-away mechanism for preventing damage to the tray in its
Appeal No. 2000-2293
Application No. 08/685,162
2
extended position upon impact of an external force. As depicted
in figure 1B, the disc operating device includes housing 12 that
contains multi-part disc holding tray 15 (specification, page 5).
The tray has a moveable first portion 16 that engages with the
housing and, through break-away mechanism 20, is coupled to
second portion 18 for holding a disc (id.). Thus, any external
contact force that would normally damage the disc holding tray is
isolated from moveable tray portion 16 by the break-away
mechanism.
Representative independent claim 1 is reproduced below:
1. A disc operating device comprising:
a housing supporting a disc information handling
mechanism; and
a disc holding tray, further comprising:
a first portion substantially internal and movable
within the housing of the disc operating device;
a second portion, for supporting a disc, that
extends and retracts from the housing; and
a break-away mechanism coupling the first portion
to the second portion, the break-away mechanism being
adapted for preventing damage to the disc holding tray
upon impact of an external force to the second portion
when the second portion is extended from the housing.
Appeal No. 2000-2293
Application No. 08/685,162
2 Translation of this Japanese Kokai reference (provided by Schreiber
Translations, Inc.) is relied upon and accompanies this decision.
3
The Examiner relies on the following references in rejecting
the claims:
Sasaki2 61-94262 May 13, 1986
Kawamura et al. (Kawamura) 5,737,293 Apr. 7, 1998
(filed Sep. 19, 1995)
Claims 1-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sasaki in view of Kawamura.
Rather than reiterate the viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we make reference
to the answer (Paper No. 19, mailed March 17, 2000) for the
Examiner’s reasoning, and to the appeal brief (Paper No. 18,
filed February 2, 2000) and the reply brief (Paper No. 20, filed
May 19, 2000) for Appellant’s arguments thereagainst.
OPINION
Appellant argues that one skilled in the art would not be
motivated to combine Sasaki and Kawamura since the references
solve separate problems which are also different from the one
solved by Appellant (brief, page 7). Appellant further points
out that Sasaki’s disk table is connected by a fulcrum shaft to a
supporter and rotates around the shaft when extended out in order
Appeal No. 2000-2293
Application No. 08/685,162
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to facilitate the loading of disks in case the player is at a
high place (brief, pages 6 & 7). Referring to Kawamura,
Appellant argues that holding hooks 20, located at the end of a
pair of spring reeds 22, are only for grabbing a bare disc or
hooking onto notches in a disc cartridge when either a disc or a
cartridge is inserted (brief, page 7). Additionally, Appellant
asserts that even if the holding hooks of Kawamura were combined
with the tilting tray of Sasaki, the result would not have taught
the claimed break-away mechanism adapted for preventing damage to
the disk holding tray upon impact of an external force (brief,
page 8).
In response to Appellant’s arguments, the Examiner asserts
that Kawamura discloses a break-away mechanism as coupling 20
which “inherently shows that the break-away mechanism is adapted
for preventing damage to the disc holding tray upon impact of the
external force as claimed because elastically material is
flexible” (answer, page 6). The Examiner reasons that since
Kawamura shows the break-away mechanism for preventing damage to
the disc holding tray, it would have been obvious to adapt
Sasaki’s break-away mechanism for preventing damage to the disc
holding tray as taught by Kawamura (id.).
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Application No. 08/685,162
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The initial burden of establishing reasons for
unpatentability rests on the Examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). The Examiner
must produce a factual basis supported by teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration, consistent with the holding in Graham v. John
Deere Co., 383 U.S. 1 (1966). Our reviewing court requires this
evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). However, “the Board must not only assure that the
requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the agency’s conclusion.” In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
Our review of Sasaki confirms that the reference relates to
a disk loading device with a tilting disk tray that allows easily
installing and removing disks when the player is at a high place.
As depicted in Figure 6, disk table 20 advances from and retreats
back into opening 12 on the front of the disk player main body 11
(page 5). In its extended position, disk table 20 rotates around
a hinge formed by fulcrum shaft 36 and fulcrum hole 37 on both
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Application No. 08/685,162
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sides of the tray to a tilted position (page 7 and fig. 5). It
is clear from the disclosure of Sasaki that, when extended
outward, the table remains in its tilted position all the time.
Therefore, the rotating hinge of Sasaki is not a break-away
mechanism that couples the first internal portion within the
housing to the second disc supporting portion for preventing
damage to the disk holding tray upon impact of an external force.
In fact, Sasaki provides for coupling a disk tray to the housing
through a hinge that forces the tray into a tilted position when
extended from the housing.
Kawamura, on the other hand, relates to a disc loading
apparatus that allows loading either a naked disc or a disc
cartridge. The disclosed apparatus includes a housing with an
opening in the front, side walls that function as slide guide for
holding means 2 and as control rail for regulating the opening
and closing of holding hooks 20 into wall recesses 7 (Fig. 1 and
col. 4, lines 1-13). As depicted in Figures 6-9, the edges of
disc 12 press against holding hooks 20 and push them into
recesses 7 as a naked disc is inserted in the opening, and allow
hooks 20 to take their original position and hold the edge of the
disc as the disc is completely positioned inside the holding
means (col. 6, lines 21-36). Kawamura in Figures 10-13 further
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Application No. 08/685,162
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teaches that a disc cartridge 9 may alternatively be used that
presses outwardly against holding hooks 20 until the cartridge
advances into the housing and hooks 20 return to fit into notches
10 on the sides of the cartridge (col. 6, line 62 to col. 7 line
2). However, our review of the reference reveals no teaching
related to using the holding hooks as a break-away mechanism for
preventing damage to the disc holding tray upon impact of an
external force when the disc supporting portion is extended from
the housing, as recited in claim 1.
As the Federal Circuit states, "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The court further reasons in Karsten Mfg.
Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286,
1293 (Fed. Cir. 2001) that for an invention to be obvious in view
of a combination of references, there must be some suggestion,
motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the references and
combine them in the way that would produce the claimed invention.
Appeal No. 2000-2293
Application No. 08/685,162
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See also In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
Based on these well-settled principles, we disagree with the
Examiner that, because Kawamura’s holding hooks 20 elastically
fit around a naked disc or on holding notches of a disc
cartridge, the hooks constitute the break-away mechanism for
preventing damage to the disc holding tray. The Examiner’s
position is that the elastic holding hooks of Kawamura form a
break away mechanism that is inherently adapted for preventing
damage to the disc holding tray and may be combined with the
rotating hinge of Sasaki. Although Sasaki discloses a tilting
disc holding tray, the Examiner has failed to establish why one
of ordinary skill in the art would have found it obvious to use
the holding hooks of Kawamura with the disk table of Sasaki.
Even if the Examiner is contending that holding hooks 20 of
Kawamura prevent damage to the inserted disc or the cartridge,
such protection is available only when the disc or the cartridge
is inserted in the housing. The holding hooks, at best, prevent
damage to the tray from its own lateral movement, but not from
external force when the disc supporting portion of the tray is
extended from the housing. Kawamura, in fact, merely discloses a
mechanism having elastic hooks for receiving a disc or a
Appeal No. 2000-2293
Application No. 08/685,162
9
cartridge without any rotational functions while Sasaki provides
for a disc table that tilts about a hinge that connects the disc
table to a table support placed within the main body of the disc
player. We agree with Appellant (reply brief, page 2) that
nothing in the references would have taught or motivated one of
ordinary skill in the art to use the hooks of Kawamura in the
tilting tray of Sasaki to form a break-away mechanism that
couples the moveable portion to the disc supporting portion of
the holding tray and is adapted for preventing damage to the tray
from external forces, as recited in claim 1.
We note that independent claim 18 also recites a disc
supporting tray including a break-away mechanism attached to the
disc holding portion via an intermediate coupling portion.
Independent method claim 31 similarly requires the step of
coupling a disc supporting tray, via a break-away mechanism, to a
moveable tray withing the housing such that the disc supporting
tray extends out from the housing. Similar to claim 1, these two
claims require that the break-away mechanism be adapted for
preventing damage to the disc holding/supporting portion upon
impact of an external force to the tray. As discussed above with
respect to claim 1, Sasaki and Kawamura fail to disclose or
suggest the claimed break-away mechanism for preventing damage to
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Application No. 08/685,162
10
the disc holding tray upon impact of an external force when the
disc supporting portion is extended from the housing.
Based on our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
necessary teachings and suggestions to combine the holding hooks
of Kawamura with the tilting disk tray of Sasaki and form the
claimed break-away mechanism, are not shown. Accordingly, we do
not sustain the 35 U.S.C. § 103 rejection of independent claims
1, 18 and 31, as well as claims 2-17, 19-30 and 32 dependent
thereon, over Sasaki and Kawamura.
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Application No. 08/685,162
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-32 under 35 U.S.C. § 103 is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2000-2293
Application No. 08/685,162
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Schwegman, Lundberg, Woessner
& Kluth
P.O. Box 2938
Minneapolis, MN 55402