Ex Parte Keizer et al

Patent Trial and Appeal Board

May 4, 2016

12357168 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/357, 168 0112112009 Richard Lyle Keizer
136310 7590 05/06/2016
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
STL14686 1160
EXAMINER
TZENG, FRED
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
05/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD LYLE KEIZER, MUST AF A CAN OZTURK, and
PUSKALPRASADPOKHAREL
Appeal2014-008051
Application 12/357,168
Technology Center 2600
Before LARRY J. HUME, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) the Examiner's Final
Rejection of claims 1, 16, 20, and 21. Claim 13 is cancelled, and claims 2-
12, 14, 15, and 17-19 are objected to. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Seagate Technology as the real party in interest. (App.
Br. 2.)
Appeal2014-008051
Application 12/357, 168
THE INVENTION
Appellants' disclosed and claimed invention is directed to generation
of a frequency acquisition error compensated position error signal using
servo burst signals in a servo control loop. (Abstract.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A circuit comprising:
a demodulation module that at least partially removes an effect
of frequency acquisition error on a position error signal
(PES) using servo readback signals read from a sequence
of at least one part of a split first servo burst pattern, a
second servo burst pattern, and another part of the split
first servo burst pattern on a moving storage media to
generate a frequency acquisition error compensated PES
component.
REJECTION
The Examiner rejected claims 1, 16, 20, and 21 under 35 U.S.C.
§ 102(b) as being anticipated by Cheung et al. (US 5,774,298, issued
June 30, 1998). (Final Act. 3--4.)2
ISSUE ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issue: 3
2 The Examiner objected to claims 2-12, 14, 15, and 17-19 as being
dependent upon a rejected base claim, but would allow those claims if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims. (Final Act. 5.)
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Apr. 22, 2014); the Reply
2
Appeal2014-008051
Application 12/357, 168
Whether the Examiner cited portions of Cheung discloses the
independent claim 1 limitation, "using servo readback signals read from a
sequence of at least one part of a split first servo burst pattern, a second
servo burst pattern, and another part of the split first servo burst pattern on a
moving storage media," and the similar limitation recited in independent
claims 16 and 20. (Br. 4--5.)
ANALYSIS
For the claim limitation at issue, the Examiner relies on the disclosure
in Cheung of using servo burst patterns distributed along the tracks of a
magnetic tape. (Final Act. 3--4; Ans. 2-3; Cheung Figs. 8, 9, col. 11, 1. 34--
col. 12, 1. 8.) Appellants argue that the particular burst patterns relied on by
the Examiner do not include "another part of the split first servo burst
pattern," as required by the claims. The Examiner responds that, under a
broad interpretation of the claim language, the particular burst patterns relied
upon do comply with the claim requirement. (Ans. 2.) Appellants'
argument is persuasive - none of the burst patterns the Examiner points to
satisfy the requirement, "another part of the split first servo burst pattern."
None of the burst patterns used in Cheung satisfy the sequence: "one part of
a split first servo burst pattern, a second servo burst pattern, and another part
of the split first servo burst pattern."
As Appellants correctly point out, the burst patterns relied upon by the
Examiner- e.g., "P12 is the first part of the splitted first servo burst Pl, and
Brief (filed Jul. 18, 2014); the Final Office Action (mailed Nov. 19, 2013);
and the Examiner's Answer (mailed Jul. 16, 2014) for the respective details.
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Appeal2014-008051
Application 12/357, 168
P 11 is the another part of the splitted first servo burst Pl (see figure 8)" -
are actually separate portions of two different burst patterns on separate
tracks, even though both patterns are labelled "Pl." (Ans. 2; App. Br. 6.)
Therefore, on the record before us, we are constrained to find the
Examiner errs in rejecting independent claims 1, 16 and 20.
CONCLUSION
For the reasons stated above, we do not sustain the anticipation
rejection of independent claims 1, 16, and 20. We also do not sustain the
anticipation rejection of claim 21, which depends from claim 1.
DECISION
The Examiner's rejection of claims 1, 16, 20, and 21 is reversed. 4
REVERSED
4 Should there be further proceedings on this Application, the Examiner may
wish to consider whether certain of the claims are subject to the
requirements of 35 U.S.C. § 112, i-f 6 and, if so, whether such claims are in
the form of a "single means claim," and thus invalid. See Williamson v.
Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en bane); In re Hyatt,
708 F.2d 712, 714-715 (Fed. Cir. 1983).
4