Ex parte Kikuchi

Board of Patent Appeals and Interferences

Aug 30, 2001

08602366 (B.P.A.I. Aug. 30, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKIHIRO KIKUCHI
____________
Appeal No. 1999-0063
Application No. 08/602,366
____________
BRIEF
____________
Before JERRY SMITH, RUGGIERO, and LEVY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 16-25, which are all of the claims pending in the
application. Claims 1-15 have been canceled. An amendment
filed August 7, 1997 after final rejection was denied entry by
the Examiner.
The claimed invention relates to a method and apparatus
for controlling the traveling of a tape in a data recording
apparatus in which a travel request signal is initially
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2
received which includes a travel target position. A
difference is calculated between an identified present tape
position and the target position and a determination is made
as to whether the calculated difference exceeds a
predetermined value. If so, the tape is moved to a position
between the target position and the present position. On
receipt of a write request signal, the tape is then moved to
the target position where data is recorded on the tape.
Claim 16 is illustrative of the invention and reads as
follows:
16. An apparatus for controlling the travelling [sic.
traveling] of a tape in a data recording apparatus, the
apparatus comprising:
means for receiving a travel request signal, the travel
request signal including a target position representing a
position on the tape at which data is to be recorded or
reproduced;
means for identifying a present position of the tape;
means for calculating a difference between the present
position and the target position to produce a difference
value, and for determining if the difference value is larger
than a predetermined value;
means for producing a control signal only if it is
determined that the difference value is larger than the
predetermined value;
Appeal No. 1999-0063
Application No. 08/602,366
At page 4 of the Brief, Appellant directs arguments to an “objection”1
to claim 16 made by the Examiner in the Advisory Office action mailed
September 8, 1997 (Paper No. 10). We decline to rule on the merits of these
arguments since claim objections are petitionable matters not appropriate for
decision on appeal. Further, while the substance of the Examiner’s objection
could conceivably have led to a rejection under the second paragraph of 35
U.S.C. § 112, no such rejection is before us.
3
means for moving the tape to a position between the
target position and the present position only if the travel
request signal is received and the control signal is produced;
means for receiving a write request signal indicating a
request to record the data on the tape;
said means for moving the tape being operable to move the
tape to the target position when the write request signal is
received; and
means for recording the data on the tape after the tape
is
moved to the target position.
The Examiner relies on the following prior art:
Inazawa et al. (Inazawa) 4,958,244
Sep. 18, 1990
Yoshioka et al. (Yoshioka) 5,384,673 Jan. 24,
1995
Claims 16-25 stand finally rejected as being based on an
inadequate disclosure under the first paragraph of 35 U.S.C.
§ 112. Claims 16-25 stand further finally rejected under 35
U.S.C. § 103 as being unpatentable over Yoshioka in view of
Inazawa.1
Appeal No. 1999-0063
Application No. 08/602,366
The Appeal Brief (Paper No. 13) was filed December 1, 1997. In2
response to the Examiner’s Answer (Paper No. 14) dated February 10, 1998, a
Reply Brief (Paper No. 16) was filed April 9, 1998, which was acknowledged and
entered by the Examiner without further comment in the communication (Paper
No. 18) dated July 8, 1998.
4
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the Examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth
in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that Appellant’s specification in this application
describes the claimed invention in a manner which complies
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5
with the requirements of 35 U.S.C. § 112. We are also of the
view that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 16-25. Accordingly, we reverse.
We consider first the Examiner’s rejection of claims 16-
25 under the “written description” requirement of the first
paragraph of 35 U.S.C. § 112. The function of the written
description requirement of the first paragraph of 35 U.S.C. §
112 is to ensure that the inventor has possession, as of the
filing date of the application relied on, of the specific
subject matter later claimed by him. In re Wertheim, 541 F.
2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
The genesis of the Examiner’s assertion of the lack of
compliance with the statutory written description requirement
was the submission of new claims 16-25 which added the
language “travel request signal” which, in the Examiner’s
view, has no support in the original disclosure. We agree
with Appellant (Brief, pages 9-11; Reply Brief, pages 5 and
6), however, that the Examiner’s position is without support
on the record. Initially, we find to be correct Appellant’s
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assertion that there is no requirement that language added by
amendment to claims be in the originally filed claims, as
incorrectly asserted by the Examiner. In any case, our review
of the language of the originally filed claims 1-15 in fact
reveals clear support for the added “travel request signal”
language in later submitted claims 16 and 21. Original claims
constitute their own description. In re Koller, 613 F.2d 819,
823, 204 USPQ 702, 706 (CCPA 1980). Although the exact
language “travel request signal” is not used in the original
claims, original claim 1 clearly provides description support
by reciting “a first command signal for receiving a position
traveling request....” Further, contrary to the Examiner’s
concern (Answer, page 5) that the language in the later
submitted claims was an attempt to improperly cover both
rewind and forward tape movement, we point out that originally
filed claim 4 specifies that the position traveling request
“is a rewind request or a fast-forward request.”
Further, notwithstanding our finding that the originally
filed claims in this application provide clear support for the
language added in claims 16-25, we are in agreement with
Appellant that the disclosure at page 27, lines 8-20 and page
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29, lines 9-16 in connection with Figures 18A-18D, 19A-19C,
and 20A-20C also provides a clear description of the “travel
request signal” language. Accordingly, we find Appellant to
be correct in the assertion that the originally filed
disclosure provides written description support for the
invention as claimed and, therefore, the Examiner’s rejection
of claims 16-25 under the first paragraph of 35 U.S.C. § 112
is not sustained.
We will also not sustain the rejection of claims 16-25
under 35 U.S.C. § 103. The Examiner has failed to set forth a
prima facie case of obviousness. 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 (CCPA 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
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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.), 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 Hosp. Sys., Inc. v. Montefiore Hosp., 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).
In response to the Examiner’s obviousness rejection of
the appealed claims, Appellant initially attacks (Brief, page
13; Reply Brief, page 10) the Examiner’s establishment of any
motivation for the proposed combination of Yoshioka and
Inazawa. After reviewing the applied prior art references in
light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Briefs. As the supposed
rationale for the proposed combination, the Examiner suggests
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(Answer, page 4) that the skilled artisan would be led to
modify Yoshioka by the desire to reduce the travel speed of
the tape medium as stated in the Abstract of Inazawa. We
agree with Appellants, however, that the Examiner’s line of
reasoning is devoid of any indication as to why one would want
to reduce tape travel speed in Yoshioka. To the contrary, our
review of Yoshioka reveals that the object of the Yoshioka’s
invention is to increase speed of access to information on the
tape medium (Yoshioka, Abstract, column 6, lines 48-53).
We further agree with Appellant that, even assuming
arguendo that the skilled artisan would be motivated to
combine Yoshioka with Inazawa, such a proposed combination
would not result in the invention as claimed. First of all,
we find no indication in the Answer as to how and where the
tape positioning technique of Inazawa would be utilized in the
system Of Yoshioka to arrive at the claimed invention.
Secondly, our interpretation of the disclosure of Inazawa
coincides with that of Appellant, i.e. the tape in Inazawa
travels back and forth over the target position rather being
positioned at a location between the target and present
positions as recited in Appellant’s claims. Further, even
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assuming that the intermediate tape positions in the search
procedure illustrated in Figures 10A-10C in Inazawa could be
construed as between a present and target position as the
Examiner seems to suggest, all of the limitations of the
appealed claims would still not be met. Each of the
independent claims 16 and 21, in addition to setting forth the
“in between” tape positioning feature discussed above, also
has a specific recitation of the necessary conditions for
initiating tape movement. As called for in the claims, a
control signal is produced only if the difference between a
present position and a target position exceeds a predetermined
value, and the tape is moved only if this control signal and a
travel request signal are received. We find no suggestion of
these tape movement conditions in either of the applied
Yoshioka and Inazawa references.
Since, for the above reasons, it is our view that all of
the limitations of the appealed claims are not taught or
suggested by the applied references, we do not sustain the 35
U.S.C. § 103 rejection of independent claims 16 and 21, nor of
claims 17-20 and 22-25 dependent thereon.
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In summary, we have not sustained either of the
Examiner’s rejections of the claims on appeal. Therefore, the
Examiner’s decision rejecting claims 16-25 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
lp
Appeal No. 1999-0063
Application No. 08/602,366
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FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
Leticia
Appeal No. 1999-0063
Application No. 08/602,366
APJ RUGGIERO
APJ LEVY
APJ JERRY SMITH
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: August 14, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT