Ex Parte Kuraoka et al

Patent Trial and Appeal Board

Dec 8, 2014

11245356 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMOTAKA KURAOKA, SHOEI KOBAYASHI,
and MITSUTOSHI TERADA
____________

Appeal 2012-005800
Application 11/245,356
Technology Center 2600
____________

Before MAHSHID D. SAADAT, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–14.2 We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 According to Appellants, the real party in interest is Sony Corporation
(App. Br. 1).

2 An oral hearing was held for this Application on November 20, 2014.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a defect replacement process on a
recording medium without the need to reserve a large area as a spare area
(see Spec. 4–5). Claim 1, which is illustrative of the invention, reads as
follows:
1. A method of a replacement process in a recording
apparatus for recording data in accordance with a recording
request issued by a host apparatus, on a recording medium
having a recording area capable of recording data, the recording
area including a main data area for recording and reading main
data, a spare area for use in the replacement process, and a
management information area for recording replacement
management information for managing the replacement
process, the method comprising:
if an area to be replaced by the replacement process is
detected on the recording medium, checking an available space
in the spare area;
if it is determined in the checking that the spare area has
a sufficient available space, performing by a control in the
recording apparatus the replacement process on the area to be
replaced using the spare area, and updating the replacement
management information recorded in the management
information area such that the replacement is reflected in the
replacement management information;
if it is determined in the checking that the spare area does
not have a sufficient available space, updating the replacement
management information recorded in the management
information area without performing the replacement process
on the area to be replaced using the spare area by recording
status information on the recording medium that indicates a
defective cluster that has not been replaced, disabling control in
the recording apparatus of performing the replacement process,
and transmitting information to the host apparatus such that
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control of the replacement process of the area to be replaced is
transferred to the host apparatus,
wherein the recorded status information additionally
indicates a start and end address of a burst block replacement.
Rejection on Appeal
Claims 1–14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ko (US 6,466,532 B1, issued Oct. 15, 2002), Ito (US
6,160,778, issued Dec. 12, 2000), and Hwang (US 7,739,578 B2). (Ans. 4–
14.)
Appellants’ Contentions
1. With respect to claim 1, Appellants assert that
In claim 1 the same status information that indicates a
defective cluster that has not been replaced is utilized to
indicate a start address of a burst block replacement and an
end address of a burst block replacement. As shown in Figure
10B reprinted above, the status information indicates three
pieces of information, (1) a defective cluster that has not been
replaced, (2) a start address of a burst block replacement, and
(3) an end address of a burst block replacement.
(App. Br. 11.)
2. Appellants further argue the combination of Ko, Ito, and
Hwang does not teach or suggest “the same status information indicating all
three such pieces of information” (id.).
3. Appellants contend the disclosure of Hwang in column 11, as it
relates to Figures 8B and 8C, does not teach using status information
indicating “(1) whether a defective cluster has not been replaced to
additionally indicate (2) a start address of a burst block replacement and (3)
an end address of a burst block replacement” (App. Br. 12).
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4. Appellants argue the patentability of independent claims 5, 8,
and 11 based on the same arguments presented for claim 1 (id. at 13–14).
Issue on Appeal
Has the Examiner erred in rejecting the claims as being obvious over
Ko, Ito, and Hwang because the combination of references does not teach or
suggest the disputed features recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (see Ans. 14–15). However, we highlight and address specific
findings and arguments for emphasis as follows.
The Examiner relies on Figure 9 and the disclosure in columns 11 and
12 of Hwang for teaching the recited status information to “indicate a
defective cluster that has not been replaced” (Ans. 14). The Examiner
further points to Hwang’s disclosure of the high-order 8 sectors for the valid
file A and the low-order 8 sectors for the valid data file B shown in Figures
8A–8C and their corresponding description in column 11 for disclosing the
recited “recorded status information additionally indicates a start and end
address” (id.).
We understand the Examiner’s rejection to be based on the broadest
reasonable interpretation of the claim term “status information” as a general
status field including entries to indicate a defective cluster that has not been
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replaced, as well as the start address and the end address of a burst block
replacement. In other words, including different fields in the “status
information” allows for different entries in corresponding sub-parts of the
same field to indicate the three different pieces of information. Appellants’
reliance on their Figure 10B to show that the same status information is used
to indicate all three pieces of information (App. Br. 9–10; Reply Br. 4–5)
merely shows the same fields are used for different defect list (DFL) entries,
rather than the same entries are used for the disputed status information (see
Spec. 40–41, Figs. 10A, 10B).
As such, we are not persuaded by Appellants’ arguments (see App.
Br. 11; Reply Br. 4) that the claim limitations require “the same status
information” to indicate the three different pieces of information or the
status information is anything other than the corresponding entries into the
fields associated with the specific information block. Therefore, the
Examiner’s position that the status field of Ito may be modified to include
Hwang’s position information of the lower and higher -order sectors to
indicate the start and end addresses of a burst block replacement in the status
field of Ito is reasonable.
For the above-stated reasons, we are not persuaded by Appellants’
arguments that the Examiner erred in finding the combination of Ko, Ito, and
Hwang teaches or suggests the disputed features of claim 1. Therefore, we
sustain the 35 U.S.C. § 103(a) rejection of claim 1, and claims 2–14 not
argued separately (see App. Br. 13–14).
ADDITIONAL COMMENTS
We observe claim 1 calls for checking an available space in the spare
area and if it is determined that the spare area has a sufficient available
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space, performing the replacement process. Claim 1 further recites
performing the updating step without the replacement process if the spare
area does not have a sufficient available space. However, we observe the
updating step without the replacement process is not required because it is
presented in conditional language. Claims 5, 8, and 11 are apparatus claims
and recite similar functionalities recited in the process steps of claim 1.
Normally the prior art need not describe a conditional step set forth in a
method claim if, after giving the claim its broadest reasonable construction,
the method as claimed does not invoke them. Cf Ex parte Katz, 2010-
006083, 2011 WL 514314, at *4 (BPAI 2011) (non-precedential) (citing In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). See
also Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed.Appx. 603,
607 (Fed. Cir. 2007) (unpublished) (“[i]t is of course true that method steps
may be contingent. If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed.”). In the instant case, when the
method claims are given their broadest reasonable interpretation, they are
broad enough to cover a method which does not update the replacement
management information by recording status information. See also MPEP
§ 2111.04 (explaining that claim scope is not limited by claim language that
suggests or makes optional but does not require steps to be performed).
Therefore, because updating the replacement management
information by recording status information is conditioned on an event that
may not occur (i.e., the spare area does not have sufficient available space),
the last step including the recorded status information is optional. That is,
the prior art does not need to disclose updating the replacement management
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information without performing the replacement process by recording status
information. Therefore, the contentions that the combination of Ko, Ito, and
Hwang fails to disclose using the same status information to indicate the
three different pieces of information is not commensurate in scope with
claim 1.
DECISION
The Examiner’s decision to reject claims 1–14 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cdc