Ex parte KUTA et al.

Board of Patent Appeals and Interferences

Jun 16, 1999

08111176 (B.P.A.I. Jun. 16, 1999)

Application for patent filed August 24, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LEROY KUTA, ROBERT YOUNGQUIST,
and MICHAEL KELLY
__________
Appeal No. 96-1890
Application 08/111,1761
__________
ON BRIEF
__________
Before THOMAS, KRASS, and RUGGIERO, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 3, 6 through 11 and 18 through 20. Claims 4,
Appeal No. 96-1890
Application No. 08/111,176
2
5 and 12 through 17 have been withdrawn as directed to a
nonelected invention.
The invention pertains to a method of identifying
magnetic tape characteristics. More particularly, the
invention employs patterns of magnetically polarized stripes
on the tape. As the tape is driven past a read/write head,
the head reads the pattern on the tape and decodes the
information in the pattern. The tape drive then responds
appropriately to the information in the reading/writing of
data on the tape.
Representative independent claim 1 is reproduced as
follows:
1. A method of providing information about
characteristics of a length of magnetic tape to a magnetic
tape drive having an arcuate scanning read/write head for
reading/writing on arcuate data tracks which are substantially
perpendicular to the length of the tape, comprising the steps
of:
providing a length of magnetic tape in a magnetic
recording drive, wherein the tape includes a pattern
containing encoded information, wherein the pattern is
positioned on at least one portion of the tape, the pattern
comprising a plurality of magnetically polarized stripes
parallel to the length of the tape and transversely spaced
from each other across the width of the tape, wherein the
stripes have a uniform and continuous direction of magnetic
polarization in the plane of the tape and substantially
perpendicular to the length of the tape, and wherein the
pattern is long enough to provide for the arcuate scanning
Appeal No. 96-1890
Application No. 08/111,176
3
head to pass over the pattern several times;
passing the tape by the arcuate scanning read/write;
reading the pattern on the tape; and
using the magnetic tape drive to decode the information
in the pattern.
The examiner relies on the following references:
Irby 2,876,295 Mar. 3, 1959
Keidl 4,313,140 Jan. 26, 1982
Moeller et al. 4,422,111 Dec. 20, 1983
(Moeller)
Thomas 5,327,305 Jul. 5, 1994
(filed Aug. 14, 1992)
Akiyama 58-114303 Jul. 7, 1983
(Japan)
Claims 1 through 3, 6 through 11 and 18 through 20 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner cites Irby, Thomas and Akiyama with regard to
claims 1, 7 and 9, adding Moeller to this combination with
regard to claims 3, 6, 8, 10 and 18 through 20. The examiner
cites Irby, Thomas, Akiyama and Keidl with regard to claim 2,
adding Moeller to this combination with regard to claim 11.
Appeal No. 96-1890
Application No. 08/111,176
The reply brief, filed January 17, 1996, was refused2
entry by the examiner and has, accordingly, not been
considered by us.
4
Reference is made to the brief and answer for the2
respective positions of appellants and the examiner.
OPINION
We reverse.
The examiner contends, with regard to independent claims
1 and 7, that Irby’s Figure 3 meets all of the limitations of
the claims but for a showing of a pattern containing encoded
information in a plurality of transversely spaced stripes
parallel to the length of the tape having a transverse
direction of magnetization, and reading and decoding the
pattern information. Therefore, the examiner relies on Thomas
which shows a pattern, in Figure 3, which contains encoded
information in a plurality of transversely spaced stripes
parallel to the length of the tape. Thomas also teaches the
reading and decoding of pattern information. Therefore, the
examiner concludes, it would have been obvious to modify the
system of Irby by including the teachings of Thomas to use a
pattern containing encoded information in a plurality of
transversely spaced stripes parallel to the length of the
Appeal No. 96-1890
Application No. 08/111,176
5
tape, and reading and decoding the pattern information.
The combination of Irby and Thomas appears, to us, to be
improper since the tape in Figure 3 of Thomas (having the
stripes parallel to the length of the tape) appears to relate
to linear recording whereas Irby is concerned with arcuate
recording. Therefore, the skilled artisan would not have
combined these disparate recording methods.
Nevertheless, and more importantly, independent claims 1
and 7, as well as claim 18, all require that the magnetically
polarized stripes have a “uniform and continuous” direction of
magnetic polarization in the plane of the tape and
substantially perpendicular to the length of the tape.
Neither Irby nor Thomas contains such a teaching or
suggestion. The examiner relies on Akiyama for such a
teaching. More specifically, the examiner points to Figure 3
of Akiyama for a teaching of recording transversely spaced
stripes parallel to the length of the tape having a transverse
direction of magnetization.
It is clear to us in reviewing Figure 3, as well as every
other Figure of Akiyama, that Akiyama shows the direction of
magnetic polarization as alternating rather than “uniform and
Appeal No. 96-1890
Application No. 08/111,176
6
continuous,” as required by the instant claims. While the
examiner apparently agrees that Akiyama teaches alternating
magnetization directions [see bottom of page 10 of the
answer], the examiner states that Akiyama “does not teach they
must alternate.” The examiner further contends [page 11-
answer] that “since Akiyama can record alternating
transitions, it can clearly record non-alternating
transitions.”
We find the examiner’s reasoning to be faulty. While
Akiyama does not teach that the magnetic polarization
direction must alternate, it is clear that this is the only
embodiment disclosed or suggested by Akiyama. Therefore, even
if one could modify Akiyama to provide for non-alternating
transitions, as opined by the examiner, the question arises as
to why would the skilled artisan do so? Where is the
suggestion to the skilled artisan to do so, other than the
suggestion by appellants’ own disclosure? A finding of
obviousness, within the meaning of 35 U.S.C. § 103, requires
more than that one “could” modify the prior art to arrive at
the claimed subject matter. There must be a suggestion
somewhere in the prior art or within the skill and knowledge
Appeal No. 96-1890
Application No. 08/111,176
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of the artisan to do so. The examiner has provided us with no
such suggestion for providing a “uniform and continuous”
direction of magnetic polarization, as claimed. Accordingly,
the examiner has not established a prima facie case of
obviousness.
The references to Moeller and Keidl do not provide for
the deficiencies of the principal references noted supra.
Appeal No. 96-1890
Application No. 08/111,176
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The examiner’s decision rejecting claims 1 through 3, 6
through 11 and 18 through 20 under 35 U.S.C. § 103 is
reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph F. Ruggiero )
Administrative Patent Judge )
tdc
Appeal No. 96-1890
Application No. 08/111,176
9
Eric D. Levinson
3M Office of Intellectual Prop. Counsel
P.O. Box 33427
St. Paul, MN 55133-3427