Ex Parte Lin

Board of Patent Appeals and Interferences

Jan 12, 2010

10129862 (B.P.A.I. Jan. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHU LIN
____________

Appeal 2009-005234
Application 10/129,862
Technology Center 2600
____________

Decided: January 13, 2010
____________

Before MAHSHID D. SAADAT, KARL D. EASTHOM, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005234
Application 10/129,862

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-33, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed April 14, 2008) and the Answer
(corrected and mailed August 6, 2008) for the respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the
Brief have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a method for media disaster recovery,
such as power outage, when recording data to re-writable disk media. The
re-writable disk media has a sequence of Recordable Units (RU) and each
RU in the sequence has a maximum data capacity. When data has been
completely recorded in an RU, RU metrics can be computed. Subsequently,
the computed RU metrics can be stored in an RU information file in the re-
writable disk media. Responsive to a media disaster recovery, a disaster RU
can be identified in an RU information file. The disaster RU can be an RU
in which data had been incompletely recorded during the media disaster.
Upon identifying the disaster RU, the sequential recording of data can
resume in an RU next in sequence to the disaster RU. The step of
2
Appeal 2009-005234
Application 10/129,862

identifying the disaster RU can include ascertaining by the metrics in the RU
information file an RU in which data had been most recently completely
recorded; and, determining the disaster RU to be an RU next in sequence to
the ascertained RU. See Spec. 3.
Claim 1 is illustrative of the invention and reads as follows:
1. A method for media disaster recovery when recording data to
re-writable disk media comprising the steps of:
defining a sequence of recordable units (RUs) in the re-writable disk
media, each RU in said sequence having a maximum data capacity;
sequentially recording data in each RU in said sequence;
computing RU metrics for each RU in which data has been
completely recorded and storing said computed metrics in an RU
information file in the re-writable disk media;
responsive to a media disaster, identifying with said RU information
file a disaster RU in which data had been incompletely recorded during said
media disaster; and,
resuming said sequential recording of data in an RU next in sequence
to said disaster RU.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Tamiya US 4,932,014 Jun. 5, 1990

Matsumoto US 5,517,632 May 14, 1996

Obata US 5,553,045 Sep. 3, 1996

Itoi US 5,590,101 Dec. 31, 1996

Ito US 6,243,340 B1 Jun. 5, 2001
(filed Jul. 24, 1998)
3
Appeal 2009-005234
Application 10/129,862

Ando US 6,353,702 B1 Mar. 5, 2002
(filed Jul. 7, 1999)

1. The Examiner rejected claims 1, 2, 3, 10, 12, 13, 14, 21, 23, 24,
25, and 32 under 35 U.S.C. § 103(a) as being unpatentable over Obata.
2. The Examiner rejected claims 7, 18, and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Obata in view of Matsumoto.
3. The Examiner rejected claims 6, 17, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Obata in view of Tamiya.
4. The Examiner rejected claims 8, 11, 19, 22, 30, and 33 under 35
U.S.C. § 103(a) as being unpatentable over Obata in view of Ito.
5. The Examiner rejected claims 4, 15, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Obata in view of Itoi.
6. The Examiner rejected claims 5, 16, and 27 U.S.C. § 103(a) as
being unpatentable over Obata in view of Ando.
7. The Examiner rejected claims 9, 20, and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Obata in view of Ito and Ando.

ISSUE
The pivotal issue before us is whether Appellant has demonstrated
that the Examiner erred in determining that Obata teaches the step of
“responsive to a media disaster, identifying with said RU information file a
disaster RU in which data had been incompletely recorded during said media
disaster,” as recited in claim 1.

4
Appeal 2009-005234
Application 10/129,862

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Obata teaches that based on the detection of turbulence of the tracking
error signal detected by the optical system “and detecting the
discontinuity of the address information reproduced from the
recording track,” the defective cluster is discriminated (col. 8, ll. 8-
13).
2. Obata teaches that the recording medium has a managing information
area for storing information of start addresses, end addresses, and link
information corresponding to each of the recorded clusters (col. 1, l.
64-col. 2, l. 17).
3. Obata’s managing information file is used to determine the defective
cluster (col. 8, ll. 8-13; col. 1, l. 64-col. 2, l. 17, col. 7, ll. 30-52).
4. Obata teaches that if a defective cluster is identified, the data of the
start address and end address of the address data is recorded in a
manner shown in Figure 3 (col. 7, ll. 31-43).
5. Appellant’s Specification describes an RU.IFO file which includes the
start addresses of the RUs and their size (Spec. 12:16-27).
6. Obata teaches that if the defective cluster is detected in the recording
track in nth cluster, then the address data is added, whereby the
previous (n-1)th cluster is defined as the end address and the
connection data indicates such part number that the recording begins
with an (n+l)th cluster (one cluster ahead) (col. 7, ll. 44-52).
5
Appeal 2009-005234
Application 10/129,862

7. Obata teaches that the recording is continued from the n+l cluster, and
the nth cluster is identified as the defective cluster by the apparatus
(col. 7, ll. 44-52).
8. Obata teaches that the identified defective cluster is based on the
managing information (i.e., start address, end address, and link
information) (col. 1, l. 65-col. 2, l. 17; col. 7, ll. 31-52).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).
The claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
The claims, of course, do not stand alone. Rather, they
are part of “a fully integrated written instrument” . . . consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part.” . . . . [T]he
specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (Citations
omitted).
6
Appeal 2009-005234
Application 10/129,862

Although claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).

ANALYSIS
I. The 35 U.S.C. § 103(a) rejection of independent claim 1 based
on Obata.

Obata teaches detecting the defective cluster partly based on detecting
the turbulence of the tracking error signal as detected by the optical system
(FF 1). Accordingly, we do not agree with Appellant’s argument that
Obata’s process is not in response to “a media disaster” (Br. 25), because,
under the broadest reasonable interpretation, Obata’s turbulence constitutes a
media disaster. Note, that while the Specification recites “power outage” as
a media disaster example, and claims are interpreted in light of the
Specification, limitations from the Specification (i.e., power outage) are not
read into the claims. See Van Geuns, 988 F.2d at 1184.
Additionally, we also are not persuaded by Appellant’s argument (Br.
24-26) that Obata’s identification of the defective cluster is based solely on
detecting a writing error rather than referring to an RU information file.
Obata teaches that based on the detection of turbulence of the tracking error
signal detected by the optical system “and detecting the discontinuity of the
address information reproduced from the recording track” (emphasis added),
the defective cluster is discriminated (FF 1). Obata teaches that the
recording medium has a managing information area for storing information
of start addresses, end addresses, and link information corresponding to each
of the recorded clusters (FF 2). This is similar to Appellant’s description of
7
Appeal 2009-005234
Application 10/129,862

an RU.IFO file which includes the start addresses of the RUs and their size
(FF 5). Thus, based on Appellant’s Specification serving as the single best
guide to the meaning of terms, the limitation of an “RU information file” is
met by Obata’s managing information file wherein such file is consulted
with to determine the defective cluster (FF 3). See Phillips, 415 F.3d at
1315.
This is made even more explicit by Obata teaching that the data of the
start address and end address of the address data are recorded when the
defective cluster is identified (FF 4). Obata teaches that if the defect is
detected in the recording track in the nth cluster, then the address data is
added, whereby the previous (n-1)th cluster is defined as the end address and
the connection data indicates such part number that the recording begins
with an (n+l)th cluster (one cluster ahead) (FF 6). Obata teaches that the
recording is continued from the n+l cluster, and the nth cluster is identified
as the defective cluster by the apparatus (FF 7). Obata teaches that the
identified defective cluster is based on the managing information (i.e., start
address, end address, and link information) (FF 8). Thus, clearly, Obata’s
determination of the defective cluster during turbulence (i.e., disaster RU in
which data has been incompletely recorded during the media disaster) is
based on the managing file information (i.e., RU.IFO file).
Accordingly, we are not persuaded by Appellant’s argument that
Obata does not teach the limitation of: “responsive to a media disaster,
identifying with said RU information file a disaster RU in which data had
been incompletely recorded during said media disaster,” as recited in claim 1
(Br. 23-24).
8
Appeal 2009-005234
Application 10/129,862

For the foregoing reasons, since the Examiner has established a prima
facie case of obviousness which has not been overcome by any convincing
arguments from Appellant, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1 is sustained.
II. The 35 U.S.C. § 103(a) rejection of claims 2-33.

Regarding the obviousness rejections of claims: 2, 3, 10, 12, 13, 14,
21, 23, 24, 25, and 32 over Obata; 7, 18, and 29 over Obata in view of
Matsumoto; 6, 17, and 28 over Obata in view of Tamiya; 8, 11, 19, 22, 30,
and 33 over Obata in view of Ito; 4, 15, and 26 over Obata in view of Itoi; 5,
16, and 27 over Obata in view of Ando; and 9, 20, and 31 over Obata in
view of Ito and Ando, we find that Appellant has not persuasively rebutted
the Examiner's prima facie case of obviousness for these claims, but merely
contended with regard to claims 2, 3, 10, 12, 13, 14, 21, 23, 24, 25, and 32
that the additional references fail to cure the previously-noted deficiencies of
Obata with respect to claim 1 (Br. 21, 26-34). Appellant further nominally
argues these claims separately (Br. 26-34) by essentially reiterating the claim
limitations, but do not provide any substantive analysis or explanation as to
how or why these limitations are obvious over the above cited prior
references. Furthermore, while Appellant argues (Br. 21) that each claim
stands on its own grounds, no additional arguments were presented for
claims 4-9, 11, 15-20, 22, 26-31, and 33.
On appeal, Appellant has the burden to present evidence and/or
arguments that persuasively show error in the Examiner's prima facie case.
See Oetiker, 977 F.2d at 1445; Kahn, 441 F.3d at 985-86. Simply pointing
out what a claim requires with no attempt to point out how or why the claims
patentably distinguish over the prior art does not amount to a separate
9
Appeal 2009-005234
Application 10/129,862

argument for patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2004). See also In
re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
Accordingly, we will also sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 2-33.

CONCLUSION OF LAW
Appellant has not demonstrated that the Examiner erred in
determining that Obata teaches the step of “responsive to a media disaster,
identifying with said RU information file a disaster RU in which data had
been incompletely recorded during said media disaster.”

DECISION
The Examiner’s rejection of claims 1-33, all of the appealed claims, 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).

10
Appeal 2009-005234
Application 10/129,862

AFFIRMED

ELD

JOSEPH S TRIPOLI
THOMSON MULTIMEDIA LICENSING, INC
PO BOX 5312
PRINCETON, NJ 08543-5312

11