Ex parte Maeda et al.

Board of Patent Appeals and Interferences

Apr 28, 2000

08354454 (B.P.A.I. Apr. 28, 2000)

We observe that on March 24, 2000 (paper no. 23), appellants filed a1
waiver of the oral hearing set for April 7, 2000.
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written for publication in a law journal and (2) is not binding
precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FUMISADA MAEDA and YOSHINORI MATSUMOTO
____________
Appeal No. 1997-2852
Application No. 08/354,454
____________
ON BRIEF1
____________
Before HAIRSTON, LALL, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 4, which are all of the claims
pending in this application.
Appellants' invention relates to a magneto-optical disc
apparatus in which the magnetic field generating means is
Appeal No. 1997-2852
Application No. 08/354,454
2
rotatable about an axis parallel to the magneto-optical disc
and also moves in a direction perpendicular to the surface of
the disc, thereby applying magnetic fields of varying
intensities. Claim 4 is illustrative of the claimed
invention, and it reads as follows:
4. A magneto-optical disc apparatus for use with plural
discs requiring different magnetic field intensities,
comprising:
a magnetic field generating source for applying a
plurality of discrete magnetic field intensities individual to
one of said discs to a magneto-optical disc during reading or
writing, said magnetic field generating source being made
freely rotatable about an axis substantially parallel to and
overlying a surface of said magneto-optical disc to allow
rotating said source to change the direction of the field
generated by said source relative to said disc; and
means for changing a distance of said rotation central
axis of said magnetic field generating source relative to said
magneto-optical disc, to provide said plurality of magnetic
field intensities at said disc.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Naito et al. (Naito) 4,748,606 May 31,
1988
Miyatake et al. (Miyatake) 5,202,863 Apr. 13,
1993
Claims 2 through 4 stand rejected under 35 U.S.C. § 112,
first paragraph, as being non-enabled.
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Application No. 08/354,454
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Claims 2 through 4 stand rejected under 35 U.S.C. § 103
as being unpatentable over Miyatake in view of Naito.
Reference is made to the Examiner's Answer (Paper No. 20,
mailed November 26, 1996) for the examiner's complete
reasoning in support of the rejections, and to appellants'
Brief (Paper No. 19, filed July 19, 1996) for appellants'
arguments thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse both the enablement rejection and also
the obviousness rejection of claims 2 through 4.
The examiner asserts (Answer, page 3) that "[m]echanisms
for moving a base plate up and down are known in the art.
However, mechanisms for moving a base plate up and down with a
magnetic field generator that rotates are not known in the
art." As appellants have provided no details in the
specification as to the actual mechanism for changing the
distance between the magnetic field generator and the magneto-
optical disc, the examiner concludes that appellants "has
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Application No. 08/354,454
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[sic, have] not adequately taught how to make a rotating
magnetic field generating source that changes it's [sic]
position relative to the surface of the disc."
"A patent must contain a description that enables one
skilled in the art to make and use the claimed invention."
Atlas Powder Co. v. E.I. DuPont De Nemours and Co., 750 F.2d
1569, 1576, 224 USPQ 409, 411 (Fed. Cir. 1984). "An inventor
need not, however, explain every detail since he is speaking
to those skilled in the art." In re Howarth, 654 F.2d 103,
105, 210 USPQ 689, 691 (CCPA 1981). "A patent need not teach,
and preferably omits, what is well known in the art." Spectra-
Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3 USPQ2d
1737, 1743 (Fed. Cir. 1987).
The examiner admits that mechanisms for adjusting the
position of the base plate are known in the art. We see no
reason why varying the position of a rotatable magnetic field
generator would require any more than minor adaptations by a
skilled artisan. The level of the skilled artisan should not
be underestimated. See In re Sovish, 769 F.2d 738, 743, 226
USPQ 771, 774 (Fed. Cir. 1985). The examiner relies (Answer,
page 9) on appellants' statement in the Brief filed on June
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Application No. 08/354,454
5
13, 1996, that rotation of Miyatake's magnetic field
generators would be difficult if not impossible to accomplish,
as evidence that the skilled artisan would need more guidance
than is disclosed for how to move a rotatable magnetic field
generator up and down. However, there is an enormous
difference between making a single rotatable magnet move up
and down and making the dual coil magnet of Miyatake
rotatable. Although the former appears to be achievable by
the skilled artisan, we agree with appellants that the latter
is beyond the skilled artisan's ability. Accordingly, we must
reverse the enablement rejection of claims 2 through 4.
Regarding the obviousness rejection, as pointed out by
appellants (Brief, pages 6-7), the magnetic field generators
of Miyatake do not change positions "to provide said plurality
of magnetic field intensities," as required by claim 4.
Instead the magnetic field generator in Miyatake's third
embodiment, upon which the examiner relies, includes two
coils, 37 and 43, to which current is selectively applied to
vary the intensity of the magnetic field (see column 16, lines
14-42). The different intensities are obtained by switching
the current from one coil to another. Therefore, contrary to
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Application No. 08/354,454
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the examiner's assertion (Answer, page 4), Miyatake fails to
meet the limitation in the last paragraph of claim 4.
Furthermore, the examiner contends (Answer, page 5) that
it would have been obvious to provide in Miyatake's device
"the magnetic field generating means as taught by Naito et al
in lieu of the magnetic field generating means of Miyatake."
However, Naito does not address using varying magnetic field
intensities like the two coil magnets in Miyatake. Therefore,
it is unclear how the single rotatable magnet of Naito could
replace the two coil magnetic field generating means of
Miyatake. In other words, the examiner has failed to
establish a prima facie case of obviousness. Consequently, we
cannot sustain the obviousness rejection of claims 2 through
4.
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Application No. 08/354,454
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CONCLUSION
The decision of the examiner rejecting claims 2 through 4
under 35 U.S.C. § 112, first paragraph, is reversed. The
decision of the examiner rejecting claims 2 through 4 under
35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-2852
Application No. 08/354,454
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