Ex Parte Murata

Patent Trial and Appeal Board

Feb 23, 2015

12534074 (P.T.A.B. Feb. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TATSUYA MURATA
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Appeal 2012-006615
Application 12/534,074
Technology Center 2600
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Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2012-006615
Application 12/534,074
2
STATEMENT OF THE CASE
Appellant filed a Request for Rehearing on January 16, 2015
(hereafter “Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of
our Decision on Appeal mailed November 19, 2014 (hereinafter
“Decision”). The Decision affirmed the Examiner's rejections of claims 1, 2,
and 5 under 35 U.S.C. § 103(a) as unpatentable over Hitachi1 and
Applicant’s Acknowledged Prior Art (AAPA), and of claim 5 under 35
U.S.C. § 103(a) as unpatentable over Hitachi, AAPA, and TEAC.2 We have
considered the arguments presented by Appellant in the Request, but are not
persuaded the Board has misapprehended or overlooked any points in
issuing the Decision. Therefore, Appellant’s Request is DENIED.

ISSUES AND ANALYSIS
A. Whether the Board overlooked Appellant’s argument that there
was no motivation to combine Hitachi and AAPA.

Appellant argues the Board “overlooked and did not address
appellant’s argument that, not only that neither Hitachi nor AAPA could
determine the presence or absence of a transparent disk, ‘neither Hitachi nor
AAPA was aware of the problem of not being able to detect a
transparent disk quickly and reliably.’” Req. Reh’g 1 (citing App. Br. 5–
6).
We disagree. In our Decision, we acknowledged Appellant’s
argument that neither Hitachi nor AAPA were directed toward determining
whether a loaded disk was a transparent disk, and that there was therefore no
motivation to combine the references. Dec. 3. We found Appellant’s

1 Jap. App. Publ. No. 11-213530; Aug. 6, 1999.
2 Jap. App. Publ. No. 2004-164796; June 10, 2004.
Appeal 2012-006615
Application 12/534,074
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argument unpersuasive, however, because it did not address the Examiner’s
stated motivation to combine, which was to reduce false positive and false
negative disk detection errors rather than to detect transparent disks. Id.
Said differently, the issue of whether Hitachi and AAPA were aware of the
problem of not being able to detect transparent disks is inapposite to the
Examiner’s reason for combining the references. The Examiner did not
propose the combination to detect transparent disks, but to reduce the
incidence of false-positive and false-negative disk detections. Once the
combination is made, however, the Examiner found its natural consequence
and predictable result is the truth table shown in Figure 3 of Appellant’s
Specification, which can be used to detect the presence of transparent disks.
Dec. 5 (citing Ans. 6–7). Because Appellant did not contest the Examiner’s
finding that a person of skill in the art at the time of the invention would
have been motivated to combine Hitachi and AAPA to reduce false positive
and false negative disk detection errors, we agreed with and adopted the
Examiner’s conclusion that it would have been obvious to combine Hitachi
and AAPA. Dec. 3–4.

DECISION
We have considered Appellant’s arguments that our Decision
misapprehended or overlooked the points raised in Appellant’s Request, and
found them unpersuasive. We therefore deny Appellant’s Request.
This Decision on Request for Rehearing incorporates our November
19, 2014 Decision on Appeal, and is final for the purposes of judicial
review. 37 C.F.R. § 41.52(a)(1).
Appeal 2012-006615
Application 12/534,074
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

REHEARING DENIED

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