Ex Parte Namkoong et al

Patent Trial and Appeal Board

Feb 25, 2013

10797384 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YUN NAMKOONG, HO-JOONG CHOI, and
SEUNG-YOUL JEONG

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Appeal 2010-008659
Application 10/797,384
Technology Center 2600
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Before JEAN R. HOMERE, ERIC B. CHEN, and LARRY J. HUME,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 5, 7-9, 12-14, 16, and 18-20. Claims 4, 6, 10, 11, 15, 17, 21, and
22 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a method and apparatus for retrying
reading or writing of data within a limited processing time when the data is a
predetermined type of data (e.g., audio or visual (A/V) data). For error
correction, if the data is of the predetermined type of data, any retry of
reading or writing of data is performed within a remaining retrying
limitation time period. (Abstract.)
Claim 1 is exemplary:
1. A method of retrying reading or writing of data,
comprising:
A. determining a required time period for performing a retrying
type of reading or writing of the data;
B. terminating retrying of reading or writing of the data if the
required time period is greater than a remaining retrying limitation
time;
determining whether the data is a predetermined type of data;
performing the steps A and B only if the data is the
predetermined type of data and not performing following steps C, D,
and E if the data is the predetermined type of data:
C. determining a total count of retries for the reading or writing
of the data;
D. performing another retry if the total count of retries is not
greater than a predetermined maximum number of retries;
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E. terminating retrying of reading or writing of data if the total
count of retries is greater than the predetermined maximum number of
retries; and
performing steps C, D, and E only if the data is not the
predetermined type of data;
wherein a same order of retry types is followed according to a
retry table for both when the data is the predetermined type and when
the data is not the predetermined type,
and wherein a retry of reading or writing of the data with one of
the required time period in step A or the predetermined maximum
number of retries in step D is performed after the step of determining
the type of data and in both cases of the data being and not being of
the predetermined type of data.

Claims 1, 3, 5, 8, 9, 12, 14, 16, 19, and 20 stand rejected under 35
U.S.C. § 103(a) as being obvious over Ito (U.S. Patent Application
Publication No. 2001/0038704 A1; Nov. 8, 2001) and Hirata (U.S. Patent
No. 6,625,755 B1; Sept. 23, 2003).
Claims 2 and 13 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Ito, Hirata, and Makita (Japanese Application Publication No.
11-327808; Nov. 30, 1999).
Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Ito, Hirata, and Sato (Japanese Application Publication No.
11-065778; Sept. 3, 1999).

ANALYSIS
We are unpersuaded by Appellants’ arguments (App. Br. 11-13) that
that the Examiner improperly combined Ito and Hirata to reject independent
claim 1 under 35 U.S.C. § 103(a).
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The Examiner acknowledged that Ito does not disclose the limitations
“A. determining a required time period for performing a retrying type of
reading or writing of the data”, “B. terminating retrying of reading or writing
of the data if the required time period is greater than a remaining retrying
limitation time”, “determining whether the data is a predetermined type of
data”, “performing the steps A and B only if the data is the predetermined
type of data”, and “wherein a same order of retry types is followed
according to a retry table for both when the data is the predetermined type
and when the data is not the predetermined type.” (Ans. 4.)
The Examiner relied upon Hirata for teaching a storage apparatus such
that reading or writing commands are completed within the prescribed time.
(Ans. 4; Hirata, col. 7, ll. 21-23, 32-34, 38-39, 45-52.) The Examiner
concluded that “[o]ne of ordinary skill . . . would have been motivated to
modify the teachings of Ito et al. by having the reading or writing of the
predetermined type of data retried as disclosed by Hirata et al. . . .” (Ans. 5.)
We agree with the Examiner.
Ito relates to “a data recording/reproducing apparatus using a single
record medium to handle audio/visual data such as DVD video and normal
digital data used in a computer.” (¶ [0001].) Ito explains that when the
reading-out processing includes two kinds of data, the kind of data is
determined by a digital watermark, and a retry processing is carried out
when a defect is generated in accordance with the kind of data. (¶ [0015].)
“Therefore, in the case of data whose reading-out continuity is more
important than reliability, the retry processing is omitted, and the reading-
out processing time can be shortened.” (Id.) In one embodiment, Figure 3
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of Ito illustrates a flowchart of the process for reading-out of data.
(¶¶ [0060]-[0070].)
Hirata relates “to a technique which is effectively applied to retrying
control for error . . . in the storage apparatus such as a magnetic disk
apparatus.” (Col. 1, ll. 6-10.) Figure 6 of Hirata illustrates a flow chart
illustrating a reading operation using a retrying limit time T. (Col. 6, ll. 61-
62.) In step 208 from Figure 3, “the retrying limit time T set for the area to
be read is read out from the retrying table 21a (step 212)” (col. 7, ll. 21-23),
thus, corresponding to the limitation “A. determining a required time period
for performing a retrying type of reading or writing of the data.” The
retrying table 21a of Hirata (i.e., step 212 from Figure 3) corresponds to the
limitation “wherein a same order of retry types is followed according to a
retry table.”
Additionally, in step 213 from Figure 3, “when the time t required for
retrying operation exceeds the retrying limit time T, it is judged whether the
area is the management data area or not (step 218)” (col. 7, ll. 32-34) and if
“the data is not the management data area, the retrying operation is not
performed” (col. 7, ll. 38-39). Thus, Hirata teaches the limitations “B.
terminating retrying of reading or writing of the data if the required time
period is greater than a remaining retrying limitation time” and “performing
the steps A and B only if the data is the predetermined type of data.” Hirata
further explains that the limit values T for the retrying table 21a are set at
different values, which depends upon if the data is stored either in storage
area A for management data or storage area B for image data (col. 7, ll. 45-
52), thus corresponding to the limitation “determining whether the data is a
predetermined type of data.”
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The combination of Ito and Hirata is nothing more than incorporating
the known reading operation of Hirata using a retrying limit time T with the
known process of Ito for reading-out of data from a record medium, to yield
predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Thus, we agree with the Examiner (Ans. 5) that modifying Ito to
include that reading operation of Hirata that uses a retrying limit time T
would have been obvious.
Appellants argue that the “prior art references fail to teach or suggest
all the limitations of claims 1 and 12 and because there is no motivation or
suggestion in these references to combine or modify these references to the
present invention.” (App. Br. 11.) In particular, Appellants argue that
“incorporating the retrying process of Hirata into the YES branch of step
B15 of Ito would result in an interruption during processing of AV data in
Ito which would render unsatisfactory Ito’s intended purpose of avoiding
any interruption during processing of AV data.” (App. Br. 12.) However, as
discussed previously, Ito explains that “in the case of data whose reading-out
continuity is more important than reliability, the retry processing is omitted”
(¶ [0015]), rather than discouraging or discrediting all instances of the retry
processing. Teaching an alternative or equivalent method, however, does
not teach away from the use of a claimed method. See In re Dunn, 349 F.2d
433, 438 (CCPA 1965).
We find untimely Appellants’ argument in the Reply Brief that
“FIG. 6 of Hirata touts using the same one retry parameter T (time limit) for
both cases of image/audio data and non-image/audio data.” (Reply Br. 14,
17.) We note that these new arguments were raised by Appellants for the
first time in the Reply Brief, and they are not in response to a new issue
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brought up by the Examiner in the Answer. We therefore, find these new
arguments unavailing.
Appellants are reminded that:
[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.
Giving cognizance to belated arguments in a reply would vitiate
the force of the requirement in Board Rule 37(c)(1)(vii) that
“[a]ny arguments or authorities not included in the brief . . . will
be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
Therefore, the Examiner has properly combined Ito and Hirata to
reject claim 1 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 3, 5, 8, and 9 depend from claim 1, and Appellants
have not presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 3, 5, 8, and 9 under 35 U.S.C.
§ 103(a), for the same reasons discussed with respect to independent
claim 1.
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Independent claim 12 recite limitations similar to those discussed with
respect to independent claim 1, and Appellants have not presented any
substantive arguments with respect to these claims. We sustain the rejection
of claim 12, as well as dependent claims 14, 16, 19, and 20, for the same
reasons discussed with respect to claim 1.
Although Appellants nominally argue the rejection of dependent
claims 2 and 7 separately (App. Br. 13), the arguments presented do not
point out with particularity or explain why the limitations of these dependent
claims are separately patentable. Instead, Appellants argue that “[c]laims 2
and 7 which depend from and further limit claim 1, are allowable for at least
the same reasons that claim 1 is allowable as stated above.” (Id.) We are
not persuaded by these arguments for the reasons discussed with respect to
claim 1, from which claims 2 and 7 depend. Accordingly, we sustain this
rejection.
Although Appellants nominally argue the rejection of dependent
claims 13 and 18 separately (App. Br. 13), the arguments presented do not
point out with particularity or explain why the limitations of these dependent
claims are separately patentable. Instead, Appellants argue that “[c]laims 13
and 18 which depend from and further limit claim 12, are allowable for at
least the same reasons that claim 12 is allowable as stated above.” (Id.) We
are not persuaded by these arguments for the reasons discussed with respect
to claim 12, from which claims 13 and 18 depend. Accordingly, we sustain
this rejection.

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DECISION
The Examiner’s decision to reject claims 1-3, 5, 7-9, 12-14, 16, and
18-20 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

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