Ex parte Oguro et al.

Board of Patent Appeals and Interferences

Jul 27, 2000

08171175 (B.P.A.I. Jul. 27, 2000)

Appellants' attendance at the oral hearing set for1
March 6, 2000, was waived in the communication received on
February 11, 2000.
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not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAKI OGURO, MASATO YAMAGUCHI
and YOICHIROU SENSHU
_____________
Appeal No. 1997-2857
Application 08/171,175
______________
ON BRIEF1
_______________
Before THOMAS, RUGGIERO and BARRY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-5. Claims 6-9, directed to a non-elected
Appeal No. 1997-2857
Application 08/171,175
2
invention, have been withdrawn from consideration.
The claimed invention relates to a video tape recorder in
which absolute track addresses are recorded in at least some
of a plurality of tracks on a magnetic tape. The absolute
track address, recorded in the subcode area of the tracks,
corresponds to the distance of a track from the start position
of the magnetic tape. A controller initiates recording from a
track having a predetermined absolute track address
corresponding to a predetermined distance from the start
position.
Claim 1 is illustrative of the invention and reads as
follows:
1. A video tape recorder for recording and reproducing
audio and video signals in tracks on a magnetic tape,
comprising:
means for recording and reproducing absolute track
addresses in each of at least some of a plurality of tracks on
a magnetic tape, the absolute track address of said each of at
least some of the plurality of tracks corresponding to a
distance of said each of at least some of the plurality of
tracks from a start position of the magnetic tape, the
absolute track addresses being incremented or decremented in a
predetermined manner with increasing track position along a
recording direction of the magnetic tape;
the recording and reproducing means being operative to
record audio and video signals in the plurality of tracks; and
Appeal No. 1997-2857
Application 08/171,175
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control means for controlling the recording and
reproducing means to initiate recording of the audio and video
signals from a track having a predetermined absolute track
address corresponding to a predetermined distance from the
start position of the magnetic tape, while preventing
recording of any audio and video signals by the recording and
reproducing means at any location on the tape preceding the
predetermined absolute track address;
the control means being further operative to control the
recording and reproducing means to record at least one
absolute track address at a position on the magnetic tape
preceding the predetermined absolute track address.
Appeal No. 1997-2857
Application 08/171,175
The Appeal Brief was filed January 16, 1996. In2
response to the Examiner’s Answer dated April 24, 1996, a
4
The Examiner relies on the following prior art:
Dujari et al. (Dujari) 4,811,124 Mar. 07,
1989
Fincher et al. (Fincher) 5,341,251 Aug.
23, 1994
(Filed Feb. 28, 1992)
QIC Development Standard (QIC), “Serial Recorded Magnetic Tape
Cartridge for Information Interchange”, Quarter-Inch Cartridge
Drive Standards, Inc. Santa Barbara, California, QIC-91-43,
Revision C, pp. 1-48, (February 26, 1992).
Claims 1-5 stand finally rejected as being drawn to an
inadequate disclosure and as being vague and indefinite under
the first and second paragraphs, respectively, of 35 U.S.C. §
112. Claim 1 stands further finally rejected under 35 U.S.C.
§ 102(e) as being anticipated by Fincher. Claims 2-5 stand
further finally rejected under 35 U.S.C. § 103. As evidence
of obviousness, the Examiner offers Fincher in view of QIC
with respect to claim 2, and Fincher in view of Dujari with
respect to claims 3-5.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answers for the2
Appeal No. 1997-2857
Application 08/171,175
Reply Brief was filed June 3, 1996, which was entered as a
result of a favorable decision on petition filed under 37 CFR
§ 1.181. A Supplemental Examiner’s Answer was submitted on
January 17, 1997.
5
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth
in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the disclosure in this application describes the
claimed invention in a manner which complies with the
requirements of the first paragraph of 35 U.S.C. § 112. We
are also of the view that the claims particularly point out
the invention in a manner which complies with 35 U.S.C. § 112,
Appeal No. 1997-2857
Application 08/171,175
6
second paragraph. In addition, it is our opinion that the
disclosure of Fincher does not fully meet the invention as
recited in claim 1. Finally, we are of the conclusion that
the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 2-5.
Accordingly, we reverse.
Appeal No. 1997-2857
Application 08/171,175
7
With respect to the 35 U.S.C. § 112, first paragraph,
rejection, we note that the Examiner, instead of relying on
the “written description” or “enablement” language of the
statute, has used the terminology “lack of support” in the
statement of the rejection. Our reviewing court has made it
clear that written description and enablement are separate
requirements under the first paragraph of 35 U.S.C. § 112.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d
1111, 1114 (Fed. Cir. 1991). The terminology “lack of
support” has also been held to imply a reliance on the written
description requirement of the statute. In re Higbee and
Jasper, 527 F.2d 1405, 1406 188 USPQ 488, 489 (CCPA 1976).
In view of the factual situation presented to us in this
instance we will interpret the Examiner’s basis for the 35
U.S.C. § 112, first paragraph rejection as reliance on the
“written description” portion of the statute. “The function
of the description requirement [of the first paragraph of 35
U.S.C.
§ 112] is to ensure that the inventor has possession, as of
Appeal No. 1997-2857
Application 08/171,175
8
the filing date of the application relied on, of the specific
subject matter later claimed by him.” In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). "It is not
necessary that the application describe the claim limitations
exactly, . . . but only so clearly that persons of ordinary
skill in the art will recognize from the disclosure that
appellants invented processes including those limitations."
Wertheim, 541 F.2d at 262, 191 USPQ at 96 citing In re Smythe,
480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973).
Furthermore, the Federal Circuit points out that "[i]t is not
necessary that the claimed subject matter be described
identically, but the disclosure originally filed must convey
to those skilled in the art that applicant had invented the
subject matter later claimed." In re Wilder,
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert.
denied, 469 U.S. 1209 (1985), citing In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In establishing a basis for a rejection under the written
description requirement of the statute, the Examiner has the
initial burden of presenting evidence or reasons why persons
Appeal No. 1997-2857
Application 08/171,175
9
skilled in the art would not recognize in an applicant’s
disclosure a description of the invention defined by the
claims. Wertheim, 541 F.2d at 265, 191 USPQ at 98. After
reviewing the arguments of record, however, it is our opinion
that the Examiner has not provided sufficient reasons or
evidence to satisfy such burden.
The Examiner asserts (Answer, pages 4 and 5) a lack of
description of the recording of an absolute track address
signal on a tape at a position which precedes the
predetermined absolute track address position. It is our
view, however, that a review of Appellants’ specification
would reveal to the skilled artisan that such a recording of
absolute track addresses is taking place. As pointed out by
Appellants (Brief, page 9), the specification at page 37,
lines 16-22 discloses that absolute track addresses are
recorded in subcode areas of each track along the tape to
define tape areas such as the recording servo actuating area R
and the invalid data recording area S illustrated in Figure
25. Further, as described at pages 34 and 35 of Appellants’
specification with reference to the Figure 25 embodiment, the
Appeal No. 1997-2857
Application 08/171,175
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recording process, which includes the recording of absolute
track addresses, begins at a distance L from the tape top with
such recording. The recording of audio and video signals,
however, is prohibited until the end of the area S or at a
distance Le from the tape top, i.e. after the predetermined
absolute track address position (Specification, page 35, lines
5-22). In our view, therefore, it logically follows that
absolute track addresses are recorded at a position on the
tape that precedes the predetermined absolute track address.
It is our conclusion that, under the factual situation
presented in the present case, Appellants have satisfied the
statutory written description requirement because they were
clearly in possession of the invention at the time of filing
of the application. Therefore, we do not sustain the
rejection of claims 1-5 under the first paragraph of 35 U.S.C.
§ 112.
Turning to a consideration of the 35 U.S.C. § 112, second
paragraph, rejection of claims 1-5, we note that the general
rule is that a claim must set out and circumscribe a
particular area with a reasonable degree of precision and
Appeal No. 1997-2857
Application 08/171,175
11
particularity when read in light of the disclosure as it would
be by the artisan. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). Acceptability of the claim language
depends on whether one of ordinary skill in the art would
understand what is claimed in light of the specification.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984).
This rejection is related to the 35 U.S.C. § 112, first
paragraph, rejection discussed supra, and involves the clarity
of the claim language “absolute track address”. The Examiner
states at page 6 of the Answer that:
This rejection will stand or fall with the
35 U.S.C. § 112, first paragraph rejection, ...
As we discussed earlier in this decision, we find no
inadequacy in Appellants’ disclosure of “absolute track
addresses” and their recording in specified positions on the
tape. We, likewise, find no ambiguity or lack of clarity in
the use of such terminology in the claims. It is our view
that the skilled artisan, having considered the specification
in its entirety, would have no difficulty ascertaining the
scope of the invention recited in claims 1-5. Therefore, the
Appeal No. 1997-2857
Application 08/171,175
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rejection of claims 1-5 under the second paragraph of 35
U.S.C. § 112 is not sustained.
We next consider the rejection of independent claim 1
under 35 U.S.C. § 102(e) as being anticipated by Fincher.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to independent claim 1, the Examiner
attempts to read the various claim limitations on the
disclosure of Fincher (Answer, page 3, which makes reference
to the final Office action mailed May 15, 1995, paper no. 11).
In particular, the Examiner points to the illustrations in
Figures 5 and 8 and accompanying descriptions at columns 13,
Appeal No. 1997-2857
Application 08/171,175
13
15, and 31 of Fincher.
Appeal No. 1997-2857
Application 08/171,175
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After careful review of the Fincher reference in light of
the arguments of record, we are in agreement with Appellants’
arguments as stated in the Briefs. At the most fundamental
level, as pointed out by Appellants (Brief, page 23), there is
no disclosure in Fincher of recording or reproducing audio or
video signals, limitations which are clearly present in claim
1. On this basis alone, the Examiner’s 35 U.S.C. § 102(e)
rejection of claim 1 cannot be sustained.
Several other deficiencies are also apparent from our
review of Fincher. To the extent that Fincher records
absolute track addresses at all, they are recorded in a single
longitudinal track rather than “in each of at least some of a
plurality of tracks” as claimed. Further, although the
Examiner has suggested that column 15, lines 32-42 of Fincher
suggests the inhibiting of recording before a certain address
portion of a tape, there is no disclosure of such inhibition
being related to a predetermined absolute track address as
claimed.
In view of the above discussion, it is our opinion that,
since all of the claim limitations are not present in the
Appeal No. 1997-2857
Application 08/171,175
15
disclosure of Fincher, the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claim 1 can not be sustained.
Turning to a consideration of the Examiner’s 35 U.S.C. §
103 rejections of claim 2 as unpatentable over Fincher in view
of QIC and claims 3-5 as unpatentable over Fincher in view of
Dujari, we do not sustain these rejection as well. Each of
claims 2-5 are ultimately dependent on claim 1, the
limitations of which are not disclosed by Fincher as we
determined in our discussion supra. Further, our review of
the disclosures of QIC and Dujari reveals nothing which would
overcome the innate deficiencies of Fincher. Accordingly,
since the Examiner has failed to establish a prima facie case
of obviousness, we do not sustain the 35 U.S.C. § 103
rejection of appealed claims 2-5.
In conclusion, we have not sustained any of the
Examiner’s rejections of the claims on appeal. Accordingly,
the Examiner’s decision to reject claims 1-5 is reversed.
REVERSED

Appeal No. 1997-2857
Application 08/171,175
16
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
)
INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

Appeal No. 1997-2857
Application 08/171,175
17
WILLIAM S. FROMMER
FROMMER, LAWRENCE & HAUG
745 FIFTH AVENUE
NEW YORK, NY 10151