Ex parte Park

Board of Patent Appeals and Interferences

May 5, 2000

08225322 (B.P.A.I. May. 5, 2000)

Application for patent filed April 8, 1994.1
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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journal and (2) is not binding precedent of the Board.
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Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JONG-HO PARK

Appeal No. 1998-0601
Application 08/225,3221

HEARD: April 20, 2000

Before BARRETT, RUGGIERO, and LALL, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-0601
Application 08/225,322
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 2, 4-6, 11, 12, and 15.
Claims 3, 7-10, 13, 14, and 16-19 stand withdrawn by the
Examiner as being directed to a nonelected species.
We affirm-in-part.
BACKGROUND
The disclosed invention is directed to a driving method
and apparatus for an optical read/write drive.
Claim 1 is reproduced below.
1. In an optical read/write device of the type
having a light source element in an optical pickup for
reading and writing data from and to an optical disk, a
driving method for said light source element comprising
the steps of:
determining whether an abnormal tracking error
occurs based on a tracking error signal generated in
accordance with the movement of the optical pickup; and
supplying the light source element with a drive
signal having a level suitable for a data read operation,
independent of the driving mode of the optical pickup,
thereby operating the optical pickup at a power level
suitable for reading data, when an abnormal tracking
error occurs.
The Examiner relies on the admitted prior art (APA) at
pages 1-3 of the specification and figure 1, and on the
following prior art:
Appeal No. 1998-0601
Application 08/225,322
Entered pursuant to the Decision on Petition mailed2
July 14, 1997 (Paper No. 24).
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Maeda et al. (Maeda) 4,554,652 November 19, 1985
Miura et al. (Miura) 4,669,072 May 26, 1987
Horie 5,181,194 January 19, 1993
Yoshimoto et al. (Yoshimoto) 5,251,194 October 5,
1993
(filed April 12,
1990)
Ishida et al. (Ishida) 5,351,225 September 27, 1994
(filed May 1,
1992)
Claims 1, 2, 4-6, 11, 12, and 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over the APA in view of
any one of Yoshimoto, Ishida, Horie, Maeda, or Miura.
We refer to the first Office action (Paper No. 7), the
Final Rejection (Paper No. 10), and the Examiner's Answer
(Paper No. 20) (pages referred to as "EA__"), and the
Supplemental Examiner's Answer (Paper No. 25) for a statement
of the Examiner's position and to the Amended Appeal Brief
(Paper No. 19) (pages referred to as "Br__") and the Reply
Brief (Paper No. 21) (pages referred to as "RBr__") for a2
statement of Appellant's arguments thereagainst.
OPINION
We find the references to be representative of the level
of ordinary skill in the art. See In re Oelrich, 579 F.2d 86,
Appeal No. 1998-0601
Application 08/225,322
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91, 198 USPQ 210, 214 (CCPA 1978) ("the PTO usually must
evaluate both the scope and content of the prior art and the
level of ordinary skill solely on the cold words of the
literature"); In re GPAC Inc., 57 F.3d 1573, 1579,
35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (the Board did not err
in adopting the approach that the level of skill in the art
was best determined by the references of record).
Furthermore, obviousness is determined through the eyes of one
of ordinary skill in the art and one of ordinary skill in the
art must be presumed to know something about the art apart
from what the references expressly disclose. See
In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA
1962); In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443,
1446-47 (Fed. Cir. 1992) (Nies, C.J., concurring).
The APA discloses that it was known to provide a mode
selector 101 that generates a mode signal M for reading or
writing based on user selection. Reference power data
generator 102 generates different reference power data PREF
for reading or writing in accordance with the mode signal M.
The reference power data suitable for a reading/writing of a
given optical disk is recorded in the disc's lead-in area for
Appeal No. 1998-0601
Application 08/225,322
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reading and use by the reference power generator, which is
recited in claims 4 and 11. The reference power data PREF is
applied to a drive signal generator 103 where it is converted
into a read or write driving signal DR and then applied to a
light source element. In this conventional apparatus, the
light source element is operated at constant power
irrespective of pickup position. Consequently, if a tracking
error occurs during writing, the previously recorded data is
lost by overwriting additional data. The APA does not
disclose "operating the optical pickup at a power level
suitable for reading data, when an abnormal tracking error
occurs" as recited in claim 1 and in similar limitations in
claims 4 and 11.
Claims 1, 2, 4-6, 11, 12, and 15 over APA
and one of Yoshimoto, Ishida, Horie, or Maeda
Yoshimoto (col. 14, lines 63-68), Ishida (col. 5,
lines 41-59), Horie (col. 3, lines 11-16), and Maeda (col. 4,
lines 45-53; col. 7, lines 54-58) disclose that it was known
to interrupt the recording operation when the tracking error
exceeds either a positive or negative threshold value to avoid
the problem of erroneously recording over already recorded
Appeal No. 1998-0601
Application 08/225,322
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areas. Although these references are directed to overcoming
the same problem as addressed by Appellant, as argued by
Appellant (Br8-10), they only show stopping the writing
operation, not operating the optical pickup at a reduced power
level corresponding to the level suitable for reading data.
The Examiner argues that references teach reducing the power
level to below a write level (EA4). This is true, but what is
missing in the references is some teaching of reducing the
power level rather than just interrupting the recording
operation (Yoshimoto), cutting off the recording signal
(Maeda), cutting off the laser (Ishida), or stopping the input
of data (Horie). For this reason, we conclude that the
Examiner has failed to establish a prima facie case of
obviousness. The rejections of claims 1, 2, 4-6, 11, 12,
and 15 based on the APA and one of Yoshimoto, Ishida, Horie,
or Maeda are reversed.
Claims 1, 2, and 4-6 over APA and Miura
Claims 1, 2, and 4-6 are grouped to stand or fall
together (Br5). Claim 1 is analyzed as representative.
Appeal No. 1998-0601
Application 08/225,322
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Miura discloses that the energy of the laser is lower in
a read mode than a write mode (col. 2, lines 25-28). Miura
recognizes that tracking control in the prior art is defective
in that when there is a tracking error "other information will
be recorded on the track having information recorded thereon
already or such information will be erroneously recorded on a
track on which it is not to be recorded" (col. 3,
lines 61-64). Miura discloses control means generating a
control signal for reducing or interrupting the output energy
of the light beam generated from the recording means when the
tracking failure detection circuit generates a tracking
failure to inhibit recording of information (e.g., col. 4,
lines 21-28; col. 6, line 64 to col. 7, line 12). We
interpret this to teach that the power level can be reduced to
a range between zero (if the power is interrupted) and a safe
level at which writing cannot occur. The actual write level
may be greater than the upper end of this range to ensure a
high enough power for reliable writing. The actual read level
is less than or equal to the upper end of the range since it
is known that the read level is a power level that will not
record.
Appeal No. 1998-0601
Application 08/225,322
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Because Miura discloses decreasing the power level to a
range of values that includes a power level suitable for
reading data, the claim recitation of reducing the power level
specifically to a "level suitable for a data read operation"
is within the range and, thus, the combination of the APA and
Miura is sufficient to establish a prima facie case of
obviousness. We note that a "level suitable for a data read
operation" may be a range of values and is not necessarily a
single specific value. Furthermore, a "level suitable for a
data read operation" does not require that reading actually be
performed. The burden is on Appellant to show that the
specific claimed level within the range disclosed by Miura is
critical and provides unexpected results. See In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In addition, we consider that the selection of the read
level in the case of an abnormal tracking error would have
been obvious to one of ordinary skill in the art. There are
really only three possible values or ranges that one of
ordinary skill in the art might select from for the disclosed
decreased or interrupted power level: (1) off (interrupted);
(2) a range between off and the minimum reliable read level;
Appeal No. 1998-0601
Application 08/225,322
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and (3) a range of read levels from some minimum reliable read
value to some maximum value that safely will not write (a
range of power levels suitable for reading data). The
selection of any of these three levels would have been
suggested to one skilled in the art. Further, since Miura
uses a single laser as a light source for the tracking control
and focusing control as well as to read and write data, one of
ordinary skill in the art would have been motivated to reduce
the power level to a read level because this is a standard
laser operating level and would maintain the laser power level
for tracking control and focusing control which is necessary
for continuous operation. That is, if the power level was
turned off or reduced to a level below the read level after an
abnormal tracking error, the power level would need to be
restored to the read level to continue operations of tracking,
focusing, and reading addresses and one of ordinary skill in
the art would have sought to avoid these interruptions.
Appellant argues that Miura provides no guidance with
which to select a particular power level, much less suggesting
that it be reduced to a level suitable for reading data (Br15;
RBr6). However, since the claimed "level suitable for a data
Appeal No. 1998-0601
Application 08/225,322
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read operation" is within the range taught by Miura, the
limitation is prima facie obvious over Miura.
Appellant argues (Br15-16):
Appellant further submits that by supplying a power
level suitable for reading data when an abnormal tracking
error occurs, the present invention is capable of reading
data stored on the disc, thereby providing the capability
to detect address data from the data read from the
optical disc by the optical pickup and to determine
whether the detected address data corresponds to a
desired address. Such a capability allows the state of
the error signal to be converted to a nonactive state,
and accordingly writing could resume. See page 3,
lines 26-33 and page 9, lines 5-15. Since Mirua [sic] et
al., or any of the other applied references, neither
teaches nor suggests that data could be read when an
abnormal error occurs, it is respectfully submitted that
a person of ordinary skill in the art would not have been
motivated to combine the teachings as asserted by the
Examiner
The Examiner concludes that the argument is not
commensurate in scope with the claims which do not recite any
structure for performing these functions to provide the
advantage (EA5). Appellant responds that the claims recite
providing a level suitable for a data read operation and,
therefore, would allow for a data read operation to be
performed (RBr9-10). Appellant further argues that claim 11
recites a generator for generating a reading drive signal and
a selector for selecting the reading drive signal if an error
Appeal No. 1998-0601
Application 08/225,322
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signal is active and, hence, "claim 11 recites structure for
reading data from the disc, thereby allowing address
information to be read from the disc to provide for
determining if the read data corresponds to a desired address"
(RBr10).
Miura does read addresses (col. 2, lines 48-53). The
claims do not recite reading data after an abnormal tracking
error even though data may be capable of being read because
the power level is at a level suitable for reading data.
Thus, we agree with the Examiner that the argument is not
commensurate in scope with the claims and is not persuasive.
Appellant argues that the Examiner mischaracterizes the
statements in the Brief in asserting that Miura fairly
suggests the use of any level less than a write level,
including a level suitable for a data read operation, and that
Miura does not disclose selecting a level suitable for reading
data (RBr3-6).
It is true that Miura does not disclose that the reduced
power level should be a read level. However, Miura discloses
a range of reduced power levels that includes the claimed read
level, which is sufficient to establish a prima facie case of
Appeal No. 1998-0601
Application 08/225,322
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obviousness absent a showing of criticality and unexpected
results. In addition, we have discussed that one of ordinary
skill in the art would have been motivated to select the read
level in order to maintain tracking control and focus control
for continuous operation.
Appellant argues that "Miura et al. discloses an
extremely broad range of values to which the current supplied
to the diode could be reduced" (RBr7), which includes an
infinite number of levels. Appellant analogizes the situation
to that in In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir.
1994), which held that "[a] disclosure of millions of
compounds does not render obvious a claim to three compounds,
particularly when that disclosure indicates a preference
leading away from a claimed compounds," id. at 383,
29 USPQ2d at 1552.
We do not consider Baird to be an apt comparison. There
is no question that every value in the range disclosed by
Miura will work and that Appellant's value is within the
range. We consider the situation analogous to cases where the
prior art discloses a range of values and the applicant has
claimed a value within the range.
Appeal No. 1998-0601
Application 08/225,322
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Appellant argues that Miura does not suggest reducing the
power level to a level suitable for a data read operation,
since decreasing the power to such level is not necessarily an
optimum level to disable an information recording function and
operating a level suitable for a data read allows for an
entirely different function to be performed (RBr8-9).
We consider it sufficient to establish a prima facie case
that Miura discloses a range of decreased power levels that
includes Appellant's claimed level. Furthermore, we have
discussed why one of ordinary skill in the art would have been
motivated to select the read level as the decreased power
level in order to maintain continuity of operation.
For the reasons stated above, we conclude that the
combination of the APA and Miura is sufficient to establish a
prima facie case of obviousness. The rejection of claims 1,
2, and 4-6 is sustained.
Claims 11, 12, and 15 over APA and Miura
Claims 11 and 12 stand or fall together and dependent
claim 15 is separately argued (Br5).
Appeal No. 1998-0601
Application 08/225,322
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The function of "selecting the reading drive signal if
the error signal is active ..." in claim 11 is considered to
have been obvious for the reasons stated in connection with
the limitation "operating the optical pickup at a power level
suitable for reading data, when an abnormal tracking error
occurs" in the analysis of claim 1.
Appellant further argues that Miura does not teach or
suggest a selector for selecting between two different signals
(Br17). The Examiner states that the "combination inherently
must provide a selector ... [to] provide selection between
different levels based upon an input control signal and within
the obvious combination the noted input control signal would
indicate write/read level selection" (EA5-6). Appellant
responds that inherency requires more than the mere
possibility that a certain thing may result and "it is not
necessary to provide a bi-level selector to preform [sic] the
decreasing function, nor is it the natural result flowing from
a teaching of decreasing the supply current" (RBr12).
Appellant argues that decreasing the current could be
performed in other ways such as analog means for continuously
decreasing the current.
Appeal No. 1998-0601
Application 08/225,322
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It is true that inherency requires that something
necessarily be so. It would have been safer for the Examiner
to rely on obviousness reasoning rather than inherency.
Nevertheless, the limitation of "a selector for selecting the
reading drive signal if the error signal is active and
otherwise selecting between the reading drive signal and the
writing drive signal based on the mode signal" is not in
means-plus-function format so as to require specific structure
and we find that the function is taught by the combination of
the APA and Miura. When the tracking error is inactive, Miura
selects between the read and write levels based on the mode
signal as further expressly taught in the APA. When the
tracking error is active, Miura teaches selecting a decreased
power level from a range including the read level using the
control signal from 32. Claim 11 does not require more. Even
if the control signal in Miura continuously decreased the
current instead of using a bi-level switch (no matter how
unlikely that possibility may be), eventually it would select
a decreased power level, which is all that is required.
For the reasons stated above, the rejection of claims 11
and 12 is sustained.
Appeal No. 1998-0601
Application 08/225,322
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As to claim 15, Appellant argues that Miura does not
disclose a logic operator and multiplexer. The Examiner sole
reasoning is that "the use of logic operators in selectors was
well established" (EA6).
We agree with the Examiner that, as a general
proposition, logic operators were well known. However, this
does not address the obviousness of using the error signal and
the mode signal to produce a selecting signal. Furthermore,
the Examiner has said nothing about the multiplexer. Every
limitation must considered in addressing obviousness. See
In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970); In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970). The APA does not show generation of two separate
drive signals DR-R and DR-W from separate drive signal
generators as in figure 4, one of which is selected by a
multiplexer as shown in figure 6. For these reasons, we
conclude that the Examiner has failed to establish a prima
facie case of obviousness with respect to claim 15. The
rejection of claim 15 is reversed.
CONCLUSION
Appeal No. 1998-0601
Application 08/225,322
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The rejections of claims 1, 2, 4-6, 11, 12, and 15 over
the APA and Yoshimoto, Ishida, Horie, or Maeda are reversed.
The rejection of claims 1, 2, 4-6, 11, and 12 over the
APA and Miura is sustained and the rejection of claim 15 over
the APA and Miura is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1998-0601
Application 08/225,322
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