Ex parte Permut

Board of Patent Appeals and Interferences

Nov 27, 1998

08102858 (B.P.A.I. Nov. 27, 1998)

Application for patent filed August 6, 1993. 1
1
Paper No. 17
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte RONALD M. PERMUT
______________
Appeal No. 96-1183
Application 08/102,8581
_______________
ON BRIEF
_______________
Before JERRY SMITH, LEE, and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-6, 9-12 and
15. Claims 7, 8, 13, 14 and 17-20 were indicated as
Appeal No. 96-1183
Application 08/102,858
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containing allowable subject matter. A first amendment after
final rejection was filed on December 12, 1994, and was
entered by the examiner. This amendment cancelled claims 7,
8, 13 and 14 and amended claim 15. This amendment resulted in
the withdrawal of a rejection of claim 15 under 35 U.S.C. §
112. A second amendment after final rejection was filed on
September 13, 1995, and was entered by the examiner. This
amendment cancelled claims 6, 12 and 17-20. Accordingly, only
claims 1-5, 9-11 and 15 remain pending in this application,
and the rejection of all of these claims is on appeal before
us.
The disclosed invention pertains to a method and
apparatus for translating and rotating a cartridge,
particularly for the loading and unloading of optical disks.
The invention uses a rack and pinion mechanism for
implementing translational motion of a cartridge carrying an
optical disk followed by rotational motion of the cartridge
and ending with additional translational motion of the
cartridge.
Representative claim 1 is reproduced as follows:
1. An apparatus for translating and rotating a
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cartridge, the apparatus comprising:
a base;
a linear motion carriage slidably mounted to the
base for translation in a direction of translation;
a carrier having a rotation point, the carrier
rotatably mounted on the linear motion carriage for rotation
about its rotation point, for carrying the cartridge;
a rack attached to the carrier, the rack having two
straight sections in spaced parallel relation and a curved
section connected between the straight sections, the curved
section defined by a radius of curvature measured from the
rotation point;
a pinion rotatably mounted to the base in a position
for cooperating with the rack;
a roller rotatably mounted to the base in a position
for cooperating with the rack, the roller and pinion
positioned on opposite sides of the rack; and
means for rotating the pinion.

The examiner relies on the following references:
Crain et al. (Crain) 5,025,436 June 18, 1991
Fitzgerald et al. (Fitzgerald) 5,056,073 Oct. 08, 1991
Christie et al. (Christie) 5,062,093 Oct. 29, 1991
Ikedo et al. (Ikedo) 5,195,078 Mar. 16, 1993
Rached WO 84/02165 June 07, 1984
Claims 1-3, 9-11 and 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over the basic combination of
Christie, Ikedo and Rached. Claim 4 stands rejected under 35
Appeal No. 96-1183
Application 08/102,858
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U.S.C. § 103 as unpatentable over the basic combination
considered further with Crain. Claim 5 stands rejected under
35 U.S.C. § 103 as unpatentable over the basic combination
considered further with Fitzgerald.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
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the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1-5, 9-11 and 15. Accordingly, we reverse.
We consider first the rejection of claims 1-3, 9-11 and
15 under 35 U.S.C. § 103 as being unpatentable over the
teachings of Christie in view of Ikedo and Rached. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set
forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide
a reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
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Application 08/102,858
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Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1, 9, 10 and 15, the
examiner cites Christie as teaching a device for effecting
translational-rotational-translational movement of an optical
disk cartridge carrier. The movement in Christie is not
effected using a rack and pinion system. The examiner cites
Ikedo as teaching a rack and pinion system for moving an
optical disk cartridge carrier. The Ikedo rack and pinion
system provides translational movement only. The examiner
cites Rached as teaching a rack and pinion positioning system
in which linear movement can be converted to rotational
movement and vice versa. It is the position of the examiner
that it would have been obvious to the artisan to effect the
desired movement in Christie using a rack and pinion system as
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taught by Ikedo and to configure the rack and pinion system to
have the same arrangement as the Rached rack and pinion system
[answer, pages 4-7].
Appellant argues that the rack and pinion positioning
system of Ikedo would not rotate the Christie cartridge, thus
rendering Christie inoperable. Appellant also argues that
none of the references cited by the examiner suggest that a
rack and pinion system is suitable for effecting rotational
movement of a disk carrying cartridge. It is further argued
by appellant that the Rached rack and pinion system is
disclosed as a substitute for
cranks and crankshafts, and there is no suggestion that a
U-shaped rack should be attached to a rotatably mounted
cartridge carrier as claimed [brief, pages 4-8].
The examiner responds that given that the artisan would
desire to effect the motions already shown in Christie, the
artisan would have been motivated to use a rack and pinion
system to carry out these motions [answer, pages 11-12].
Appellant argues that this conclusion by the examiner is
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Application 08/102,858
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unsupported by the applied prior art. We agree with appellant
that the examiner’s position is unsupported by the record in
this case.
The critical question in this case is whether it would
have been obvious to implement the Christie motions using a
rack and pinion system. The examiner simply concludes that it
would have been obvious to the artisan to use a rack and
pinion system to implement any desired motions such as those
of Christie. Appellant argues that the only suggestion for
obtaining the claimed translational and rotational movement
out of a single rack and pinion system configured as claimed
comes from appellant’s own disclosure. We are constrained to
agree with appellant on this record.
Neither Ikedo nor Rached suggests that a rack and pinion
assembly can achieve the translation and rotation of a carrier
attached to the rack. Ikedo teaches no rotation whatsoever,
and Rached merely teaches that linear and rotational forces
can be converted to each other. The examiner’s finding that
the artisan would even look to a rack and pinion assembly for
achieving the motion in Christie is based on the fact that
appellant disclosed that a rack and pinion assembly could
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Application 08/102,858
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achieve this motion. The applied prior art alone would not
lead the artisan to use a rack and pinion assembly to achieve
the claimed translational and rotational movements of a
carrier attached to the rack.
Since we are of the view that the prior art applied by
the examiner does not support the examiner’s rejection, we do
not sustain the rejection of independent claims 1, 9, 10 and
15.
Therefore, we also do not sustain the rejection of dependent
claims 2, 3 and 11.
We now consider the rejection of dependent claims 4 and
5. These claims were rejected on the combination of Christie,
Ikedo and Rached as discussed above, and further in view of
Crain and Fitzgerald, respectively. Since neither Crane nor
Fitzgerald overcomes the deficiencies noted in the combination
of Christie, Ikedo and Rached, the examiner’s rejection of
claims 4 and 5
fails for the same reasons discussed above with respect to the
independent claims. Therefore, we do not sustain the
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rejection of dependent claims 4 and 5.
In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision
of the examiner rejecting claims 1-5, 9-11 and 15 is reversed.

REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
)
Jameson Lee ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Richard Torczon )
Administrative Patent Judge )
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Application 08/102,858
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JS/cam
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Alfred A. Equitz
Limbach & Limbach
2001 Ferry Building
San Francisco, CA 94111