Ex parte Schandl et al.

Board of Patent Appeals and Interferences

Feb 25, 2000

08391379 (B.P.A.I. Feb. 25, 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(2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HARTMUT SCHANDL, DIETFRIED SUSS
and ALBERT M.A. RIJCKAERT
________________
Appeal No. 1997-3970
Application 08/391,379
________________
ON BRIEF
________________
Before JERRY SMITH, FLEMING, and FRAHM, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-3970
Application No. 08/391,379
2

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 2-35, which constitute
all the claims remaining in the application.
The disclosed invention pertains to a cassette for use
with a recording and reproducing apparatus. More
particularly, the cassette contains at least one electrical
impedance in which the value of the impedance defines a
parameter of the cassette. The recording and reproducing
apparatus detects the value of the impedance in the cassette
and determines the cassette parameter therefrom.
Representative claim 35 is reproduced as follows:
35. An improvement in a system for recording and/or
reproducing information signals on/from a record carrier,
which system comprises an apparatus having a device for
recording and/or reproducing information signals on/from said
record carrier and a cassette adapted to be inserted into the
apparatus,
which cassette accommodates said record carrier and comprises
at least one indicator; which by means of one of its
parameters indicates at least one characteristic value of a
fixed element of said record carrier, the apparatus comprising
at least one detection device for the detection of the
parameter of the indicator, which parameter indicates the at
least one characteristic value, wherein the improvement
Appeal No. 1997-3970
Application No. 08/391,379
Our understanding of Ozawa and Yoshii is based upon translations provided by a contractor1
to the United States Patent and Trademark Office. Copies of these translations are attached to this
decision.
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comprises at least one electrical impedance in the cassette as
said indicator in said cassette, the impedance value of said
impedance defining the parameter for the indication of at
least one characteristic value of a fixed element of said
record carrier of said cassette, and
the at least one detection device of the apparatus is adapted
to detect the parameter defined by the impedance value of the
at least one impedance.
The examiner relies on the following references:
Sawada et al. (Sawada) 5,434,721 July 18,
1995
(filed May 26,
1993)
Yoshii 60-231989 Nov. 18,
1985 Ozawa 02-201789 Aug.
09, 1990
Adel S. Sedra et al. (Sedra), Microelectronic Circuits, 2ND
Edition, 1987 by CBS College Publishing, pages A-1 to A-13.
The following rejections are before us on this appeal:
1. Claims 2, 14, 15, 27, 28 and 35 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Ozawa.1
2. Claims 2, 14, 15, 27, 28 and 35 stand rejected
Appeal No. 1997-3970
Application No. 08/391,379
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under 35 U.S.C. § 102(e) as being anticipated by the
disclosure of Sawada.
3. Claims 3-8, 16-21 and 29-34 stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Ozawa or Sawada in view of Sedra.
4. Claims 9-13 and 22-26 stand rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of
Ozawa or Sawada in view of Sedra and Yoshii .1
Rather than repeat the arguments of appellants 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 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, the appellants’ arguments set forth in the brief
along with the examiner’s rationale in support of the
Appeal No. 1997-3970
Application No. 08/391,379
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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 disclosures of Ozawa and Sawada do not
fully meet the invention as recited in claims 2, 14, 15, 27,
28 and 35. We are also of the view 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 obviousness of the invention as
set forth in claims 3-13, 16-26 and 29-34. Accordingly, we
reverse.
We consider first the rejection of claims 2, 14, 15,
27, 28 and 35 under 35 U.S.C. § 102(b) as being anticipated by
the disclosure of Ozawa. 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.
Appeal No. 1997-3970
Application No. 08/391,379
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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).
The examiner has indicated how he reads these claims
on Ozawa [answer, pages 4-5]. Appellants argue that each of
these claims recites that the impedance value defines the
cassette characteristic and that Ozawa does not teach or imply
the use of impedance values to encode cassette characteristics
[brief, pages 4-7]. We note that the examiner has referred to
an IC chip connected to part 2 of Ozawa as meeting this
limitation.
We agree with appellants that Ozawa does not fully
meet the invention of these claims. Ozawa’s cassette is
designed to carry a memory chip with information that can be
bidirectionally communicated with the recording and
reproducing unit. Appellants are correct that a memory chip
is not an impedance and has no impedance value to indicate
anything. The only impedance shown in Ozawa’s Figure 3 would
be the loading detector 8 which merely detects when the
cassette has been inserted into the recording and reproducing
Appeal No. 1997-3970
Application No. 08/391,379
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unit. The value of the impedance in loading detector 8 is
neither discussed by Ozawa nor would its value be indicative
of any property of the cassette itself. Since all the
limitations of the rejected claims are not present in the
disclosure of Ozawa, we do not sustain the rejection of these
claims under 35 U.S.C. § 102(b) based on Ozawa.
We now consider the rejection of claims 2, 14, 15, 27,
28 and 35 under 35 U.S.C. § 102(e) as being anticipated by the
disclosure of Sawada. The examiner has indicated how he reads
these claims on Sawada [answer, pages 5-7]. Appellants argue
that each of these claims recites that the impedance value
contains the cassette characteristic and that Sawada’s use of
an IC chip does not teach or suggest the use of impedance
values to encode cassette characteristics [brief, page 7].
Appellants also argue that Sawada’s conductors 18 do not have
impedance values and Sawada would not operate if the
conductors were replaced with impedance elements [id., page
8]. We note that the examiner has referred to the IC chip 15
or conductors 18 of Sawada as meeting this limitation.
We again agree with appellants that Sawada does not
fully meet the invention of these claims. Sawada’s cassette
Appeal No. 1997-3970
Application No. 08/391,379
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is designed to convey information about the cassette to the
recording and reproducing apparatus, but Sawada’s cassette
does not use an electrical impedance to convey this
information. Sawada conveys information as to whether a
cassette is an IC type cassette or a terminal type cassette.
Figure 8 shows the IC type cassette whereas Figure 9 shows the
terminal type cassette. Although the IC type cassette of
Figure 8 does reveal that the cassette is an IC type cassette,
it does not achieve this by use of an impedance value. The
disclosed integrated circuit is not an impedance and has no
impedance value to indicate anything. The terminal type
circuit of Figure 9 has no impedance elements at all, and the
examiner’s position that ordinary conductors (no theoretical
resistance) are impedance elements violates both the ordinary
definition of the term and the disclosed meaning of the term.
Since all the elements of these claims are not present in the
disclosure of Sawada, we do not sustain the rejection of these
claims under 35 U.S.C. § 102(e) based on Sawada.
We now consider the rejection of claims 3-13, 16-26
and 29-34 under 35 U.S.C. § 103. In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the examiner to establish a
Appeal No. 1997-3970
Application No. 08/391,379
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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 (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,
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). If that burden is met,
Appeal No. 1997-3970
Application No. 08/391,379
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the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to
make in the brief have not been considered [see 37 CFR §
1.192(a)].
As noted above, the examiner’s rejections are based
upon an interpretation of Ozawa or Sawada which is incorrect.
Neither Ozawa or Sawada discloses or suggests at least one
electrical impedance in the cassette wherein the impedance
value defines the parameter of the cassette. The additional
teachings of Sedra and Yoshii, which are used in the
obviousness rejections, do not overcome the basic deficiencies
in the primary references to Ozawa and Sawada.
Appeal No. 1997-3970
Application No. 08/391,379
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Since the examiner improperly determined that the
recitations of the independent claims were fully met by the
disclosures of Ozawa or Sawada, the examiner has not addressed
the obviousness of modifying any of the applied prior art
references to result in a cassette having an electrical
impedance as set forth in the claimed invention.
Consequently, the examiner has failed to establish a prima
facie case of the obviousness of the appealed claims. As
noted by the case law cited above, failure to establish a
prima facie case of obviousness requires that the rejection of
claims 3-13, 16-26 and 29-34 under 35 U.S.C. § 103 be
reversed.
Appeal No. 1997-3970
Application No. 08/391,379
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In summary, we have not sustained any of the
examiner’s rejections of claims 2-35. Therefore, the decision
of the examiner rejecting claims 2-35 is reversed.
REVERSED
)
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Michael R. Fleming )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Frahm )
Administrative Patent Judge )
Appeal No. 1997-3970
Application No. 08/391,379
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JS/dm
Corporate Patent Counsel
U.S. Philips Corporation
Patent Department
580 White Plains Road
Tarrytown NY 10591