Ex parte Squires et al.

Board of Patent Appeals and Interferences

Sep 14, 1999

08062737 (B.P.A.I. Sep. 14, 1999)

The application was filed on May 14, 1993. It is a1
continuation of Application Serial No. 07/790,008, which was
filed on November 4, 1991 and is now abandoned; which is a
continuation of Application Serial No. 07/488,386, which was
filed on February 23, 1990 and is now abandoned; which is a
continuation of Application Serial No. 07/057,806, which was
filed on June 2, 1987 and is now abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 48
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN P. SQUIRES,
THOMAS A. FIERS,
and LOUIS J. SHRINKLE
____________
Appeal No. 1995-3903
Application No. 08/062,7371
____________
ON BRIEF
____________
Before THOMAS, MARTIN, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
Appeal No. 1995-3903 Page 2
Application No. 08/062,737
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 37-47. We affirm-in-part.
BACKGROUND
The invention at issue controls a disk drive. The disk
comprises a plurality of data tracks. Each track is divided
into sectors; each sector contains a sector mark. A “sector
period” is the time between two successive sector marks. A
microcontroller schedules tasks to be done under control of a
microprocessor during each sector period. A sector task and a
motor speed control task are among those scheduled. The tasks
are scheduled to maintain their initiation in a constant
spatial relationship to the sector period despite the
rotational speed of the disk.
Claim 37, which is representative for our purposes,
follows:
37. A programmable microcontroller in a disk
drive system for controlling the initiation of a
plurality of processes during each sector period
where said disk drive system performs a plurality of
processes for controlling the operation of said disk
Appeal No. 1995-3903 Page 3
Application No. 08/062,737
drive system and includes rotational media upon
which is recorded a plurality of data tracks, where
each data track is divided into sectors and each
sector contains a recorded sector mark and a
transducer for recovering data from said data tracks
including said sector marks, where the time between
the occurrence of two adjacent sector marks is
defined as a sector period, said programmable
microcontroller comprising:
Appeal No. 1995-3903 Page 4
Application No. 08/062,737
first means for detecting the occurrence of each
said sector mark from the data read by said
transducer;
second means connected to said first means for
determining and storing from the last two said
sector marks detected by said first means the sector
period for a previous sector to a present sector for
use as a predicted length for the present sector;
and
third means, in response to said sector mark
detected by said first means for said present sector
and said sector period for said previous sector
determined and stored by said second means, for
scheduling the initiation of each of said plurality
of processes so as to maintain said initiation of
each of said processes in a constant spatial
relationship to said predict present sector period
thereby minimizing the effect of variations in the
rotational speed of said rotating media and
synchronizing the initiation of said processes to
said sector mark for the present sector.
The reference relied on by the patent examiner in
rejecting the claims follows:
Moon et al. (Moon) 4,669,004 May 26,
1987.
Claims 37-47 stand rejected under 35 U.S.C. § 103 as
obvious over Moon. Rather than repeat the arguments of the
appellants or examiner in toto, we refer the reader to the
briefs and the answer for the respective details thereof.
Appeal No. 1995-3903 Page 5
Application No. 08/062,737
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection and evidence
advanced by the examiner. We also considered the arguments of
the appellants and examiner. After considering the record
before us, it is our view that the evidence and level of
skill in the art would have suggested the invention of claims
37 and 43-44. We cannot say, however, that they would have
suggested the invention of claims 38-42 and 45-47.
Accordingly, we affirm-in-part.
We begin our consideration of the obviousness of the
claims by finding that the references represent the level of
ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573,
1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (finding that the
Board of Patent Appeals and Interference did not err in
concluding that the level of ordinary skill in the art was
best determined by the references of record); In re Oelrich,
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Application No. 08/062,737
579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("[T]he PTO
usually must evaluate ... the level of ordinary skill solely
on the cold words of the literature."). Of course, every
patent application and reference relies on the knowledge of
persons skilled in the art to
Appeal No. 1995-3903 Page 7
Application No. 08/062,737
complement its disclosure. In re Bode, 550 F.2d 656, 660, 193
USPQ 12, 16 (CCPA 1977). Persons skilled in the art,
moreover, must be presumed to know something about the art
apart from what the references disclose. In re Jacoby, 309
F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962). Our opinion
considers the obviousness of claims 37, 43, and 44 and of
claims 38-42 and 45-47 seriatim.
In rejecting claims under 35 U.S.C. § 103, the patent
examiner bears the initial burden of establishing a prima
facie case of obviousness. A prima facie case is established
when the teachings from the prior art itself would appear to
have suggested the claimed subject matter to a person of
ordinary skill in the art. If the examiner fails to
establish a prima facie case, an obviousness rejection is
improper and will be overturned. In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). With this
in mind, we address the appellants’ arguments.
Appeal No. 1995-3903 Page 8
Application No. 08/062,737

Claims 37, 43, and 44
During patent examination, pending claims must be given
their broadest reasonable interpretation. Limitations from
the specification are not to be read into the claims. In re
Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541,
550 (CCPA 1969). With this in mind, we address the
appellants’ arguments.
Regarding claims 37 and 43, the appellants argue, “Moon
does not control the initiation of a plurality of events or
tasks that are to be processed during each sector period such
that the initiation of each of those events will be maintained
in a constant spatial relationship to the sector period
regardless of the velocity of the disk.” (Reply Br. at 3.)
In response, the examiner asserts, “Moon is also directed to
direct liner spatial relationship [sic].” (Examiner’s Answer
at 8.)
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We find that invention of independent claims 37 and 43
does not define over Moon. The claims specify in pertinent
part scheduling “the initiation of each of said plurality of
processes so as to maintain said initiation of each of said
processes in a constant spatial relationship to said predict
present sector period thereby minimizing the effect of
variations in the rotational speed of said rotating media and
synchronizing the initiation of said processes to said sector
mark for the present sector.” Giving the claims their
broadest reasonable interpretation, they recite scheduling
tasks to maintain their initiation in a constant spatial
relationship to a sector period.
Moon discloses a disk file subsystem 10 for storing and
retrieving data. Col. 7, ll. 15-17. A DC spindle motor 16
rotates disks 22 at an angular velocity. Id. at 60-65. Head
transducers 24 write and read data stored on each of the
disks. Col. 8, ll. 2-4. Each surface of the disks comprises
concentric data tracks 50. Each data track is divided into
thirty two equal sectors 52. Col. 9, ll. 14-15, 22-23. Each
sector includes a qualification area 250 followed by a user
data region 54. Id. at ll. 24-27, col. 13, ll. 25-27. The
Appeal No. 1995-3903 Page 10
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qualification area includes sector pulse pairs 254 and echo
pulse pairs 258 separated by three erase gaps 252, 256, and
260. Col. 18, ll. 11-14. A reliable sector marker is
achieved with the sector and echo pulse pairs in conjunction
with a timing controller 130. Id. at ll. 46-48.
The timing controller responds to signals read by the
transducer heads in qualification areas. It generates all the
timing signals needed to position the transducer heads.
Col. 10, ll. 64-68. The controller includes two counters, an
up counter and a down counter. Each counter counts-out a 512-
microsecond interval corresponding to the duration of each
sector. The counters are clocked by a 15-MHz system clock.
During system reset, the counters are set by a TRIGGER (TRIG)
pulse after the first of two consecutive sectors has been
read. Col. 14, ll. 12-20.
Upon arrival of the TRIG pulse, the up counter begins
counting. It continues to count until the next TRIG pulse is
received after the second of the two consecutive sectors has
been read. At this point, the count in the up counter is
Appeal No. 1995-3903 Page 11
Application No. 08/062,737
loaded into the down counter. Then, the up counter is reset
to zero and begins counting. Simultaneously, the down counter
begins to count. The down counter will reach a zero count
after 512 microseconds, the nominal duration of each sector.
Id. at ll. 24-34.

When a qualification area has been tested, the TRIG pulse
is generated. It causes the up counter's count to be loaded
into the down counter. The resultant count measures the time
length of the preceding sector and is used to predict the
beginning of the next qualification area. Id. at ll. 36-39.
When a qualification area is not validated, the timing
controller does not initiate the clear and load operations of
the up and down counters, and a "virtual" TRIG pulse is
generated when the down counter reaches zero. The virtual
TRIG pulse operates in the same way as the aforementioned TRIG
pulse: the value in the up counter is loaded into the down
counter and then reset to begin counting from zero. Thus, the
timing controller achieves a flywheel action when a
Appeal No. 1995-3903 Page 12
Application No. 08/062,737
qualification area of consecutively occurring sectors fails to
be validated. Id. at ll. 48-60.
Accordingly, timing is seldom lost, and the system
recovers absolute timing when a qualification area is
validated. Also, the mechanism for marking in time the
beginning of each sector is corrected when each qualification
area is validated and is
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averaged whenever a qualification area fails to be
qualified. Id. at ll. 61-67.
Following a control program in a ROM 104, a
microprocessor 102 executes three principal tasks. Col. 26,
ll. 19-21. The first task 212 is called "Main Time." It
comprises a collection of routines, e.g., spindle motor speed
monitoring, not directly related to head transducer position
or the handling of commands and status words passing through
an SCSI interface controller 110 between the disk file
subsystem and a host computer with which the subsystem
operates. Id. at ll. 28-37.

The second task 214 is a position interrupt service
routine (POS_ISR). WEDGE is an interrupt to the
microprocessor, which initiates POS_ISR. When the down
counter reaches a certain count for each sector, the interrupt
is asserted. Col. 15, ll. 22-27. POS_ISR is thus executed
thirty two times during each disk revolution, corresponding to
the thirty two sectors. The task controls the position of the
transducer heads. Id. at ll. 38-45.
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The third task 216 is the SCSI interrupt service routine
(SCSI_ISR). It is initiated by a low priority interrupt,
which is asserted when a command has been received through the
interface controller from the host. Id. at ll. 48-52.

The microprocessor spends approximately the first 300
microseconds of every sector interval executing POS-ISR. The
remaining approximately 212 microseconds of each sector find
the microprocessor executing Main Time to do housekeeping, to
wait for an interrupt, or to respond to an interrupt by
executing SCSI_ISR. Id. at ll. 52-60.
The appellants erred in reading limitations from their
specification into the claims. Comparison of Moon’s
disclosure to the claim language evidences that the reference
would have suggested the claimed scheduling of tasks to
maintain their initiation in a constant spatial relationship
to a sector period. Moon’s Main Time and POS_ISR tasks would
have suggested the claimed tasks. The reference’s initiation
of POS_ISR at the beginning of each sector interval and its
initiation of Main Time after POS_ISR is completed would have
Appeal No. 1995-3903 Page 15
Application No. 08/062,737
suggested the claimed scheduling of tasks in the same spatial
relationship for each sector period. Moon’s synchronization
of the tasks to a qualification area for each sector would
have suggested the initiation of tasks to a sector mark for a
present sector. The reference’s aforementioned scheduling of
the tasks would have ipso facto minimized the effect of
variations in the rotational speed of the disks as claimed.
Therefore, we find that the reference would have suggested the
language of claims 37 and 43.
Regarding claim 44, the appellants argue, “Moon does not
generate count values for each event but rather uses the same
count value for the same event for all sector periods.”
(Appeal Br. at 31.) In response, the examiner asserts, “Moon
disclose [sic] an interrupt signal [WEDGE] (e.g. see col.15
lines 22-27) to initiate routine POS-ISR which included Seek
Routine (see fig.17; col.28) and Servo Routine (see fig.18;
col.29).” (Examiner’s Answer at 9.)
We find that invention of claim 44 does not define over
Moon. The claim specifies in pertinent part “generating an
Appeal No. 1995-3903 Page 16
Application No. 08/062,737
initiation value for the initiation of each said processes as
a function of said predicted present sector period” and
“generating an initiation signal from said initiation value
for each said processes to initiate said processes after the
occurrence of said sector mark in said present sector period.”
Giving the claim its broadest reasonable interpretation, it
recites generating a value and, in response to the value,
generating a signal to start tasks.

The appellants erred in reading the limitation of a
different count value for each task from their specification
into the claim. Comparison of the Moon’s disclosure to the
claim language evidences that the reference would have
suggested the claimed generating of a value and, in response
to the value, generating a signal to start tasks. As
aforementioned, Moon’s Main Time and POS_ISR tasks would have
suggested the claimed tasks. The reference’s use of the up
counter and down counter to generate counts would have
suggested the claimed generating of a value. Moon’s assertion
of the WEDGE interrupt, when the down counter reaches a
certain count, to initiate POS_ISR and its initiation of Main
Appeal No. 1995-3903 Page 17
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Time when POS_ISR completes, would have suggested the claimed
generating a signal to start tasks in response to the value.
Therefore, we find that the reference would have suggested the
language of claim 44. Next, we consider the obviousness of
claims 38-42 and 45-47.
Claims 38-42 and 45-47
Regarding claim 38, the appellants argue, “Moon does not
have an initiating means for each event that receives a count
from the microprocessor which determines when that event
occurs.” (Appeal Br. at 29.) The examiner neither responds
to the argument nor specifically addresses the argued
limitations in his rejection.
We cannot find that Moon teaches or would have suggested
the invention of claim 38. The claim specifies in pertinent
part the following limitations:
a plurality of initiation means, each said
initiation means associated with one of said
processes for receiving said initiation value for
said process from said microprocessor and for
generating an initiation signal for said process
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after the occurrence of said sector mark as a
function of said received initiation value.
In short, the claim recites plural initiating means. Each of
the initiating means is associated with one of the tasks and
each receives one of a plurality of the count values for
initiating a respective task.
The examiner erred in not addressing this limitation.
Comparison of Moon’s disclosure to the claim language does not
evidence that the reference would have suggested the claimed
initiating means. The reference’s counters operate together
to initiate the same task, viz., POS_ISR. Contrary to the
claims, each counter does not initiate a different task. For
the foregoing reasons, the examiner failed to show that Moon
would have suggested the plural initiating means of claim 38
and its dependent claims 39-42. Therefore, we find that the
examiner’s rejection does not amount to a prima facie case of
obviousness.
Regarding claim 45, the appellants argue, “Moon teaches
that of the three routines only the POS-ISR routine is to be
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initiated by an interrupt to the microprocessor.” (Appeal
Br. at 31.) The examiner neither responds to the argument nor
specifically addresses the claim in his rejection. Instead,
he alleges, “the scope of claims 43-47 is not distinguishable
form [sic] claims 37-42.” (Examiner’s Answer at 8.)
We cannot find that the reference teaches or would have
suggested the invention of claim 45. The claim specifies in
pertinent part “generating for each said task to be scheduled
during said present sector an interrupt signal from said
initiation value for each said task” and “sending said
interrupt signals to said microprocessor to initiate
processing of said tasks by said microprocessor.” In short,
the claim recites
generating an interrupt for each task.
The examiner erred in not addressing these limitations.
Comparison of Moon’s disclosure to the claim language does not
evidence that the reference would have suggested the claimed
generating an interrupt for each task. Although Moon
generates an interrupt to initiate POS_ISR, it does not
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Application No. 08/062,737
generate one to initiate Main Task. For the foregoing
reasons, the examiner failed to show that Moon would have
suggested the generation of an interrupt for each task of
claim 45 and its dependent claims 46 and 47. Therefore, we
find that the examiner’s rejection does not amount to a prima
facie case of obviousness.
Because the examiner has not established a prima facie
case, the rejection of claims 38-42 and 45-47 over Moon is
improper. Therefore, we reverse the rejection of the claims
under 35 U.S.C. § 103.
Appeal No. 1995-3903 Page 21
Application No. 08/062,737
We end our consideration of the claims by concluding that
we are not required to raise or consider any issues not argued
by the appellants. Our reviewing court stated, “[i]t is not
the function of this court to examine the claims in greater
detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir.
1991).
37 C.F.R. § 1.192(a), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(a) stated as follows:.
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief will be refused
consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Simultaneously, 37 C.F.R. § 1.192(c)(8)(iv) stated as follows:
For each rejection under 35 U.S.C. 103, the argument
shall specify the errors in the rejection and, if
appropriate, the specific limitations in the
rejected claims which are not described in the prior
art relied on in the rejection, and shall explain
how such limitations render the claimed subject
matter unobvious over the prior art. If the
Appeal No. 1995-3903 Page 22
Application No. 08/062,737
rejection is based upon a combination of references,
the argument shall explain why the references, taken
as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an
explanation of why features disclosed in one
reference may not properly be combined with features
disclosed in another reference. A general argument
that all the limitations are not described in a
single reference does not satisfy the requirements
of this paragraph.
In summary, section 1.192 provides that just as the court is
not under any burden to raise or consider issues not argued by
the appellants, the Board of Patent Appeals and Interferences
is also not under any such burden.
CONCLUSION
To summarize, the examiner’s rejection of claims 37 and
43-44 under 35 U.S.C. § 103 is affirmed. His rejection of
claims 38-42 and 45-47 under § 103, however, is reversed.
Appeal No. 1995-3903 Page 23
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No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN C. MARTIN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1995-3903 Page 24
Application No. 08/062,737
LLB/dal
MARTIN C. FLIESLER, ESQ.
FLIESLER, DUBB, MEYER & LOVEJOY LLP
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