Ex parte STAN et al.

Board of Patent Appeals and Interferences

Jan 6, 2000

08538517 (B.P.A.I. Jan. 6, 2000)

Application for patent filed October 3, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte GHEORGHE S. STAN, and JOHANNUS L. BAKX
__________________
Appeal No. 1998-0591
Application 08/538,5171
________________
ON BRIEF
________________
Before McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of appellants’ claims 12-20 and 22-
31. Claims 12 and 19 are independent claims.
References relied on by the Examiner
Syracuse Patent No. 4,750,059 June 7, 1988
The Rejections on Appeal
Appeal No. 1998-0591
Application 08/538,517
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Claims 12 and 13 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Syracuse. (Paper No. 15, page 7).
Appeal No. 1998-0591
Application 08/538,517
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Claims 12-20 and 22-31 stand rejected under 35 U.S.C. §
112, first paragraph, as not being supported by an enabling
disclosure. (Paper No. 15, page 6).
The following rejections have been withdrawn by the
examiner (Paper No. 15, page 3): (1) the rejection of claims
12-31 under 35 U.S.C. § 112, first paragraph, as being without
written description in the original disclosure (new matter
rejection); (2) the rejection of claims 12-31 under 35 U.S.C.
§ 112, second paragraph, as being indefinite; and (3) the
rejection of claims 14-18 under 35 U.S.C. § 102(b) as being
anticipated by Syracuse.
The Invention
The invention is directed to a device for scanning an
information track on a disc-shaped information carrier.
Claims 12 and 19 are reproduced below:
12. A device for scanning an
information track on a disc-shaped
information carrier, comprising:
scanning means for scanning a location
on the information track,
drive means for causing relative
rotation at an angular velocity between the
location and the information carrier, about
a point of rotation, the location thereby
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having a linear velocity of relative
movement along the track,
means for varying a distance (r)
between said location and the point of
rotation, and
control means for controlling the
drive means and the means for varying,
characterized in that said control
means is arranged to control the drive
means so as to cause the relative angular
velocity to decrease substantially with
increasing distance (r), and to cause the
linear velocity to increase substantially
with increasing distance (r).
19. A device for scanning an
information track on a disc-shaped
information carrier, where said track
includes an innermost track, an outermost
track, and a multiplicity of tracks
therebetween, comprising:
scanning means for scanning a location
on the information track,
drive means for causing relative
rotation at an angular velocity between the
location and the information carrier, about
a point of rotation, the location thereby
having a linear velocity of relative
movement along the track,
means for varying a distance (r)
between said location and the point of
rotation, and
control means for controlling the drive
means and the means for varying,
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Application 08/538,517
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characterized in that said control
means is arranged to control the drive
means so as to cause the relative angular
velocity to decrease substantially, but
less than inversely with the increase of
distance (r), as said location is moved
from said innermost track to said outermost
track; and to cause the linear velocity to
increase substantially, but less than
proportionally with the increase of
distance (r), as said location is moved
from said innermost track to said outermost
track.

Opinion
The rejection of claims 12 and 13 as being anticipated by
Syracuse cannot be sustained.
The rejection of claims 12-20 and 22-31 as not being
supported by an enabling disclosure also cannot be sustained.
A reversal of the rejection over prior art should not be
construed as an affirmative indication that the appellants’
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
The Anticipation Rejection
According to claim 12, the control means controls the
drive means such that with increasing distance “r” from the
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point of rotation of the disc to the scanning location, (a)
the angular velocity decreases substantially, and (b) the
linear velocity increases substantially. Claim 13 depends
from claim 12.
The examiner has failed to set forth a prima facie case
of anticipation.
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
In re Spada, 911 F.2d 705, 707, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990); RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.Cir. 1984). See also
In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986);
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
The prior art reference must either expressly or inherently
describe each and every limitation in a claim. Verdegaal
Bros. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
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Application 08/538,517
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The examiner explained (Paper No. 15, page 7) that in
column 2, lines 15-22, Syracuse states that as the radius
increases, the angular velocity for a given zone decreases.
That is correct. However, that is not all the appellants’
claim 12 requires. Specifically, claim 12 also requires that
as the radius increases, the linear velocity must increase
substantially. In that regard, the examiner pointed out
(Paper No. 15, page 7) that “within a given zone of constant
angular velocity, the linear velocity must increase, by
definition.” That observation, however, is not sufficient to
support the anticipation rejection, because within each zone
of constant angular velocity the angular velocity is not
decreased as the radius “r” is increased.
Claim 12 requires that as the radius “r” is increased,
the angular velocity is decreased and the linear velocity is
increased. An increase in the radius “r” is associated with a
decrease in angular velocity and an increase in linear
velocity. That follows from a plain reading of the claim
language and the examiner has not pointed to anything in the
appellants’ specification which indicates otherwise.
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Consequently, the examiner has not made out a prima facie
case of anticipation. To satisfy the limitations of claim 12,
the examiner referred to an increase in the linear velocity
within a zone of constant angular velocity. That is not
sufficient to meet the requirement of claim 12 that as radius
“r” increases, the linear velocity increases substantially and
the angular velocity decreases substantially.
Accordingly, the anticipation rejection of claims 12 and
13 cannot be sustained.
The Lack of Enabling Disclosure Rejection
The examiner finds problematic the fact that no specific
description is contained in the specification for the internal
structure of the disclosed control means 4. The examiner
referred to the corresponding disclosure as “a single black
box 4" (Paper No. 15, page 5). The examiner further stated
that the disclosure does not discuss how conventional systems
“can be modified to produce the desired velocity curves
illustrated in Figures 4a, 4b, 5 and 6, which are shown in a
vague schematic drawing to be discontinuous at various and
sundry amplitude levels and radius values.”
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We find the examiner’s explanation to be misplaced. The
specific curves of Figures 4a, 4b, 5 and 6 are evidently not
recited in the appellants’ claims. At least the examiner did
not point out where in the claims is there a recitation for
those curves. What the examiner did point out is that the
control means of claim 12 is arranged to control the drive
means so as to cause the relative angular velocity to decrease
substantially with increasing distance (r) and to cause the
linear velocity to increase substantially with increasing
distance (r). The examiner also pointed out that according to
claim 19, the decrease in angular velocity is less than
inversely with the increase of distance (r), and the increase
in linear velocity is less than proportionally with the
increase of distance (r).
In any event, we do not find Figures 4a, 4b, 5 and 6 to
be excessively vague. To the contrary, we find that they
provide helpful illustrations of various relationships between
the radius “r” and the angular velocity, and between the
radius “r” and the linear velocity. For instance, with
respect to Figure 4a, the horizontal line 31 depicts the
angular velocity in a constant angular velocity system (CAN)
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as the radius “r” goes from a minimum value to a maximum
value, and the curved line 32 depicts the angular velocity in
a constant linear velocity system (C.V.) as the radius goes
from minimum to maximum. For the purpose intended, there is
no need for the Figures to illustrate specific quantitative
values for either angular velocity, linear velocity, or
radius. On page 6 of the specification from lines 22-24, it
is stated that in between the extremes defined by lines 31 and
32 lie the area 30 including the velocity curves that fit the
various embodiments disclosed in the specification. The
illustrations are quite informative.
It cannot be reasonably argued that one with ordinary
skill in the art would not know how to get a velocity curve to
fall between the extreme borders defined by lines 31 and 32 in
Figure 4a. The examiner has not made any reasonable
explanation to establish that after reading the appellants’
specification it would still require undue experimentation by
one with ordinary skill in the art to fit a curve between
borders 31 and 32.
Claim 12 specifies that as the radius “r” increases, one
would want the angular velocity to decrease and the linear
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Application 08/538,517
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velocity to increase. If the same angular velocity is kept
while the radius “r” of the scanning location is increased,
the linear velocity necessarily increases. Thus, one with
ordinary skill in the art need only cause the angular velocity
to be slowed, but not so slowed that the increase in linear
velocity is significantly reduced. Claim 19 gives a more
specific criteria, i.e., the angular velocity is decreased
substantially but less than inversely with the increase in the
distance “r,” and the increase in linear velocity is increased
substantially but less than proportionally with the increase
in the distance “r.”
The examiner has not presented persuasive reasoning as to
why one with ordinary skill in the art would be unable,
without undue experimentation, to control the speed of a
rotational drive means, i.e., to cause a motor to slow or
speed up to varying degrees of angular velocity depending on
the placement of the scanning location.
Moreover, the discussion on the appellants’ brief
beginning from the bottom of page 8 to the middle of page 10
is particularly on point. For instance, on page 9, from lines
5-15, the appellants state:
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To spin the disc, motor 3 is adequately
disclosed. In the Fig. 2 embodiment, the desired
velocity is defined by using the distance signal 21
from sensor 20 to select a speed signal from a
table, or by calculating in an arithmetic unit or
analog signal processor (page 5, lines 4-9). The
present velocity is obtained as signal 14 from the
drive motor 3. Control means 4 simply compares the
desired and present velocity signals, and uses the
difference to cause the motor 3 to accelerate or
decelerate. This is a very well known motor speed
servo loop. In other embodiments the distance
signal is provided, for example, by a coded signal
which is read by the scanning head 2.
On this record, the examiner has not articulated a
reasonable basis to doubt that the invention of claims 12-20
and 22-31 is enabled by the appellants’ original disclosure.
In particular, it has not been adequately explained by the
examiner why it would take undue experimentation by one with
ordinary skill in the art to control the motor speed based on
the desired speed at the next scanning location and the
current speed.
Conclusion
The rejection of claims 12 and 13 under 35 U.S.C. §
102(b) as being anticipated by Syracuse is reversed.
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Application 08/538,517
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The rejection of claims 12-20 and 22-31 under 35 U.S.C.
§ 112, first paragraph, as not being supported by an enabling
disclosure is reversed.
REVERSED
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
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) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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JAMESON LEE )
Administrative Patent Judge )
Appeal No. 1998-0591
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Corporate Patent Counsel
U.S. Philips Corporation
580 White Plains Road
Tarrytown, New York 10591