Ex Parte Suzuki et al

Board of Patent Appeals and Interferences

Mar 14, 2007

09964874 (B.P.A.I. Mar. 14, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________

Ex parte YOSHIHISA SUZUKI,
SAYOKO TANAKA, HITOSHI NOGUCHI, and
HIROKI ISHIDA

Appeal No. 2007-0464
Application 09/964,874
__________

On Brief
__________

Before LEE, DELMENDO, and TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the Case

This is a decision on appeal by an applicant under 35 U.S.C. ' 134(a) from a rejection of
claims 10-13 and 24-27 in application 09/964,874. We have jurisdiction under 35 U.S.C. § 6(b).
The real party in interest is SANYO Electric Co. Ltd.
References relied on by the examiner
Kulakowski et al. (Kulakowski) U.S. Patent 5,566,077 October 15, 1996

Tsutsui U.S. Patent 5,699,333 December 16, 1997

Takasugi U.S. Patent 4,507,767 March 26, 1985

Davis U.S. Patent 5,276,697 January 4, 1994

Appeal No. 2007-0464
Application 09/964,874

Takagi et al. (Takagi) U.S. Patent 6,567,350 May 20, 2003

Otsuka JP Pat. Pub. 10-283645 October 23, 1998

Tsuchimochi JP Pat. Pub. 08-306052 November 22, 1996

The Rejections on Appeal

The following rejections were maintained in the Examiner’s Answer. All other rejections
made prior to the filing of the applicant’s appeal brief are regarded as withdrawn.
1. The examiner rejected claim 24 under 35 U.S.C. § 102 as anticipated by Otsuka.
2. The examiner rejected claims 10-11 under 35 U.S.C. § 103 as unpatentable for
obviousness over Kulakowski and either Tsuchimochi or Tsutsui.
3. The examiner rejected claims 12-13 and 26-27 under 35 U.S.C. § 103 as
unpatentable for obviousness over either Takasugi or Davis.
4. The examiner rejected claim 25 under 35 U.S.C. § 103 as unpatentable for
obviousness over Otsuka and either Kulakowski or Takagi.
B. Issues
1. Has the applicant shown error in the anticipation rejection of claim 24 over Otsuka?
2. Has the applicant shown error in the obviousness rejection of claims 10-11 over
Kulakowski and either Tsuchimochi or Tsutsui?
3. Has the applicant shown error in the obviousness rejection of claims 12-13 and 26-27
over Takasugi or Davis?
4. Has the applicant shown error in the obviousness rejection of claim 25 over Otsuka
and either Kulakowski or Takagi?
2

Appeal No. 2007-0464
Application 09/964,874

C. Summary of the Decision
Applicant has not shown error in the anticipation rejection of claim 24. Applicant has
shown error in the obviousness rejection of claims 10-11. Applicant has shown error in the
obviousness rejection of claims 12-13 and 26-27. Applicant has not shown error in the
obviousness rejection of claim 25.
D Findings of Fact (Referenced as FF. ¶ No.)
1. The invention is directed to an optical disk drive which records information onto
and reproduces information from an optical disk, and is more particularly directed to how the
disk drive handles the setting of a focus offset, a tracking offset, or a laser output value.
(Specification, Page 1, Lines 5-12).
2. In the pertinent art, it was known to set the focus offset, the tracking offset, and
the laser output value, at the time of startup of the optical disk drive. (Specification, Page 2,
Lines 21-23).
3. It was known to set the focus offset of the disk drive to a value at which an RF
signal is maximized. (Specification, Page 2, Lines 5-6).
4. It was known to set the tracking offset of the disk drive to a value at which a
tracking error signal obtained in an on-track state comes to the center of a tracking error signal
obtained in an off-track state. (Specification, Page 2, Lines 6-11).
5. It was known to set the laser output value such that a data error rate would be
minimized. (Specification, Page 2, Lines 18-19).
3

Appeal No. 2007-0464
Application 09/964,874

6. A change in the operating temperature of the disk drive, either due to a change in
the ambient temperature or to operations of electrical circuits in the disk drive, causes the set
offset values and the set laser output value to deviate from the optimal.
7. Optimal offset values change in accordance with temperature.
(Specification, Page 3, Lines 15-16).
8. If offset values deviate from the appropriate values, recording and reproducing
operations of the optical disk drive may fail to perform properly. (Specification, Page 3, Lines
16-18).
9. Claims 10, 12, 24 and 26 are independent claims. Claims 10 and 12 each recites a
first temperature measurement means for measuring an internal temperature of the optical disk
drive at startup of operations, and a second temperature measurement means for measuring an
internal temperature of the optical disk drive sometime after startup of operations of the disk
drive. Claims 24 and 26 each requires a temperature sensor for sensing an internal temperature
of the optical disk drive and requires the sensor to take a measurement at startup of the disk drive
and again sometime after startup of the disk drive.
10. Claim 10 recites a setting means for setting a focus offset value and/or a tracking
offset value at startup of the optical disk drive, a determining means for determining whether the
measurement of the first and second temperature measurement means differ by more than a
predetermined level, and a resetting means for resetting the focus offset value and/or the tracking
offset value when that condition is met.
11. Claim 12 recites a setting means for setting a laser output value at startup of the
disk drive, a determining means for determining whether the measurement of the first and
4

Appeal No. 2007-0464
Application 09/964,874

second temperature means differ by more than a predetermined level, and a resetting means for
resetting the laser output value set by the setting means when that condition is met.
12. Claim 24 recites a controller for setting a focus offset value and/or a tracking
offset value at startup of the disk drive, which also determines whether the two measurements of
the temperature sensor differ by more than a predetermined level, and which then resets the
focus offset value and/or the tracking offset value when the condition is met.
13. Claim 26 recites a controller for setting the laser output value at startup of
operations of the optical disk drive, which also determines whether the two measurements of the
temperature sensor differ by more than a predetermined level, and which then resets the laser
output value when the condition is met.
14. In applying Otsuka against claim 24, the examiner actually relied on and cited to
an English translation of Otsuka rather than the original Japanese language document. That
translation is in the record and it is what we refer to when using the phrase “Otsuka-English.”
15. Otsuka discloses an optical disk drive in which a microcomputer 15 adjusts the
tracking offset. (Otsuka-English, Paragraphs 1-2, 5).
16. Otsuka is concerned with the problem of temperature change in the optical disc
drive which throws off the adjusted tracking offset which was set only once at startup of the disk
drive. (Otsuka-English, Paragraph 9).
17. Drawing 3 of Otsuka is a figure comprising two columns, the left column being
entries for a series of temperature ranges, and the right column showing a four digit code
corresponding to each temperature range in the left column.
5

Appeal No. 2007-0464
Application 09/964,874

18. Paragraph 23 of Otsuka appears to be concerned with the initial setting of a
tracking offset based on temperature sensing and a reading of corresponding offset data from a
stored table as is depicted in Drawing 3, and it reads as follows:
[0023] Temperature sensor 3A is prepared in the frame of an optical
pickup 4. The data detected by the temperature sensor are inputted into a
microcomputer 15, and temperature is detected. The temperature requirement by
which the control data beforehand doubled with the temperature characteristic of
tracking offset of an optical pickup 4 was decided to be memory’ in a
microcomputer 15 is taken charge of, and it memorizes. For example, according
to the contents of storage which are shown in drawing 3 and which were
beforehand memorized by memory, the data which negate DC component of a
tracking error signal are read with a microcomputer 15, data processing is carried
out by the servo processing IC 3, and the tracking servo of the optical pickup is
carried out with the head amplifier 5.

19. Paragraphs 24 and 25 appear to be concerned with subsequent setting, or
resetting, of the tracking offset based on further temperature sensing and a reading of
corresponding offset data from a stored table as is depicted in Drawing 3, and read as follows:
[0024] Next, the flow chart shown in drawing 2 explains change
operation controlled according to the temperature in the equipment of tracking
offset of the optical pickup 4 in MD recorder of this example. When MD
recorder is in record or a reproduction state, a microcomputer 15 carries out
temperature detection from temperature sensor 3A by the regular time interval
(S1), incorporates the detected data on a microcomputer 15, distinguishes a part
for which temperature requirement or a temperature province, distinguishes the
present temperature, and memorizes it to memory 15’ (S2).

[0025] A microcomputer 15 sets up the data which read the control data
in the present temperature (S3), input into the servo processing IC 3, and negate
offset from the control data beforehand memorized by memory 15’ as control data
of the tracking offset which is adapted for the optical pickup 4 used for every
temperature requirement beforehand, as it is shown in drawing 3 in order to
negate offset for example, and it updates tracking offset control through the head
amplifier 5 (S4).

6

Appeal No. 2007-0464
Application 09/964,874

20. Kulakowski discloses an optical disk drive in which a sensor measures the
operating temperature of the device and the measured temperature is compared with two
threshold values. (Kulakowski, Column 2, Line 63 through Column 3, Line 9.)
21. Kulakowski discloses that if the measured temperature exceeds a first threshold
temperature, a microprocessor dynamically adjusts the duty cycle of the disk drive by inhibiting
high temperature write and erase operations. (Kulakowski, Column 2, Line 66 through Column
3, Line 3.) And if the measured temperature exceeds the second threshold temperature, a control
circuit further inhibits read and verify operations as well. (Kulakowski, Column 3, Lines 3-5.)
Kulakowski discloses that as a consequence of these inhibitions the temperature of the disk drive
can be controlled to stay within a predetermined range and the system provides a way to address
the heat generation problem associated with computer peripheral equipment. (Kulakowski,
Column 3, Lines 5-7 and Lines 17-19.)
22. Kulakowski does not disclose changing or modifying the focus or tracking offset
value of the optical disk drive at any time. It is just concerned with maintaining the operating
temperature of the disk drive to within predetermined parameters which may be controlled by a
user through a host computer. (Kulakowski, Column 3, Lines 5-8; Column 5, Lines 15-18.)
23. Tsutsui discloses that temperature changes in an optical disk drive may vary the
necessary offset in the focus and tracking offset servo signals. (Tsutsui, Column 1, Lines 38-46.)
24. Tsutsui discloses continual adjustment of the servo offset to an optimal value
during operation of the optical disk drive, whenever the quantity of stored data supplied by a
reproducing means exceeds the quantity of recorded data corresponding to one rotation of the
optical disk. (Tsutsui, Column 1, Line 64 through Column 2, Line 19.) Because of the continual
adjustment of the servo offset, based on the quantity of data reproduced as compared to the
7

Appeal No. 2007-0464
Application 09/964,874

quantity of recorded data corresponding to one rotation of the optical disk, temperature changes
in the disk drive will not destabilize data playback. (Tsutsui, Column 2, lines 19-22 and Column
2, Line 64 through Column 3, line 3.)
25. Tsutsui does not disclose measuring the operational temperature of the optical
disk drive.
26. In applying Tsuchimochi against claims 10 and 11, the examiner actually relied

on and cited to an English translation of Tsuchimochi rather than the original Japanese language

document. That translation is in the record and it is what we refer to when using the phrase

“Tsuchimochi-English.”

27. Tsuchimochi discloses an optical disk drive in which a temperature sensor senses
whether the operating temperature is low or high and when the temperature is high the rise time
of a recording pulse is delayed so that the margin of the recording power applied to the medium
becomes enlarged and thus the focal offset is changed. (Tsuchimochi-English Paragraph Nos. 39
and 40.)
28. Davis discloses an automatic power control circuit for a laser diode, in which
power is shunted around the laser diode when the temperature of the laser diode is detected to be
above or below a predetermined temperature range. (Davis, Column 2, Line 48 through Column
3, Line 6.)
29. Takasugi discloses an optical disk drive using a semiconductor laser as a light
source, including a protection circuit which is connected in parallel with the laser to short-circuit
the laser when the output of the laser exceeds a predetermined value. (Takasugi, Figure 4 and
Abstract.)
8

Appeal No. 2007-0464
Application 09/964,874

30. In Takasugi, the short-circuiting of power around the laser is not triggered by any
temperature measurement of the disk drive.
31. Takagi is concerned with making control adjustments, such as in focus, tracking,
and power output, in a disk drive in response to environmental changes such as a temperature
change. (Takagi, Column 1, Lines 49-52.)
32. Takagi discloses continual measurement of the temperature inside the optical disk
drive near the optical head. (Takagi, Column 1, Lines 49-62; Column 16, Lines 8-10.)
33. In Takagi, the measured temperature values are transmitted to a control unit
which continually determines a temperature change from the time the last control adjustment
was made, and when that difference in temperature exceeds a predetermined value, steps are
taken to make a further adjustment. (Takagi, Column 16, Lines Lines 10-17.)
34. Claims 10, 12, and 24 read as follows:
Claims 10: An optical disk drive comprising:
setting means for setting a focus offset value and/or a tracking offset value at startup of
the optical disk drive;
first temperature measurement means for measuring an internal temperature of the optical
disk drive at startup of the optical disk drive;
second temperature measurement means for measuring an internal temperature the
optical disk drive after startup of the optical disk drive;
determination means for determining whether or not a difference between the
temperature measured by the second temperature measurement means and the temperature
measured by the first temperature measurement means has exceeded a predetermined level; and
9

Appeal No. 2007-0464
Application 09/964,874

resetting means for resetting the focus offset value and/or the tracking offset value set by
the setting means when the determination means determines that the difference has exceeded the
predetermined level.
Claim 12: An optical disk drive comprising:
setting means for setting a laser output value of a light-emitting section, a laser being
output from the light-emitting section for recording and/or reproducing data on and/or from an
optical disk, at startup of the optical disk drive;
first temperature measurement means for measuring an internal temperature of the optical
disk drive at startup thereof;
second temperature measurement means for measuring an internal temperature of the
optical disk drive after startup thereof;
determination means for determining whether or not a difference between the
temperature measured by the second temperature measurement means and the temperature
measured by the first temperature measurement means has exceeded a predetermined level; and
resetting means for resetting the laser output value set by the setting means when the
determination means determines that the differences has exceeded the predetermined level.
Claim 24: An optical disk drive comprising:
a temperature sensor for sensing an internal temperature of the optical disk drive; and
a controller for setting a focus offset value and/or a tracking offset value, wherein
the controller sets a focus offset value and/or tracking offset value at startup of the optical
disk drive, determines whether or not a difference between a temperature measured by the
temperature sensor at startup of the optical disk drive and a temperature measured by the
temperature sensor after startup of the optical disk drive has exceeded a predetermined level, and
10

Appeal No. 2007-0464
Application 09/964,874

resets the focus offset value and/or the tracking offset value when the difference is determined to
have exceeded the predetermined level.
E. Principles of law
To establish anticipation under 35 U.S.C. § 102, each and every element in a claim,
arranged as is recited in the claim, must be found in a single prior art reference. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001).
Anticipation can be found when a claim limitation is inherent or otherwise implicit in the
relevant reference. Standard Havens Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360,
1369, 21 USPQ2d 1321, 1328 (Fed. Cir. 1991). But for establishing inherency, that which is
missing in the express description must necessarily be present and would be so recognized by
one with ordinary skill in the art. Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Inherency may not be established by
probabilities or possibilities, and the mere fact that a certain thing may result from a given set of
circumstance is not sufficient. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981). In proceedings before the U.S. Patent and Trademark office, claims are properly
construed according to their broadest reasonable interpretation consistent with the specification.
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); Ex Parte Prater, 415
F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969).
F. Analysis
The Anticipation Rejection of Claim 24 over Otsuka
With regard to claim 24, the only claim features argued by the applicant as not shown by
the examiner as disclosed by Otsuka are two: (1) the setting of a focus offset value and/or
tracking offset value at startup of the optical disk drive, and (2) subsequent resetting of the focus
11

Appeal No. 2007-0464
Application 09/964,874

offset value and/or the tracking offset value. Appeal Brief at Page 7, Lines 4-12. Although a
few lines later on the same page in the appeal brief the applicant added the words “in the manner
described in the claim,” a full reading of the argument reflects the applicant’s clear position that
it is because the examiner did not show that Otsuka discloses “any” setting and resetting
whatsoever that Otsuka cannot possibly disclose setting and resetting in the manner described in
the claim. On Page 8 of the appeal brief the applicant restates that the examiner has not shown
that Otsuka discloses setting and resetting under the conditions specified in the claim.
It suffices to say only that the applicant’s argument is general and never identifies what
manner or condition for setting and resetting is not met by Otsuka. Indeed, as noted above there
is a clear explanation in the appeal brief that setting and resetting an offset in the manner
required by the claim are not met by Otsuka only because the examiner has not shown that
Otsuka discloses any setting and resetting of an offset value. We decline to look on our own for
manners and conditions in the claim, unspecified by the applicant, which may not be met by
Otsuka. If there is a missing feature, the argument has been waived.
The examiner cited to Paragraphs 23-27 of Otsuka-English as supporting the
determination that the features of setting a tracking offset value at startup and subsequent
resetting of the tracking offset value are met. We have quoted Paragraphs 23-25 of Otsuka-
English in Fact Findings 18 and 19, and find that those portions of Otsuka-English reasonably
convey the setting of a tracking offset at startup and subsequent resetting of the tracking offset at
a later time. The word “Next” at the beginning of Paragraph 24 reasonably indicates that the
setting of the offset value as described in Paragraph 23 is in a category all by itself, separate
from all the subsequent resetting as described in Paragraphs 24 and 25. The examiner has set
forth at least a prima facie case that Otsuka discloses an initial setting of the tracking offset value
12

Appeal No. 2007-0464
Application 09/964,874

at startup and subsequent resetting of the tracking offset at a later time. It was incumbent upon
the applicant to rebut the prima facie case.
All the applicant has done, however, is to argue that the examiner did not specifically
explain where the disclosure for setting and resetting an offset value exists in Otsuka. According
to the applicant, the examiner merely cited to Paragraphs 23-33 of Otsuka-English and that that
was not specific enough. In the Examiner’s Answer, the citation of support was narrowed to
Paragraphs 23-27 of Otsuka-English and the applicant in the reply brief still regards that as not
specific enough. The applicant does not submit that Otsuka does not disclose what the examiner
found it discloses and has not discussed the portions of the reference cited by the examiner as
disclosing the feature. The sole argument put forth is that the examiner provided no explanation
as to why the cited portions of the reference meet the claim features at issue.
While an examiner must explain the rejection and offer up a rationale in support of the
rejection, the explanation does not have to be in a particular form and style that suits the
applicant’s preference, and the citation of support to a reference need not have the same accuracy
and precision as that possessed by a cartographer. Paragraphs 23-25, as reproduced in Fact
Findings 19 and 20, reasonably apprise the applicant of the examiner’s position, and Paragraphs
23-27 together covering only thirty-one lines of text are not so voluminous as to constitute
excessively burdensome material for the applicant to review. The relevance of Paragraphs 23-25
is self-evident even upon only a cursory review of the same.
The applicant cites a Board decision in Appeal No. 2003-0121 in which the panel
determined that the examiner did not adequately indicate how the asserted prior art rendered the
rejected claims unpatentable. The adequacy of the explanation has to be determined on a case by
case basis. In this case, the explanation given by the examiner was sufficient. There is much in
13

Appeal No. 2007-0464
Application 09/964,874

the examiner’s cited support in Otsuka-English for the applicant to address or rebut if the
applicant’s position is that the cited paragraphs do not disclose the setting and resetting of the
tracking offset. The applicant chose not to address the cited portions of Otsuka-English.
For the foregoing reasons, we reject the applicant’s argument that the examiner has not
adequately explained the basis of the anticipation rejection of claim 24 over Otsuka.
The Obviousness Rejection of Claims 10 and 11
over Kulakowski, and either Tsuchimochi or Tsutsui
Kulakowski discloses an optical disk drive in which a sensor measures the operating
temperature of the device and the measured temperature is compared with two threshold values
(FF. 20). Kulakowski discloses that if the measured temperature exceeds a first threshold
temperature, a microprocessor adjusts the duty cycle of the disk drive by inhibiting high
temperature write and erase operations, and if the measured temperature exceeds the second
threshold temperature, a control circuit further inhibits read and verify operations as well
(FF.21). Kulakowski discloses that as a consequence of the inhibitions the temperature of the
disk drive can be controlled to stay within a predetermined range and the system provides a way
to address the heat generation problem associated with computer peripheral equipment (FF. 21).
Kulakowski does not disclose changing or modifying the focus or tracking offset value of the
optical disk drive at any time (FF. 22).
Independent claim 10 requires measuring of the temperature at startup of the optical disk
drive and measuring the temperature again sometime after startup of the optical disk drive, and
determining when the difference of those two measured temperatures has exceeded a
predetermined level. Claim 10 further requires that when the difference in the two measured
14

Appeal No. 2007-0464
Application 09/964,874

temperatures has exceeded the predetermined level, resetting the focus offset value or the
tracking offset value.
The examiner acknowledges that Kulakowski does not disclose setting or resetting of a
focus offset, but asserts that both Tsutsui and Tsuchimochi disclose the “ability of
correction/compensating for focus offset during temperature variations” (Answer, Page 5, Lines
8-11). The examiner concludes that it would have been obvious to one with ordinary skill in the
art to apply Tsutsui’s or Tsuchimochi’s alleged offset compensation for temperature variation in
Kulakowski’s disk drive, but provides no detail as to how the temperature compensation for
offset adjustment allegedly disclosed by Tsutsui and Tsuchimochi should or would take place in
Kulakowski to arrive at the claimed invention.
In the Examiner’s Answer on page 8, it is indicated that the examiner regards as
inherently present in Kulakowski’s disclosure the claim features of (1) determining means for
determining whether or not a difference between the temperature measured by the second
temperature measurement means and the temperature measured by the first temperature
measurement means has exceeded a predetermined level; and (2) resetting means for resetting
the focus offset value and/or the tracking offset value set by the setting means when the
determining means determines that the difference has exceeded the predetermined level. Both
findings of inherency are incorrect. Kulakowski discloses only measuring the temperature to see
if it exceeeds a first threshold and also if it exceeds a second threshold (FF. 20 and 21). And
Kulakowski does not disclose changing or adjusting the focus or tracking offset at any time,
certainly not in response to any temperature measurement (FF. 22). The examiner has not
pointed to any portion of Kulakowski as implicitly and necessarily disclosing resetting of the
focus or tracking offset, much less such resetting when the difference in the first and second
15

Appeal No. 2007-0464
Application 09/964,874

temperature measurements exceeds a predetermined level. Although there is an explanation on
page 8 of the Examiner’s Answer to the effect that the examiner interprets the first threshold
temperature in Kulakowski as a temperature measured at startup of the disk drive, i.e., the first
temperature measurement required by applicant’s claim 10, no basis has been identified for that
interpretation. We do not find that either the first threshold temperature or the second threshold
temperature in Kulakowski is disclosed as a temperature measured in Kulakowski at startup of
the disk drive.
Neither Tsutsui nor Tsuchimochi, as applied by the examiner for teachings concerning
resetting the focus or tracking offset, makes up for the deficiency of Kulakowski as discussed
above. In particular, Tsutsui does not disclose any measuring of the temperature of the disk
drive (FF. 25). Tsuchimochi’s disclosure about measuring the temperature to see if it is
considered low or high is no more applicable to the claimed invention than Kulakowski’s
disclosure about comparing the measured temperature with a first and a second threshold.
Claim 11 depends from claim 10 and thus includes all the features of claim 10. The
deficiencies of the prior art as applied to claim 10 equally apply to claim 11.
The Obviousness Rejection of Claims 12-13 and 26-27
over Kulakowski, and either Takasugi or Davis
Claims 12-13 and 26-27 are directed to the setting at startup and subsequent resetting of
the laser output value of an optical disk drive, in contrast with claims 10-11 which are directed to
the setting and resetting of a focus offset or a tracking offset of the optical disk drive.
Like claim 10, independent claims 12 and 26 each requires determining whether a
measured temperature of the optical disk drive after startup differs from a measured temperature
of the optical disk drive at startup by more than a predetermined level. The examiner regards
16

Appeal No. 2007-0464
Application 09/964,874

that feature as inherently met by Kulakowski but that position is incorrect as has been discussed
in connection with the rejection of claims 10-11. As noted above, there is no basis to read the
first threshold temperature in Kulakowski as the temperature of the optical disk drive measured
at startup. Neither Takasugi nor Davis, as applied by the examiner for teachings concerning
resetting the laser output value of the optical disk drive, makes up for the deficiency of
Kulakowski with regard to determining whether the two temperature measurements differ by
more than a predetermined level. Takasugi short-circuits power around a semiconductor laser in
an optical disk drive when the output from the laser diode exceeds a predetermined level (FF.
29), but the shunting is not in response to any temperature measurement (FF. 30). Davis
discloses shunting around a laser diode when the temperature of the laser diode is above or
below a predetermined temperature range (FF. 28), but that is similar to Kulakowski’s
determining whether a measured temperature differs from a predetermined threshold and not the
same as comparing the measured temperature to the temperature measured at startup of the disk
drive.
Claim 13 depends from claim 12 and claim 27 depends from claim 26. The deficiencies
of the prior art as applied to claims 12 and 26 equally apply to claims 13 and 27.
The Obviousness Rejections of Claim 25
over Otsuka and either Kulakowski or Takagi

Claim 25 depends from claim 24 and further requires determining whether the difference
between the most recently measured temperature and the measured temperature “immediately
preceding” the most recently measured temperature exceeds a predetermined level, and resetting
the focus offset or the tracking offset when that condition has been met. According to the
examiner, the difference between Otsuka and the subject matter of claim 25 is that Otsuka does
17

Appeal No. 2007-0464
Application 09/964,874

not disclose measuring temperature a number of times and taking responsive action based on the
difference between the measured temperature and the measured temperature immediately
preceding the most recently measured temperature. Answer at page 13, Lines 12-15. For that
feature of the claimed invention, the examiner relies on Kulakowski and alternatively on Takagi.
The examiner’s reading of Kulakowski is incorrect. Kulakowski compares a measured
temperature with a first threshold and also a second threshold. There is no basis to read a
threshold temperature to which a measured temperature is compared as itself a measured
temperature and one measured either at startup of the disk drive as is required by claim 24 or one
measured immediately preceding the most recently measured temperature as is further specified
in claim 25. The portions of Kulakowski cited by the examiner do not describe either the first or
the second threshold value as a measured temperature.
Takagi, on the other hand, does disclose continual measurement of the temperature inside
the optical disk drive near the optical head (FF. 32). The measured values are transmitted to a
control unit which continually determines a temperature change from the time the last control
adjustment was made, and when that difference in temperature exceeds a predetermined value,
steps are taken to make a further adjustment (FF. 33).
The applicant argues that Takagi’s polling of the operating temperature is not the same as
determining the difference between the most recently measured temperature and the measured
temperature immediately preceding the most recently measured temperature. The argument is
misplaced. Precise sameness is not the issue. If it were, then certainly Takagi’s looking at the
difference between the most recently measured temperature and the measured temperature at the
time of the last control adjustment is not precisely the same as looking at the difference between
the most recently measured temperature and the immediately preceding measured temperature.
18

Appeal No. 2007-0464
Application 09/964,874

The claimed limitation need only read on the operation of Takagi once, i.e., a single time, no
matter how long Takagi’s disk drive operates. And it does. It always does for that temperature
measured immediately after the temperature measurement resulting in the last control
adjustment. The claim limitation at issue reads on Takagi’s disclosure for the pairs of
temperature measurements including one at the time of a control adjustment and the one
immediately thereafter. Claim 25 is sufficiently broad that the comparison need only be made
once. The limitation does not have to be met for each successive pairs of temperature
measurements. That is not what the claim requires. Moreover, during examination before the
U.S. Patent and Trademark Office, claim terms are properly construed according to their
broadest reasonable interpretation not inconsistent with the specification. We have no reason to
read into the claim a requirement that for each pair of two successive temperature measurements,
a determination of difference be made and that whenever the difference exceeds a predetermined
value the focus or tracking offset be reset. That would be an unduly narrow interpretation.
Conclusion
The rejection of claim 24 as anticipated by Otsuka under 35 U.S.C. § 102 is affirmed.

The rejection of claims 10-11 for obviousness under 35 U.S.C. § 103 based on the
combined teachings of Kulakowski and either Tsuchimochi or Tsutsui is reversed.
§ 102(e) is reversed.
The rejection of claims 12-13 and 26-27 for obviousness under 35 U.S.C. § 103 based on
the combined teachings of Kulakowski and either Takasugi or Davis is reversed.
The rejection of claim 25 for obviousness under 35 U.S.C. § 103 based on Otsuka and
Kulakowski is reversed.
19

Appeal No. 2007-0464
Application 09/964,874

The rejection of claim 25 for obviousness under 35 U.S.C. § 103 based on Otsuka and
Takagi is affirmed.
No time period for taking any subsequent actions in connection with this appeal may be
extended under 37 CFR§ 1.136(a).
AFFIRMED-IN-PART

)
JAMESON LEE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL P. TIERNEY )
Administrative Patent Judge )

20

Appeal No. 2007-0464
Application 09/964,874

By Federal Express

Attorney for the appellant:

Joseph L. Felber
WESTERMAN, HATTORI,
DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036

21