Ex parte Taniai et al.

Board of Patent Appeals and Interferences

Aug 30, 1999

08311371 (B.P.A.I. Aug. 30, 1999)

Application for patent filed September 23, 1994. According to1
appellants, this application is a continuation of Serial No. 07/601,728, filed
May 21, 1992, 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written for publication in a law journal and (2) is not binding
precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TAKAMASA TANIAI, YASUHIKO HANAOKA, and YUZURU KOGA
____________
Appeal No. 96-2742
Application No. 08/311,3711
____________
HEARD: August 3, 1999
____________
Before THOMAS, MARTIN, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 17, which are all of the claims
pending in this application.
Appeal No. 96-2742
Application No. 08/311,371
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The appellants' invention relates to a library system for
recording mediums. More specifically, the library system
includes a carrier for transporting the recording mediums and
a recording and reproducing unit, with electrical
communication signals being transmitted to (and from) the
recording and reproducing unit from (and to) the carrier.
Claim 1 is illustrative of the claimed invention, and it reads
as follows:
1. A library system, comprising:
storing means (51) for storing a plurality of recording
mediums;
recording and reproducing means (52) for recording and
reproducing data to and from the recording mediums;
carrying means (53) for moving the recording mediums
between said storing means (51) and said recording and
reproducing means (52);
control means (54) for controlling said recording and
reproducing means (52) and for controlling said carrying means
(53);
first communication means (54a) for transmitting
instructions between said control means and said recording and
reproducing means;
second communication means (54b) for transmitting
instructions between said control means and said carrying
means; and
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third communication means (55) for transmitting
electrical instruction signals from said carrying means to
said recording and reproducing means indicating that the
recording medium is ready to be loaded into said recording and
reproducing means and from said recording and reproducing
means to said carrying means indicating that the recording
medium is ready to be unloaded from said recording and
reproducing means, said third communication means being
separate from said control means.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Kuo 4,989,191 Jan. 29, 1991
Claims 1 through 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over appellants' admitted prior art as
shown in Figures 1-4 and described on pages 1-11 of the
specification in view of Kuo.
Reference is made to the Examiner's Answer (Paper No. 30,
mailed March 25, 1996) and the Supplemental Examiner's Answer
(Paper No. 33, mailed August 13, 1996) for the examiner's
complete reasoning in support of the rejections, and to the
appellants' Brief (Paper No. 29, filed January 11, 1996) and
Reply Brief (Paper No. 31, filed May 28, 1996) for the
appellants' arguments thereagainst.
OPINION
Appeal No. 96-2742
Application No. 08/311,371
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As a preliminary matter we note that appellants indicate
on page 9 of the Brief that the claims do not stand or fall
together and are each separately patentable. However, for
each of claims 2 through 17, appellants merely reproduce a
limitation recited in the claim. As stated in 37 CFR §
1.192(c)(7), "Merely pointing out differences in what the
claims cover is not an argument as to
why the claims are separately patentable." Thus, appellants
have
failed to explain why the claims are believed to be separately
patentable. Accordingly, we will treat only the independent
claims, with the dependent claims as standing or falling
together with the corresponding independent claims.
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by the appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 17.
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Application No. 08/311,371
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The only limitation of claim 1 in dispute is a third
communication means. All other limitations are clearly shown
in appellants' admitted prior art, Figures 1-4. In particular
claim 1 requires
third communication means (55) for transmitting
electrical instruction signals from said carrying
means to said recording and reproducing means
indicating that the recording medium is ready to be
loaded into said recording and reproducing means and
from said recording and reproducing means to said
carrying means indicating that the recording medium
is ready to be unloaded from said recording and
reproducing means, said third communication means
being separate from said control means (underlining
added for emphasis).
We will focus our discussion on the underlined portions.
Independent claims 12, 13, and 16 recite method steps drawn to
the transmission of a loading instruction signal directly to
the recording and reproducing means from the carrying means.
Claim 7
includes electrical instruction signals from the carrying
means directly to the recording and reproducing means. Claims
14, 15, and 17 recite ejection electrical end signals from the
carrying means directly to the recording and reproducing
means. In other words, the carrying means must transmit
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Application No. 08/311,371
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electrical instruction signals to the recording and
reproducing unit without going through the control means.
For the loading instruction signals from the carrying
means to the recording and reproducing unit, the examiner
relies (Answer, page 6) on lines 2-8 on page 6 of appellants'
specification:
The carrying apparatus 8 . . . inserts such
medium to the loading unit 6a of the recording and
reproducing unit 6, causes the loading unit 6a to
insert the recording medium into the loading unit 6a
and thereafter causes the carrying mechanism 8a to
be retired . . . .
The examiner asserts (Supplemental Answer, pages 1 and 2) that
the above-noted portion discloses that the carrying apparatus
"causes the loading unit 6a" to do something, and "[t]o cause
such an action, some sort of signal must be sent (via a
mechanical, electrical or other medium)."
In quoting the above portion (Answer, page 6), the
examiner substitutes "read/write processing unit 6b" for the
last occurrence of "loading unit 6a" as "an attempt to make it
read as it is believed [was] intended" (Supplemental Answer,
page 2). Further, the examiner alludes to a potential issue
under 35 U.S.C. § 112, first paragraph. Thus, the examiner
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Application No. 08/311,371
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has demonstrated that the relied upon portion is confusing.
Accordingly, we find that without support in the drawings for
such an interpretation, the above-noted part of the
specification does not provide auggestion for the claimed
communication from the carrying apparatus to the recording and
reproducing unit. The figure described at page 6 of the
specification, Figure 3, shows no direct communication between
the carrying apparatus and the recording and reproducing unit;
all communication between the two goes through the director.
Additionally, although Figure 3 shows loading and ejecting
instructions, it does not show any instructions (directly or
indirectly) from the carrying means to the recording and
reproducing unit. Therefore, we find no support in the
drawings for the electrical signals from the carrying means as
recited in claims 1, 12, 13, and 16.
Further, the examiner states (Answer, page 7) that "if a
first component is going to hand-off a workpiece to a second
component, there must clearly be some kind of signal between
the two to indicate that the first component is done
manipulating the workpiece." However, detectors in the
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recording and reproducing unit sense the presence and absence
of the carrying means. When
the carrying means finishes loading the recording medium into
the loading means, the carrying means moves away from the
loading unit, which the detectors sense, and the detectors
send a signal to the read/write processing unit of the
recording and reproducing unit to indicate that the first
component is done. In other words, contrary to the examiner's
assertion, no signal must be sent between the two elements, as
detectors in the recording and reproducing means supply the
necessary information. Therefore, we find no electrical
signals sent from the carrying means to the recording and
reproducing unit to indicate that the recording medium is
ready for loading.
As to the electrical instruction signal from the carrying
means for claim 7 and the electrical ejection end signals from
the carrying means for claims 14, 15, and 17, the examiner
points to no further sections of the admitted prior art to
meet these limitations. As explained above, we find no
electrical instruction signals sent from the carrying means to
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Application No. 08/311,371
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the recording and reproducing unit, either directly or
indirectly, in Figure 3 of the admitted prior art.
The examiner takes the position (Answer, page 4) that
Appellant's [sic] admitted prior art does not
disclose (i) that the third communication means are
separate from the control means, or (ii) that the
carrier (8) directly communicates loading or
ejecting instructions to the player and vice versa.
The examiner turns to Kuo for a teaching to make the third
communication means direct and separate from the control
means, stating that "Kuo shows (in Figure 1) a direct line of
communication between 'ROBOT' and 'CASSETTE PLAYER' that is
separate from the 'CENTRAL PROCESSING UNIT'." As stated
above, we find no such communication from the carrier to the
recording and reproducing unit either directly or indirectly.
Furthermore, contrary to the examiner's assertion, in Figure 1
Kuo shows the mechanical path the carrier takes from a storing
unit to the cassette player, not electrical (or even
mechanical) signals between the carrier and the cassette
player. Thus, Kuo does not provide a teaching or suggestion
to have the carrier and the recording and reproducing unit of
the admitted prior art communicate directly with each other.
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Application No. 08/311,371
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In summary, the admitted prior art does not disclose or
suggest any electrical signals from the carrier to the
recording and reproducing unit, and more specifically does not
suggest direct signals without use of the director. Kuo does
not disclose or suggest adding communication between the
carrier and the recording and reproducing unit, and
particularly does not suggest a direct communication between
the two. Therefore, the
examiner has failed to establish a prima facie case of
obviousness, as the combination does not include all of the
limitations recited in the claims. Accordingly, we cannot
sustain the rejection.
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Application No. 08/311,371
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CONCLUSION
The decision of the examiner rejecting claims 1 through
17 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN C. MARTIN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
vsh
Appeal No. 96-2742
Application No. 08/311,371
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