Ex Parte Taugher

Board of Patent Appeals and Interferences

Nov 13, 2003

08823823 (B.P.A.I. Nov. 13, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte LAWRENCE N. TAUGHER

Appeal No. 2002-1235
Application No. 08/823,823

ON BRIEF

Before KIMLIN, WARREN and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-11.
Claim 1 is illustrative:
1. An apparatus for write protection of a disk, the disk having
a power calibration area and a data area, the apparatus
comprising:
a ring capable of being attached to the disk, the ring
having a portion that covers the power calibration area but
not the data area.
Appeal No. 2002-1235
Application No. 08/823,823
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In addition to the admitted prior art, the examiner relies
upon the following references as evidence of obviousness:
Takahashi et al. (Takahashi) 04-095287 Mar. 27, 1992
(Japanese Published Unexamined Patent)
Dana J. Parker et al. (Parker), CD-ROM Professional's CD-
Recordable Handbook - The Complete Guide to Practical Desktop
CD 82-85 (David R. Guenetta ed., 1996)
Appellant's claimed invention is directed to an apparatus
and method of providing write protection of a recordable disk by
covering or altering the power calibration area of the disk.
According to appellant's specification, before writing or
recording information on a disk, the disk drive must calibrate
laser power by writing into the power calibration area. If the
drive cannot read its calibration pattern in the calibration area
on the disk, "it will not erase or write in the data area of the
disk" (page 2 of specification, second paragraph). In the
present case, appellant covers or abrades the power calibration
area to prevent writing data on the recordable area of the disk.
Appealed claims 1-4 stand rejected under 35 U.S.C. § 112,
second paragraph. Appealed claims 1-11 stand rejected under
35 U.S.C. § 103 as being unpatentable over the admitted prior art
in view of Parker and Takahashi.
Appeal No. 2002-1235
Application No. 08/823,823
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Appellant presents separate arguments for claims 1, 4, 5, 6
and 7, whereas claims 2, 3 and 8-11 stand or fall together with
the claims upon which they depend.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we concur
with appellant that the examiner's rejections are not well-
founded. Accordingly, we will not sustain the examiner's § 112
and § 103 rejections.
Concerning the examiner's rejection of claims 1-4 under
§ 112, second paragraph, it is the examiner's position "the
phrase 'capable of' renders the claim indefinite because it is
unclear whether the limitations following the phrase are part of
the claimed invention" (page 3 of Answer, last sentence).
However, we agree with appellant that the claim language is an
appropriate use of functional language which requires that the
recited ring be capable of being attached to the disk such that
it covers the power calibration area but not the data area. The
examiner has not met the initial burden of explaining why, prima
facie, one of ordinary skill in the art would not be reasonably
apprised of the scope of claims 1-4.
We now turn to the examiner's § 103 rejection of all the
appealed claims. The examiner correctly states that it is part
Appeal No. 2002-1235
Application No. 08/823,823
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of the admitted prior art that a recordable disk has a power
calibration area that must be read by a laser before recording is
accomplished. The examiner then concludes that "[t]o cover any
area of any subject in order to prevent an operation to take
place in such an area is a common practice and is nothing new in
the art" (page 4 of Answer, third paragraph). The examiner
further cites Figure 1 of Takahashi for its depiction of a
recording inhibition seal.
The flaw in the examiner's reasoning is that it does not
rely upon a prior art disclosure which discloses covering a
functional area of a disk, let alone the presently claimed power
calibration area. As explained by appellant, Example 1 of
Takahashi utilizes an inhibition seal which presents a logical
choice for not recording but does not physically interfere with
the functional area of the recording medium. Accordingly, the
examiner's conclusion of obviousness is without the requisite
factual support. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967), cert. denied 389 U.S. 1057 (1968). In
addition, the examiner has failed to articulate the rejection of
separately argued claims 4-7, or respond to appellant's arguments
for these claims. Such a failure constitutes reversible error.
Appeal No. 2002-1235
Application No. 08/823,823
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While we agree with appellant that the examiner has not
established a prima facie case of obviousness for the appealed
claims, we do not agree with appellant that "[t]he examiner has
not cited any prior art that teaches or suggests covering a
functional area of a medium" (page 1 of Reply Brief, second
paragraph). Example 2 of Takahashi expressly discloses "a
recording inhibition sheet member which is removably attached to
at least cover the recording area of the optical disk memory body
for blocking the recording light, allowing only the reproduction
light to pass through the sheet" (page 4 of translation, third
paragraph). As stated at page 5 of the translation, "this
invention provides a method that removably adheres a recording
inhibition sheet having a filtering function for specific optical
frequencies (recording frequency) at least in the area of the
recording region to inhibit the data overwriting" (first
paragraph). The exemplification of this process can be found at
page 10 et seq. of the translation. Accordingly, based on this
section of the Takahashi disclosure which has not been relied
upon by the examiner nor addressed by appellant, this application
is remanded to the examiner to determine the obviousness of
covering the power calibration area of a disk in the same manner
the recording area of the disk is covered in Takahashi. Since it
Appeal No. 2002-1235
Application No. 08/823,823
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was admittedly known in the art that the power calibration area
of the disk is necessarily readable in order to effect recording,
it may well have been a matter of obviousness, based upon the
admitted prior art and Takahashi, to cover a functional area of
the disk other than the recording area, namely, the presently
claimed power calibration area. As for appellant's use of an
abrasive tool to abrade the power calibration area to render the
disk permanently non-recordable, the examiner should determine
the obviousness of destroying a feature of the disk that is
necessary for recording when recording is not desired. Likewise,
the examiner should determine the obviousness of the appealed
claims separately argued by appellant.
In conclusion, based on the foregoing, the examiner's
rejections under 35 U.S.C. § 112 and 35 U.S.C. § 103 are
reversed. This application is remanded to the examiner for the
reasons set forth above.
Appeal No. 2002-1235
Application No. 08/823,823
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This application, by virtue of its "special" status,
requires immediate action by the examiner. See the Manual of
Patent Examining Procedure, § 708.01(D) (8th ed., Aug. 2001).
REVERSED AND REMANDED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 2002-1235
Application No. 08/823,823
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