Ex Parte Thayer et al

Board of Patent Appeals and Interferences

Jun 9, 2003

09179793 (B.P.A.I. Jun. 9, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NICHOLAS D. THAYER, ROBERT W. LUFFEL,
DAVID P. JONES, and MARK A. SMITH
____________
Appeal No. 2002-1744
Application No. 09/179,793
____________
ON BRIEF
____________
Before RUGGIERO, BARRY, and LEVY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claim 36. The appellants appeal therefrom under 35
U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue on appeal concerns removal and replacement of data
cartridges, such as optical disks or magnetic tapes, contained in a "juke box." A juke
box is used to store and access many data cartridges. A typical juke box includes a
"magazine" offering storage locations for the data cartridges. (Spec. at 1.) A "picker"
transports cartridges between the magazine and a read/write device. (Id. at 1-2.)
Appeal No. 2002-1744 Page 2
Application No. 09/179,793
An operator of a juke box must periodically access the data cartridges contained
therein. For example, he may need to replace a cartridge that has been filled with data
to be archived at another location. (Id. at 2.)
To satisfy the aforementioned need, the inventive juke box 12 features
drawers 16 that can be moved between a closed position and an opened position.
Drawer stop indices 78 are coupled to each drawer so as to move along with the
associated drawer. A lock 80 can be moved between a locked position and an
unlocked position. When locked, it engages a drawer stop index to prevent the
associated drawer from being withdrawn further. (Appeal Br. at 2.)
A further understanding of the invention can be achieved by reading the following
claim.
36. A mail slot data cartridge exchange system for a data storage
system, comprising:
a drawer mounted to the data storage system so that said drawer
can be moved between a retracted position and a plurality of extended
positions; and
drawer extension regulator means operatively associated with said
drawer for allowing said drawer to be manually extended to a selected one
of said plurality of extended positions and no further, while allowing said
drawer to be manually returned to the retracted position without requiring
additional actuation of said drawer extension regulator means.
Appeal No. 2002-1744 Page 3
Application No. 09/179,793
Claim 36 stands rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent
No. 5,940,354 ("Inoue").
OPINION
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the main point of contention therebetween. The examiner asserts, "Inoue . . .
teaches in column 14, lines 52-62 that when the extended drawer is left unattended for
a given period, the drawer is automatically withdrawn back into the device, thus
requiring no additional actuation of the drawer extension regulation means."
(Examiner's Answer at 5.) "What [the] appellants have argued, and continue to argue,
is that Inoue simply does not teach a system wherein the drawer, once extended, can
be manually returned to the retracted position without requiring additional actuation of
the drawer extension regulator." (Reply Br. at 4.)
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000).
Appeal No. 2002-1744 Page 4
Application No. 09/179,793
Here, claim 36 specifies in pertinent part the following limitations: "drawer
extension regulator means operatively associated with said drawer for . . . allowing said
drawer to be manually returned to the retracted position without requiring additional
actuation of said drawer extension regulator means." Giving the claim its broadest,
reasonable construction, the limitations require manually closing a drawer without
actuating a regulator used to open the drawer manually.
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "A claim
is anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing
Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264,
1270 (Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "[A]bsence from the reference of any claimed
element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Appeal No. 2002-1744 Page 5
Application No. 09/179,793
Here, Inoue discloses "a library apparatus having a mail slot mode in which the
tray is opened selectively to a mail slot access position for manual insertion of a single
cartridge medium into the mail slot or manual removal thereof from the mail slot. . . ."
Col. 1, ll. 12-15. "[T]he medium is conveyed between the mail slot and a respective
storage slot, controlled by corresponding move commands from the host computer. . . ."
Id. at ll. 16-19. The passage of the reference cited by the examiner explains, "[w]hen
the operation of the ejection switch 24 is not detected even after a predetermined time
has elapsed, namely, when the operator leaves the tray 20 in an open state, an error is
reported to the host computer 16 and, after that, a recovering process to close the
tray 20 and to return to an initial state is executed." Col. 14, ll. 52-57. "The recovering
process can be executed by closing the tray 20 by the operation of the ejection
switch 24, by again generating the moving command in which the movement source is
set to the slot #35 from the host computer 16, or by issuing the tray closing command."
Id. at ll. 57-62.
Although Inoue's recovering process closes its tray, we are unpersuaded that it
does so without actuating a regulator used to open the tray manually. To the contrary,
the reference's tray is opened and closed by the same regulator, viz., a microprocessor
unit ("MPU"). Specifically, Inoue explains that its "accessor controller 38 has an
MPU 52 functioning as a logic controller and executes a mode setting control, a
Appeal No. 2002-1744 Page 6
Application No. 09/179,793
medium insertion control, a medium ejection control, and a read/write medium
conveyance control, by corresponding program controls of the MPU 52." Col. 12, l. 66 -
col. 13, l. 3. Under such control of the MPU, "a tray opening/closing control for each
of the medium insertion, medium ejection, and medium read/write conveyances are
executed." Col. 13, ll. 4-6 (emphases added).
The reference's use of the same MPU to close and open its tray negates
anticipation. Therefore, we reverse the anticipation rejection of claim 36.
CONCLUSION
In summary, the rejection of claim 36 under § 102(e) is reversed.
Appeal No. 2002-1744 Page 7
Application No. 09/179,793
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2002-1744 Page 8
Application No. 09/179,793
HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400
APPEAL NO. 2002-1744 - APJ BARRY
APPLICATION NO. 09/179,793
APJ BARRY - 2 copies
APJ RUGGIERO
APJ LEVY
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DRAFT SUBMITTED: 31 Dec 03
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