Ex Parte Tsukihashi

Board of Patent Appeals and Interferences

Dec 10, 2004

09476862 (B.P.A.I. Dec. 10, 2004)

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written for publication and is not binding precedent of the Board.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. 26

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte AKIRA TSUKIHASHI
_____________
Appeal No. 2004-0507
Application No. 09/476,862
______________
ON BRIEF
_______________
Before RUGGIERO, GROSS, and BARRY, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 3-12, which are all of the claims pending in the present
application. Claims 1 and 2 have been canceled.
The claimed invention relates to the recording of data which
is sent at a slower data transmission speed than the data
processing speed at which data is written on to a disk.
Operation of a recording data processing circuit is suspended by
a control circuit until the amount of received data temporarily
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stored in a buffer memory reaches a predetermined amount which is
equivalent to the writing capacity of the data processing
circuit. According to Appellant (specification, pages 3 and 4)
the suspension of operation, effected by either interrupting the
power supply or halting the supply of an operating clock, results
in a reduction of power consumption. Further provided is a
synchronization feature which enables new data to be recorded
successive to the recording region where the last data was
recorded before the suspension of operation.
Claim 3 is illustrative of the invention and reads as
follows:
3. A recording data processing circuit for processing
received data sent at a slower data transmission speed than
a data processing speed at which to write recording data
onto a non-erasable, write-once disk, comprising:
a buffer memory for temporarily storing the received
data;
a data processing circuit for preparing the recording
data to record onto the disk, based on the received data
read from the buffer memory;
a system control circuit for controlling writing and
reading of the received data with respect to the buffer
memory, and the operation of the data processing circuit,
and
a writing circuit for writing the recorded data
supplied from the data processing circuit, onto the disk,
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wherein
the system control circuit suspends operation of the
data processing circuit until an amount of received data
equivalent to a predetermined writing capacity has been
stored in the buffer memory, and releases suspension of the
operation of the data processing circuit when an amount of
received data equivalent to the predetermined writing
capacity has been stored in the buffer memory, said data
processing circuit for recording data being placed in a
suspended state by interrupting the power supply or by
halting the supply of an operation clock,
wherein
the system control circuit stores an address
successive to an address of received data last recorded onto
the disk, as a recording start address on the disk, and
controls the writing circuit so as to write the recording
data supplied from the data processing circuit onto the disk
at the recording start address,
and wherein
the system control circuit synchronizes the recording
data to be newly recorded onto the disk, supplied from the
data processing circuit to the writing circuit, with
recording data recorded on the disk, said data processing
circuit being operated in synchronism with a reproduction
clock obtained by reproducing the data already recorded on
the disk.
The Examiner relies on the following prior art:
Landry et al. (Landry) 5,434,997 Jul. 18, 1995
Shinada 5,436,875 Jul. 25, 1995
Claims 3-12, all of the appealed claims, stand finally
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shinada in view of Landry.
Appeal No. 2004-0507
Application No. 09/476,862
1 The Appeal Brief was filed July 28, 2003 (Paper No. 21). In response
to the Examiner’s Answer dated August 22, 2003 (Paper No. 22), a Reply Brief
was filed October 24, 2003 (Paper No. 23), which was acknowledged and entered
by the Examiner as indicated in the communication dated November 6, 2003
(Paper No. 24).
4
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill
in the art the invention as set forth in claims 7 and 8. We
reach the opposite conclusion with respect to claims 3-6 and 9-
12. Accordingly, we affirm-in-part.
Appeal No. 2004-0507
Application No. 09/476,862
5
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out
a prima facie case of obviousness. If that burden is met, the
burden of going forward then shifts to Appellant to overcome the
prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1051-52, 189 USPQ 143,
147 (CCPA 1976).
With respect to independent claim 7, after reviewing the
Examiner’s analysis (Answer, pages 7 and 8) of the claimed
invention relative to the applied prior art, it is our view that
such analysis carefully points out the teachings of the Shinada
and Landry references, reasonably indicates the perceived
differences between this applied prior art and the claimed
invention, and provides reasons as to how and why the prior art
teachings would have been modified and/or combined to arrive at
the claimed invention. In our opinion, the Examiner's analysis
is sufficiently reasonable that we find that the Examiner has at
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least satisfied the burden of presenting a prima facie case of
obviousness. The burden is, therefore, upon Appellant to come
forward with evidence and/or arguments which persuasively rebut
the Examiner’s prima facie case of obviousness. Only those
arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose
not to make in the Briefs have not been considered and are deemed
to be waived (see 37 CFR § 41.37(c)(1)(vii)).
Appellant’s arguments in response to the obviousness
rejection of claim 7 based on the combination of Shinada and
Landry assert that the Examiner has failed to establish a prima
facie case of obviousness since all of the claimed limitations
are not taught or suggested by the applied prior art references.
After careful review of the applied Shinada and Landry references
in light of the arguments of record, we find Appellant’s
assertions to be unpersuasive.
Initially, Appellant contends (Brief, page 4; Reply Brief,
pages 3 and 4) that, unlike the claimed invention, the recording
system of Shinada is not directed to a non-erasable, write-once
disk (CD-R). It is apparent to us, however, from the language of
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claim 7 that, to whatever extent Appellant may be correct that
Shinada does disclose a CD-R disk, no such limitation appears in
claim 7 as pointed out by the Examiner (Answer, page 10).
As to Appellant’s arguments directed to the alleged lack of
motivation for the Examiner’s proposed combination of Shinada and
Landry, we find no error in the Examiner’s position as
articulated at page 8 of the Answer. In our view, Appellant’s
arguments unpersuasively focus on the individual differences
between the limitations of claim 7 and each of the applied
references. It is apparent, however, from the Examiner’s line of
reasoning in the Answer, that the basis for the obviousness
rejection is the combination of Shinada and Landry. One cannot
show nonobviousness by attacking references individually where
the rejections are based on combinations of references. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986).
In other words, while Appellant contends (Brief, page 4;
Reply Brief, page 5) that Landry lacks a teaching of suspending
system operation dependent on buffer capacity, this feature is
provided by Shinada. Further, although Appellant argues (id.)
that Shinada fails to disclose that suspension of operation is
Appeal No. 2004-0507
Application No. 09/476,862
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performed by interrupting the power supply or halting the supply
of a system clock, such a teaching is clearly provided by Landry.
For the above reasons, since it is our opinion that the
Examiner’s prima facie case of obviousness has not been overcome
by any convincing arguments from Appellant, the Examiner’s
35 U.S.C. § 103(a) rejection of independent claim 7, as well as
dependent claim 8 not separately argued by Appellant, is
sustained.
We next consider the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 3-6 and 9-12 and note that, while we found Appellant’s
arguments to be unpersuasive with respect to the Examiner’s
rejection of claims 7 and 8 discussed supra, we reach the
opposite conclusion with respect to claims 3-6 and 9-12. In
particular, we agree with Appellant that, as presently claimed,
neither Shinada nor Landry has any suggestion of performing
synchronization of newly recorded data with previously recorded
data on a disk by utilizing a reproduction clock obtained by
reproducing the previously recorded data.
We recognize that the Examiner, in addressing the claimed
synchronization feature, directs attention (Answer, page 5) to
the portion of Shinada (column 8, lines 19-26) which describes
the returning of a recording head to a previous recording
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position during repeated processing steps. In the Examiner’s
view, this disclosure inherently would involve the
synchronization of newly recorded data with previously recorded
data. We find, however, no evidence forthcoming from the
Examiner that would support such a conclusion. To establish
inherency, evidence must make clear that the missing descriptive
matter is necessarily present in the thing described in the
reference and would be recognized as such by persons of ordinary
skill. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-
51 (Fed. Cir. 1999) citing Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Id.
citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
It is further our view that even assuming, arguendo, that
the Examiner’s assertion of inherency is correct, the limitations
of independent claim 3 (and its dependent claims 4-6) and
dependent claim 9 (and its dependent claims 10-12) would not be
satisfied. It is apparent from the clear language of the claims
that it is not merely synchronization of new data with previous
data that is being claimed but, rather, a particular manner in
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which synchronization is being performed. We find this
particular synchronization feature, i.e., synchronizing by the
use of reproduced data to obtain a reproduction clock, not taught
or suggested by either of the applied Shinada and Landry
references. Accordingly, for the reasons discussed above, since
the Examiner has not established a prima facie case of
obviousness, the 35 U.S.C. § 103(a) rejection of claims 3-6 and
9-12 is not sustained.
In summary, with respect to the Examiner’s 35 U.S.C.
§ 103(a) rejection of appealed claims 3-12, we have sustained the
rejection of claims 7 and 8, but have not sustained the rejection
of claims 3-6 and 9-12. Therefore, the Examiner’s decision
rejecting claims 3-12 is affirmed-in-part.
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Application No. 09/476,862
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(effective September 13, 2004; 69 Fed. Reg.
49960 (August 12, 2004); 1286 Off. Gaz. Pat. and TM Office
21 (September 7, 2004)).

AFFIRMED-IN-PART
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JFR/hh
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