Ex parte Tsurumaki

Board of Patent Appeals and Interferences

Apr 4, 2002

08911442 (B.P.A.I. Apr. 4, 2002)

An oral hearing scheduled for March 7, 2002 was waived. 1
(Paper No. 48.)
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for publication and is not binding precedent of the Board.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. 49
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NOBUHIRO TSURUMAKI
____________
Appeal No. 2000-1234
Application No. 08/911,442
____________
ON BRIEF1
____________
Before HAIRSTON, KRASS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected claims 1, 4, 5, 8-12, 16, and 17.
The appellant appeals therefrom under 35 U.S.C. § 134(a). We
reverse.
BACKGROUND
The invention at issue in this appeal is a cassette auto-
changer. The auto-changer includes a bin for housing video
Appeal No. 2000-1234 Page 2
Application No. 08/911,442
tape cassettes of different sizes or recording formats. Each
bin is assigned to house cassettes of a specific format. An
elevator selectively removes a cassette from the bin and,
based on the assigned format, loads the cassette into a video
tape recorder using the same format.
Claim 1, which is representative for present purposes,
follows:
1. A cassette auto-changer, comprising:
a cassette accommodating portion including a
plurality of accommodating units each having a
plurality of substantially identical cassette bins,
each individual cassette bin being adapted to
accommodate a plurality of different types of
cassettes housing different types of recording media
having different types of recording formats, a
respective one of said recording formats being
assigned to each of said cassette bins, the cassette
bins in a respective accommodating unit
accommodating a plurality of cassettes housing
recording media having the same one of said
recording formats, each of said accommodating units
including a memory circuit for storing recording
format information indicating the type of recording
format assigned to each of said cassette bins
therein, aid memory circuit including a plurality of
connections each connected to one of a power source
and a ground;
an information reading circuit electrically
coupled to the memory circuit of each of aid
Appeal No. 2000-1234 Page 3
Application No. 08/911,442
accommodating units for reading the recording format
information from the memo circuits;
a plurality of recording and/or reproducing
apparatus each provided for selectively recording
and/or reproducing a signal on or from the recording
medium housed in the cassette loaded therein in a
predetermined one of said recording formats;
a cassette transport mechanism for selectively
transporting said cassettes between said cassette
bins and said recording and/or reproducing apparatus
and for loading he transported cassettes into said
cassette bins or said recording and/or reproducing
apparatus in accordance with a conveyance command
signal; and
control means for recognizing the recording
format assigned to each of said cassette bins on the
basis of the stored recording format information and
for generating said conveyance command signal.
(Appeal Br. at 15.)
The prior art applied by the examiner in rejecting the
claims follows:
Kulakowski et al. (“Kulakowski”) 5,303,214 Apr. 12, 1994
(filed Jan. 3, 1992)
Sato et al. (“Sato”) 5,450,254 Sep. 12, 1995
(filed Nov. 3,
1992).
Claims 1, 4, 5, and 8-10 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Kulakowski. Claims 11, 12, 16, and
Appeal No. 2000-1234 Page 4
Application No. 08/911,442
17 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Sato.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 1, 4, 5, 8-12, 16, and 17.
Accordingly, we reverse. Our opinion addresses the following
rejections:
• obviousness rejection of claims 1, 4, 5, and 8-10
• anticipation rejection of claims 11, 12, 16, and 17.
I. Obviousness Rejection of Claims 1, 4, 5, and 8-10
Rather than reiterate the positions of the examiner or
appellant in toto, we address the point of contention
therebetween. The examiner asserts, "as seen from figure 33
each of bins (26 and 27) is adapted to accommodate a plurality
of different types of cassettes. Also, not [sic] column 6
lines 11-23 which discusses that different types of cartridges
can be put in the bins.” (Examiner's Answer at 5.) The
appellant argues, "in claims 1 and 4, each substantially
Appeal No. 2000-1234 Page 5
Application No. 08/911,442
identical cassette bin is able to accommodate a plurality of
different types of cassettes, whereas in Kulakowski, each
cassette bin may be specifically designed to hold a particular
mix of cassettes, but each cassette bin is not substantially
identical and designed to accommodate a plurality of different
types of cassettes." (Appeal Br. at 10.)
In deciding obviousness, “[a]nalysis 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). Here, independent claims 1 and 4
specify in pertinent part the following limitations: "a
cassette accommodating portion including a plurality of
accommodating units each having a plurality of substantially
identical cassette bins, each individual cassette bin being
adapted to accommodate a plurality of different types of
cassettes housing different types of recording media having
different types of recording formats. . . ." Accordingly,
limitations require inter alia substantially identical
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Application No. 08/911,442
cassette bins wherein each bin accommodates different types of
cassettes.
Having determined what subject matter is being claimed,
the next inquiry is whether the subject matter is obvious.
“In rejecting claims under 35 U.S.C. Section 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "’A prima
facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the
art.’" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, neither bin 26 nor bin 27 of Kulakowski
accommodates different types of cassettes. To the contrary,
Appeal No. 2000-1234 Page 7
Application No. 08/911,442
each of the bins accommodates a single type of cassette.
Specifically, “half-sized bin 26 and full-size bin 27
respectively store small and large cartridges.” Col. 5, ll.
40-42. More specifically, “bin 26 [is] for storing twenty-two
optical disk cartridges 22 in respective cartridge slots 104
and bin 27 [is] for storing five tape cartridges 23 in bin 27
slots 104.” Col. 21, ll. 62-65. Although the reference also
mentions that labels identifying bin 26 and bin 27 “may
include . . . whether multiple types of cartridges are
stored,” col. 6, ll. 13-15, we are uncertain whether this
refers to storing different types of cartridges in different
bins or in the same bin. In view of the aforementioned
passages of Kulakowski, we favor the former interpretation.
Therefore, we reverse the rejection of independent claims 1
and 4 and of claims 5 and 8-10, which depend from claim 1.
II. Anticipation Rejection of Claims 11, 12, 16, and 17
The examiner asserts, “[a]s clearly seen from figure 1 of
Sato et al., there is a plurality of bins (6a-6d) each one of
the bins accommodating a plurality of cassettes of a first
size or only cassettes of a second size. For example, bin 6b
Appeal No. 2000-1234 Page 8
Application No. 08/911,442
depicts a bin that accommodates a plurality of cassettes of a
first size and bin 6c accommodates cassettes of only a second
size.” (Examiner’s Answer at 6.) The appellant argues, “in
Fig. 1 of Sato et al., ‘bin’ 6C accommodates more than one
cassette, thus not meeting the claim limitation.” (Reply Br.
at 4.)
In deciding anticipation, “the first inquiry must be into
exactly what the claims define.” In re Wilder, 429 F2d 447,
450, 166 USPQ 545, 548 (CCPA 1970). Here, independent claim
11 specifies in pertinent part the following limitations: "a
cassette accommodating portion having a plurality of cassette
bins for accommodating a plurality of different types of
cassettes of different sizes housing different types of
recording media having different types of recording formats, .
. . each one of said cassette bins accommodating a plurality
of cassette having a first size or only one cassette having a
second size. . . .” Accordingly, limitations require inter
alia cassette bins wherein at least one of the bins
accommodate only one cassette.
Appeal No. 2000-1234 Page 9
Application No. 08/911,442
Here, bin 6c is not limited to accommodating only one
cassette. To the contrary, Figure 1 of Sato shows that the
bin accommodates three cassettes. Therefore, we reverse the
rejection of independent claim 11 and of claims 12, 16, and
17, which depend therefrom.
CONCLUSION
In summary, the rejection of claims 1, 4, 5, and 8-10
under § 103(a) is reversed. Likewise, the rejection of claims
11, 12, 16, and 17 under § 102(e) is also reversed.
Appeal No. 2000-1234 Page 10
Application No. 08/911,442
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-1234 Page 11
Application No. 08/911,442
FROMMER, LAWRENCE & HAUG
745 FIFTH AVENUE
NEW YORK, NY 10151
Once signed, forward to Team 3 for mailing.
APPEAL NO. 2000-1234 - JUDGE BARRY
APPLICATION NO. 08/911,442
APJ BARRY - 2 copies
APJ KRASS
APJ HAIRSTON
After signing, return to APJ Barry for
disk.
Prepared By: APJ BARRY
DRAFT SUBMITTED: 09 Oct 02
FINAL TYPED:
Team 3:
I typed all of this opinion.
Please proofread spelling, cites, and quotes. Mark your
proposed changes on the opinion, but do NOT change matters of
form or style. I will include the diskette with the
signed copy so that you can make all changes before
mailing.
For any additional reference provided, please prepare PTO 892
and include copy of references
Thanks,
Judge Barry