Ex Parte Tung et al

Patent Trial and Appeal Board

Jan 10, 2017

12786821 (P.T.A.B. Jan. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/786,821 05/25/2010 Dave Marcus Tung R2463-00043 3318
105639 7590 01/10/2017
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
01/10/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVE MARCUS TUNG, SUNDEEP CHAUHAN,
DAVID KUO, and SHIH-FU LEE
Appeal 2015-008247
Application 12/786,821
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—6 and 21—34. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2015-008247
Application 12/786,821
Appellants’ invention is best illustrated by independent claim 1,
reproduced below (emphasis added to highlight disputed features):
1. An apparatus comprising:
a timing track area on a substrate, the timing track area
adjacent to a data storage area on the substrate;
a plurality of timing tracks etched into the timing track
area, the timing tracks having associated rotational timing
data; and
a device configured to repeatedly test the timing track for
errors and create additional timing tracks until a final timing
track is formed that has errors below a predetermined level;
wherein the rotational timing data is optically detected
and analyzed to determine a rotational position during
fabrication.
Appellants (see Appeal Brief, generally) appeal the following
rejections under 35 U.S.C. § 103(a):
(a) claims 1, 2, 5, 6, 21—23, 25—29, and 31—33 rejected under
35 U.S.C. § 103(a) as unpatentable over Yonezawa et al. (US 5,959,943,
issued September 28, 1999) (“Yonezawa”) and Meeks et al. (US 6,751,044
Bl, issued June 15, 2004) (“Meeks”);
(b) claims 4 and 30 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yonezawa, Meeks, and James et al. (US 5,339,204, issued August 16,
1994) (“James”); and
(c) claims 24 and 34 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yonezawa, Meeks, and Nakano et al. (US 2009/0303629
Al, published December 10, 2009) (“Nakano”).
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Application 12/786,821
For Rejection (a), Appellants present arguments for independent
claims 1 and 29 and also for dependent claims 6, 22, 26, and 32. See Appeal
Brief, generally. Appellants do not present separate arguments for claims 2,
5, 6, 21, 23, 25, 27, 28, 31, and 33. Id. Appellants also present separate
arguments for the separate rejections of claims 4 and 30 (Rejection (b)) as
well as for claims 24 and 34 (Rejection (c)). Accordingly, we select claims
1 and 29 as representative of the subject matter before us for review on
appeal for Rejection (a). Claims 2, 5, 21, 23, 25, 27, 28, 31, and 33 stand or
fall with their respective independent claims. Claims argued separately in
Rejections (a)-(c) will be addressed separately.
OPINION
Rejection (a)
We have reviewed each of Appellants’ arguments for patentability.
However, a preponderance of the evidence supports the Examiner’s position
that the subject matter of representative claims 1 and 29 is unpatentable.
Accordingly, we sustain the Examiner’s prior art rejection for the reasons
explained in the Answer, and we add the following primarily for emphasis.
Independent claims 1 and 29 are directed to an apparatus that is a
combination of a substrate comprising a plurality of timing tracks etched
into the timing track area of the substrate and a device configured to
repeatedly test the timing track for errors and create additional timing tracks
until a final timing track is created. App. Br. 7, 9.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 3—5.
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Application 12/786,821
Claims 1 and 29
Appellants argue Yonezawa does not disclose timing tracks etched in
a timing track area on a substrate or mentions anything related to etched
tracks on a substrate. App. Br. 12—13. Appellants further argue, contrary to
the Examiner’s position, claims 1 and 29 are not product-by-process claims
because they do not recite a method of production of a product but, instead,
claim an apparatus and elements and/or features thereof. Id. at 13.
We are unpersuaded by these arguments. The Examiner found
Yonezawa discloses a substrate having timing tracks made by forming pits
on the substrate. Final Act. 3; Yonezawa Figures 1—2, col. 1,11. 41—47, 62—
63, col. 3,11. 60-62, col. 5,11. 43—53. While the Examiner recognizes
Yonezawa does not disclose etching the timing tracks, the Examiner
determined that the claimed substrate having timing tracks etched on the
surface appears to be the same or similar to the substrate disclosed by
Yonezawa because, even though produced by different processes, both
would have timing tracks with the characteristics of multiple pits having
concave and convex features. Final Act. 4; Ans. 2-A. It has long been held
that “‘[i]f the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”’ Smithkline
Beecham Corp. v. Apotex Corp., 439F.3d 1312, 1317 (Fed. Cir.
2006)(quoting In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985)). It is also
well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is on the applicants to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
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Application 12/786,821
product. See In re Best, 562 F.2d 1252, 1255, (CCPA 1977). The Examiner
provided a reasonable basis to establish that the claimed substrate is
substantially the same as Yonezawa’s substrate. Appellants’ arguments
focus on the apparatus and do not adequately address the Examiner’s
discussion pertaining to the substrate. App. Br. 12—13; Reply Br. 2—3.1
Moreover, Appellants direct us to no evidence establishing an unobvious
difference between the claimed substrate and the prior art substrate.2
Appellants argue Meeks does not disclose a device configured to
repeatedly test a timing track for errors and create additional timing tracks
until a final one is formed because the clock track described in Meeks is not
the same as the timing track recited in claims 1 and 29. App. Br. 14; Reply
Br. 4. Appellants appear to assert that Meeks provides a substrate with a
1 The Reply Brief dated September 21, 2015 includes arguments presented
for the first time. For example, Appellants argue for the first time the
Examiner’s reliance upon Yonezawa’s disclosed laser as a heating means to
record data on a recording medium as meeting the recited features during
fabrication in the claimed. Reply Br. 4. Any argument not presented in the
Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“the reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”); compare also Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the Reply Brief is considered
waived); see also 37 C.F.R. § 41.41(b)(2). Appellants have not shown good
cause why this new argument could not have been presented in the Appeal
Brief. Accordingly, we decline to consider these arguments.
2 We note the Specification recognizes etching as a known process for
removing material from a surface. Spec. 3,5.
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Application 12/786,821
single final timing track because it is rewriting the track while the claimed
substrate can have a plurality of tracks. Reply Br. 4.
We find these arguments unavailing for the reasons presented by the
Examiner. Ans. 4—5. As noted by the Examiner, Meeks discloses creating
additional timing tracks until a final acceptable timing track is formed. Final
Act. 4; Meeks col. 11,11. 32^42. Appellants direct us to no portion of Meeks
that objectively supports the assertion that rewriting a track does not
necessarily create a plurality of tracks. Moreover, the Specification
discloses removing prior timing tracks, if desired, thus resulting in a
substrate having only the final timing track. App. Br. 14; Reply Br. 4; Spec.
8, 10. Thus, Appellants’ arguments do not adequately explain how the
claimed invention distinguishes from Meek’s disclosure.
With respect to claim 29, Appellants further argue Yonezawa does not
disclose timing data comprising one or more grating features that includes
lines etched into a timing track as claimed. App. Br. 11. According to
Appellants, Figure 2 of Yonezawa at best describes pits 6 and 7 along a track
of a disc that are circular and, thus, different than the grating features
including lines etched into one or more timing track recited in claim 29.
App. Br. 12; Yonezawa Figures 2, 4—6, col. 4,11. 34—39, col. 5,11. 43—65.
We also find these arguments unavailing and agree with the
Examiner’s reasoning that the structural shape of the pits of Yonezawa meet
the claimed lines etched into a timing track. Ans. 3. We agree with the
Examiner’s determination that the claim language is not limited to the lines
of the grated feature as linear and, thus, open to any shape, including the
curved lines of Yonezawa. Id.
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Application 12/786,821
Appellants additionally argue Yonezawa does not disclose rotational
timing data that is optically detected and analyzed to determine a rotational
position during fabrication. App. Br. 17. According to Appellants,
Yonezawa discloses that a disc may have wobbled pits 6 for detecting a
tracking signal and an embedded clock pit 7 to control the clock for the data
signal. App. Br. 17; Yonezawa, col. 5,11. 43—65.
We are also unpersuaded by these arguments. The Examiner found
Yonezawa discloses that optic laser is synched to the data tracks, wherein
the clock pits data is read optically by a photo-detector and, thus, detecting
rotational data. Ans. 6; Yonezawa col. 2,11. 51—67, col. 6,11. 9-21. In
addition, the Examiner found Meeks discloses a magneto-optical device
which will optically detect timing information comprising trial-and-error
process until a timing track is properly produced during the fabrication
process and further discloses a laser generated by light source 102 for
detection purposes. Ans. 5; Meeks Figure 3, col. 6,11. 12—34, col. 11,11. 33—
42. Appellants’ arguments do not adequately address the portions of
Yonezawa or Meeks relied upon by the Examiner to address this limitation.
Claims 6, 22, 26, and 32
Claims 6, 22, and 32 require a timing error in the timing track of
either less than 2 nanoseconds or less than 0.5 nanoseconds while claim 26
requires a timing error in the timing track to be predetermined according to
the data density on the data storage area.
We have considered Appellants’ arguments with respect to these
claims and find them unavailing for the reasons presented by the Examiner.
App. Br. 15—16; Ans. 5. Moreover, given that Meeks discloses the clock
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Application 12/786,821
track is to be written to ensure that the pattern is perfectly periodic around
the disk, Appellants have not adequately explained why one skilled in the art
would not have been capable of minimizing and determining the timing error
to ensure a properly aligned clock track is made. Meeks col. 11,11. 34—36.
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
Therefore, we affirm the Examiner’s prior art rejection under
35 U.S.C. § 103(a) (Rejection (a)) for the reasons presented by the Examiner
and given above.
Rejection (b)
Claims 4 and 30 require the timing track area to be less than 5 mm
wide.
The Examiner relied upon James, directed to a system and method for
servo writing a magnetic disk drive, as disclosing a couple of track widths as
being 15—20 microns (0.015—0.020 mm), which the Examiner found to be
less than 5 mm wide. Final Act. 6; James col. 1,11. 6—7, col. 5,11. 36—37.
The Examiner determined it would have been obvious to one of ordinary
skill in the art that Yonezawa’s timing track area is less than 5 mm wide, as
suggested by James, in order to obtain an acceptable track. Final Act. 6;
James col. 5, lines 29-55.
We have considered Appellants’ arguments with respect to this
rejection and agree with the Examiner’s determination of obviousness. App.
Br. 18—19; Ans. 7. Moreover, Meeks discloses that a single track width can
be 1 micron and the clock track is wider than the single track. Meeks col.
11,11. 43 46. Meeks further discloses the width of the clock track should be
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Application 12/786,821
designed to accommodate the width of the beam and the tolerances of the
servo track writer (STW) and high disk assembly (HDA) mechanics. Id. at
col. 11,11. 49-53. Therefore, given this disclosure in Meeks, Appellants
have not adequately explained why one skilled in the art would not have
been capable of determining the appropriate track width for a desired
purpose.
Accordingly, we affirm the Examiner’s prior art rejection under
35 U.S.C. § 103(a) (Rejection (b)) for the reasons presented by the Examiner
and given above.
Rejection (c)
Claims 24 and 34 require a distance between the raised and recessed
portions of grating features to be less than 200 nm. That is, the features
etched in forming the final timing track have variable heights that can be less
than 200 nm.
We have also considered Appellants’ arguments with respect to this
rejection and are unpersuaded by them. App. Br. 19. The Specification
recognizes etching as a known process for removing material from a surface.
Spec. 3,5. Thus, Appellants have not adequately explained why one skilled
in the art would not have been capable of providing the claimed raised and
recessed features in the timing tracks of Yonezawa using this known
technique. In addition, Appellants have directed us to no evidence showing
the criticality of the distance between the raised and recessed portions of
grating features.
Therefore, we affirm the Examiner’s prior art rejection under
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Application 12/786,821
35 U.S.C. § 103(a) (Rejection (c)) for the reasons presented by the Examiner
and given above.
ORDER
The Examiner’s prior art rejections of claims 1—6 and 21—34 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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