Ex Parte Ueki

Board of Patent Appeals and Interferences

Oct 27, 2010

10714864 (B.P.A.I. Oct. 27, 2010)

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.
10/714,864 11/18/2003 Yasuhiro Ueki 0124/0019 9361
21395 7590 10/28/2010
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
HALEY, JOSEPH R
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
10/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YASUHIRO UEKI
________________

Appeal 2009-003191
Application 10/714,864
Technology Center 2600
____________________________

Before THOMAS S. HAHN, CARL W. WHITEHEAD, JR.,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-003191
Application 10/714,864

2
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
Appellant claims methods for recording and reproducing information
from a recording medium that includes a plurality of recording layers.
Reproduced signals are stored in a buffer memory (Abstract). Illustrative
Claim 1, with disputed recitations emphasized, is reproduced:
1 A method of reproducing information from a recording medium
having first and second places on which first and second information
signals are recorded respectively, the recording medium including at
least first and second signal recording layers accessible from one side,
the method comprising the steps of:
rotating the recording medium;
enabling a head to reproduce the first and second information signals
from the first and second places in the recording medium on a time
sharing basis to get first and second reproduced signals respectively;
temporarily storing the first and second reproduced signals in a buffer
memory;
outputting the first and second reproduced signals from the buffer
memory at first and second transfer rates respectively;
transmitting the first and second reproduced signals from the head to
the buffer memory on a time sharing basis and at a third transfer rate
higher than the first and second transfer rates; and
deciding at least one of (1) an information amount of the first
reproduced signal continuously transmitted from the head to the
buffer memory and (2) an information amount of the second
reproduced signal continuously transmitted from the head to the
buffer memory on the basis of a given relation among parameters
including (a) a time interval taken by the head to move from the first
place to the second place as viewed on one of the first and second
Appeal 2009-003191
Application 10/714,864

3
signal recording layers, (b) a time interval taken by the head to move
from the second place to the first place as viewed on one of the first
and second signal recording layers, (c) a time interval taken by the
head to move its focus from the first signal recording layer to the
second signal recording layer, (d) a time interval taken by the head to
move its focus from the second signal recording layer to the first
signal recording layer, (e) the first transfer rate, (f) the second transfer
rate, and (g) the third transfer rate.

APPELLANT’S CONTENTIONS
Appellant contends that the Examiner erred in rejecting claims 1-3
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Ueki, U.S. Patent 6,285,632 B1, and Florczak, U.S. Patent 5,640,382,
because:
(A) Neither Ueki nor Florczak discloses, or suggests,
the taking into account of the time intervals required by
the pickup head to focus jump among the layers of a
multilayer disc in order to determine the amount of
information that could be continuously transmitted from
the head to a buffer memory.
(Br. 16.)
(B) All of the rejected claims, which are independent method claims,
recite limitations for determining the amount of information that
can be continuously transmitted from a pickup head to a buffer
memory by using multiple time intervals including the time
intervals required by the head to refocus between layers of a
multilayer disc (Br. 17).

Appeal 2009-003191
Application 10/714,864

4
ISSUE
Did the Examiner err in rejecting claims 1-3 by interpreting them as
not reciting limitations for determining the amount of information that can
be continuously transmitted from a pickup head to a buffer memory by
requiring use of multiple time intervals including time intervals needed by
the head to refocus between layers of a multilayer disc?

PRINCIPLES OF LAW
The scope of claimed limitations is determined by giving the terms in
claims their ordinary and accustomed meaning while interpreting the claims
as broadly as is reasonable and consistent with the specification. See In re
Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2002).

ANALYSIS
The Examiner does not dispute Appellant’s first contention (A) above,
and we agree with Appellant as to this contention.
The Examiner disputes Appellant’s contention (B) above by finding
and reasoning that claim 1 recites,
“a given relation among parameters . . . ” and then lists
parameters a-g [including c and d that are head refocus time
intervals]. The broadest reasonable interpretation of the
limitation “a given relation among parameters” means a
relationship between at least two parameters must be shown.
The word among makes it the examiner[’]s discretion as to
which parameters to choose, they are all not required by the
claim language. The examiner has shown a relationship among
parameters a, b, e, f, and g; therefore, meeting the claim
language.
Appeal 2009-003191
Application 10/714,864

5
(Ans. 5.) The disputed limitation is recited as “deciding . . . an information
amount . . . on the basis of a given relation among parameters including (a)
[through] . . . (g) . . . .” Parameters a-d are different time intervals Appellant
characterizes as inter-layer and intra-layer time intervals (Br. 14), and
parameters e-g are different transfer rates. Appellant contends that this
disputed limitation “requires a determination of both the intra-layer time
interval as well as the inter-layer time interval, in addition to the transfer
rates, for determining the amount of information being reproduced from the
recording medium by the first and second signals in the two signal playback
mode” (Br. 14).
We agree with Appellant because, based on the record and using
ordinary and accustomed meanings for recited terms, we find that the
broadest reasonable interpretation of the limitation covers an inclusive use of
the listed parameters. The Examiner has not articulated why, in accord with
the ordinary and accustomed term meanings, the limitation under any
reasonable interpretation could cover an unspecified alternative use of less
than all of the listed parameters.
Therefore, Appellant has established that the Examiner erred with
respect to the rejection of claims 1-3.

CONCLUSION
Appellant established that the Examiner erred in rejecting claims 1-3
as being obvious under 35 U.S.C. § 103(a) by interpreting them as not
reciting limitations for determining the amount of information that can be
continuously transmitted from a pickup head to a buffer memory by
Appeal 2009-003191
Application 10/714,864

6
requiring use of multiple time intervals including time intervals needed by
the head to refocus between layers of a multilayer disc.

DECISION
The Examiner’s decision rejecting claims 1-3 is reversed.

REVERSED

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LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314