Ex parte Uekusa

Board of Patent Appeals and Interferences

Nov 5, 2001

08711074 (B.P.A.I. Nov. 5, 2001)

1
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and is not binding precedent of the Board.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. 36

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TADASHI UEKUSA
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Appeal No. 1999-2307
Application No. 08/711,074
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HEARD: October 10, 2001
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Before FLEMING, LALL and BARRY, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the final rejection of claims
1 through 21, all of the claims pending in the instant application.
The present invention relates to an information recording method and apparatus for
recording information on a magnetic tract or a photographic negative film by
Appeal No. 1999-2307
Application No. 08/711,074
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supplying a magnetic head with a signal corresponding to the information to magnetically
record on a magnetic track.
Independent claim 1 reads as follows:
An information recording method comprising the steps of:
causing relative movement between a photographic negative film, provided
with a magnetic track, and a magnetic head;
supplying said magnetic head with a signal corresponding to an information
to be magnetically recorded so as to magnetically record the information in a
first predetermined region of said magnetic track;
recording said information on said first predetermined region of said
magnetic track of said photographic negative film on the basis of said signal
supplied to said magnetic head;
supplying said magnetic head with a second signal when said magnetic
head is located at a second predetermined region which is outside said first
predetermined region, said second signal being one of direct current and
alternating current; and
operating said second signal on said second predetermined region of said
photographic negative film through said magnetic head.
In rejecting Appellant’s claims, the Examiner relies on the following references:
Itoh 5,453,805 Sep. 26, 1995
Kazami et al. (Kazami) 5,559,568 Sep. 24, 1996
Yoshida 5,649,249 Jul. 15, 1997
Claims 1, 2, 4 through 15 and 17 through 21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kazami in view of Yoshida.
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Claims 3 and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Kazami in view of Yoshida and further in view of Itoh.
OPINION
With full consideration given to the subject matter on appeal, the Examiner’s
rejection and the arguments of the Appellant and the Examiner, we will reverse the
Examiner’s rejection of claims 1 through 21.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ 1443, 1444 (Fed Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed Cir. 1984). The Examiner can satisfy this burden by showing that
some objective teaching in the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants. Oetiker, 977 F.2d at
1445, 24 USPQ at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788 (“After
a prima facie case of obviousness has been established, the burden of going forward
shifts to the applicant.”).
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. See In re Oetiker, 977 F.2d at 1445, 24 USPQ2d
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at 1444 (“In reviewing the examiner’s decision on appeal, the Board must necessarily
weigh all of the evidence and arguments.”). With these principles in mind, we
commence review of the pertinent evidence and arguments of Appellant and Examiner.
Appellant argues on pages 8 and 9 of the brief that Kazami and Yoshida do not
teach or suggest using a signal magnetic head for recording an information signal in one
region of a photographic film and for recording a second signal of direct current or
alternating current on another region of a photographic film. In particular, Appellant argues
that the Examiner’s proposed modification of Kazami in which the substitution of an
alternating current signal for the second information signal of Kazami but not the first
information signal makes no sense. See page 2 of the reply brief.
In order for us to decide the question of obviousness, "[t]he first inquiry must be into
exactly what the claims define." In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970) “Analysis begins with a key legal question -- what is the invention claimed?”.
. . Claim interpretation . . . will normally control the remainder of the decisional process.”
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597
(Fed. Cir. 1987), cert denied, 481 U.S. 1052 (1987).
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We note that claim 1 reads as follows:
supplying said magnetic head with a signal corresponding to an information
to be magnetically recorded so as to magnetically record the information in a
first predetermined region of said magnetic track . . .
supplying said magnetic head with a second signal when said magnetic
head is located at a second predetermined region which is outside said first
predetermined region, said second signal being one of direct current and
alternating current
We note that the other independent claims 10 and 14 recite similar language. Thus, the
claims require a magnetic head for recording an information signal in one region on a
photographic head and for recording a second signal which is direct current or alternating
current on another region of said photographic film.
The Federal Circuit states that "[t]he mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266
n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further established that “[s]uch a
suggestion may come from the nature of the problem to be solved, leading inventors to
look to references relating to possible solutions to that problem.” Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir.
1996), citing In re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA 1976)
(considering the problem to be solved in a determination
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of obviousness). The Federal Circuit reasons in Para-Ordnance Mfg. Inc. v. SGS
Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
1995), that for a determination of obviousness, the court must answer whether one of
ordinary skill in the art who sets out to solve the problem and who had before him in his
workshop the prior art, would have been reasonably expected to use the solution that is
claimed by the Appellants. However, "[o]bviousness may not be established using
hindsight or in view of the teachings or suggestions of the invention. "Para-Ordnance
Mfg. v. SGS Importers Int'l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13. In
addition, our reviewing court requires the Patent and Trademark Office to make specific
findings on a suggestion to combine prior art references. In re Dembiczak, 175 F.3d
994, 1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
On page 9 of the Examiner’s answer, the Examiner states that Kazami teaches
recording first and second signals. The Examiner further contends that Yoshida teaches
recording of an alternating current signal as alternative specific information represents the
existence of exposed frame. The Examiner argues that Kazami may be modified by
Yoshida by not modifying the first signal of Kazami. The Examiner further
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explains that the alternating current signal of Yoshida would only be used as the second
signal of Kazami. The Examiner argues that it would have been obvious to replace the
second signal of Kazami with the alternating current signal of Yoshida because it relates to
exposed information.
Even if we were to agree with the Examiner that it would have been obvious to
modify Kazami by substituting the alternating current signal taught by Yoshida, we fail to
find that the Examiner has shown any evidence that it would have been obvious to only
substitute the Yoshida alternating current signal for the second information signal of
Kazami. The Examiner has not come to grips with the fact that if it would have been
obvious to one of ordinary skill in the art to make the modification of Kazami using the
Yoshida alternating current signal, then it would have been obvious to use the Yoshida
alternating current signal for the second signal as well. The Examiner has not provided any
evidence of obviousness by simply substituting the Yoshida alternating current signal for
just one of the Kazami information signals.
Because neither Kazami nor Yoshida, alone or in combination, teach or suggest
Appellant’s claim limitation, we conclude that the Examiner has failed to establish a prima
facie case. Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4 through 15
and 17 through 21 as being obvious over Kazami in view of Yoshida.
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Turning to the rejection of claims 3 and 16 as being unpatentable over Kazami in
view of Yoshida and Itoh, we note that Itoh does not provide the missing piece of
evidence which shows why one of ordinary skill in the art would only have modified one of
Kazami’s information signals. Therefore, we reverse the Examiner’s rejection of claims 3
and 16 for the same reasons as above.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
/vsh
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