Ex Parte Usui et al

Board of Patent Appeals and Interferences

Dec 9, 2009

10343226 (B.P.A.I. Dec. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YOSHINOBU USUI, AKIYA SAITO,
MAKOTO TSUKAHARA,
and YOSHITAKE YANAGISAWA

________________

Appeal 2009-002884
Application 10/343,226
Technology Center 2600
________________

Decided: December 10, 2009
________________

Before JOHN C. MARTIN, ROBERT E. NAPPI,
and THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 5-8, 21-24, 26, 29, 31, and 34. We have
jurisdiction under 35 U.S.C. § 6(b). Oral argument was heard on November
3, 2009. We affirm-in-part.
Appeal 2009-002884
Application 10/343,226

2
STATEMENT OF THE CASE
Appellants claim an optical disc, an optical disc data recording
method, and a recording apparatus to write identification information onto
an optical disc having other recorded information, such as video, audio, or
computer software data. Information data is recorded onto a substrate using
minimum and maximum inverting interval pit lengths, and then a coating
film is formed on the substrate. Postscript information next is recorded in
compliance with the minimum and maximum intervals into the prior
recorded information data by recording the postcript information to the
coating film (e.g., independent claim 5). Alternatively, a portion of known
data that is recorded in a predetermined location of the substrate is rewritten
to the coating film (e.g., independent claim 21).1 Claims 5 and 21 are
illustrative:

5. An optical disc medium having a substrate on which a shape
according to information data modulated by a modulating method in
which a minimum inverting interval and a maximum inverting
interval have been specified has been formed and a coating film
formed on the substrate, wherein

predetermined postscript information has been recorded into
predetermined recorded information data by recording said
predetermined postscript information to said coating film so as to
comply with the rule of said minimum inverting interval and said
maximum inverting interval.

21. An optical disc medium having a substrate on which a shape
according to modulated information data has been formed and a

1 See generally Spec. 11: 16 –15: 14; 18: 9-18; 23: 21–28: 14; 33: 4–35: 3;
Figs. 1, 2, 4, 5, 8, and 9.
Appeal 2009-002884
Application 10/343,226

3
coating film formed on the substrate, wherein

known data has been recorded in a predetermined location, a part of
said known data is rewritten by recording it to said coating film, and
desired information is recorded in accordance with whether the
rewriting has been performed or not.

The Examiner relies on the following prior art references to show
unpatentability:2
Takemura US 5,809,007 Sep. 15, 1998

Gotoh US 6,144,742 Nov. 7, 2000

Schneck US 2002/0067674 A1 June 6, 2002

1. The Examiner rejected claims 21-24, 29, and 34 under 35 U.S.C. §
102(e) as being anticipated by Schneck. (Ans. 5-7).
2. The Examiner rejected claims 5-8, 26, and 31 under 35 U.S.C. §
103(a) as being unpatentable over Gotoh and Takemura. (Ans. 3-5).
Rather than repeat the arguments of Appellants or of the Examiner,
we refer to the Brief and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments that Appellants could have made but did not make

2 Effective filing dates for these documents precede Appellants’ earliest
effective filing date and are not at issue.
3 We refer throughout this opinion to (1) the Appeal Brief filed Nov. 13,
2006, (2) the Examiner’s Answer mailed Mar. 8, 2007, and (3) the Reply
Brief filed May 8, 2007.
Appeal 2009-002884
Application 10/343,226

4
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants’ Arguments
Anticipation
Appellants group claims 21-24, and separately argue independent
claim 21 (App. Br. 16, 17). Accordingly, for this group of claims we select
claim 21 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants assert that Schneck is silent as to the claim 21 recited
limitations for having: (1) a part of known data “rewritten . . . to said
coating film;” and (2) “desired information . . . recorded in accordance
with whether the rewriting has been performed or not” (App. Br. 17).
With respect to claims 29 and 34, Appellants repeat the arguments made for
claim 21 (App. Br. 17-19).
Obviousness
Appellants group claims 5, 7, and 8, and separately argue independent
claim 5 (App. Br. 10-12). Accordingly, for this group of claims we select
independent claim 5 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants assert a Gotoh-disclosed operating principle for recording
identification barcode data that requires “the pulse width of the stripe, or
barcode, must be greater than the pulse width of the pit, else discrimination
between them is not possible . . .” (App. Br. 11). Appellants further assert
that “Takemura teaches that the ID signal is recorded satisfying the
maximum [p]it inverting interval Tmax . . .” (id.). Referencing these
assertions, Appellants argue that a prima facie case of obviousness has not
been established because the “. . . object of Gotoh is destroyed when
Appeal 2009-002884
Application 10/343,226

5
combining Gotoh with Takemura, Gotoh teaches away from the alleged
combination, and Gotoh and Takemura lack the requisite motivation to
combine . . .” (App. Br. 11, 12).
Appellants separately argue claim 6, which is dependent from
independent claim 5. Appellants assert that “neither Gotoh nor Takemura
disclose wherein the information data is main information” (App. Br. 12).
This assertion need not be reached because the rejection of independent
claim 5 will not be sustained.
With respect to claims 26 and 31, Appellants repeat the arguments
made for claim 5 (App. Br. 12-16).

ISSUES
(1) Under § 102(e), have Appellants shown the Examiner erred in
rejecting representative claim 21 by finding Schneck as expressly or
inherently teaching having:
(a) a part of known data “rewritten . . . to said coating film” as recited
in claim 21; and
(b) “desired information . . . recorded in accordance with whether the
rewriting has been performed or not” as recited in claim 21?
(2) Under § 103(a), have Appellants shown that the Examiner erred in
rejecting representative claim 5 by combining Gotoh and Takemura
teachings because an “object of Gotoh is destroyed” (App. Br. 11), and
Gotoh teaches away from Takemura’s ID signal recording teaching?

Appeal 2009-002884
Application 10/343,226

6
FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
Schneck
1. Schneck discloses a system and method for manufacturing
authenticated optical discs (i.e., identification marked discs) by first
inscribing an original master disc with an inverse image of a disc data
pattern, and then printing the data pattern on a subsurface for the final
disc (Schneck, ¶ [0017]).
2. Schneck discloses that authenticating data is introduced as a physical
alteration of one or more selected portions within the data area of an
optical disc surface (Schneck, ¶ [0006]).
3. The Schneck introduced authenticating alterations (e.g., errors or
defects) “may be manufactured into the optical disc after the optical
disc has had data from the master disc transferred to it” (Schneck, ¶¶
[0006], [0012]; Fig. 4).
4. Alternatively, the Schneck recorded authenticating error data “can be
erased or removed by, e.g., requesting the user to remove the coating .
. . or by inputting a identifier which may be subsequently used to
irradiate (via the reading laser) a particular opaque portion(s) of the
optical disc and therby remov[e] errors . . .” (Schneck, ¶ [0033]).
5. Schneck further discloses that encoded identifier information may be
derived from trackable errors and compared with authentication data
provided elsewhere on the optical disc or alternatively input by a user
(Schneck, ¶ [0024]).

Appeal 2009-002884
Application 10/343,226

7
Gotoh
6. Gotoh discloses an optical disc reproducing apparatus and a produced
optical disc that has identification information in the form of a
barcode laser recorded on a reflective film (Abstract).
7. The Gotoh barcode is recorded in a prescribed pre-pit signal region in
overwriting fashion by selectively removing a reflective film (Gotoh,
col. 1, ll. 52-56).
8. Gotoh discloses that the relation between the trimming width t of a
barcode stripe 923a and an overwritten pit clock T (pit) should be
t>14T (pit), and that it is not possible to discriminate between the
stripe 923a and the pit clock if t is shorter than 14T (Gotoh, col. 22,
ll. 59-66).
Takemura
9. Takemura discloses an optical disk reproducing apparatus and a
produced optical disk that has both data signals recorded in a user data
area and also an identification (ID) signal recorded in an ID signal
area of a lead-in area that includes a control data area (Takemura, col.
1, ll. 7-10; col. 3, ll. 16-23; col. 4, ll. 50-56).
10. Takemura further discloses that the user data and ID signal are
recorded using different-length marks and spaces that vary in lengths
between a maximum length Tmax and a minimum length Tmin
(Takemura, col. 3, ll. 16-32).
11. According to Takemura, the thus recorded ID signal can be read using
the same method used to reproduce the user data, and can be
reproduced without using tracking control (Takemura, col. 7, ll. 9-13;
col. 8, ll. 58-62).
Appeal 2009-002884
Application 10/343,226

8
PRINCIPLES OF LAW
Examined claims are interpreted as broadly as is reasonable and
consistent with the specification, In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir.
2002), while “taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written description
contained in the applicant's specification,” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997), and without reading limitations from examples given
in the specification into the claims, In re Zletz, 893 F.2d 319, 321-22 (Fed.
Cir. 1989).
Anticipation
The inquiry as to whether a reference anticipates a claim must focus
on what subject matter is encompassed by the claim and what subject matter
is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983), it is only
necessary for the claims to “‘read on’ something disclosed in the reference,
i.e., all limitations of the claim are found in the reference, or
‘fully met’ by it.”
Obviousness
An Examiner, in rejecting claims under 35 U.S.C. § 103, must
establish a factual basis to support a legal conclusion of obviousness. See In

Appeal 2009-002884
Application 10/343,226

9
re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The Supreme Court has
further explained that an obviousness rejection must be based on:
“‘some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness’. . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”

KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Anticipation
Claims 21-24
We do not find error in the Examiner’s rejection under § 102(e) of
claims 21-24 as being anticipated by Schneck.
With respect to representative claim 21, the Examiner, as do we, finds
that Schneck teaches forming modulated information data on a substrate
(e.g., an original master disc), and further forming a coating film (e.g., a
subsurface of the final disc) on the substrate (Ans. 6; FF 1). The Examiner
identifies Schneck ¶ [0024] and Fig. 4 as evidence for these and other
findings directed to claim 21 (Ans. 6). Appellants do not contest the above
findings from Schneck, but Appellants generally contend that “Schneck fails
to disclose each and every feature of claim 21” (App. Br. 17).
Appellants specifically argue that “it is unclear how Fig. 4 or ¶ 0024
correspond to the features of claim 21 (¶ 0024 discusses deriving an
identifier encoded by trackable errors)” (id.). We concur with Appellants to
Appeal 2009-002884
Application 10/343,226

10
the extent that Schneck ¶ 0024 discusses deriving an identifier encoded by
trackable errors (FF 5), but we do not concur with Appellants’ conclusion
that Schneck is deficient as an anticipation reference because we find, as is
addressed above and below, that Schneck teaches the claim 21 recited
subject matter.
Appellants explicitly address the representative claim 21 limitations
by asserting that Schneck fails to disclose “a part of said known data is
rewritten . . . to said coating film” and “desired information is recorded in
accordance with whether the rewriting has been performed or not” (App.
Br. 17).
We find Schneck relevantly disclosing that authenticating data is
introduced during the manufacturing process as a physical alteration (e.g., an
error or defect) of one or more selected portions within the data area of an
optical disc surface (FF 2, 3). Consonantly, the Examiner cites Schneck
Figure 4, which is a manufacturing flow chart, for teaching that errors are
purposefully embedded in a disc and that such recording of errors on a disc
is “rewriting a part of the known data” (Ans. 9). Appellants respond with
the assertion that “the act of inserting errors into the substrate post-recording
is not comparable with rewriting a part of the known data . . . [because]
introducing errors serves to inhibit the reading of data . . . [and] rewriting
data serves to impart readable data” (Reply Br. 4). Consequently Appellants
thereby implicitly acknowledge that identifying recorded data as error data
has to result from deciphering a reading signal as being produced from a
recorded error. Therefore, such deciphering results from readable data, i.e.,
error data. Error data recorded over known data is unavoidably readable
data, and recording error data over previously recorded data changes the
Appeal 2009-002884
Application 10/343,226

11
previously recorded known data so as to be revised known data, i.e., a
rewriting of the known data. Appellants have not submitted evidence or
arguments rebutting the Examiner’s reasonably broad interpretation of claim
21’s recited limitation for “a part of said known data is rewritten by
recording it to said coating film.” See Thrift, 298 F.3d at 1364. We,
accordingly, do not find that this Appellants’ argument rebuts the
Examiner’s prima facie obviousness rejection.
The Examiner, with respect to claim 21’s recitation of recording
desired information “in accordance with whether the rewriting has been
performed or not,” finds the limitation reads on Schneck’s teachings for
removal of prior recorded errors (Ans. 9). We also find Schneck teaching
both recording and removal of error data (FF 4). Again, Appellants have not
submitted evidence or arguments rebutting the Examiner’s reasonably broad
interpretation of this claim 21 recited limitation.4 See Thrift, 298 F.3d at
1364. We, accordingly, do not find that Appellants have rebutted the
Examiner’s prima facie obviousness rejection.
For these reasons, we conclude, as does the Examiner, that
representative claim 21 is anticipated by Schneck. We will sustain the

4 When Appellants’ counsel was asked during the Oral Hearing to address
the meaning of this limitation, he stated, without reference to either intrinsic
or extrinsic evidence, that:
It’s . . . a conditional clause and all that is being said there is that some
other information, which is referred to as desired information, is
recorded onto the disk in accordance with whether the rewriting has
been performed or not, so you’re making that condition. You’re
conditioning the recording of desired information onto the disk with
reference to that – whether that condition is present or not.
(Hearing Trans., pg. 8, l. 18 to pg. 9, l. 2.) We do not find that counsel’s
statement rebuts the Examiner’s reasonably broad interpretation.
Appeal 2009-002884
Application 10/343,226

12
Examiner’s rejection under § 102(e) of claim 21, and also will sustain the
rejection of dependent claims 22-24 that fall for similar reasons.
Claim 29
Substantively, Appellants exclusively restate the same arguments for
independent claim 29 as were made regarding independent claim 21 (App.
Br. 17, 18). For the same reasons stated supra for claim 21, we will sustain
the Examiner’s rejection of claim 29.
Claim 34
Substantively, Appellants exclusively restate the same arguments for
independent claim 34 as were made regarding independent claim 21 (App.
Br. 18, 19). For the same reasons stated supra for claim 21, we will sustain
the Examiner’s rejection of claim 34.
Obviousness
Claims 5, 7, and 8
Based on the record before us, we are persuaded the Examiner erred
in rejecting representative independent claim 5 over Gotoh and Takemura.
Claim 5 covers an optical disc medium, and recites a limitation that
postscript information (e.g., identification information) is recoded to a disc
coating film “so as to comply with the rule of said minimum inverting
interval and said maximum inverting interval.”5 The Examiner, as do we,
finds that Gotoh teaches an optical disc having identification information

5 Claim 5 in preface recites that information data is recorded on a substrate
“by a modulating method in which a minimum inverting interval and a
maximum inverting interval have been specified.”
Appeal 2009-002884
Application 10/343,226

13
recorded on a coating film as a barcode (Ans. 3, 4; FF 6, 7). The Examiner
acknowledges, however, that Gotoh “does not specify the predetermined
postscript information is recorded as to comply with the rule of said
minimum inverting interval and said maximum inverting interval” (Ans. 4),
but finds Takemura teaching the use of minimum/maximum inverting
intervals to record ID information (id.).6 Premised from the acknowledged
Gotoh deficiency and the finding concerning the Takemura teachings, the
Examiner reasons that it would have been obvious to an ordinarily skilled
artisan to modify Gotoh with Takemura’s minimum/maximum inverting
interval recording method for ID information, because “the recorded
information can be detected by the same method used to reproduce the user
data (see Takemura . . . , Col. 8, lines 58-62) . . . [and] can still be properly
obtained without using tracking control (see Takemura . . . , Col. 7, lines 6-
22)”7 (id.).
Appellants argue that the Examiner’s combination destroys “a main
object of Gotoh” (App. Br. 11). Specifically, Appellants assert that Gotoh
teaches recording barcode identification information stripes 923a with
trimming widths t that must be greater than 14T (i.e., pit signal T) else
“discrimination between the stripe 923a and the pit signal would not be
possible, and the signal from the stripe 923a could not be demodulated”

6 We also find Takemura teaching a produced optical disc having ID
information recorded in a lead-in area with maximum length Tmax and
minimum length Tmin marks (i.e., pits) and spaces (FF 9, 10).
7 We concur that Takemura teaches that the recorded ID information can be
read using the same method used to reproduce recorded user data, and can
be reproduced without tracking control (FF 11).
Appeal 2009-002884
Application 10/343,226

14
(id.). We likewise find Gotoh teaching that it is not possible to discriminate
between the stripe 923a and the pit clock if there is not a difference between
the trimming width t of a barcode stripe 923a and an overwritten pit clock T
(pit) that is t>14T (pit) (FF 8).
The Examiner contends that “it is not convincing to state that
‘discrimination between the strip 923a and the pit signal would not be
possible’ if the strip is not greater than 14T” (Ans. 7). In support the
Examiner asserts that Gotoh “discloses that when the width of the strip falls
below a threshold, a flip-flop circuit is implemented to waveshape the strip
so that the signal width becomes greater than the sampling width interval
(see col. 29, lines 57-67)” (id.). Additionally, the Examiner asserts that:
Takemura teaches that a shortest mark 3T (Tmin) is 0.7 µm long
(see col. 9, lines 3-6), hence, this suggests that a longest mark 8T
(Tmax) is 1.86 µm. By Gotoh standard, this length, i.e., 1.86 µm
would still be greater than 14T, where T=0.13 µm. Accordingly, the
combination of Gotoh and Takemura would not teach away from each
other in the manner suggested in the appeal brief, since the absolute
length of the mark taught by Takemura meets the requirement set by
Gotoh.
(Ans. 8)
With respect to the Examiner’s reliance on the Gotoh disclosed flip-
flop circuit to adjust signals from short strips, the Appellants argue that the
Examiner “fails to address the claims, which are directed to data recording,
and not playback” (Reply Br. 3). Further, Appellants assert that Gotoh
requires the disclosed pit and strip signal pulse width differences “otherwise
the ‘discrimination between them in not possible, so that the signal from the
Appeal 2009-002884
Application 10/343,226

15
stripe 923a cannot be demodulated.’ Col. 22, lines 62-66” (id.). In the
context of the Examiner’s assertions concerning mark length dimensions, we
find Appellants’ reference to Gotoh’s pulse width difference disclosures
persuasive. Appellants’ position is persuasive because the Examiner’s
assertion only addresses the combined reference disclosures that are directed
to the longest mark’s dimension. The Examiner does not address what
would be the comparative difference of shortest to longest dimensions and
how that difference may or may not comply with Gotoh’s differentiation
teachings.
The Examiner’s indicated combination of references and modification
of Gotoh is “[t]he repetition of the marks and spaces disclosed by Takemura
et al. is similar to recording of the barcode information as shown by Gotoh et
al.” (Ans. 4). The Examiner, however, has not provided a rational
underpinning showing that Gotoh’s barcode can be modified by Takemura’s
disclosed minimum/maximum inverting interval recording method so as to
maintain a mark length difference as taught by Gotoh for discriminating
between strip and pit signals. See Kahn, 441 F.3d at 988 (The Examiner’s
“articulated reasoning . . . in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness.”).
Thus, we agree with the Appellants’ argument that the skilled artisan
would not have combined the teachings of the applied references to arrive at
the claimed invention. We will not sustain the Examiner’s rejection under §
103(a) of representative claim 5, and also will not sustain the rejection of
dependent claims 7 and 8 that fall for similar reasons.
Appeal 2009-002884
Application 10/343,226

16
Claim 6
Appellants argue for claim 6, which is dependent from independent
claim 5, with the assertion that “neither Gotoh nor Takemura disclose
wherein the information data is main information” (App. Br. 12). For the
same reasons stated supra for claim 5, we will not sustain the Examiner’s
rejection of claim 6. See Fine, 837 F2d at 1076 (“Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious.” (citations omitted)).
Claim 26
Substantively, Appellants exclusively restate the same arguments for
independent claim 26, which covers an optical disc recording method, as
were made regarding independent claim 5 (App. Br. 12-14). For the same
reasons stated supra for claim 5, we will not sustain the Examiner’s rejection
of claim 26.
Claim 31
Substantively, Appellants exclusively restate the same arguments for
independent claim 31, which covers an optical disc recording apparatus, as
were made regarding independent claim 5 (App. Br. 12-14). For the same
reasons stated supra for claim 5, we will not sustain the Examiner’s rejection
of claim 31.

CONCLUSIONS
Under § 102, Appellants have not shown that the Examiner erred in
rejecting claims 21-24, 29, and 34.
Appeal 2009-002884
Application 10/343,226

17
Appellants, however, have shown that the Examiner erred in rejecting
claims 5-8, 26, and 31 under § 103.

DECISION
The Examiner’s decision rejecting claims 5-8, 21-24, 26, 29, 31, and
34 is affirmed-in-part.
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)(iv).

AFFIRMED-IN-PART

KIS

RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036