Ex Parte Weirauch et al

Patent Trial and Appeal Board

Mar 6, 2014

11560315 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHARLES R. WEIRAUCH and JOEL B. LARNER
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Appeal 2011-008759
Application 11/560,315
Technology Center 2100
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Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
LARRY J. HUME, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008759
Application 11/560,315
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 4, 6-10, 12, 13, 24, and 26-28. Claims 2, 5, 11, 14-23, and 25 are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
THE INVENTION

The claims are directed to a data structure for control information on
data storage media. Spec. 1. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A drive used in conjunction with a data storage medium, the
data storage medium containing control information, the drive
comprising:
a reading mechanism implemented to read a control data
structure on the data storage medium, the control data structure
including an identification of the control data structure, and said
control data structure also comprising first control bits and
second control bits;
a first portion of drive firmware, the first portion
implemented to extract the identification from the control data
structure; and
a second portion of drive firmware, the second portion
implemented to determine whether the identification is
recognized; and
wherein the drive is configured to use the first control
bits when the identification of the control data structure is
recognized and to use the second control bits when the
identification of the control data structure is not recognized.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Suzuki
Curtis
US 4,989,195
US 5,233,576
Jan. 29, 1991
Aug. 3, 1993

REJECTIONS1,2
The Examiner made the following rejections:
Claims 1, 3, 4, 6-10, 12, 13, 24, and 26-28 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Curtis and Suzuki. Ans. 4-9.

APPELLANTS’ CONTENTIONS
1. “Suzuki's disk type identification signal is not an identification of a data
structure containing the identification signal.” App. Br. 17.
2. Because “Curtis already teaches the use of WORM and MO bits which
are examined to determine the disk type . . . [t]here would be no added
flexibility to include a disk type identifier in a control track in Curtis”
and, therefore, there is no motivation for making the asserted
combination. Id.

1 Appellants argue the rejection of independent claims 3, 4, 6, 7, 10, 12, 13,
24, 26, and 27 on the basis of claim 1. Separate patentability is not argued
for claims 8, 9, and 28. Therefore, based on Appellants’ arguments, we
decide the appeal of claims 1, 3, 4, 6-10, 12, 13, 24, and 26-28 based on
claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
2 Double patenting rejections of claims 1, 3, 13, 24 and 26 over claim 1 of
U.S. Pat. 6,330,210 in view of Curtis and Suzuki and claims 13, 24 and 26
over claim 1 of U.S. Pat. 7,657,943 in view of Suzuki have been resolved
with the filing of terminal disclaimers such that these rejections are not
before us.
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ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 17-18)
and Reply Brief (Reply Br. 1-2), the issues presented on appeal are whether
the Examiner erred in combining Curtis and Suzuki by finding the
combination teaches or suggests a “control data structure including an
identification of the control data structure.”

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 3-9) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (Ans. 10-12) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Appellants contend Suzuki’s identification of a disk type fails to teach
or suggest identification of the control data structure, arguing “[j]ust because
a disk type identifier is stored in a control track does not mean that disk type
identifier somehow identifies the control track itself.” App. Br. 17. The
Examiner responds, finding Suzuki’s identification signal is used to
determine proper operating conditions of a disk. Because the control track is
a specific location that contains the identification signal, the signal identifies
the control track. The Examiner further explains the claim “language used
does not specify what the identification actually accomplishes, or how the
control structure’s identification actually occurs.” Ans. 10. Therefore, the
Examiner finds “the identification could be a label indicating that the portion
of the storage medium associated with the label is the control data structure
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or that the identification indicates that the control data structure belongs to a
disk of a specific type.” Ans. 10-11.
We agree with the Examiner. During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Appellants fail to provide sufficient evidence or argument to
persuade us the Examiner’s interpretation of the disputed limitation is
unduly broad or inconsistent with the Specification. Therefore, finding the
Examiner’s interpretation to be reasonable, we agree the combination of
Curtis and Suzuki teaches or suggests the disputed limitation of a control
data structure including an identification of the control data structure.
Furthermore, the disputed recitation of “identification of the control
data structure” does not change the functionality of, or provide an additional
function to, the steps of the method. Rather, the term is merely descriptive
of “data” or “information” to be extracted, recognized (or not) and, in
response, determine whether first or second control bits are to be used. That
is, the steps of claim 1 are not affected because the identification (i.e., data)
is particularly described as identification of the control data structure.
When descriptive material is not functionally related to the claimed
embodiment, the descriptive material will not distinguish the invention from
the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1582-
1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)
(nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious). See also Ex parte Mathias, 84
USPQ2d 1276 (BPAI 2005) (nonprecedential), aff'd, In re Mathias 191 Fed.
Appx. 959 (Fed. Cir. 2006). We therefore interpret the term “identification
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of the control data structure” as merely a label describing the data and
therefore entitled to a broadest reasonable interpretation as any data.
Accordingly, for this additional reason, we find unpersuasive Appellants’
argument that Suzuki fails to teach the control data structure including an
identification of the control data structure.
We are also not persuaded of error by Appellants’ contention “[t]he
Examiner’s attempted motivation to combine [Curtis and Suzuki] can only
be viewed as based on hindsight from Appellants’ own teachings, which of
course is off limits in an obviousness analysis.” App. Br. 17. We disagree for
the reasons set forth by the Examiner. See Ans. 5-6, 11-12. In particular,
including Suzuki’s identification signal in the control track of Curtis would
(i) provide increased flexibility by allowing Curtis’s drive to differentiate
between laser settings for each disk and (ii) avoid data loss using reflectivity
as an indicator of potential disk failure. Ans. 11-12.
In contrast to the Examiner’s findings, Appellants fail to provide
sufficient evidence or argument that the combination yields anything other
than predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
401 (2007) (the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). We are also not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
was “uniquely challenging or difficult for one of ordinary skill in the art”
(see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418)). Therefore, we find the
Examiner’s proffered combination of familiar prior art elements according to
their established functions would have conveyed a reasonable expectation of
success to a person of ordinary skill at the time of the invention. We further
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find the Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness.
For the reasons stated supra, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) over Curtis and Suzuki and, for the same
reasons, the rejection of independent claims 3, 4, 6, 7, 10, 12, 13, 24, 26, and
27 and dependent claims 8, 9, and 28 not separately argued.

CONCLUSIONS
We find
1. The Examiner did not err in combining Curtis and Suzuki and in
finding the combination teaches or suggests a “control data structure
including an identification of the control data structure.”
2. The Examiner did not err in rejecting claims 1, 3, 4, 6-10, 12, 13, 24,
and 26-28 under 35 U.S.C. § 103(a) over Curtis and Suzuki

DECISION
The Examiner’s decision to reject claims 1, 3, 4, 6-10, 12, 13, 24, and
26-28 is affirmed.
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

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