Ex parte WU

Board of Patent Appeals and Interferences

Jul 26, 1999

08170020 (B.P.A.I. Jul. 26, 1999)

Application for patent filed December 20, 1993.1
An amendment after the final rejection was filed on2
July 21, 1995 [paper no. 9] and entered in the record.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte QIAN WU
________________
Appeal No. 97-0445
Application 08/170,0201
________________
ON BRIEF
________________
Before HAIRSTON, BARRETT and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134
from the Examiner's final rejection of claims 1 through 9. 2
Appeal No. 97-0445
Application 08/170,020
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Claims 10 and 11 are non elected.
The disclosed invention pertains to a device for
selectively playing a large number of musical selections or
accessing a large amount of data where the music or data
selected is stored on a plurality of compact discs.
Specifically, the invention concerns a mechanism for selecting
and storing compact discs in a manner suitable for use as a
juke box. The invention features a housing that contains a
plurality of spaced apart, substantially parallel disc holders
and two compact disc player assemblies. Each assembly has an
extended portion shaped to pass through the cutout portions of
the compact disc holders. Each assembly can selectively move
up and down and each compact disc holder can selectively
rotate, when horizontally aligned with an assembly, between a
cache position, where the cutout portion of the holder is
vertically aligned with the extended portion of the assembly
to allow vertical movement of the assembly past the holders,
and a selection position, where the extended portion of the
assembly overlies a compact disc storage position of the
holder so that the assembly can pick up a compact disc from
Appeal No. 97-0445
Application 08/170,020
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the storage position and load it into the assembly’s compact
disc player. This arrangement provides for a substantially
continuous access to and play of data or music selections
stored on the compact discs.
Representative claim 1 is reproduced as follows:
1. A selector mechanism for multiple compact disks
comprising:
a housing;
a plurality of spaced, substantially parallel compact
disk holders stacked vertically within said housing where each
holder is capable of supporting a plurality of compact disks
in individual storage positions and has a cut-out portion;
a compact disk player assembly movable vertically within
the housing including a CD player and a [sic] extended portion
shaped to pass through the cut-out portion of the holders;
means for selectively moving said assembly vertically
between operating positions corresponding to each of the
holders when the extended portion is aligned with the cut-out
portion so the extended portion can pass therethrough; and
means for moving the holder corresponding to the assembly
when the assembly is in its operating position relative to
said holder between a cache position and selection positions,
the cache position of the holder being where said cut-out
portion is aligned with the extended portion to allow movement
by the vertical movement means and the selection positions
being where the extended portion overlays a compact disk
storage position of said holder so that the assembly can pick
up a compact disk supported on the holder at that storage
position and load the compact disk within the player.
The Examiner relies on the following reference:
Appeal No. 97-0445
Application 08/170,020
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Hasegawa et al. al. (Hasegawa) 4,670,866 Jun. 2,
1987
Kobayashi et al. al. (Kobayashi) 5,033,038 Jul. 16,
1991
Amar 5,319,621 Jun. 7,
1994
Claims 1, 4, 7 and 8 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Hasegawa. Claims 2, 3, 5, 6 and
9 stand rejected under 35 U.S.C. § 103 as being obvious over
various combinations of Hasegawa, Kobayashi and Amar.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed the Appellant’s arguments set forth in the brief.
It is our view that claims 1, 4, 7 and 8 are
anticipated by Hasegawa, while claim 5 is obvious over
Hasegawa. On the other hand, claims 2, 3, 6 and 9 are not
Appeal No. 97-0445
Application 08/170,020
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obvious over the suggested various combinations of Hasegawa,
Kobayashi and Amar. Accordingly, we affirm in part.
We take up these rejections in the order they appear
in the brief. In our analysis below, we are guided by the
precedence of our reviewing court that the limitations from
the
disclosure are not to be imported into the claims. In re
Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957); In re
Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir. 1986). We are
also mindful of the requirements of anticipation under 35
U.S.C. § 102. Anticipation under 35 U.S.C. § 102 is
established only when a single prior art reference discloses,
either expressly or under the principles of inherency, each
and every element of a claimed invention. See RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir.), cert dismissed, 468 U.S. 1228
(1984).
Appeal No. 97-0445
Application 08/170,020
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Rejection of Claims 1, 4, 7 and 8 under 35 U.S.C. § 102
The Examiner has rejected these claims as being
anticipated by Hasegawa. We take claim 1 as representative.
We have considered Appellant's arguments [brief, pages 4] and
Examiner’s position and response [answer, pages 3 and 8] in
regard to claim 1. We find that Hasegawa does anticipate
claim 1. Hasegawa discloses: “a plurality of ... disk holders
... where each ... a cutout portion” [claim 1, lines 3 to 5]
in the form of holders 1 and 3, with respective cutout 5 and
9, figure 1; “a compact disk player assembly movable ...
cutout portion of the holders” [claim 1, lines 6 to 8] in
figure 10 where disk
player assembly comprising of 13, 14 and 15 moves vertically;
“means ... moving said assembly ... therethrough” [claim 1,
lines 9 to 11] in figure 10 and also figure 1 where selection
of the disk to be played and the vertical movement of the
assembly is shown; and “means for moving the holder ... within
the player” [claim 1, lines 12 to 18] is shown in figures 1,
2, and 10 where the cache position is defined as where the
Appeal No. 97-0445
Application 08/170,020
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cutout 9 of holder 3 is aligned so that player assembly 13,14
and 15 can move up through the cutout portion [figure 10].
The selection position is defined as where the assembly 13, 14
and 15 moves up vertically and is positioned right below the
selected disk in the disk holder 1 [figure 10] and lifts up
the disk from holder to play. The clause qualifying the
holder in the last paragraph of claim 1, namely:
“corresponding to the assembly when the assembly is in its
operating position relative to said holder” [lines 12 and 13]
is broad and can be interpreted to mean that the term
“corresponding to the assembly" could be considered as
corresponding to either holder 1 or 3. The term “operating
position” could hold true for any vertical location of the
assembly as the assembly can be considered in its operation
position relative to said holder in any position. This
qualifying language does not support the argument by Appellant
about Hasegawa “that there is no need for the extended travel
which is required by lifter (10) to clear all the holders
prior to the next selection phase” [brief, page 5]. We,
therefore, conclude that Hasegawa anticipates claim 1 and we
Appeal No. 97-0445
Application 08/170,020
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sustain the Examiner’s anticipation rejection of claim 1 over
Hasegawa.
Claim 4 depends on claim 1 and additionally calls
for “where the holders are substantially circular ...
movement” [lines 1 to 3]. Hasegawa clearly shows that in
figures 1 and 2 where element 2 forms the axis of rotation.
Thus, the anticipation rejection of claim 4 over Hasegawa is
sustained.
With respect to claims 7 and 8, Hasegawa shows
“means for relative motion ... on the assembly” [claim 7,
lines 1 to 2] and “are pivotally mounted ... and ... moved.”
[Claim 8, lines 1 to 3] in the form of elements 14 and 19 in
figures 1, 5 and 6, column 3, lines 45 to 58. Thus, we
sustain the anticipation rejection of claims 7 and 8 over
Hasegawa.
Rejection of Claims 2, 5 and 6 under 35 U.S.C. § 103
These claims are rejected as being obvious over
Hasegawa. We have reviewed the Examiner’s rejection and
response [answer, pages 4 to 6 and 9 to 10] and Appellant’s
argument
Appeal No. 97-0445
Application 08/170,020
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[brief, pages 5 to 6]. We do not find any showing, or any
suggestion, in Hasegawa where one of ordinary skill in the art
would come up with the claimed limitation: “second means ...
within the second CD [compact disk] player;” [claim 2, lines
10 to 15] without the blueprint of Appellant’s invention.
Therefore, we do not sustain the obviousness rejection of
claim 2 over Hasegawa. The obviousness rejection of claim 6,
which depends on claim 2 and contains at least the above
discussed limitation of claim 2, is also not sustained.
However, claim 5 depends claim 4 and further
contains the limitation: “wherein the cutout portion of each
holder ... is substantially pie shaped.” [Claim 5, lines 1 to
3]. After considering the Examiner’s rejection [answer, pages
5 and 6] and Appellant’s argument [brief, pages 5 and 6], we
agree with the Examiner that the shape of the cutout portion
of each holder and the extended portion of the assembly, as
long as they match to allow the movement of the assembly
through the cutout portion of the disc holders, see figures 1
and 2 of Hasegawa, can be of any shape including being “pie-
shaped”. We, therefore, sustain the obviousness rejection of
claim 5 over Hasegawa.
Appeal No. 97-0445
Application 08/170,020
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Rejection of Claim 3 under 35 U.S.C. § 103
Claim 3 is rejected as being obvious over Hasegawa
and Kobayashi. We have considered Appellant’s argument
[brief, pages 6 and 7] and Examiner’s rejection and response
[answer, pages 6, 7 and 11]. Claim 3 depends on claim 2 and
thus contains at least the above discussed limitation of claim
2. Kobayashi does not cure the deficiency found in Hasegawa
in meeting claim 2. Therefore, we will not sustain the
obviousness rejection of claim 3 over Hasegawa and Kobayashi.
Rejection of Claim 9 under 35 U.S.C. § 103
Claim 9 is rejected as being obvious over Hasegawa
and Amar. We have reviewed Examiner’s position [answer, pages
7, 11 and 12] and Appellant’s argument [brief, page 8]. We
agree with Appellant that Amar neither shows the presence, nor
the suggestion, of “an associated latch that abuts an interior
edge of the cutout portion... position” [claim 9, lines 1 to
4]. Therefore, we do not sustain the obviousness rejection of
claim 9 over Hasegawa and Amar.
In summary, we have affirmed the rejection of claims
1, 4, 7 and 8 as being anticipated over Hasegawa under 35
Appeal No. 97-0445
Application 08/170,020
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U.S.C.
§ 102. We also have affirmed the rejection of claim 5 as
being obvious over Hasegawa under 35 U.S.C. § 103. However,
we have reversed the obviousness rejection under 35 U.S.C. §
103 of claims 2 and 6 over Hasegawa, claim 3 over Hasegawa and
Kobayashi and claim 9 over Hasegawa and Amar.
AFFIRMED IN PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 97-0445
Application 08/170,020
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Robert C. Brandensburg
Brooks & Kushman
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