Ex Parte Yang

Board of Patent Appeals and Interferences

Jun 26, 2002

08768231 (B.P.A.I. Jun. 26, 2002)

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written for publication and is not binding precedent of the Board.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. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MIN-KWAN YANG
____________
Appeal No. 2001-0476
Application No. 08/768,231
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and GROSS, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
VACATUR IN PART, AFFIRM IN PART AND REMAND TO THE EXAMINER
Pursuant to 37 CFR § 1.196(a) and the Manual of Patent
Examining Procedure (MPEP) § 1211, this application is remanded
to the Examiner for appropriate action with respect to the
matters discussed below. Because the present rejection of claims
1, 3, 5 through 7, 13 through 16, 21 through 24 and 27 through 45
Appeal No. 2001-0476
Application No. 08/768,231
The term "vacate" as applied to an action taken by an1
appellate tribunal, means to set aside or to void. Blacks Law
Dictionary, 1075 (abridged 6 ed. 1991). When the Board vacatesth
on appeal and remand the application in view of the following. 1
Further, after a careful review of the evidence before us, we
agree with the Examiner that claims 46 through 53 are properly
rejected under 35 U.S.C. § 112, first paragraph. It is also
noted that claims 9 through 12, 17 through 19 and 25 have been
indicated as allowable by the Examiner while claims 2, 4, 8, 20
and 26 have been canceled.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the Briefs and the Answer for the2
respective details thereof.
REFERENCES
The prior art references relied upon by the Examiner are:
Moon et al. (Moon) 4,669,004 May 26, 1987
Blagaila et al. (Blagaila) 5,526,202 Jun. 11, 1996
Smith 5,608,587 Mar. 4, 1997
(filed Mar. 20, 1995)
Cowen 5,760,983 Jun. 2, 1998
(filed May 31, 1999)
Appeal No. 2001-0476
Application No. 08/768,231
Park 5,828,516 Oct. 27, 1998
(filed Feb. 23, 1996)
Background
The present invention relates to a hard disk wherein servo
identification is recorded in the servo bursts. On pages 3 and 4
of Appellant's Brief, we note that the servo identification is
recorded in A and B portions of said servo bursts to enable
detection of said servo identification by a head when said head
is in an off-track state and an on-track state, see independent
claims 1 and 41. We further note that the servo identification
can also be recorded in P and Q portions of said servo bursts to
enable detection of said servo identification by a head when said
head is on an even numbered track and an odd numbered track,
99see independent claims 3 and 44. Appellant's Brief, on pages 6
and 7, also explains that the invention includes a hard disk
drive including a head means for reading data, a gate array for
receiving a processed output signal and a processing means
comprising an automatic gain control circuit and a servo
Appeal No. 2001-0476
Application No. 08/768,231
VACATUR
The decision of the Board must be supported by substantial
evidence. In re Lee, 277 F.3d 1338, 1341, 61 USPQ2d 1430, 1432
(Fed. Cir. 2002). Thus, the Board must set forth its findings
and the grounds thereof as supported by the record and explain
its application of the law to the facts. Id. 277 F.3d at 1343,
61 USPQ2d at 1433.
I. Determining the Rejection
In deciding the issues before us, we must review the
Examiner's rejection to determine what the prior art teaches and
to see how the prior art is applied to Appellant's claims. In
doing so, we note that claims 1, 3, 5 through 7, 13 through 16,
21 through 24 and 27 through 45 stand rejected under 35 U.S.C.
§ 103 as being obvious over a first reference "and/or" a second
reference in "view of" a third reference "and/or" a fourth
reference. We further note that claims 1, 3, 41 and 45 also3
stand rejected under 35 U.S.C. § 103 as being obvious over a
Appeal No. 2001-0476
Application No. 08/768,231
fifth reference in "view of" the same aforementioned third
reference "and/or" the same aforementioned fourth reference from
the first rejection.
Upon review of these rejections, we find ourselves faced
with a plethora of permutations regarding how the art should or
"could" be applied to Appellant's claims. Further, the rejection
itself offers us little guidance as to how the particular
references are applied and what would have motivated one of
ordinary skill to make the many possible combinations allotted by
the five references relied upon.
Accordingly, this rejection of record is VACATED and the
application is hereby remanded to the Examiner in accordance with
the above-noted MPEP provision in § 1211, which indicates in part
that in the case of multiple rejections of a cumulative nature,
the Board may remand the application for selection of the
preferred or best ground. We consider the approach taken by the
Examiner, of essentially rejecting the same claims in the
alternative an indeterminate number of times, as not in
Appeal No. 2001-0476
Application No. 08/768,231
In light of the discussion supra, this application is
remanded to the Examiner for selection of the best (and
substantially limited in number of) references and ground of
rejection. All unnecessary, cumulative grounds of rejection and
references are expected not to be made/applied should the
Examiner consider the formulation of any new rejections. In any
event, for each reference relied upon in each rejection, the
PTO's policy is for the Examiner to compare the rejected claims
feature-by-feature with the reference. This comparison should
map the language of the claims to the specific page number,
column number, line number, drawing number, drawing reference
number, and/or quotation for each reference relied upon. See
MPEP § 1208. Also note Ex Parte Blanc, 13 USPQ2d at 1383 (BPAI
1989).
II. Determining the Scope of the Claims
The initial burden of presenting a prima facie case of
obviousness rests on the Examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In meeting this
Appeal No. 2001-0476
Application No. 08/768,231
Our reviewing court has further stated that claims are construed
in light of the specification. D.M.I., Inc. v. Deere & Co.,
755 F.2d 1570, 1574, 225 USPQ 236, 238 (Fed. Cir. 1985).
In a first instance, we note that the claims are not all of
the same scope. More specifically, and as stated supra in
discussing the background of the invention, we note that
independent claims 1 and 41 include the limitation "wherein said
servo identification is recorded in A and B portions of said
servo bursts to enable detection of said servo identification by
a head when said head is in an off-track state and an on-track
state." We further note that independent claims 3 and 44 do not
include such a limitation. To the contrary, they include the
limitation "wherein said servo identification is recorded in P
and Q portions of said servo bursts to enable detection of said
servo identification by a head when said head is on an even
numbered track and an odd numbered track." However, this
limitation is not found in claims 1 and 41. We also note that
neither of these limitations is found in independent claims 13,
Appeal No. 2001-0476
Application No. 08/768,231
comprising an automatic gain control circuit and a servo
demodulator connected to said automatic gain control circuit for
sampling and holding amplitudes of burst signals and for
providing, as an output, information relative to the amplitudes
of the burst signals."
These distinctions in claim scope appear to be lost on the
Examiner since all of these claims were grouped and treated
together in the rejections as if they were of the same scope.
Therefore, this case is remanded so that the Examiner can
determine the scope of each of the claims and apply the prior art
accordingly.
Furthermore, it does not appear that the Examiner
appreciated the entire scope of claims 1, 3, 41 and 44. To
illustrate this point, we turn to the claims specifically
addressed in the Examiner's rejection, independent claims 41 and
44. In particular, we note that claim 41 recites,
. . . wherein said servo identification is recorded in
A and B portions of said servo bursts to enable
detection of said servo identification by a head when
said head is in an off-track state and an on-track
Appeal No. 2001-0476
Application No. 08/768,231
said head is on an even numbered track and an odd
numbered track. (Emphasis added).
The question that is raised is, "what is the servo
identification?" Upon review of Appellant's disclosure, we note
several instances were "servo identification" or "servo ID" is
disclosed. However, there appears to be limited discussion
defining the "servo identification" or "servo ID," with regards
to the type of data or information that might be contained
therein. Since we are unable to answer the question of "what is
a servo identification," we cannot readily determine the scope of
the claims in the application. Hence, we cannot know how the
relevant prior art can or should be applied. Therefore, this
case is also remanded to the Examiner to make the determination
of the scope of the claims by determining: what is the "servo
identification," what type of data or information is contained
therein and how it fits into the Appellant's invention.
III. How are the References Applied in view of the
Scope of the Claims
Our reviewing court in In re Lee, 277 F.3d 1338, 1342-43,
Appeal No. 2001-0476
Application No. 08/768,231
When patentability turns on the question of
obviousness, the search for and analysis of the prior
art includes evidence relevant to the finding of
whether there is a teaching, motivation, or suggestion
to select and combine the references relied on as
evidence of obviousness. See, e.g., McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
USPQ2d 1001, 1008 (Fed. Cir. 2001) (“the central
question is whether there is reason to combine [the]
references," a question of fact drawing on the Graham
factors). (Emphasis added).
Once the scope of the claim is determined, the Examiner then
needs to make a finding in the prior art for each limitation in
the claim. Then the Examiner needs to apply the art by showing a
one-to-one correspondence of what the art teaches to what the
Appellant claims. By appreciating what each reference teaches as
a whole, the Examiner can then apply the appropriate art to the
claim limitations. This methodology was not performed by the
Examiner.
In a first instance, it is unclear as to how the Examiner
could apply the references in the 35 U.S.C. § 103 rejection
without knowing the scope of the claims. More specifically, the
Examiner failed to determine the scope and definitions for the
Appeal No. 2001-0476
Application No. 08/768,231
art applies. Third, we fail to find any meaningful rejection of
claims 13, 21 and 27 and would advise the Examiner to address
these claims accordingly. Finally, based on the Examiner's
discussion of the Moon et al. reference, we do not feel that the
Examiner fully appreciated what Moon teaches.
Specifically, Moon teaches "track identification information
contained in the C burst will be read by the microprocessor."
See column 17, lines 47-49, generally column 16, line 40 to
column 17, line 55 and Figure 9 of Moon. Moon also teaches,
[o]ne further object of the present invention is to
provide an improved servo control system and embedded
servo burst pattern for a positionable head disk data
storage file which provides absolute positional
information in each servo burst readable through the
same transducer head, data channel and data controller
which operates for user data, thereby facilitating and
vastly improving track seeking operations and
performance. See column 3, lines 58-66 of Moon.
However, in light of a careful review of Appellant's
specification and drawings, we cannot determine an answer to the
question, "what is a servo identification." As such, we are
unable to make a meaningful and proper comparison of Moon's
Appeal No. 2001-0476
Application No. 08/768,231
the meaning of Moon's track identification and apply Moon's
teaching accordingly to the present claims.
Whether Moon's teachings meet the limitations of Appellant's
claims is for the Examiner to determine based on the analysis
stated above and in conforming with Patent Office policy seen in
MPEP § 706.02.
As stated supra, we are even further confused as to how the
Examiner applies the art rejection with respect to claims 13, 21
and 27 under 35 U.S.C. § 103. More specifically, the Examiner
fails to specifically address and determine the scope of these
claims. Rather, the Examiner provides a laundry list of
components disclosed by Blagaila and Cowen.
See page 4, lines 1-3 of the Answer. Without analyzing the
claims, how can the Examiner make a one-to-one correspondence of
what the art teaches to what the Appellant claims? It is clear
from the Answer that the Examiner did not. Therefore, we will
not speculate on the Examiner's "intended art rejection" but will
remand the case to the Examiner for a more complete application
Appeal No. 2001-0476
Application No. 08/768,231
IV. Sustaining 35 U.S.C. § 112, first paragraph rejection
Now we turn to the rejection of claims 46 through 53 under
35 U.S.C. § 112, first paragraph. "The function of the
description requirement [of the first paragraph of 35 U.S.C.
§ 112] is to ensure that the inventor had possession, as of the
filing date of the application relied on, of the specific subject
matter later claimed by him." In re Wertheim, 541 F.2d 257, 262,
191 USPQ 90, 96 (CCPA 1976). "It is not necessary that the
application describe the claim limitations exactly, . . . but
only so clearly that persons of ordinary skill in the art will
recognize from the disclosure that [A]ppellants invented the
processes including those limitations." Wertheim, 541 F.2d at
262, 191 USPQ at 96 citing In re Smythe, 480 F.2d 1376, 1382,
178 USPQ 279, 284 (CCPA 1973). Furthermore, the Federal Circuit
points out that "[i]t is not necessary that the claimed subject
matter be described identically, but the disclosure originally
filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed." In re Wilder,
Appeal No. 2001-0476
Application No. 08/768,231
written description requirement, the patent specification 'must
clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.'" Century Gallery
Inc. v. Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503
(Fed. Cir. 1998) citing In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1614 (Fed. Cir. 1989). "An applicant is entitled to
claims as broad as the prior art and his disclosure will allow."
In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA
1981). (Emphasis added).
Appellant argues on page 10, lines 8-12 of the Brief that,
claims 1 thru 16 . . . are part of the originally filed
disclosure of the invention claimed herein. In that
regard, it should be noted that original claims 8, 12
and 16 recited an embodiment of the invention wherein
'said servo sector number is recorded in P and Q
portions of said servo bursts, and said head bit is
recorded in A and B portions of said servo bursts'
(quoting from the claims originally filed).
The Appellant further argues that the "originally filed
disclosure recited the servo identification as being recorded in
P and Q portions only (original claim 3) or in A and B portions
Appeal No. 2001-0476
Application No. 08/768,231
(A,B) or (P,Q) servo bursts.'" See page 11, lines 13-15 of the
Brief. Rather, "a clear statement of every detail is not
required; only enough to enable the person of skilled in art to
make and use the invention is necessary for the disclosure to be
'enabling' under 35 U.S.C. § 112 (first paragraph)." See page
11, line 19 to page 12, line 1 of the Brief. Appellants then
make a concluding statement that "one of ordinary skill in the
art, upon reviewing the disclosure of the invention as originally
filed . . . would be able to make and use the invention recited
in claims 46 thru 53 without undue experimentation." See page
12, lines 2-5 of the Brief.
In response to Appellant's arguments, the Examiner states
that he can find no support in the specification, original claims
or the drawings for the limitation "ONLY." See page 6, lines 5
and 6 of the Answer.
In our review of Appellant's originally filed application,
(the entire specification, original claims and drawings), we fail
to find any support for the newly claimed subject matter in
Appeal No. 2001-0476
Application No. 08/768,231
bursts. Hence, we find that all of the servo bursts P, Q, A and
B contain the servo identification and as such, the servo
identification is not limited to one set or the other as is
argued by Appellant. Therefore, we agree that claims 46 through
53 are properly rejected under 35 U.S.C. § 112, first paragraph.
We will therefore sustain the Examiner's 35 U.S.C. § 112,
first paragraph rejection of claims 46 through 53. However, we
have decided to vacate the Examiner's 35 U.S.C. § 103 rejections
of claims 1, 3, 5 through 7, 13 through 16, 21 through 24 and 27
through 45 and remand the case for further proceedings,
consistent with the discussion supra, rather than reverse the
Examiner's rejection or enter a new ground of rejection under
37 CFR § 1.196(b). As outlined supra, the Examiner needs to
determine the scope of "each" of the claims and further determine
the meaning of the "servo identification." Next, the Examiner
must pick the most relevant prior art references and then the
Examiner must set forth an "unambiguous ground of rejection." As
such, we have concluded that the Moon reference, U.S. Pat. No.
Appeal No. 2001-0476
Application No. 08/768,231
This application is accordingly remanded to the Examiner for
further action consistent with the foregoing.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED-IN-PART, AFFIRMED-IN-PART AND REMANDED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 2001-0476
Application No. 08/768,231
ROBERT E. BUSHNELL
ATTORNEY-AT-LAW
1522 K ST. N.W. SUITE 300
WASHINGTON, DC 20005-1202