Ex Parte Yang et al

Patent Trial and Appeal Board

Apr 29, 2014

11714057 (P.T.A.B. Apr. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte XIN H. YANG, S. CRAIG SMITH, and LIN GUO
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Appeal 2011-005827
Application 11/714,057
Technology Center 2600
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Before MAHSHID D. SAADAT, JOHN A. EVANS, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5 and 8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-005827
Application 11/714,057

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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to self-writing servo patterns within a
storage device (Spec. ¶ [0002]).
Claim 1, which is illustrative of the invention, reads as follows:
1. A method, comprising:
generating at least one estimated value of a first
parameter from at least one regularly measured value of a
second parameter;
updating the at least one estimated value of the first
parameter with at least one of an irregularly measured value of
the first parameter;
and adjusting an output of a control feedback loop
utilizing the at least one updated, estimated value of the first
parameter and the at least one regularly measured value of the
second parameter.
Rejections on Appeal
Claims 1-5 and 8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kohso (US 6,995,945 B2) (see Ans. 3-4).
Issue on Appeal
Did the Examiner err in concluding that Kohso teaches or suggests
updating the at least one estimated value of the first parameter with at least
one of an irregularly measured value of the first parameter?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. We refer herein to Appellants’ Appeal Brief dated July 26,
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2010 (App. Br.), Examiner’s Answer mailed November 22, 2010 (Ans.), and
Appellants’ Reply Brief dated January 24, 2011 (Reply Br.).
Independent claim 1 recites updating the at least one estimated value
of the first parameter with at least one of an irregularly measured value of
the first parameter. The Examiner cites to the detected head position signal
“x” in Kohso as the first parameter (Ans. 3). Appellants argue that the
Examiner erred because the position value “x” in Kohso is not an irregularly
measured value as recited in claim 1 (App. Br. 5; Reply Br. 8). However,
Appellants admit that position values for a disk in a disk drive, such as the
position value “x” in Kohso, may be inherently irregular and can be
measured irregularly (App. Br. 6). As such, Appellants admit that the
position value “x” in Kohso can be, in some instances, an irregularly
measured value, just as the Examiner concluded (Ans. 3-6). Appellants’
argument that the position value “x” in Kohso can also be measured
regularly (App. Br. 5-7; Reply Br. 8) is not persuasive because Appellants’
claim 1 does not require a first parameter that is only capable of being
measured irregularly.
Appellants also argue that Kohso teaches away from the disputed
claim limitation. However, a teaching away argument is inapplicable when,
as here, the rejection is based on anticipation. Celeritas Techs., Ltd. v.
Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“Thus, the
question whether a reference ‘teaches away’ from the invention is
inapplicable to an anticipation analysis.”).
With respect to the remaining claims, Appellants present no separate
arguments and contend their patentability based on the same reasons stated
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for independent claim 1 (App. Br. 8). Therefore, we sustain the Examiner’s
rejections of claims 1-5 and 8.

DECISION
The decision of the Examiner rejecting claims 1-5 and 8 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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