Ex Parte Yu et alDownload PDFPatent Trial and Appeal BoardDec 15, 201412480944 (P.T.A.B. Dec. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHIH-CHING YU, HUNG-HSIANG CHANG, and PING-TSAI TSAI ____________________ Appeal 2012-006757 Application 12/480,9441 Technology Center 2600 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1–4, 6, 7, 9–14, 16–18, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Mediatek, Inc. App. Br. 2. Appeal 2012-006757 Application 12/480,944 2 STATEMENT OF THE CASE2 The Invention Appellants' invention relates to a method and apparatus for laser control which dynamically adjusts laser power during recording. Abstract. Exemplary Claims Claims 1 and 11, reproduced below, are representative of the subject matter on appeal (emphases added to disputed limitations): 1. A laser control method for dynamically adjusting laser output algorithm during recording data onto an optical disc, the laser control method comprising: recording normal user data onto the optical disc according to an initial laser output algorithm; recording a test pattern at a test pattern starting point according to a selected laser output algorithm; detecting at least one recording quality index from the normal user data and/or the test pattern recorded onto the optical disc; and determining an adaptive laser output algorithm to continually record the normal user data according to the recording quality index. 11. A laser control apparatus for dynamically adjusting laser output algorithm to record data during recording a normal user data onto the optical disc, and a pick-up head (PUH) for 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Nov. 11, 2011); Reply Brief ("Reply Br.," filed Mar. 20, 2012); Examiner's Answer ("Ans.," mailed Jan. 20, 2012); Final Office Action ("Final Act.," mailed Aug. 24, 2011); and the original Specification ("Spec.," filed June 9, 2009). Appeal 2012-006757 Application 12/480,944 3 generating laser to record the normal user data onto the optical disc according to the laser output algorithm, the laser control apparatus comprising: a detection circuit for detecting at least one recording quality index from the data recorded onto the optical disc; and a write laser modulating circuit for generating an initial laser output algorithm to the PUH to record the normal user data; generating a selected laser output algorithm to the PUH to record a test pattern at a test pattern starting point on the optical disc; and generating an adaptive laser output algorithm to continually record the normal user data according to a first recording quality index and/or a second recording quality index; wherein the first recording quality index is detected by the detection unit by reading back the recorded normal user data; and the second recording quality index is detected by the detection unit by reading back the test pattern. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Matsumoto et al. ("Matsumoto") US 5,684,765 Nov. 4, 1997 Appeal 2012-006757 Application 12/480,944 4 Rejection on Appeal3 Claims 1–4, 6, 7, 9–14, 16–18, and 20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Matsumoto. Ans. 5. ISSUES In reaching this decision, we considered all of Appellants' arguments actually made. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We also have considered any evidence of record presented by Appellants. We agree with Appellants' arguments with respect to claims 1– 4, 6, 7, 9–14, 16–18, and 20, and we disagree with (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner's Answer in response to Appellants' arguments. We highlight and address specific findings and arguments regarding claims 1 and 11 for emphasis as follows. Appellants argue (App. Br. 5–12; Reply Br. 1 and 2) the Examiner's rejection of claims 1–4, 6, 7, 9–14, 16–18, and 20 under 35 U.S.C. § 102(b) as being anticipated by Matsumoto is in error. These contentions present us with the following issues: 3 We note "[c]laims 5, 8, 15 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." Ans. 8. As such, the objection to these claims forms no part of our Decision, notwithstanding Appellants' statement that claims 1–20 are the subject of this Appeal. App. Br. 2. Appeal 2012-006757 Application 12/480,944 5 Issue 1 Did the Examiner err in finding the cited prior art discloses a method including, inter alia, steps of "recording normal user data onto the optical disc according to an initial laser output algorithm," and "determining an adaptive laser output algorithm to continually record the normal user data according to the recording quality index," as recited in claim 1? Issue 2 Did the Examiner err in finding the cited prior art discloses a laser control apparatus that includes, inter alia, "a detection circuit for detecting at least one recording quality index from the data recorded onto the optical disc; and a write laser modulating circuit for . . . generating an adaptive laser output algorithm to continually record the normal user data according to a first recording quality index and/or a second recording quality index," as recited in claim 11? ANALYSIS Issue 1 Appellants contend "the Office Action[ ] fail[s] to put forth a prima facie case for a § 102(b) rejection" because "the Office Action broadly alleges that claim 1 is anticipated by [Matsumoto] without clearly indicating what features of [Matsumoto] anticipate each of the elements of claim 1," i.e., the Examiner "cite[s] FIG. 7 and the components thereof to broadly allege that claim 1 is anticipated without indicating which components of FIG. 7 correspond to which elements of claim 1." App. Br. 6. Appeal 2012-006757 Application 12/480,944 6 We agree with Appellants that the Examiner has not met the burden for establishing a prima facie case for anticipation because the Examiner has broadly and unreasonably alleged Matsumoto's Figure 7 discloses all the recited limitations of claim 1, without providing an explicit mapping of the limitations to the cited prior art.4 We agree with Appellants because the Examiner merely construes the limitations of claim 1 (see Ans. 5–6), but does not map the claim limitations to the prior art, as required to sustain an anticipation rejection under § 102. A determination that a claim is anticipated under 35 U.S.C. § 102(b) involves two analytical steps. First, we must interpret the claim language, where necessary. Because the PTO is entitled to give claims their broadest reasonable interpretation, a court's review of the Board's claim construction is limited to determining whether it was reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997). Secondly, the Board must compare the construed claim to a prior art reference and make factual findings that "'each and every limitation is found either expressly or inherently in [that] single prior art reference.'" In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). In addition, the Federal Circuit has held, "the prima facie case is merely a procedural device that enables an appropriate shift of the burden of 4 Although Matsumoto's column 9 may arguable provide a viable mapping of the claimed limitations of claim 1 to the prior art, because the Board is "basically a board of review" (Ex parte Gambogi, 62 USPQ2d 1209, 1211 BPAI 2001), and not a place of initial examination, we will not engage in the de novo examination required to map each element of Appellants' claims to Matsumoto's disclosure. We leave any further consideration of the relevance of column 9 of Matsumoto to the Examiner. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2012-006757 Application 12/480,944 7 production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The Federal Circuit stated that this burden is met by "adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond." Id. at 1370. It is only "when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection" that the prima facie burden has not been met and the rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). We find, on this record, by not properly notifying Appellants of the shortcomings of the claim with respect to the cited prior art, the Examiner has not established a prima facie case of anticipation, and therefore has not properly shifted the burden of production to Appellants. Further, the Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977); see also Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The burden of proof then shifts to the applicant "to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." Best, 562 F.2d at 1254–55; In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency). On this record, the Examiner has not demonstrated any inherent features relied upon and which are necessarily in the cited prior art figure. Accordingly, Appellants have provided sufficient evidence and argument to persuade us of at least one reversible error in the Examiner's Appeal 2012-006757 Application 12/480,944 8 reading of the contested limitations on the cited prior art, and in the Examiner's resulting finding of anticipation. Therefore, we do not sustain the Examiner's anticipation rejection under 35 U.S.C. § 102(b) of independent claim 1, and claims 2–4, 6, 7, 9, and 10 which depend therefrom and which are rejected on the same basis as claim 1. Issue 2 With respect to claim 11, and similar to Issue 1, claim 1, Appellants contend: [T]he Office Actions fail to put forth a prima facie case for a §102(b) rejection. As stated above, the Office Action must cite a single prior art reference that discloses each element of the claim. However, the Office Action broadly alleges that claim 11 is anticipated by [Matsumoto] without clearly indicating what features of [Matsumoto] anticipate each of the elements of claim 11. For instance, the Office Action appears to cite FIG. 7 and the components thereof to broadly allege that claim 11 is anticipated without indicating which components of FIG. 7 correspond to which elements of claim 11. As such, the Office Actions fail to put forth a prima facie case for the §102(b) rejection. For at least this reason, Appellants respectfully traverse the rejection and submit that claim 11 is allowable. App. Br. 13. We agree with Appellants' general contentions cited above, but further note Matsumoto Figure 7 is a process flowchart disclosing method steps and logical conditions, and does not explicitly disclose hardware elements as recited, for example, in apparatus claim 11. Accordingly, for essentially the same reasons cited above with respect to Issue 1, i.e., the Examiner's deficient prima facie case of anticipation, we do not sustain the Examiner's anticipation rejection under § 102(b) of Appeal 2012-006757 Application 12/480,944 9 independent claim 11, and claims 12–14, 16–18, and 20 which depend therefrom and which are rejected on the same basis as claim 11. While Appellants raise additional arguments in an attempt to distinguish claims 1 and 11 over Matsumoto (see App. Br. 6–19), we need not reach the merits of those arguments because of our threshold finding of an improper prima facie case of anticipation for at least one element of each independent claim on appeal, as discussed above. CONCLUSION The Examiner erred with respect to the anticipation rejection of claims 1–4, 6, 7, 9–14, 16–18, and 20 under 35 U.S.C. § 102(b) over Matsumoto, and we do not sustain the rejection. DECISION We reverse the Examiner's decision rejecting claims 1–4, 6, 7, 9–14, 16–18, and 20. REVERSED cdc Copy with citationCopy as parenthetical citation