Ex Parte Annampedu

Patent Trial and Appeal Board

Sep 17, 2012

10835809 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/835,809 04/30/2004 Viswanath Annampedu Annampedu 9 9223
47386 7590 09/18/2012
RYAN, MASON & LEWIS, LLP
1300 POST ROAD
SUITE 205
FAIRFIELD, CT 06824
EXAMINER
MERCEDES, DISMERY E
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
09/18/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte VISWANATH ANNAMPEDU
________________

Appeal 2010-004982
Application 10/835,809
Technology Center 2600
________________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-5, 7-14, and 16-20:
Claims 1, 2, 7, 10, 11, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Gold (US 5,231,545; issued July 27, 1993)
in view of Chiba (US 5,523,990; issued June 4, 1996);
Claims 1, 2, 7, 10, 11, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Gold in view of Kittilson (US 6,078,452;
issued June 20, 2000); and
Claims 3-5, 8, 9, 12-14, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Gold in view of Chiba and Applicant’s
admitted prior art (Figures 1-6 and corresponding description in the
Specification) (hereinafter “AAPA”).
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant describes the present invention as data detection techniques
for improving address mark detection that may be used, for example, in the
operation of computer hard disk drives. (Title; Spec. 1.) Independent claim
1, which is illustrative of the claimed subject matter on appeal, is reproduced
with the disputed limitation emphasized:
1. A method for detecting an address mark in a data
stream having a preamble followed by said address mark,
comprising the steps of:
detecting an end of said preamble; and
opening a window to search for said address mark based
on the detection of said end of said preamble, wherein said
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window has a given duration based on a length of said address
mark.

CONTENTIONS
The Examiner finds that Gold discloses all of the limitations of
illustrative claim 1 except for claim 1’s limitation, “wherein said window
has a given duration based on a length of said address mark.” (Ans. 3.) For
this limitation, the Examiner relies on Chiba “for disclosing an apparatus
wherein the window signal generator generate[s] a window duration based
on the length of the servo address mark.” (Ans. 7 (citing Chiba, Figs. 6, 8,
and 11, col. 5, ll. 5-15, and col. 6, ll. 11-15).) The Examiner concludes that
it would have been obvious to modify the apparatus of Gold with the
teaching of Chiba “to provide Gold’s apparatus with an improved and more
accurate address mark detector.” (Ans. 7.)
Appellant argues that Chiba does not disclose that the window has a
given duration based on a length of said address mark because none of
Chiba’s search windows correlate to the size of the address mark and that
Chiba selects a search window based on the detection of certain information
(i.e., sector mark and/or address data). (App. Br. 4-6 (discussing Chiba’s
Figs. 6, 8, and 11 and corresponding text); Reply Br. 3-4.) Appellant further
contends, inter alia, that Chiba’s Fig. 11 and the corresponding text do not
disclose an address mark, other than as part of address information. (App.
Br. 4-6); Reply Br. 4-6.)
In the alternative, the Examiner relies on Kittilson as disclosing a
“window signal generator [that] generate[s] a detection window to detect a
sync mark within a servo sector, wherein this detection window is based on
the length of the servo sector.” (Ans. 4 (citing Kittilson, col. 11, ll. 5-39).)
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The Examiner also concludes that it would have been obvious to modify the
apparatus as disclosed by Gold with a detection method as disclosed by
Kittilson “to improve the handling of defective servo sectors, thus
decreasing hard errors.” (Ans. 4.)
Appellant disagrees and contends, inter alia, that Kittilson does not
disclose that the window has a given duration based on a length of said
address mark because Kittilson merely changes the size of the detection
window when the servo sync word is not detected. (App. Br. 7; Reply
Br. 6.)
ANALYSIS
This appeal turns on the fundamental issue of whether Chiba, or in the
alternative, Kittilson, discloses or suggests a window that has a given
duration based on a length of said address mark being detected. “Before
considering the rejections . . ., we must first [determine the scope of] the
claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). It is
axiomatic that during examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
In accordance with these legal principles, we must first determine the
broadest reasonable interpretation of the claim term “said window has a
given duration based on a length of said address mark” (emphasis added).
Appellant’s Specification does not explicitly define the claim term. See
generally Spec. Nor does the Examiner assert that a person of ordinary skill
in the art at the time that the invention was made would have ascribed
anything other than the plain meaning to the term. See generally Ans. 3-4
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and 6-8. To interpret the claim term we must understand the plain meaning
of “based on a length of said address mark,” and to do so, we look to a
general purpose dictionary for guidance in determining the ordinary and
customary meaning of the constituent term “base” as viewed by one of
ordinary skill in the art at the time the invention was made. See Phillips v.
AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (en banc).
A general purpose dictionary defines the term “base” as follows: “to
use as a base or basis for: establish, found.” Webster’s Third New
International Dictionary of the English Language Unabridged, 181
(Merriam-Webster 1961). In accordance with the term’s plain meaning,
then, we interpret the claim language “said window has a given duration
based on a length of said address mark” to require that the duration of the
window have some relationship to the length of the address mark.
This interpretation is consistent, not only with the general purpose
dictionary definition of the term “base,” but also with another use of the
claim term “based on” in illustrative claim 1: “opening a window to search
for said address mark based on the detection of said end of said preamble”
(emphasis added). In this usage instance, opening a window is based on, or
has some relationship to, the detection of the end of the preamble.
The interpretation that “said window has a given duration based on a
length of said address mark” requires that the duration of the window has
some relationship to the length of the address mark also is consistent with
Appellant’s Specification, which provides an example of a servo address
mark detection process in which a window is opened. (See Spec. 7.) In
particular, a window of L duration is opened such that “L will span the
number of bits used for the servo address mark and will also account for
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processing delays in the servo address mark detector [] and tolerances for all
other implementation delays.” (Id.) In this example, the duration of the
opened window has a relationship to the length of the address mark –
namely, the window duration spans the number of bits used for the servo
address mark and will also account for implementation delays.
This appeal then turns on whether Chiba, or in the alternative,
Kittilson, discloses or suggests a search window where the duration of the
window has some relationship to the length of the address mark.
OBVIOUSNESS REJECTION OF CLAIMS 1, 2, 7, 10, 11, 16, and 19
OVER GOLD AND CHIBA
Chiba discloses techniques for detecting address information recorded
on a recording medium, such as an optical-magnetic disc. (See Chiba,
Abstract.) Chiba discloses the generation of multiple window signals of
various sizes and the selection of one of the window signals “on the basis”
of flag signals indicating whether a sector mark and/or address information
data are detected. (Chiba, col. 6, ll. 8-24; see also Ans. 7 (citing Chiba, col.
6, ll. 11-15).)
The Examiner finds that Chiba discloses timing charts in Figs. 6 and 8
showing “the duration of the detection windows (w1, w2, w3) are within the
length of the address mark and the address information, such that given the
time frame of the selected window the data would be detected within the
address mark and the address information field.” (Ans. 7.)
As Appellant points out, however, the various cases illustrated in Figs.
6 and 8 do not depict a visual correlation of any of the three window sizes
with the length of the address mark. (See Ans. 5.) We note that in Chiba’s
Fig. 6, some of the windows (namely, w1 and w2) are larger than the size of
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the depicted address mark size (AMI) and one of the windows (w3) is
smaller. Even in the case of 8h in Fig. 8 where window w3 may correlate to
the size of address mark AM3, we note that various window sizes are
depicted in other cases shown in Fig. 8. The claim language requires that
the length of the address mark has some relationship to the duration of the
window. The success of a search using a window of a certain size to detect
the data within the address mark and address information field does not
inform the inquiry of whether the length of the address mark has some
relationship to the duration of the window.
In addition, as noted by Appellant, Chiba discloses selecting a search
window based on the detection of certain information (i.e., sector mark
and/or address data), rather than based on the length of the address mark.
(App. Br. 4-6 (discussing Chiba’s Figs. 6, 8, and 11 and corresponding
text).) Accordingly, we are persuaded that the length of the address mark is
not based on the duration of the various search windows in Chiba’s Figs. 6
and 8.
The Examiner relies on Chiba’s Fig. 11 as disclosing “within window
signal B, the address information detection D is detected, from intervals t0-
t2 and the length of the detection window does not exceed the length of the
address mark.” (Ans. 7.) As Appellant points out, neither Fig. 11 nor its
associated text (Chiba, col. 9, l. 32 to col. 10, l. 35) expressly mentions an
address mark or the length of the address mark. (See App. Br. 5; Reply Br.
5.) Chiba’s Fig. 11 and corresponding text disclose how window signals are
generated based on the detection of sector marks and address information
and avoid erroneous readings of sector marks. (See Chiba, Figs. 10-11 and
col. 9, l. 4 to col. 10, l. 36.)
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For these reasons, we are persuaded that Chiba’s Fig. 11, relied on by
the Examiner, does not disclose or suggest a search window that has a given
duration based on a length of the address mark.
None of the portions of Chiba pointed to by the Examiner discloses or
suggests opening a window to search for said address mark wherein said
window has a given duration based on a length of said address mark. Based
on the record of this appeal, the Examiner’s obviousness conclusion is
merely a conclusory statement with no articulated reasoning and rational
underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Thus, we do not sustain the Examiner’s rejection of claim 1, or of claims 2
or 7, which depend from claim 1, as obvious over Gold and Chiba.
Independent claims 10 and 19 each recite wherein said window has a
given duration based on a length of said address mark and were not
separately argued with particularity. As such, we likewise do not sustain the
obviousness rejection of independent claims 10 and 19, or of claims 11 and
16, which depend from claim 10, for the reasons discussed above with
respect to illustrative claim 1.
OBVIOUSNESS REJECTION OF CLAIMS 1, 2, 7, 10, 11, 16, and 19
OVER GOLD AND KITTILSON
The Examiner finds that Kittilson discloses “the detection window for
a servo sector is made widened or made of longer duration that [sic: than] a
previous detection window to aid in detecting the servo synch word within
the servo sector.” (Ans. 8 (citing Kittilson, col. 11, ll. 35-39).) The
Examiner interprets the servo sector as corresponding to the claimed address
mark. (Ans. 8 (stating “providing a detection window of the same duration
as the servo sector (address mark)”).)
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We agree with Appellant that Kittilson’s disclosure (that the next
detection window is made widened or make or longer duration than the
previous detection window when the prior servo sync word is not detected)
does not teach or suggest a window that has a given duration based on a
length of said address mark, as recited by illustrative claim 1. Rather,
Kittilson modifies the window size or duration based on whether a sync
word had been previously detected. Thus, we do not sustain the Examiner’s
rejection of illustrative claim 1, or of claims 2 or 7, which depend from
claim 1, as obvious over Gold and Kittilson.
For the reasons discussed above with respect to illustrative claim 1,
we likewise do not sustain the obviousness rejection of independent claims
10 and 19, or of claims 11 and 16, which depend from claim 10.
OBVIOUSNESS REJECTION OF CLAIMS 3-5, 8, 9, 12-14, 17, 18, AND 20
OVER GOLD, CHIBA, AND AAPA
The obviousness rejection of dependent claims 3-5, 8, 9, 12-14, 17,
18, and 20 also suffers from the above-noted error with respect to the
obviousness rejection over Gold and Chiba. In rejecting claims 3-5, 8, 9, 12-
14, 17, 18, and 20, the Examiner relied on AAPA as disclosing various
additional features not disclosed by Gold or Chiba, but otherwise relied upon
the disclosures of Gold and Chiba. (Ans. 5-6.) The obviousness rejections
of these claims all suffer from the same problem as described for claim 1 set
forth above with respect to the obviousness rejection over Gold and Chiba.
The Examiner does not suggest that the AAPA would cure the deficiency in
the Chiba disclosure. Accordingly, we do not sustain the rejection of claims
3-5, 8, 9, 12-14, 17, 18, and 20 for the reasons set forth above with respect to
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the obviousness rejection of independent claims 1, 10, and 19 over Gold and
Chiba.

DECISION
The Examiner’s decision rejecting claims 1-5, 7-14, and 16-20 is
reversed.

REVERSED
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