Ex Parte Biskeborn et al

Patent Trial and Appeal BoardJun 26, 2014

12141363 (P.T.A.B. Jun. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT GLENN BISKEBORN and WAYNE ISAMI IMAINO ____________________ Appeal 2011-012181 Application 12/141,363 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012181 Application 12/141,363 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-18, 20, and 21. Claim 19 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Examiner’s Rejections (1) The Examiner rejected claim 21 under 35 U.S.C. § 102(b) as anticipated by Duran (US 2007/0121240 A1, May 31, 2007). Ans. 5. (2) The Examiner rejected claims 1-3, 5, 7, 10, 11, 16-18, and 20 under 35 U.S.C. § 102(b) as anticipated by Nakao (US 2002/0186497 A1, Dec. 12, 2002). Ans. 5-6. (3) The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as unpatentable over Nakao and Ayres (US 5,600,505, Feb. 4, 1997). Ans. 7-8. (4) The Examiner rejected claims 6 and 12-14 under 35 U.S.C. § 103(a) as unpatentable over Nakao and Duran. Ans. 8-9. (5) The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Nakao, Duran, and Appellants’ Admitted Prior Art (“AAPA”). Ans. 3-4. (6) The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as unpatentable over Nakao and Goker (US 2008/0239559 A1, Oct. 2, 2008). Ans. 9. Principal Issues on Appeal (1) Did the Examiner err in rejecting claim 21 under 35 U.S.C. § 102(b) as anticipated by Duran because Duran does not disclose “the Appeal 2011-012181 Application 12/141,363 3 timing of the writing of each mark determines a spacing between consecutively-written marks” (emphasis added), as recited by claim 21? (2) Did the Examiner err in rejecting (i) claims 1-3, 5, 7, 10, 11, 16- 18, and 20 under 35 U.S.C. § 102(b) as anticipated by Nakao; (ii) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Nakao and Ayres; (iii) claims 6 and 12-14 under 35 U.S.C. § 103(a) as unpatentable over Nakao and Duran; (iv) claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Nakao, Duran, and AAPA; and (v) claim 15 under 35 U.S.C. § 103(a) as unpatentable over Nakao and Goker because Nakao does not disclose “monitoring a lateral position of a magnetic tape passing over a servo writing head during a servo track writing operation; and writing servo marks to the magnetic tape, a timing of the writing of each mark being based on the monitored position of the magnetic tape” (emphasis added), as recited in independent claim 1, and similarly recited in independent claims 17 and 20?1 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (Br. 10-17) and the Reply Brief (Reply Br. 2-14) that the Examiner has erred, and the Examiner’s response to Appellants’ arguments (Ans. 9-12). We concur with Appellants’ conclusion that the Examiner erred in finding that Duran teaches or suggests “the timing of the writing of each mark determines a spacing between consecutively- 1 We recognize that Appellants’ arguments present additional issues. Nonetheless, we are persuaded of error with respect to the issues discussed in our analysis herein, and as such we do not reach the additional issues as the issues discussed herein are dispositive of the appeal. Appeal 2011-012181 Application 12/141,363 4 written marks.” We also concur with Appellants’ conclusion the Examiner erred in finding that Nakao or the combination of Nakao with various other prior art references teaches or suggests “monitoring a lateral position of a magnetic tape passing over a servo writing head during a servo track writing operation; and writing servo marks to the magnetic tape, a timing of the writing of each mark being based on the monitored position of the magnetic tape.” With regard to the first issue, we are not persuaded by the Examiner’s assertion (Ans. 5 and 10-11 (citing Duran ¶¶ [0029] and [0047]) that Duran teaches or suggests the timing of the writing of each mark determines a spacing between consecutively-written marks. Duran instead discloses adjusting the writing of the mid-frame mark relative to the servo frame and the start-frame mark, but Duran does not disclose that the start-frame mark is adjusted relative to the mid-frame mark. Therefore, the timing of the writing of each mark does not determine a spacing between consecutively-written marks as recited in claim 21. Regarding the second issue, we are not persuaded by the Examiner’s assertion (Ans. 5-6 and 10-11 (citing Nakao ¶ [0067]) that Nakao teaches or suggests monitoring a lateral position of a magnetic tape and a timing of the writing of each mark being based on the monitored position of the magnetic tape, as recited in independent claims 1, 17, and 20. Nakao discloses (¶ [0067]) a method for adjusting the head unit of a servo in a crosswise direction in response to the results of an edge detector. Nakao does not disclose adjusting the timing of marks. Appeal 2011-012181 Application 12/141,363 5 Accordingly, we will not sustain the Examiner’s (i) anticipation rejections of claims 1-3, 5, 7, 10, 11, 16-18, 20, and 21; or (ii) obviousness rejection of claims 4, 6, 8, 9, and 12-15. CONCLUSIONS The Examiner erred in rejecting claims 1-3, 5, 7, 10, 11, 16-18, 20, and 21 under § 102.2 (1) Appellants have established that the Examiner erred in rejecting claim 21 under 35 U.S.C. § 102(b) over Duran because Duran does not disclose the timing of the writing of each mark determines a spacing between consecutively-written marks, as recited in the claim. (2) Appellants have further established that the Examiner erred in rejecting claims 1-3, 5, 7, 10, 11, 16-18, and 20 under 35 U.S.C. § 102(b) over Nakao because Nakao does not disclose a lateral position of a magnetic tape and a timing of the writing of each mark being based on the monitored position of the magnetic tape, as recited in independent claims 1, 17, and 20. To the extent the Examiner’s rejection of claims 4, 6, 8, 9, and 12-15 is based upon the erroneous rejection of claims 1, 17, and 20 as anticipated by Nakao, and claims 4, 6, 8, 9, and 12-15 contain similar subject matter as 2 Our finding is directed to a determination of whether Duran anticipates the invention set forth in claim 21or whether Nakao anticipates the invention set forth in claims 1-3, 5, 7, 10, 11, 16-18, and 20. We make no finding regarding whether or not it would have been obvious to monitor a lateral position of a magnetic tape and a timing of the writing of each mark being based on the monitored position of the magnetic tape such as in Nakao. We leave such a conclusion to the Examiner’s consideration during subsequent prosecution. Appeal 2011-012181 Application 12/141,363 6 claims 1, 17, and 20 from which they ultimately depend, we find that the Examiner erred in the rejection of claims 4, 6, 8, 9, and 12-15 for the same reasons set forth above in our analysis of claims 1, 17, and 20. DECISION The Examiner’s rejections of claims 1-18, 20, and 21 are reversed. REVERSED msc