Ex Parte Deeman et al

Patent Trial and Appeal Board

Jan 22, 2013

11132198 (P.T.A.B. Jan. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NEIL DEEMAN, DAVID S. KUO, CHRISTOPHER
J. FORMATO, SUNDEEP CHAUHAN, and LAWRENCE M.
BRYANT
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Appeal 2010-008724
Application 11/132,198
Technology Center 2600
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Before ELENI MANTIS MERCADER, ANDREW CALDWELL, and
STANLEY M. WEINBERG, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008724
Application 11/132,198

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection
of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF CASE
Appellants describe the present invention as an apparatus for and method
of writing patterns on a disk recording medium by multiple radial tracks
during a single rotation of the disk by deflection and modulation of a
recording beam. Instead of employing multiple exposure passes, with each
pass being offset from the other by a certain radial distance, the apparatus
performs the write of the pattern in a single pass. During this single pass,
controlled by a single rotation of the turntable on which the disk recording
medium is located, the electron beam is deflected in a radial direction by a
required amount and modulated in synchronization with the radial
deflection. This synchronization of the beam modulation with the beam
deflection allows the multiple tracks to be written or exposed in a single
pass. Abstract; Spec. ¶ 12.
Independent claim 1 is representative and shown below with key disputed
limitations italicized:
1. A method of writing patterns on a disk recording medium, comprising
the steps:

(a) rotating the disk recording medium a single rotation only;
(b) radially deflecting a recording beam across a set of multiple tracks
during the single rotation of the disk recording medium; and
(c) modulating the recording beam during the single rotation of the
disk recording medium and the radial deflection of the recording
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beam, to thereby form a set of multiple track exposure patterns on
the disk recording medium during the single rotation.

THE REJECTIONS
Claims 1-6 and 14-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Formato (US Patent 2004/0001415 A1; published
Jan. 1, 2004) in view of Masuhara1 (JP 11-283283; published Oct. 15, 1999).
(Machine translation relied upon). Ans. 3-6. 2
Claims 7-13, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Formato, Masuhara, and Usa (US 2004/0080871 A1; published
Apr. 29, 2004). Ans. 6-7.

THE OBVIOUSNESS REJECTION – FORMATO AND MASUHARA
Appellants do not argue independent claim 14 separately from
independent claim 1. App. Br. 14; Reply Br. 9. Nor do Appellants
separately argue any of the dependent claims rejected under 35 U.S.C.
§ 102. App. Br. 13-14; Reply Br. 9. We will therefore treat claims 1-6 and
14-17 as a single claim grouping and select claim 1 as representative of this
group. See 37 C.F.R. § 41.37(c)(1)(vii).

1 The Answer relies upon a machine translation of Masuhara. Ans. 3.
Because Appellants do not object to the Examiner’s reliance upon the
machine translation, this decision also relies upon the machine translation.

2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed December 22, 2009; the
Examiner’s Answer (Ans.) mailed February 5, 2010; and the Reply Brief
(Reply Br.) filed April 5, 2010.

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Application 11/132,198

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The Examiner concludes that the combination of Formato and
Masuhara renders claim 1 obvious. Ans. 3-4. The Examiner relies upon
Formato for generally teaching the step of radially deflecting a recording
beam during the single rotation of the disk recording medium. Id. The
Examiner recognizes, however, that Formato does not specifically teach
radially deflecting the recording beam across multiple tracks to thereby form
a set of multiple track exposure patterns on the disk recording medium
during the single rotation. Id. The Examiner relies upon Masuhara to teach
forming multiple track exposure simultaneously by radially deflecting the
recording beam. Ans. 4.
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness. App. Br. 9. In support, Appellants contend:
(1) When Formato and Masuhara are considered in their entirety, the
references teach away from combining them. App. Br. 13.
(2) Since the proposed modification to or combination of Formato as
suggested by Masuhara would render the modified Formato
unsatisfactory for its intended purpose and would change Formato’s
principle of operation, there is no suggestion or motivation to make the
modification to Formato as proposed by the Examiner. App. Br. 13.
(3) The proposed modification of Formato in view of Masuhara would result
in being an inoperable condition. Reply Br. 5-7.
(4) Modifying the deflection technique of Formato with the deflection
technique of Masuhara is not trivial to one of ordinary skill in the art of
servo pattern exposure. Reply Br. 8.

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ANALYSIS
Appellants’ Contention (1)
Appellants contend that when Formato and Masuhara are considered
in their entirety, the references teach away from the Examiner’s
combination. App. Br. 13. In the Appeal Brief, Appellants discuss Formato
paragraphs 0010 through 0012, which describe the appropriate beam
deflection to convert the pattern produced on the disk into a circle or series
of concentric circles. App. Br. 11-12. Appellants then discuss Masuhara
paragraph 0090 and Figures 8 and 10, which describe the deflection of a
beam to form multiple spiral tracks on a disk. Id. at 12. Appellants assert
that Formato and Masuhara are directed to opposing subject matter. Id. at
12.
While we agree with Appellants that Formato and Masuhara describe
different subject matter, we are not persuaded that the cited portions of
Formato and Masuhara establish that the references teach away from
combining them. Appellants’ discussion of the references amount only to an
assertion that the references have differences. Asserting differences is not
sufficient to establish that the references teach away from combining them.
See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992) (It is not enough
for Appellants to show that there are differences between the two
references). In order for a reference to teach away, the reference must
criticize, discredit or otherwise discourage the solution claimed. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Examiner concludes that
the references do not teach away from combining them because Masuhara
teaches oscillating the exact sort of beam that Formato deflects, spiral and
circular patterns are both servo patterns on a disk, and a skilled person
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would be capable of applying a technique used in one kind of pattern to the
other. Ans. 8-9. Appellants do not respond to the Examiner’s findings and
conclusions. We are therefore not persuaded that the references teach away
from combining them because Appellants do not persuasively show that the
portions of Formato and Masuhara they rely upon criticize, discredit or
otherwise discourage the solution claimed, we are not persuaded that the
references teach away.

Appellants’ Contention (2)
Appellants contend that since the proposed modification to or
combination of Formato as suggested by Masuhara would render the
modified Formato unsatisfactory for its intended purpose and would change
Formato’s principle of operation, there is no suggestion or motivation to
make the modification as proposed by the Examiner. App. Br. 13.
Appellants, however, do not explain why Formato would be rendered
unsatisfactory for its intended purpose nor provide any evidence in support
of their contention. See Id. We are therefore not persuaded that the
proposed modification of Formato would render Formato unsatisfactory for
its intended purpose.

Appellants’ Contention (3)
In the Reply Brief, Appellants argue that proposed modification of
Formato in view of Masuhara would result in an inoperable condition.
Reply Br. 5-7. There is no reason why this new contention could not have
been raised earlier and is therefore waived as untimely. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
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brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”). By raising this argument for the first time in the Reply Brief when it
could have been raised earlier, we are left without a response by the
Examiner.

Appellants’ Contention (4)
In the Reply Brief, Appellants raise for the first time the contention
that modifying the deflection technique of Formato with the deflection
technique of Masuhara is not trivial to one of ordinary skill in the art of
servo pattern exposure. Reply Br. 8. Appellants explain that the deflection
technique of Formato is significantly different with respect to deflection
timing and to detection amplitude in comparison to the deflection technique
of Masuhara. Id. Appellants also state that there is no cited reference that
teaches, motivates, or suggests that the modification of the deflection
technique of Formato with the deflection technique of Masuhara is trivial.
Id. There is no reason why this new contention could not have been raised
earlier and is therefore waived as untimely. See Ex parte Borden,
93 USPQ2d at 1474.

THE OBVIOUSNESS REJECTION – FORMATO, MASUHARA, AND USA
The Examiner rejects claims 7-13, 18, and 19 under 35 U.S.C.
§ 103(a) as being obvious over Formato, Masuhara, and Usa. Ans. 6-7.
Appellants argue that a prima facie case of obviousness has not been
established because the combination of Formato and Masuhara is improper
for the reasons given with respect to claim 1. App. Br. 15-16; Reply Br. 11-
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12. Appellants then merely state that Usa does not cure the deficiencies of
Formato and Masuhara and do not provide any specific arguments with
respect to Usa. App. Br. 15-16; Reply Br. 11-12. Since we sustain the
obviousness rejection of representative claim 1, we also sustain the
obviousness rejection of claims 7-13, 18, and 19 for the reasons given above.

CONCLUSION
We find Appellants’ arguments unavailing regarding the
combinability of the Formato and Masuhara references for the reasons given
above. Accordingly, on this record, Appellants’ arguments have not
persuaded us that the Examiner erred by improperly combining the cited
references under § 103. We therefore sustain the Examiner’s rejection of
claims 1-6 and 14-17 under 35 U.S.C. § 103(a) as being unpatentable over
Formato and Masuhara. We also sustain the Examiner’s rejection of claims
7-13, 18, and 19 under 35 U.S.C. § 103(a) as being unpatentable over
Formato, Masuhara, and Usa.

DECISION
The Examiner’s decision rejecting claims 1-6 and 14-17 under
35 U.S.C. § 103(a) as being unpatentable over Formato and Masuhara is
affirmed.
The Examiner’s decision rejecting claims 7-13, 18, and 19 under
35 U.S.C. § 103(a) as being unpatentable over Formato, Masuhara, and Usa
is affirmed.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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