Ex Parte Haapala et al

Patent Trial and Appeal BoardMar 17, 2017

14457733 (P.T.A.B. Mar. 17, 2017)

United States Patent and Trademark Office 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. 14/457,733 08/12/2014 Kenneth A. Haapala STL 070002 2592 64776 7590 HolzerlPLaw, P.C. 216 16th Street Suite 1350 Denver, CO 80202 EXAMINER WONG, KIN C ART UNIT PAPER NUMBER 2688 NOTIFICATION DATE DELIVERY MODE 03/21/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket @ holzeriplaw .com hiplaw@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH A. HAAPALA and JOSHUA CHRISTENSEN Appeal 2016-007391 Application 14/457,733 Technology Center 2600 Before BRUCE R. WINSOR, IRVIN E. BRANCH, and AMBER L. HAGY, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2016-007391 Application 14/457,733 CLAIMED SUBJECT MATTER The claims are directed to a storage media having servo patterns. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system comprising: a storage media with a plurality of servo patterns, each of the servo patterns characterized by a servo pattern parameter based on a separation between read sensors of a transducer head when the transducer head reads the servo pattern. REFERENCE AND REJECTION Claims 1—20 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Albrecht (US 7,502,193 B2; Mar. 10 2009). Final Act. 2-5. ANALYSIS Claim 1 Appellants argue the Examiner erred in rejecting claim 1 because Albrecht does not describe “a storage media with a plurality of servo patterns, each of the servo patterns characterized by a servo pattern parameter based on a separation between read sensors of a transducer head when the transducer head reads the servo pattern” as recited in claim 1. We note neither the Examiner {see, generally, Final Act. 2—3; Ans. 2— 6) nor Appellants {see, generally, App. Br. 6—9; Reply Br. 2—7) explicitly construe claim 1. Based on Appellants’ Specification, we construe “servo pattern” to mean embedded information in servo sectors of rotating storage media used for track seeking and track following. See Spec. 114. We construe “servo pattern parameter” to mean a characteristic of a servo pattern. See Spec. 118. Construing what is meant by the servo pattern 2 Appeal 2016-007391 Application 14/457,733 parameter being “based on a separation between read sensors of a transducer head when the transducer head reads the servo pattern” in the context of the system of claim 1 requires a more detailed review of Appellants’ Specification. See, e.g., Spec. 18—20. From our reading of Appellants’ Specification, we understand claim 1 to mean that the servo patterns on storage media are selected and placed on the media such that a parameter of the servo pattern is “based on a separation between read sensors of a transducer head when the transducer head reads the servo pattern.” See, e.g., 120 (improved format efficiency is “achieved by selecting servo pattern parameters for each servo sector (e.g., the servo sectors 112) based on a corresponding cross-track separation between read sensors of the transducer head.”). Notably, however, claim 1 does not positively recite the read sensors nor any particular servo pattern parameter. Rather, it recites a reason for selecting a pattern, which is, at best, a step in the process of manufacturing the system. In other words, the claim is a product-by-process claim. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted). Consequently, the claim reads on any arrangement of a plurality of servo patterns on storage media because, at least in claim 1, the claimed system cannot be distinguished over a prior art system based on the reason the servo pattern parameter was selected in the prior art system. “Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence 3 Appeal 2016-007391 Application 14/457,733 establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (citations omitted). Based on our construction of claim 1, we see no error in the Examiner’s finding that Albrecht describes all the elements of claim 1. Ans. 2 (citing Albrecht 13:1—3 (“Sector servo systems make use of periodic servo bursts on every track that are factory formatted.”)). Appellants’ arguments (App. Br. 6—9; 2—7) do not persuasively rebut this finding. Claim 10 Claim 10 is an independent claim, which Appellants argue on the same basis as claim 1. App. Br. 12—13. We reach a different result with respect to claim 10, however, because claim 10 recites “instructions for executing on a computer system a computer process” that includes “selecting at least one servo pattern parameter for a servo pattern of the storage media based on a separation between read sensors of a transducer head when the transducer head reads the servo pattern” (emphasis added). Here, selecting the servo pattern parameter is positively recited as being based on the separation between read sensors. Although the claim is silent with respect to what is done with the selected servo pattern parameter, we are persuaded that Albrecht does not describe a computer instruction for selecting the servo pattern parameter in the manner recited in claim 10. Accordingly, on this record, we do not sustain the Examiner’s rejection of claim 10. Claim 17 Appellants also argue claim 17 on the same basis as claim 1. App. Br. 12—13. We are unpersuaded of error in the Examiner’s rejection of claim 17. 4 Appeal 2016-007391 Application 14/457,733 Claim 17 recites computer-executable instructions for “reading a servo pattern during a media access operation” and “generating a position error signal based on the servo pattern.” Like claim 1, claim 17 does not recite any particular servo pattern parameter, but recites that the servo pattern is “characterized by a servo pattern parameter selected based on a separation between read sensors of a transducer head when the transducer head reads the servo pattern,” i.e., recites that the media to be accesses is a product manufactured according a particular process step. Unlike claim 10, claim 17 does not recite the actual selection of the servo pattern parameter. Accordingly, as with claim 1, claim 17 ’s instruction for reading a servo pattern is indistinguishable from a prior art instruction for reading servo patterns generally. Albrecht describes claim 17. See, e.g., Albrecht 13:10-12 (“Dedicated servo systems employ one disk surface and one head solely for providing position error signals.”). Claim 3 Claim 3 depends from claim 1 and recites a plurality of radial zones, at least one of which is “associated with” a different servo pattern parameter value than that of another radial zone. We are persuaded of error in the Examiner’s rejection of claim 3 because we do not find Albrecht to describe varying servo pattern parameters. We note the Examiner’s citation to Albrecht’s disclosure of varying read head configurations (Albrecht 9:59— 10:14, 15:55—16:7; Ans. 6), but we do not find therein a description of different radial zones having different servo pattern parameters. Whether different servo pattern parameters would have been obvious in view of Albrecht’s disclosure is not before us. Accordingly, we do not sustain the rejection of claim 3 on this record. 5 Appeal 2016-007391 Application 14/457,733 Claim 19 Claim 19 depends from claim 17 and recites subject matter similar to the subject matter of claim 3. Appellants do not separately argue the rejection of claim 19, however, instead relying on arguments presented for claim 17. Because we affirm the rejection of claim 17 and because Appellants do not present separate arguments against claim 19, the issue is technically waived and we could affirm the rejection of claim 19. 37 C.F.R. § 41.37(iv) (2013)(“[A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.”). We exercise our discretion to raise this issue sua sponte, however, and treat Appellants’ failure to group claim 19 with claim 3 as an oversight. Doing otherwise would lead to an outcome regarding claim 19 that is not based on the evidence of record. We do not sustain the Examiner’s rejection of claim 19 for the reasons discussed above with respect to claim 3. Claims 4—6 Claims 4—6 depend from claim 1 and recite that the servo pattern parameter is, respectively, servo pattern density, servo tracks per inch (STPI), and servo pattern length. We are unpersuaded of error in the Examiner’s rejection of claims 4— 6. How a servo pattern is characterized in the claims does not distinguish over how prior art servo patterns are characterized. The servo patterns described in Albrecht have density, STPI, and length. 6 Appeal 2016-007391 Application 14/457,733 The Remaining Claims Claims 11—16 depend from claim 10, which is improperly rejected. Accordingly we do not sustain the rejection of claims 11—16. Because Appellants do not separately argue claims 2, 7—9, 18, and 20, we sustain the Examiner’s rejection of these claims.1 DECISION The Examiner’s rejection of claims 1, 2, 4—9, 17, 18, and 20 is affirmed. The Examiner’s rejection of claims 3, 10—16, and 19 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 1 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). “Similarly, it is not the function of this Board to examine claims in greater detail than argued by an appellant, looking for distinctions over the prior art.” Ex Parte Shen, No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI Sep. 4, 2008). 7