Ex Parte Lee et al

Patent Trial and Appeal BoardDec 21, 2012

10645868 (P.T.A.B. Dec. 21, 2012)

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. 10/645,868 08/22/2003 Jong-hoon Lee 1293.1857 8642 21171 7590 12/24/2012 STAAS & HALSEY LLP SUITE 700 1201 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER LAMB, CHRISTOPHER RAY ART UNIT PAPER NUMBER 2695 MAIL DATE DELIVERY MODE 12/24/2012 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 JONG-HOON LEE and KI-BONG YUN ____________ Appeal 2010-006393 Application 10/645,868 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and TRENTON A. WARD, Administrative Patent Judges. WARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non- final rejection of claims 1-8, 10-13, 15, 16, 18, and 19. Claims 9, 14, and 17 have been cancelled. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention relates to improved methods for controlling recording operations when recording to an optical disc having a defect. See Appeal 2010-006393 Application 10/645,868 2 Spec. ¶0002, 0006. Claim 1 is illustrative with certain disputed limitations italicized: 1. A method of controlling a recording operation of an optical disc recording apparatus which records data to a recordable optical disc having a defect, the method comprising: based on a length of the defect, classifying the defect into a first category indicating that the data is normally recordable and a second category indicating that the data is not normally reproducible even though the data is normally recordable; detecting the defect while recording the data to the recordable optical disc; if the defect is detected, continuing recording of the data in the recordable disc while controlling a servo unit to hold a servo tracking by using a previous servo control value which is used before the defect occurs; determining the length of the defect and a type of the defect based on the length of the defect; and as a result of the determining, if the defect corresponds to the first category, assuming that the data is normally recorded in a defect region and continuing recording of the data, or if the defect corresponds to the second category, further recording of the data recorded in the defect region in another region without a read-after-write operation, the classifying comprising comparing the length of the defect with first and second times determined according to a recording speed of the optical disc. THE REJECTIONS The Examiner rejected claims 1-8, 10-13, 15, 16, 18, and 19 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Takasago (US 4,730,290; issued Mar. 8, 1988), Kamiyama (US 6,341,113 B1; issued Jan. 22, 2002), Nakane (US 2002/0031069 A1; issued Mar. 14, 2002), and Kishimoto (US 6,714,493 B1; issued Mar. 30, 2004). Ans. 3-9.1 1 Throughout this opinion, we refer to (1) the Final Office Action filed Oct. 30, 2008, (2) the Appeal Brief (“App. Br.”) filed September 30, 2009, (3) the Examiner’s Answer (“Ans.”) mailed Nov. 24, 2009, and (4) the Reply Brief (“Reply Br.”) filed Jan. 25, 2010. Appeal 2010-006393 Application 10/645,868 3 THE OBVIOUSNESS REJECTION CLAIMS 1-4, 8, 10-11, 16, 18, AND 19 The Examiner finds that Takasago discloses every recited feature of claim 1 except “Takasago does not disclose: (A) ‘If the defect is detected, continuing recording of the data in the recordable disc while controlling a servo unit to hold a servo tracking by using a previous servo control value which is used before the defect occurs.’ (B) conducting the further recording ‘without a read- after-write operation.’ (C) wherein the first and second times are ‘determined according to a recording speed of the optical disc." Ans. 4 (quoting claim 1). The Examiner finds that the combination of Takasago with Kamiyama teaches the claim limitations from (A), the combination of Takasago with Nakane teaches the claim limitations from (B), and that combination of Takasago with Kamiyama, Nakane, and Kishimoto teaches the claim limitations from (C). Ans. 4-6. Appellants argue that the Examiner’s rejection is improper for three reasons. First, Appellants argue that “[w]hile Kishimoto may teach different speeds,” Kishimoto “does not teach comparing according to a recording speed of a disc.” App. Br. 19. Second, Appellants argue that claim 1 requires determining a type of defect based on the length of the defect and, in contrast, Takasago teaches that a defect is classified according to the duration of the off-track signal. App. Br. 19. Third, Appellants argue that the combination of references is not proper because Kishimoto teaches variable speeds, which is not required by claim 1. App. Br. 19-20. Appeal 2010-006393 Application 10/645,868 4 ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that the combination of the cited prior art teaches classification comprising “comparing the length of the defect with first and second times determined according to a recording speed of the optical disc”? ANALYSIS Appellants make three arguments as to why claim 1 is not made obvious in view of the combination of references cited by the Examiner. We address Appellants’ arguments seriatim. First, Appellants argue that “[a]lthough Kishimoto does teach a plurality of different speeds (i.e. 48x, 40x, etc.), this reference does not teach comparing according to a recording speed of a disc.” App. Br. 18-19. Specifically, Appellants argue that while Kishimoto may teach different speeds, the Office Action does not allege that Kishimoto teaches how to determine length and times according to the speed that is being used. App. Br. 19. Appellants statements are accurate, as the Office Action does not allege that Kishimoto teaches how to determine length and times according to the current speed; rather, the Examiner finds that Kishimoto “discloses that an optical disc apparatus may have plurality of different speeds.” Ans. 6 (citing Kishimoto, col. 11, ll. 55-65). Furthermore, the Examiner finds that it would have been obvious to a person of ordinary skill in the art to combine the teachings of operating a disc recording apparatus at different speeds from Kishimoto with the teachings in Takasago, Kamiyama, and Nakane. The Examiner finds that Takasago “discloses that the times [T1 and T2] may be different depending on the different characteristics of the optical disc apparatus.” Ans. 10-11. Appeal 2010-006393 Application 10/645,868 5 Accordingly, the Examiner finds that a person of skill in the art would “determine the first and second times [T1 and T2] according to a recording speed of the disc.” Ans. 6 (i.e., “[i]f the apparatus is recording at x2 speed, the same size defect will produce a signal half as long as if the apparatus is recording at x1 speed. Therefore the speed must be taken into account in order to accurately measure the size of the defect.”). The Examiner finds that because Takasago does not disclose specific times, the disclosure relies upon a person of ordinary skill in the art to select appropriate times for a given recording apparatus and speed. See Ans. 6-7, 11. We agree and, therefore, are not persuaded of error in the Examiner’s position that Takasago, Kamiyama, Nakane, and Kishimoto teach the required limitation of claim 1 regarding “comparing the length of the defect with first and second times determined according to a recording speed of the optical disc.” Second, Appellants argue that claim 1 requires determining a type of defect based on the length of the defect, yet Takasago classifies the defect based on the duration of the off-track signal. App. Br. 19. Contrary to Appellants arguments, the Examiner finds that “appellant's own invention measures the defect length the same way that Takasago does: by comparing the tracking error signal to a time.” Ans. 12; see also Spec. Figs. 7B, D; ¶¶ 0038-42, 0057-58. Specifically, the Examiner finds that Takasago teaches classifying a defect into a first category or second category based on the length of the defect. Ans. 3. Further the Examiner finds that Takasago teaches that the “the first category is when the duration is less than T1, the second when it is between T1 and T2.” Ans. 4 (citing Takasago col. 3, ll. 25- 60, (disclosing that “off-track is detected at two stages,” “[w]hen the duration time of an off-track signal exceeds a first time interval T1,” and Appeal 2010-006393 Application 10/645,868 6 when “the duration time of the off-track signal exceeds a second time interval T2”). Similarly, Appellants’ claim 1 requires “determining the length of the defect and a type of the defect based on the length of the defect.” Accordingly, we are not persuaded of error in the Examiner’s position that Takasago teaches determining the length of the defect. Third, Appellants argue that “the combination of references is not proper,” as the motivation to combine would not result in Appellants’ invention. App. Br. 19. The Examiner finds that the motivation to combine the cited references “would have been to record at a higher and/or more appropriate speed.” Ans. 6. More particularly, Appellants argue “the addition of the Kishimoto reference modifies Takasago/Kamiyama/Nakane from fixed speed to variable speed,” but the “purported motivation (higher and/or more appropriate speed) could have been achieved without the use of variable speeds.” App. Br. 20 (emphasis in original). We see no error in the Examiner’s combination because, contrary to Appellants’ characterization, the Examiner’s findings do not rely upon the ability of the optical recording apparatus to provide a variable speed. See Ans. 12-13. Specifically, the Examiner finds that Appellants’ claims “do not in any way recite that the speed is variable, just that the times are set based on the speed.” Ans. 13. “A device that operates at a single fixed speed still meets this language as long as the times are set based on the apparatus characteristics as Takasago teaches.” Ans. 13. Because the teachings of the combined references teach the claim 1 limitation of “comparing the length of the defect with first and second times determined according to a recording speed of the optical disc,” we are not persuaded that the Examiner erred in Appeal 2010-006393 Application 10/645,868 7 rejecting claim 1, and claims 2-4, 8, 10-11, 16, 18, and 19 not separately argued with particularity. CLAIMS 5-7 Although Appellants nominally argue claims 5-7 separately (App. Br. 20-21), Appellants rely on arguments similar to those for claim 1, which we find unpersuasive for the reasons indicated previously. CLAIMS 12, 13, AND 15 Although Appellants nominally argue claims 12, 13, and 15 separately (App. Br. 20-21), Appellants rely on arguments similar to those for claim 1, which we find unpersuasive for the reasons indicated previously. ORDER The Examiner’s decision rejecting claims 1-8, 10-13, 15, 16, 18, and 19 is affirmed. 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)(iv). AFFIRMED rwk