Ex Parte Trombley

Patent Trial and Appeal Board

Apr 29, 2013

10854302 (P.T.A.B. Apr. 29, 2013)

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.
10/854,302 05/26/2004 Michael G. Trombley STL11964 6864
27365 7590 04/29/2013
SEAGATE TECHNOLOGY LLC
C/O WESTMAN, CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3244
EXAMINER
RICHER, AARON M
ART UNIT PAPER NUMBER
2677
MAIL DATE DELIVERY MODE
04/29/2013 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 MICHAEL G. TROMBLEY
____________

Appeal 2010-011975
Application 10/854,302
Technology Center 2600
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and CATHERINE SHIANG,
Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7, 11-15, 19-21, 23 and 27-36. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The present invention relates generally to transformation of data for
visual display, including transformation of polar magnetic storage media
anomaly data for cartesian display. See generally Spec. 1. Claim 1 is
illustrative:
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1. A visual display system, comprising:
a visual display unit that comprises an array of discrete pixels having
discrete pixel centers arranged in a regular grid;
a buffer that receives and stores first coordinates of locations of
anomalies on a surface, the first coordinates being randomly scattered
off-center with respect to the discrete pixel centers, the first
coordinates of locations of anomalies having a first pattern that
comprises deviations from exact roundness that are so small as to be
particularly difficult for a human eye to recognize on the visual
display unit;
a processor that receives the first coordinates from the buffer and that
transforms the first coordinates to second coordinates such that
deviations from round in the first coordinates are transformed to
deviations from straight lines in the second coordinates wherein a
second pattern in the second coordinates is shaped differently from the
first pattern such that the second pattern is sufficiently recognizable
by the human eye on the visual display that a cause of the anomalies
can be inferred from the second pattern; and
the visual display unit coupled to the processor and generating a
visual display of the second coordinates in the array of discrete pixels.

THE REJECTIONS
1. The Examiner rejected claims 1-7, 11-15, 19-21, 23 and 27-36 under 35
U.S.C. § 112, ¶ 2, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention. See Ans. 3-4.1
2. The Examiner rejected claims 1-7, 11-15 and 19-21 under 35 U.S.C.
§ 103 as being unpatentable over Chase (U.S. Patent No. 6,603,542 B1;

1 Throughout this opinion, we refer to (1) the Supplemental Appeal Brief
filed April 20, 2010 (“App. Br.”); (2) the Examiner’s Answer mailed July
20, 2010 (“Ans.”); and (3) the Reply Brief filed August 26, 2010 (“Reply
Br.”).
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issued Aug. 5, 2003), Fujikawa (U.S. Patent No. 7,095,367 B2; issued
Aug. 22, 2006; filed Apr. 24, 2002), and Bamber (U.S. Patent No.
5,538,004; issued July 23, 1996). See Ans. 4-7.
3. The Examiner rejected claims 23, 27 and 28 under 35 U.S.C. § 103 as
being unpatentable over Chase, Fujikawa, Bamber, and Lefave (U.S.
Patent No. 6,704,012 B1; issued Mar. 9, 2004; filed Apr. 27, 1999). See
Ans. 7-8.
4. The Examiner rejected claims 29-36 under 35 U.S.C. § 103 as being
unpatentable over Chase, Fujikawa, Bamber, and Onffroy (U.S. Patent
No. 5,615,335; issued Mar. 25, 1997). See Ans. 8-9.

THE INDEFINITENESS REJECTION
The Examiner finds that the claim limitation “difficult for a human
eye to recognize” is a relative term, and persons of ordinary skill in the art
would have different opinions on what constitutes “difficult” to recognize.
See Ans. 3-4. The Examiner concludes that because the Specification fails
to disclose any standard for measuring “difficult for a human eye to
recognize,” it is impossible to know the boundary of the claims. See id.
Similarly, the Examiner finds that because the Specification fails to
disclose any standard for measuring the claim limitation “sufficiently
recognizable by the human eye,” it is impossible to know the boundary of
the claims. See id.
Appellant argues that the contested claim limitations relate to human
perception, not vision. See App. Br. 12-13. Appellant further argues that
the claim limitations “difficult for a human eye to recognize” and
“sufficiently recognizable by the human eye on the visual display that a
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cause of the anomalies can be inferred” should be read together. See id. at
13. Appellant contends that when those limitations are read together in light
of the Specification and drawings, the claims are definite in defining an
improvement in inferring causes of anomalies. See id.

ISSUES
Under 35 U.S.C. § 112, has the Examiner erred by finding that
a. “difficult for a human eye to recognize” renders claim 1 indefinite
when the limitation is interpreted in light of the Specification?
b. “sufficiently recognizable by the human eye” renders claim 1
indefinite when the limitation is interpreted in light of the
Specification?

PRINCIPLES OF LAW
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
A claim is invalid for indefiniteness if one skilled in the art would not
understand the scope of the claim, when the claim is read in light of the
specification. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1348 (Fed. Cir. 2002).
Although “[a] claim term is not indefinite just because ‘it poses a
difficult issue of claim construction[,]’” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (citation omitted), “if a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
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U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Notably, when a word of degree such as “difficult” is used in a patent
claim, the patent must provide some objective standard for measuring that
degree. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350-55 (Fed. Cir. 2005). The scope of claim language cannot depend
solely on the unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See id. at 1350 (citations omitted).

ANALYSIS
On this record, we find no error in the Examiner’s indefiniteness
rejection of claims 1-7, 11-15, 19-21, 23 and 27-36 because the
Specification fails to provide any objective standard for the terms “difficult
for a human eye to recognize” and “sufficiently recognizable by the human
eye.” See Datamize, 417 F.3d at 1350-55.
The Examiner finds that “difficult for a human eye to recognize” is a
relative term. See Ans. 3-4. The Examiner further finds that the
Specification fails to provide any objective standard for measuring the
requisite degree, and one of ordinary skill in the art would not understand
the scope of the claim. See id.
We see no error in the Examiner’s position. As pointed out by the
Examiner, persons skilled in the art would have different opinions on what
constitutes “difficult” to recognize. See Ans. 3-4. For example, Appellant
states that for Figure 2, “it is difficult for an operator to recognize patterns of
small deviations from roundness in displays that are polar, even with the aid
of concentric reference lines 224.” Spec. 6:13-15. But the Examiner
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contends—and we agree—that the determination is subjective: some of the
deviations from exact roundness in Figure 2 would appear clearly to some
persons skilled in the art, but not to some other persons skilled in the art.
Appellant argues that the disputed claim limitation relates to human
perception instead of vision, and cites an exhibit from the book entitled
“Psychology.” See App. Br. 12-13. But Appellant does not explain how
that exhibit is relevant for providing any objective standard for the disputed
term here. Instead of providing any objective standard, that exhibit
discusses how subjective factors, such as expectations, can affect one’s
ability to judge shape. See Ans. 9-10. Accordingly, as pointed out by the
Examiner, the exhibit does not help to establish any objective standard for
determining what constitutes “difficult for a human eye to recognize.” See
id.
Appellant further argues that the claim limitations “difficult for a
human eye to recognize” and “sufficiently recognizable by the human eye on
the visual display that a cause of the anomalies can be inferred” should be
read together. See App. Br. 13. Appellant contends that when those
limitations are read together in light of the Specification and drawings, the
claims are definite in defining an improvement in inferring causes of
anomalies. See id. Appellant cites Figures 4 and 5 and the Specification at
page 9, lines 13-18, as support. See Reply Br. 2-3.
We disagree. Appellant’s interpretation does not offer any objective
standard for what constitutes “difficult for a human eye to recognize.” For
example, what if the deviations from exact roundness are clear, but the
transformed deviations from straight lines are even more clear? Under
Appellant’s interpretation, representative claim 1 covers that example
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because there is an improvement. And Appellant’s interpretation
eliminates—but does not offer any objective standard for—the claim
limitation “difficult for a human eye to recognize.”
Lastly, Appellant argues that other issued patents include a different
term “recognizable by the human eye,” but does not explain how such a
different term in other patents helps to establish any objective standard for
the disputed term in this claimed invention. See App. Br. 13. We agree with
the Examiner that the argument is unpersuasive because the issue is whether
this Specification provides any objective standard for the disputed term, not
whether some other issued patents include a different claim term. See
Ans. 11-13.
For similar reasons, we also sustain the Examiner’s finding that the
Specification fails to provide any objective standard for the claim limitation
“sufficiently recognizable by the human eye.”
Because all of the claims include the claim language “difficult for a
human eye to recognize” and “sufficiently recognizable by the human eye,”
we are not persuaded that the Examiner erred in rejecting claims 1-7, 11-15,
19-21, 23 and 27-36 under 35 U.S.C. § 112, ¶ 2.

THE OBVIOUSNESS REJECTIONS
For obviousness analysis under 35 U.S.C. § 103, the Examiner
excludes the claim limitations rejected under U.S.C. § 112, ¶ 2, because it is
impossible to ascertain the scope of such claim limitations. See Ans. 4.
The Examiner finds that the combination of Chase and Bamber
discloses every recited element of representative claim 1 except for
“deviations from round in the first coordinates are transformed to deviations
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from straight lines in the second coordinates.” See Ans. 5-6. The Examiner
then finds that Fujikawa discloses that claim limitation. See id.
Appellant argues that although Fujikawa discloses conversion, it fails
to disclose “shape changing transformation.” See App. Br. 14-15.

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred by finding that Chase,
Bamber and Fujikawa collectively would have taught or suggested
“deviations from round in the first coordinates are transformed to deviations
from straight lines in the second coordinates” as recited in claim 1?

ANALYSIS
Claims 1-7 and 11-14
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1.2 The Examiner finds that Chase and
Bamber collectively teach representative claim 1 except for “deviations from
round in the first coordinates are transformed to deviations from straight
lines in the second coordinates.” See Ans. 5-6.
The dispute is whether Fujikawa teaches “deviations from round in
the first coordinates are transformed to deviations from straight lines in the
second coordinates.” The Examiner finds that Fujikawa’s Figures 6 and 7
and the related text teach that claim limitation. See Ans. 5-6.

2 For obviousness analysis under 35 U.S.C. § 103, like the Examiner (Ans.
4), we also exclude the claim limitations rejected under U.S.C. § 112, ¶ 2,
because it is impossible to ascertain the boundary of such limitations.
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We see no error in the Examiner’s position. The Examiner finds that
Fujikawa’s Figure 6 shows a figure with “deviations from round in the first
coordinates” because for example, any sample points that are not on circles c
and d (“round”) are deviations from round. See Ans. 5, 13-14. The
Examiner correctly finds that the circles c and d of Figure 6 have become
straight lines c and d of Figure 7 and therefore, any deviations from round of
Figure 6 are transformed to deviations from straight lines c and d. See id.
Accordingly, we agree with the Examiner that Fujikawa’s Figures 6 and 7
and the related text disclose “deviations from round in the first coordinates
are transformed to deviations from straight lines in the second coordinates.”
See id.
Appellant fails to rebut the Examiner’s findings concerning Fujikawa.
Appellant first ignores Fujikawa’s Figure 7, and argues that Fujikawa’s
Figure 6 does not disclose the required “shape changing transformation.”
See App. Br. 14. After the Examiner points out Appellant’s omission,
Appellant contends that there is no “shape changing transformation” from
Fujikawa’s Figure 6 to Figure 7, but that argument is not commensurate with
the scope of the claim. See Reply Br. 3-4. If Appellant’s “shape changing
transformation” means “deviations from round in the first coordinates are
transformed to deviations from straight lines in the second coordinates,” then
as discussed above, Fujikawa discloses that claim element.
Appellant does not provide additional argument in support of claims
2-7 and 11-14.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1-7 and 11-14.3

Claims 15, 19-21 and 23
For similar reasons discussed above with respect to claim 1, we also
sustain the Examiner’s rejection of representative claim 15.
Appellant does not provide additional argument in support of claims
19-21 and 23.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15, 19-21 and 23.
Claim 27
For similar reasons discussed above with respect to claim 1, we also
sustain the Examiner’s rejection of claim 27.

Claim 28
For similar reasons discussed above with respect to claim 1, we also
sustain the Examiner’s rejection of claim 28.

Claims 29-32
For similar reasons discussed above with respect to claim 1, we also
sustain the Examiner’s rejection of representative claim 29.
Appellant does not provide any additional argument in support of
dependent claims 30-32.

3 We note in passing that claim 12 contains an apparent typographical error
by referring to “Claims 11[.]” A similar error appears in claim 20.
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We are therefore not persuaded that the Examiner erred in rejecting
claims 29-32.

Claims 33-36
For similar reasons discussed above with respect to claim 1, we also
sustain the Examiner’s rejection of representative claim 33.
Appellant does not provide any additional argument in support of
dependent claims 34-36.
We are therefore not persuaded that the Examiner erred in rejecting
claims 33-36.

CONCLUSION
The Examiner did not err in rejecting (1) claims 1-7, 11-15, 19-21, 23
and 27-36 under 35 U.S.C. § 112, ¶ 2; and (2) claims 1-7, 11-15, 19-21, 23
and 27-36 under 35 U.S.C. § 103.

ORDER
The Examiner’s decision rejecting claims 1-7, 11-15, 19-21, 23 and
27-36 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

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