Ex Parte Evans

Patent Trial and Appeal Board

Sep 17, 2012

11238228 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NIGEL RONALD EVANS
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Appeal 2010-004464
Application 11/238,228
Technology Center 2600
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JEAN R. HOMERE, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 3-7, 10-16, 19, 24, and 25.
(Ans. 3-4.) The Appellant appeals therefrom under 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-004464
Application 11/238,228
2
INVENTION
The following claim illustrates the invention on appeal:
1. Tape drive apparatus comprising:
data transfer apparatus for transferring data between a
media device and the tape drive apparatus, the media device
comprising a tape medium,
a reader for reading a pattern from the media device,
decoding the pattern and using the decoded pattern for defining
a tape medium identifier,
data processing apparatus coupled to the data transfer
apparatus, the data processing apparatus being operable to
process data according to a format such that the data transferred
to the tape medium includes the tape medium identifier,
wherein the tape medium identifier globally identifies the tape
medium.

REJECTIONS
Claims 1, 3-7, 10-16, 24, and 25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by U.S. Patent No. 6,611,394 Bl ("Kato").
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kato in view of Official Notice as evidenced by U.S.
Patent No. 6,764,037 B2 ("Hancock").

DISCUSSION
Based on the Appellant's arguments, we will decide the appeal of
claims 1, 3-7, 10-16, 24, and 25 on the basis of representative claims 1, 11,
and 24. See 37 C.F.R. § 41.37(c)(1)(vii). We will decide the appeal of
claim 19 individually.

Appeal 2010-004464
Application 11/238,228
3
REPRESENTATIVE CLAIMS 1, 11, AND 24
The issue before us follows. Did the Examiner err in finding that
Kato teaches a tape medium identifier that globally identifies a tape medium,
as required by representative claims 1, 11, and 24?
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
Here, the Examiner finds that "Kato teaches . . . data transferred to the
medium includes a tape identifier (column 14, lines 12-15 and column 17,
lines 7-10, column 20, lines 4-10 along with setting of the drive to achieve
the desired recorded format)." (Ans. 6.) The reference supports this finding
by disclosing that "[t]he 'MIC [i.e., memory in cassette] type' [data] indicates
the type of a MIC actually provided in the tape cassette and a data format the
tape cassette should support." (Kato, col. 16, ll. 22-24.) "The 'MIC type'
area is of one byte . . . . In this area, the seventh to fourth bits indicate a data
format the tape cassette in consideration can support, and third to 0-th bits
indicate a type of the MIC provided in the tape cassette." (Kato, col. 17, ll.
7-10.) We further agree with the Examiner's finding that "Kato et al. as
A]ppellant has pointed out teaches formats such as 8-mm video, AIT-1,
AIT-2, cleaning tape format in col. 24, lines 3-49. These types of formats
contrary to A]ppellant's arguments are formats 'globally' known . . . ."
(Ans. 7-8.) More specifically, we find that these formats are globally known
because they are known throughout Kato's system.

Appeal 2010-004464
Application 11/238,228
4
The Appellant argues that "the application describes defining an
identifier for a tape medium that uniquely and unequivocally identifies a
tape medium. See page 15, lines 5-11." (App. Br. 10.)
"During prosecution . . . the PTO gives claims their 'broadest
reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
"Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Here, we agree with the Examiner that "an identifier that 'uniquely
and unequivocally identifies a tape medium'" (Ans. 7) is not recited by the
representative claims. Furthermore, the Appellant's Specification (p. 15)
discloses that "[t]he tape medium identifier can be used to unequivocally
identify a tape medium within a set of tape media and/or to globally identify
the tape medium." (Emphasis added.) The language "can be used,"
however, does not amount to a definition.
Therefore, we conclude that the Examiner did not err in finding that
Kato teaches a tape medium identifier that globally identifies a tape medium,
as required by representative claims 1, 11, and 24.

CLAIM 19
The issue before us follows. Did the Examiner err in taking Official
Notice that it was well known in the art to use a computer readable medium
to store instructions related to tape drive operations, as required by claim 19?
Appeal 2010-004464
Application 11/238,228
5
The Appellant argues that "the findings of Official Notice have not
been shown to be capable of instant and unquestionable demonstration as
being well-known." (App. Br. 15.)
The Examiner responded by citing "Hancock et al. . . . to teach that it
was well known to have a computer readable medium to store computer
programs that are used for tape drive operations." (Ans. 9.)
The Appellant does not contest that Hancock evidences that it was
well known to use a computer readable medium to store computer programs
that are used for tape drive operations.
Therefore, we conclude that the Examiner did not err in taking
Official Notice that it was well known in the art to use a computer readable
medium to store instructions related to tape drive operations, as required by
claim 19.

DECISION
We affirm the rejection of claims 1, 11, and 24 and those of claims 3-
7, 10, 12-16, and 25, which fall therewith. We also affirm the rejection of
claim 19.
No time for taking any action connected 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).

AFFIRMED

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