Appeal No. 2003-0779
Application 09/286,413
invention as a whole indicates that data is recorded in both the
defective areas of the user-data area of the disk as well as the
replacement area of the disk. The examiner’s position that data
cannot be recorded in the defective areas is simply wrong. The
specification makes it clear that defective areas of the disk may
be used when reading audio and video data because the defects are
not noticeable. Thus, it is clear that the invention uses the
defective areas for reading audio and video data, but uses
replacement areas for reading computer data. The disclosure of a
continuous user-data area on the disk supports the recitations in
the claims that data in the replacement area of the disk is also
recorded in the defective areas of the user-data area of the
disk. Therefore, we find that the specification as originally
filed supports the invention that is now being claimed.
We now consider the rejection of claims 8-11 under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007