Ex Parte Dennis et al

Patent Trial and Appeal Board

Oct 31, 2012

11078055 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CARL DENNIS and DAVID SMITH
____________________

Appeal 2010-006659
Application 11/078,055
Technology Center 2600
____________________

Before ERIC S. FRAHM, BRYAN F. MOORE, and JOHN G. NEW,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006659
Application 11/078,055
2

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 6, 8, 9, 11-13, 15, and 16, all the claims presently pending in the
application. Claims 1-5, 7, 10, and 14 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse both the § 112, first paragraph, enablement rejection of
claims 8 and 11, and the § 102(e) rejection of claims 6, 9, 12, and 13 as
being anticipated by Johnson. We affirm the § 112, first paragraph,
enablement rejection of claims 15 and 16. We also enter a new ground of
rejection under 35 U.S.C. § 103(a) over Appellants’ Admitted Prior Art
(hereinafter, “AAPA”) of Figure 1 and paragraphs [0002]-[0004] of the
Specification, as to claims 6, 9, and 12.
Appellants’ Disclosed Invention
Appellants disclose an optical computing pointing device (i.e., an
optical mouse) that is integrally formed, so that the base or footplate of the
mouse is a single monolithic unit with the optical assembly (e.g., the lens
and light guide of the optical mouse). See Fig. 2; Spec. ¶¶ [0002], [0007],
and [0014]).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 6, 8, 12, and 16, which are reproduced below with
emphases added:
6. An optical computer pointing device comprising;
a footplate; and
Appeal 2010-006659
Application 11/078,055
3

an optical assembly integrally formed with the footplate as a
monolithic unit, the optical assembly comprising a lens and a light guide.
8. The optical computer pointing device of Claim 6, wherein the
optical assembly and footplate are formed from a same material.
12. A method of making an optical computer pointing
device comprising;
integrally forming an optical assembly with a footplate as a
monolithic unit, the optical assembly comprising a lens and a light guide.
16. The method of Claim 9, wherein the monolithic unit is molded in
a single operation.
The Examiner’s Rejections
(1) The Examiner rejected claims 8, 11, 15, and 161 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement
based on the Examiner’s determination that:
(a) the optical assembly including the light guide and the lens
recited in claims 8, 11, and 15 are of different materials than the
recited footplate; thus the optical assembly and the footplate cannot be
of the same material and one of ordinary skill in the art would not be
enabled to make and/or use the invention (Ans. 3-4); and
(b) the Specification does not teach any specific type of
“operation” that is used to mold the monolithic unit together, and

1 Notably, claim 16 is a method claim that improperly depends from claim 9
(claim 9 recites an optical computer pointing device, whereas claim 12
recites a method). Claim 16 should depend from independent method claim
12, and we consider this inadvertent typographical or cut-and-paste error to
be harmless for purposes of this appeal. Should there be further prosecution
with regard to claim 16, the Examiner is recommended to consider and
further resolve the dependency of this claim.
Appeal 2010-006659
Application 11/078,055
4

there is no description of how the optical assembly and the footplate
are molded together in a single operation; therefore, the description of
the invention is not sufficient to enable one of ordinary skill in the art
to implement the method recited in claim 16 (Ans. 4).
(2) The Examiner rejected claims 6, 9, 12, and 13 under 35 U.S.C.
§ 102(e) as being anticipated by Johnson (US 7,233,319 B2) (Ans. 4-6).
Issues on Appeal
Based on Appellants’ arguments in the briefs, the following two
issues are presented on appeal:
Enablement Issue
(1) Did the Examiner err in rejecting claims 8, 11, 15, and 16 because
the Specification fails to enable one of ordinary skill in the art at the time of
Appellants’ invention to make and/or use the inventions recited in these
claims?
Anticipation Issue as to Johnson
(2) Did the Examiner err in rejecting claims 6, 9, 12, and 13 under 35
U.S.C. § 102(e) because Johnson fails to disclose an optical computer
pointing device having an optical assembly integrally formed with a
footplate as a “monolithic unit,” as required by independent claims 6 and 9
and as similarly recited in independent method claim 12?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 4-11) and the Reply Brief (Reply
Br. 2-4) that the Examiner has erred.
We agree with Appellants’ conclusions with respect to both (i) the
Appeal 2010-006659
Application 11/078,055
5

enablement rejection of claims 8 and 11, and (ii) the anticipation rejection of
claims 6, 9, 12, and 13 with regard to Johnson as applied by the Examiner
(Ans. 4-6). However, with regard to enablement rejection of claims 15 and
16, we agree with the Examiner’s conclusion that Appellants’ Specification
fails to enable one of ordinary skill in the art at the time of Appellants’
invention to make and/or use the inventions recited in (i) claim 15 of a
method of forming an optical assembly and a base member “from a same
material” (claim 15), and (ii) claim 16 of a method of molding the
monolithic unit “in a single operation” (claim 16).
Enablement Rejection of Claims 8, 11, 15, and 16
Claims 8, 11, 15, and 16 are rejected under 35 U.S.C. § 112, first
paragraph, as lacking an enabling disclosure of the Specification that is
commensurate in scope with the claims.
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993); In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) (the
specification must teach those of ordinary skill “how to make and how to use
the invention as broadly as it is claimed”). Factors to consider include “(1)
the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Enablement, like obviousness, is a question of law based upon underlying
Appeal 2010-006659
Application 11/078,055
6

facts. Id. at 735. Regarding the burdens of demonstrating or refuting non-
enablement, the Federal Circuit has instructed:
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that
the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the
specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in the
specification as to the scope of enablement. If the PTO meets
this burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.
Wright, 999 F.2d at 1561-62.
Apparatus Claims 8 and 11
Appellants disclose integrally forming a base or footplate with an
optical assembly as “a single, homogenous unit” that is “molded in a single
operation” and “does not require assembly of separate components” (Spec.
¶¶ [0007], [0011], and [0014]). Appellants also disclose that the light guide
16’ and the lens optics 14’ “are formed as an integral part of the base so
holes are not required” and dust and dirt are prevented from entering the
mechanism, as shown in Figure 2 (Spec. ¶ [0011]). Furthermore, originally
filed claim 1 discloses that the optical assembly is integrally formed with a
base member (i.e., footplate); originally filed claim 4 discloses that the
optical assembly and base member are integrally formed “as a single unit;”
claim 3 discloses forming the base member and optical assembly “from the
same material;” and claim 5 discloses the single unit as being “molded in a
single operation.” Accordingly, we cannot agree with the Examiner that the
Specification fails to provide an enabling disclosure of the claims at issue.
We conclude that the simple nature of the invention recited in
Appeal 2010-006659
Application 11/078,055
7

apparatus claims 6, 8, 9, and 11, the state of the prior art, the relative skill of
those in the art, the predictability of the molding and optical mouse art, and
the language of the claims2 would enable one of ordinary skill in the art at
the time of Appellants’ invention recited in claims 8 and 11 to figure out
how to make the optical computer pointing device by integrally forming the
base/footplate and the optical assembly (including the lens and light guide)
as one unit (e.g., out of clear or tinted plastic) without undue
experimentation. Thus, we agree with Appellants’ arguments (App. Br. 4-7;
Reply Br. 2-4) that the Specification (Spec. ¶¶ [0007] and [0011]; Fig. 2)
would enable the ordinarily skilled artisan to make and/or use the invention
recited in claims 8 and 11 because molding of plastics to form a single
homogenous unit in one operation, for example, is a well-known
manufacturing method well within the skill level of a person of ordinary
skill.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 8 and 11 for failing to provide an enabling disclosure for the claim
recitations that an optical assembly and a footplate or base are “formed from
a same material” (claims 8 and 11).
Method Claims 15 and 16
We do not agree with Appellants’ arguments (App. Br. 4-7; Reply Br.
2-4) that the Specification (Spec. ¶¶ [0007] and [0011]; Fig. 2) would enable
the ordinarily skilled artisan to make and/or use the invention recited in

2 The optical computer pointing device has an optical assembly with a lens
and light guide that is “integrally formed with the footplate as a monolithic
unit” (claims 6 and 9 and similarly recited in claim 12) out of one, same
material (see claims 8 and 11).
Appeal 2010-006659
Application 11/078,055
8

method claims 15 and 16, because although paragraphs [0007] and [0011]
describe integrally forming an optical assembly with a base or footplate as a
single homogenous unit, and molding the unit in a single operation so that
assembly of separate components is not required, these same paragraphs of
Appellants’ Specification do not enable the ordinarily skilled artisan to make
and/or use the invention recited in claims 15 and 16 as to the forming,
molding in a single operation, and method of making an optical computer
pointing device.
We agree with the Examiner (Ans. 4) that the Specification, and
specifically paragraphs [0007] and [0011], does not provide any details as to
the single molding operation that is used to form the optical assembly 10’
integrally with the footplate 12’, resulting in a single, homogenous or
monolithic unit such that the device does not require assembly of separate
components (e.g., locating the optical assembly 10’ including a lens 16’ and
light guide 14’ inside the opening in the footplate 12’ (see Fig. 2). Similarly,
we agree with the Examiner (Ans. 4) that the Specification fails to specify
the types of materials used in the single molding operation that would enable
the ordinarily skilled artisan to make and/or use the invention recited in
method claims 15 and 16.
Although the Specification (¶¶ [0007] and [0011]; Fig. 2) and
originally filed method claims 4 and 5,3 provide a written description for

3 Originally filed claim 4 reads: “4. A method of manufacturing an optical
computer pointing device, wherein an optical assembly and base member are
integrally formed as a single unit.” Originally filed claim 5 reads: “5. The
method of claim 4, wherein the single unit is molded in a single operation.”

Appeal 2010-006659
Application 11/078,055
9

integrally forming the optical assembly and base (i.e., the monolithic unit) of
claims 15 and 16 as a single unit and in a single operation, they fail to
disclose (1) the type of single molding operation used to form the monolithic
unit shown in Figure 2, or (2) the class or type of material being used (e.g.,
is it clear or semi-opaque plastic, metal, glass, etc.) to make the unit, so as to
enable one of ordinary skill in the art to make and/or use the invention
recited in method claims 15 and 16 on appeal. The originally filed
Specification, Drawings, and Claims do not explain what the single
operation consists of, and we conclude that one of ordinary skill in the art
would understand a molding operation to include several steps, such as (i)
designing and making a mold, (ii) pouring and heating/cooling the material
or materials in the mold so as to form the monolithic unit of the device, (iii)
removing the final monolithic unit product from the mold for quality
inspection, (iv) assembly with the body of the optical mouse, and/or (v)
packaging.
Furthermore, applying the doctrine of claim differentiation (see infra
Decision 12) to Appellants’ originally filed claim 3, originally filed claims 1
and 2 could cover devices where the optical assembly and base are formed
from different materials instead of the same material. Therefore, one of
ordinary skill in the art would not understand the molding operation to
include only one single operation, since the step of pouring and
heating/cooling two different materials in the mold so as to form the
monolithic unit of the device would require at least two steps or operations
(i.e., one step or operation for each material, if there are two materials).
Based on (1) the quantity of experimentation necessary to integrally
form a monolithic unit in a single operation, (2) the amount of direction or
Appeal 2010-006659
Application 11/078,055
10

guidance presented in Appellants’ Specification, and (3) the absence of
working examples in Appellants’ originally filed Specification, Drawings,
and Claims, as to the single molding operation used to form the optical
assembly and base member from the same material, we will sustain the
Examiner’s rejection of claims 15 and 16 for failing to provide an enabling
disclosure for the claim recitations of (i) “wherein the optical assembly and
base member are formed from a same material” (claim 15), and (ii) “wherein
the monolithic unit is molded in a single operation” (claim 16).
Claim Construction
“[T]he PTO must give claims their broadest reasonable” construction
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). “Therefore, we look to the specification to see
if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259
(Fed. Cir. 2010). “In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves little more than the
application of the widely accepted meaning of commonly understood words.
… In such circumstances, general purpose dictionaries may be helpful.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
The PTO is permitted to use dictionary definitions in tandem with the
specification and prosecution history to enlighten the broadest reasonable
interpretation of a claim term. The Federal Circuit has previously held that
“dictionary definitions are … pertinent.” In re Trans Tex. Holdings Corp.,
498 F.3d 1290, 1299 (Fed. Cir. 2007) (citing Philips, 415 F.3d at 1318).”
Appeal 2010-006659
Application 11/078,055
11

Appellants use the term “monolithic” in claims 6, 9, and 12 to recite
the integrated arrangement of the optical assembly and the footplate or base.
The plain and ordinary meaning of “monolithic” is “consisting of one piece;
solid or unbroken.” The Random House Dictionary of the English
Language, Second Edition Unabridged, p. 1244 (1987). Applying the
broadest reasonable interpretation of the term in light of the Specification,
we find the ordinary meaning for the phrase “optical assembly integrally
formed with the footplate as a monolithic unit” (claims 6, 9) to be a single,
unitary, and solid unit that includes an optical assembly (i.e., having a light
guide and a lens) that is integrally formed with the footplate as one piece, as
opposed to two separate pieces.
We cannot agree with the Examiner’s broad interpretation of claims 6,
9, and 12 that “the optical assembly is essential to the footplate,” based on
the Examiner’s determination that the optical assembly is “essential to
completing and operating the mouse” (Ans. 7) and that therefore “the mouse
and all of its elements, including the optical assembly and body (footplate),
are considered a monolithic unit because together the elements create a
single unit” (Ans. 8). Although the entire optical computer pointing device
(i.e., mouse device) set forth in claims 6, 9, 12, and 13 can be considered a
single unit as a whole, the mouse is composed of its constituent parts, each
of which are formed together integrally in one operation so as to form a
homogenous and monolithic unit that is all one piece and does not require
assembly of separate components.
The doctrine of claim differentiation assists in determining whether a
limitation in a dependent claim should be read into an independent
claim. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
Appeal 2010-006659
Application 11/078,055
12

2004) (“[W]here the limitation that is sought to be ‘read into’ an
independent claim already appears in a dependent claim, the doctrine of
claim differentiation is at its strongest.”).
It is axiomatic that a dependent claim cannot be broader than the
claim from which it depends. See 35 U.S.C. § 112 ¶ 4 (“[A] claim in
dependent form shall contain a reference to a claim previously set forth and
then specify a further limitation of the subject matter claimed.”); see also
Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed. Cir.
2007) (“An independent claim impliedly embraces more subject matter than
its narrower dependent claim.”); AK Steel Corp. v. Sollac & Ugine, 344 F.3d
1234, 1242 (Fed. Cir. 2003) (“Under the doctrine of claim differentiation,
dependent claims are presumed to be of narrower scope than the independent
claims from which they depend.”).
Therefore, if claims 8, 11, and 15 cover an optical computer pointing
device having an optical assembly and a footplate formed from the same
material, claims 6, 9, and 12 must cover the situation where the optical
assembly and the footplate are integrally formed using different materials
(e.g., plastics having different properties or colors, etc.). Furthermore,
because a dependent claim narrows the claim from which it depends, it must
“incorporate . . . all the limitations of the claim to which it refers.” 35
U.S.C. § 112 ¶ 4. As a result, the claims on appeal encompass devices and
methods using either different materials (claims 6, 9, and 12) or the same
material (claims 8, 11, and 15). Therefore, we disagree with the Examiner’s
assertion (Ans. 4) that Appellants’ Specification only describes using
different materials for (i) the lens and light guide of the optical assembly,
and (ii) the footplate.
Appeal 2010-006659
Application 11/078,055
13

In light of our claim interpretation supra, we turn next to the
application of Johnson as an anticipatory reference against claims 6, 9, 12,
and 13.
Anticipation Rejection of Claims 6, 9, 12, and 13 Applying Johnson
Johnson discloses a mouse 22 having a footplate or base portion 40
that is connected to a separate body 30 (i.e., optical assembly having a light
prism or pipe 56 and an illumination source 54) via a pivoting hinge (Figs.
2B, 4A, 4B; col. 4, ll. 40-61; col. 5, ll. 1-20 and 39-51). One of ordinary
skill in the art would understand that Johnson’s base 40 is formed separately
from the base 30 which contains the optics and light source because they are
connected with yet a third separate element, the pivoting hinge or spring
loaded pivoting member 42 for unfolding the base 40 from the body 30 of
the mouse 22 (col. 4, l. 51-56; col. 5, ll. 39-51).
In view of the foregoing, we agree with Appellants’ contentions (App.
Br. 7-11; Reply Br. 2-4) that Johnson fails to disclose that the optical
assembly or body 30 is integrally formed with base 40 in one single
operation to be a monolithic unit. We also agree with Appellants that
Johnson fails to disclose any details as to how the device is made and of
what types of materials the device is made (id.). Accordingly, we do not
sustain the Examiner’s anticipation rejection of claims 6, 9, 12, and 13 based
on Johnson (which discloses a body 30 separated from a base 40 of a mouse
22 by a third element, a hinge or pivoting member 42).

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 8 and 11 under 35 U.S.C. § 112, first paragraph, as lacking
Appeal 2010-006659
Application 11/078,055
14

enablement because the originally filed drawings, disclosure, and claims
would have enabled one of ordinary skill in the art to make and/or use the
invention recited in these claims of an optical assembly and a footplate being
made integrally of a same material (claims 8 and 11)
(2) The Examiner did not err in rejecting claims 15 and 16 under 35
U.S.C. § 112, first paragraph, as lacking enablement because the originally
filed drawings, disclosure, and claims would have enabled one of ordinary
skill in the art to make and/or use the invention recited of forming an optical
assembly and a base member from a same material (claim 15), and/or in a
single molding operation (claim 16).
(3) Appellants have established that the Examiner erred in rejecting
claims 6, 9, 12, and 13 as being anticipated under 35 U.S.C. § 102(e) by
Johnson because Johnson discloses a mouse 22 having a footplate or base
portion 40 that is connected to a separate body 30 (i.e., optical assembly
having a light prism or pipe 56 and an illumination source 54) via a pivoting
hinge.

DECISION
(1) The Examiner’s rejection of claims 8 and 11 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement
for the claim recitations in claims 8 and 11 that an optical assembly and a
footplate or base are “formed from a same material” (claims 8 and 11) is
reversed.
(2) The Examiner’s rejection of claims 15 and 16 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement
for the claim recitations that a method of making an optical computer
Appeal 2010-006659
Application 11/078,055
15

pointing device includes the steps of (a) forming an assembly and a base
member “from a same material” (claim 15), and (b) molding a monolithic
unit “in a single operation” (claim 16) is affirmed.
(3) The Examiner’s rejection of claims 6, 9, 12, and 13 under 35
U.S.C. § 102(e) as being anticipated by Johnson under 35 U.S.C. § 102(e) as
being anticipated is reversed, because Johnson fails to disclose an optical
assembly that is “integrally formed” with a footplate or base of an optical
computer pointing device “as a monolithic unit” as recited in claims 6 and 9,
and as similarly recited in method claims 12 and 13.
(4) We have also entered new grounds of rejections under 37 C.F.R.
§ 41.50(b) for claims 6 and 9 as follows:

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 102(b) for claims 6 and 9.4
Claims 6 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Appellants’ Admitted Prior Art (“AAPA”) shown in
Figure 1 and described in paragraphs [0002]-[0004] of the Specification, for
the reasons discussed supra.
With regard to claims 6 and 9, AAPA teaches all of the recited
limitations of an optical computer pointing device (see Fig. 1) and an
associated method of making such a device, including: an optical assembly

4 Because AAPA (Figure 1; Spec. ¶¶ [0002]-[0004]) does not provide any
details as to the manufacturing process, integral forming and/or molding
operation, or method of making the optical computer pointing device, we do
not enter a new ground of rejection for method claims 12-16.
Appeal 2010-006659
Application 11/078,055
16

10 having a light guide and a lens that are located onto a mouse footplate 12
(Spec. ¶ [0003]). The optical assembly 10 and footplate 12 (i.e., base of the
mouse) are manufactured as two separate components (Spec.
¶ [0004]).
AAPA therefore discloses a pointing device or mouse that is made
from two separate pieces. Thus, in AAPA the optical assembly and the
footplate are separate, and not integrally formed as a monolithic unit as
recited in each of independent claims 6 and 9.
Integrating two elements into one is merely a matter of engineering
choice and would be obvious to one of ordinary skill in the art. In re
Larson, 340 F.2d 965, 968 (C.C.P.A. 1965). The rearrangement of parts in a
device is obvious and unpatentable where shifting the positions of the parts
would not have modified the operation of the device. In re Kuhle, 526 F.2d
553, 555 (C.C.P.A. 1975); In re Japikse, 181 F.2d 1019, 1032 (C.C.P.A.
1950).
However, the integration of parts is merely a matter of engineering
choice and would be obvious to one of ordinary skill in the art; especially
when shifting the positions of, or combining, the parts would not have
modified the operation of the device. Larson, 340 F.2d at 968; Kuhle, 526
F.2d at 555; Japikse, 181 F.2d at 1032. In the instant case, the integration of
the optical assembly and the footplate would not modify the overall system
shown in AAPA other than to eliminate an intersection between the two
parts and simplify cost of manufacture, as well as make the method of
making the device more efficient (i.e., with less steps).
We consider it an obvious expedient to the artisan to integrate the two
separate parts of the device, such as the optical assembly and the footplate,
Appeal 2010-006659
Application 11/078,055
17

in the configuration of the optical computer pointing device (e.g., AAPA’s
Fig. 1 configuration). It would have been obvious to one of ordinary skill in
the art looking at the teachings and suggestions of AAPA to provide an
optical computer pointing device by integrally forming the lens and the light
guide of the optical assembly with the footplate using a single molding
operation (e.g., molding clear or tinted plastic to create both the optical
assembly and the footplate of the mouse). We conclude that one skilled in
the art would have recognized that integrating elements such as the optical
assembly and base member of the device would simplify the optical
computer pointing device by eliminating elements and misalignment issues,
as well as eliminate connections between elements.
Dependent Claims 8 and 11
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a rejection above under 37
C.F.R. § 41.50(b) for independent claims 6 and 9. However, we have not
reviewed the remaining claims which depend from claims 6 and 9 (claims 8
and 11) to the extent necessary to determine whether these claims are
unpatentable under 35 U.S.C. § 103(a). We leave it to the instant Examiner
to determine the appropriateness of any further rejections based thereon.

This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
Appeal 2010-006659
Application 11/078,055
18

avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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-IN-PART;
37 C.F.R. § 41.50(b)

peb