10179486 (B.P.A.I. Jun. 26, 2009)

Ex Parte Kurzweil et al

Board of Patent Appeals and InterferencesJun 26, 2009

10179486 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte RAYMOND C. KURZWEIL and SONYA KURZWEIL ____________________ Appeal 2009-000712 Application 10/179,486 Technology Center 2600 ____________________ Decided: June 26, 2009 ____________________ Before: KENNETH W. HAIRSTON, JOHN A. JEFFERY, and MARC S. HOFF, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Appellants’ Request for Rehearing, filed April 24, 2009, contends that we erred in our Decision on Appeal entered February 24, 2009, in which we reversed the rejection of claims 1-31, and entered a new ground of rejection against claims 1, 13, and 21. Appellants assert that the combination of Enzmann in view of Brimhall does not render claims 1 and 21 obvious. Appeal 2009-000712 Application 10/179,486 OPINION We maintain the rejection of claims 1, 13, and 21 under 35 U.S.C. § 103(a) as unpatentable over Enzmann in view of Brimhall. Appellants assert that the Board’s new ground of rejection is in error with respect to claims 1 and 211 because the Board failed to find that Brimhall teaches a soft housing adapted to be worn over a user’s head (Req. for Reh’g 3). In Appellants’ view, the Board’s finding that Brimhall does teach a “wearable soft housing” (FF 4) is not described or depicted in the cited figures of Brimhall (Figs. 9-11) as “adapted to be worn over a user’s head,” because only the deformable member 20 that surrounds the core portion 30 of Brimhall, which contains the earpiece and is positioned within the user’s ear, is described as “soft” (Req. for Reh’g 3). Claim 1 requires “a soft housing, comprised of soft padding materials, the housing adapted to be worn over a user’s head.”2 There are three pertinent points to be made regarding the construction of this element. First, Appellants’ Specification provides no limiting definition of “soft.” As a result, we have construed it in accordance with its ordinary meaning, which is essentially relative (i.e., the opposite of “hard”), and which varies in degree considerably depending on the environment. Second, “comprised of” is an open-ended phrase, meaning “consisting of but not limited to.” A soft housing “comprised of” soft padding materials may thus also be made up of 1 Appellant explicitly does not request reconsideration of the Board’s decision concerning claim 13 (Req. for Reh’g 1). 2 Claim 21 recites “the housing comprised of elastic material and soft padding materials,” but the pertinent part of claim 21 is otherwise essentially identical to claim 1. 2 Appeal 2009-000712 Application 10/179,486 other materials which are not soft, not involved in padding, or both. Thus, Brimhall’s housing (deformable member 20), explicitly disclosed as made of a soft material, in combination with headband 290 connecting two such housings (even though Brimhall is silent as to the composition of the headband), fully meets the recitation of a soft housing, comprised of soft padding materials, adapted to be worn over a user’s head. Third, a housing “adapted to” be worn over a user’s head is merely a housing that a user could wear in such fashion. Contrary to Appellants’ contention (Req. for Reh’g 3), the soft housings in Brimhall, even if one construes them to correspond only to deformable member 20 that surrounds core portion 30, are in fact adapted to be worn over a user’s head. Deformable member 20 and core portion 30 are adapted to be positioned over each of a user’s ears, which constitute part of a user’s head, and Brimhall discloses a headband 290 that enables the deformable member 20 and core portion 30 to be worn over a user’s head (see Figs. 9-11). Therefore, Appellants have not shown any points which we misapprehended or overlooked in our Decision with respect to claims 1 and 21. 3 Appeal 2009-000712 Application 10/179,486 CONCLUSION In summary, we have granted Appellants’ request for rehearing to the extent that we have reconsidered our decision rejecting claims 1 and 21 under 35 U.S.C. § 103(a) as unpatentable over Enzmann in view of Brimhall, but we decline to modify the decision in any way. 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). REHEARING DENIED ELD FISH & RICHARDSON PC P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 4