Ex parte NIEMIO et al.

Board of Patent Appeals and Interferences

May 18, 1998

08227093 (B.P.A.I. May. 18, 1998)

Application for patent filed April 13, 1994, entitled1
"Telephone Holder With Automatically Moved Retaining Members,"
which is a continuation of Application 07/985,185, filed
December 2, 1992, now abandoned, which claims the priority
benefit under 35 U.S.C. § 119 of Finland Application 915765,
filed December 5, 1991.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
_______________
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MIKA NIEMIO,
JARI OLKKOLA, and ARI LEMAN

Appeal No. 96-2741
Application 08/227,0931

ON BRIEF

Before THOMAS, BARRETT, and TORCZON, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 96-2741
Application 08/227,093
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ON REQUEST FOR REHEARING
Appellants request rehearing of our decision entered
September 24, 1997 (Paper No. 33). Specifically, appellants
request rehearing of those portions of the decision sustaining
the rejections of: (1) claim 11 over Kotitalo and over
Watanabe based on the interpretation of "cradle"; (2) claim 15
over Kotitalo and over Watanabe in view of Takagi based on the
interpretation of "deflectable"; and (3) claim 11 over Umezawa
based on not giving weight to the term "members" (plural).
The request for rehearing is granted-in-part.
We refer to pages of our original decision as "D__" and
to pages of appellants' Request for Reconsideration as "RR__."
We refer to the pages of the Final Rejection as "FR__", to the
pages of the Examiner's Answer as "EA__", and to the pages of
the appeal Brief as "Br__."
OPINION
1. Claim Interpretation of "Cradle"
Appellants request that we reconsider the rejections of
claim 11 over Kotitalo and over Watanabe based on an alleged
error in our interpretation of "cradle."
Appeal No. 96-2741
Application 08/227,093
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Appellants argue that "[a] person skilled in the art
knows that a telephone holder has one cradle to hold one
telephone handset" (RR2) and that "[a] person skilled in the
art is not going to view Kotitalo as having two cradles to
hold a single handset" (emphasis omitted) (RR2). Appellants
argue that the only cradle in Kotitalo is element 1.
At the time appellants' brief was filed, Patent and
Trademark Office (PTO) rules required: "For each rejection
under 35 U.S.C. 102, the argument shall specify the errors in
the rejection and why the rejected claims are patentable under
35 U.S.C. 102, including any specific limitations in the
rejected claims which are not described in the prior art
relied upon in the rejection." 37 CFR
§ 1.192(c)(8)(iii)(1995). The examiner found Kotitalo to have
a "cradle (5, 7)" (FR3; EA6). Appellants did not address the
error in the examiner's interpretation in their appeal brief.
In their reply brief, appellants asserted that "'1' is the
cradle." Arguments made for the first time in a reply brief
are generally not considered. See 37 CFR § 1.193(b) ("The
appellant may file a reply brief directed only to such new
points of argument as may be raised in the examiner's
Appeal No. 96-2741
Application 08/227,093
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answer."); McBride v. Merrell Dow and Pharmaceuticals, Inc.,
800 F.2d 1208, 1210-11 (D.C. 1986). Nevertheless, our
decision considered the broadest reasonable interpretation of
"cradle" and stated (D9):
We agree with the examiner that the "cradle" of
claim 11 broadly reads on clamps 5 and 7 in Kotitalo.
Claim 11 does not state that the telephone is supported
by the cradle or recite any other structure of the cradle
and so does not require that we interpret the structure
in Kotitalo that supports the handset (center part 17,
bottom part 16, bridge part 16', prongs 16'', and fluting
16''' described at column 2, lines 2-11) to be the
cradle.
Appellants do not address our reasoning as to the
broadest reasonable interpretation. That appellants wish to
have a narrower interpretation of the word "cradle" to avoid
the prior art is not persuasive of error. The telephone in
Kotitalo is cradled both by clamps 5 and 7 and by the support
structure described at column 2, lines 2-11. Appellants have
not convinced us that a telephone can have only a single
cradle or that part of the structure that supports the
telephone cannot be termed a cradle. Appellants have not
convinced us that it was error to consider the structure of
clamps 5 and 7, which keep the handset in place (col. 2, lines
66-68), to be a cradle. Accordingly, we deny appellants'
Appeal No. 96-2741
Application 08/227,093
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request for rehearing to the extent it requests reversal of
our decision with respect to the rejection of claim 11 over
Kotitalo.
Appellants similarly argue that "[Watanabe] only
discloses one cradle which the door 2 is pivotably mounted to"
(RR4). The same arguments made with respect to Kotitalo apply
to Watanabe. The telephone in Watanabe is cradled both by the
holder 3 and by the door 2 (figure 8). Appellants have not
convinced us that a telephone can have only a single cradle or
that part of the structure that supports the telephone cannot
be termed a cradle. Appellants have not convinced us that it
was error to consider the door 2 to be a cradle. Accordingly,
we deny appellants' request for rehearing to the extent it
requests reversal of our decision with respect to the
rejection of claim 11 over Watanabe.
Appeal No. 96-2741
Application 08/227,093
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2. Claim Interpretation of "Deflectable"
Appellants request that we reconsider the rejections of
claim 15 over Kotitalo and over Watanabe and Takagi based on
an alleged error in our interpretation of "deflectable."
Appellants argue that the dictionary definition of
"deflectable" means "capable of being deflected" and
"deflected" means "turned aside, or from a direct line or
course." Appellants argue that our interpretation of
"deflectable" as "movable" was a clear error (RR3).
As we stated in our decision (D11-12):
We interpret the term "deflectable" in claim 15 broadly
to mean "movable" because appellants disclose a tongue 12
that bends and a tongue 22 that translates and both are
claimed to be "deflectable"; compare claims 11 and 18.
Appellants do not address the context in which we made the
statement, nor do appellants try to explain how the definition
of "turned aside, or from a direct line or course" requires a
certain structure that is not shown in the references. It is
possible to define "deflectable" to mean capable of being
displaced due to bending, like the deflection (i.e., turning
aside) of a beam under a load. Appellants' tongues 12 in
figure 2 bend. We noted, however, that appellants also used
the term "deflectable" to apply to the "tongue" in claim 18
Appeal No. 96-2741
Application 08/227,093
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and, as shown in appellants' figures 2 and 3, the tongue 22
translates, i.e., moves in a straight line, but does not bend.
In our opinion, "deflectable" is broad enough to encompass
both situations where the tongues move aside by bending or by
translating, which is all that we meant by "movable." This
interpretation of "deflectable" is consistent with the
definition of "turned aside." However, the real issue is
whether we were wrong in our finding that the ends of the
clamps 5, 7 with the projections are "cantilevers [sic,
cantilevered] deflectable tongues," which issue is not
addressed by appellants. Appellants have not convinced us of
error in our finding. Accordingly, we deny appellants'
request for rehearing to the extent it requests reversal of
our decision with respect to the rejection of claim 15 over
Kotitalo.
Appellants similarly argue the "projections and upright
arms on the hinged front door 2 of Watanabe are certainly
movable with the door when the door is moved, but they are not
'deflectable' (i.e.: capable of being turned aside, or from a
direct line or course)" (RR5). As explained supra,
"deflectable" is interpreted to mean "movable" in the sense
Appeal No. 96-2741
Application 08/227,093
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that the tongue is movable to the side and does not require
any particular physical kind of movement like bending or
translation, because appellants have used the term
"deflectable" to describe both kinds of movement. The
projections on the hinged front member in Watanabe are
considered "cantilevers [sic, cantilevered] deflectable
tongues." The tongues are "deflectable" (movable) because
they are moved out of position when the hinged front member is
rotated. Appellants have not convinced us of any error in our
finding that the projections in Watanabe are cantilevered
deflectable tongues. Accordingly, we deny appellants' request
for rehearing to the extent it requests reversal of our
decision with respect to the rejection of claim 15 over
Watanabe and Takagi.
3. Patentable Weight of Claim Language "Members" (Plural)
Appellants argue that it was inappropriate to not address
the limitation of "members" (plural) (RR3). Appellants argue
that "[t]he Board cannot ignore the actual claim language
because Appellants did not argue it" (RR3).
Appeal No. 96-2741
Application 08/227,093
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At the time appellants' brief was filed, PTO rules
required: "For each rejection under 35 U.S.C. 103, the
argument shall specify the errors in the rejection and, if
appropriate, the specific limitations in the rejected claims
which are not described in the prior art relied on in the
rejection, and shall explain how such limitations render the
claimed subject matter unobvious over the prior art." 37 CFR
§ 1.192(c)(8)(iv). Because the PTO has a rule requiring
appellants to argue contested limitations we, like our
reviewing court, are not required to look for differences
beyond those which are discussed in appellants' brief. Cf.
In re Baxter Travenol Labs., 952 F.2d 388, 391,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991) ("It is not the function
of this court to examine the claims in greater detail than
argued by an appellant, looking for nonobvious distinctions
over the prior art."); In re Wiechert, 370 F.2d 927, 936,
152 USPQ 247, 254 (CCPA 1967) ("This court has uniformly
followed the sound rule that an issue raised below which is
not argued in this court, even if it has been properly brought
here by a reason of appeal, is regarded as abandoned and will
not be considered. It is our function as a court to decide
Appeal No. 96-2741
Application 08/227,093
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disputed issues, not to create them."); In re Wiseman,
596 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (arguments
must first be presented to the Board before they can be argued
on appeal). It is not prudent to reverse a rejection based on
an uncontested limitation because, for all we know, an
appellant's reason for not contesting the limitation may be
that appellant knows it constitutes obvious subject matter.
Also, we do not have the benefit of the examiner's views.
Because the PTO has a rule which requires appellants to argue
contested limitations and because it is sound legal policy not
to get into undisputed issues, it is proper to address only
the argued limitations.
Appellants argue that they did argue that Umezawa did not
disclose locking members (plural) at page 7, second paragraph.
That portion of the Brief states that "there is no disclosure
or suggestion in Umezawa that slide member (8) has movable
locking members" (Brief, page 7). Although appellants did not
address the examiner's interpretation of elements 19-21 as
being the "movable locking members" in the Brief, since
appellants denied that the limitation was found in Umezawa we
will consider the limitation to have been argued as required
Appeal No. 96-2741
Application 08/227,093
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by 37 CFR § 1.192(c)(8)(iv). We noted in our decision
(D14-15) that Umezawa has only one locking member 21 and that
elements 19 and 20 noted by the examiner cannot be considered
locking members. Accordingly, we now reverse the anticipation
rejection of claims 11 and 13 over Umezawa.
Appeal No. 96-2741
Application 08/227,093
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CONCLUSION
Upon consideration of appellants' request for rehearing,
we have denied the request with respect to making any changes
in our decision regarding the rejections of claim 11 over
Kotitalo and over Watanabe, and the rejections of claim 15
over Kotitalo and over Watanabe and Takagi, but we have
modified our decision to the extent that the rejection of
claims 11 and 13 over Umezawa is now reversed. Accordingly,
the request for rehearing has been granted-in-part and the
original decision is modified.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
GRANTED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Appeal No. 96-2741
Application 08/227,093
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Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-2741
Application 08/227,093
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Clarence A. Green
PERMAN & GREEN
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