Ex parte Palett et al.

Board of Patent Appeals and Interferences

Sep 25, 1998

08335008 (B.P.A.I. Sep. 25, 1998)

Application for patent filed November 7, 1994. 1
According to the appellants, this application is a
continuation of Application 08/012,382, filed February 2,
1993, now abandoned.
1
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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANTHONY P. PALETT
and GIL SPEAR

_____________
Appeal No. 97-2876
Application 08/335,0081
______________
ON BRIEF
_______________
Before THOMAS, TORCZON and CARMICHAEL, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 97-2876
Application 08/335,008
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 43 to 48 and 50 to 57, which
constitute all the claims remaining in the application.
Representative claim 43 is reproduced below:
43. A rear-view mirror mounted telephone system adapted
for use with a vehicle equipped with a mobile
telecommunications transceiver, a source of electrical power,
and wiring to carry power to the telephone system and to
interconnect the telephone system with the telecommunications
transceiver, the rear-view mirror mounted telephone system
comprising:
a main housing having upper, lower, left and right edges
and a mirrored surface, the housing being adjustably mounted
within the vehicle, enabling the mirrored surface to properly
function as a rear-view mirror; and
a plurality of telephone controls located on the housing,
at least certain of the controls being integral to the
housing, the controls including
a microphone,
a speaker, and
means to dial a telephone number, the
controls enabling an operator to place and receive telephone
calls through the telecommunications transceiver, and to carry
Appeal No. 97-2876
Application 08/335,008
Our understanding of this reference is based upon a2
translation provided by the Scientific and Technical
Information Center of the Patent and Trademark Office. A copy
of the translation is enclosed with this decision.
3
on a telephone conversation in a hand’s free manner once a
call is in progress.
The following references are relied on by the examiner:
Meyerle et al. (Meyerle) 4,056,696 Nov. 01,
1977
Spear et al. (Spear) 4,706,273 Nov. 10, 1987
Schofield et al. (Schofield) 4,930,742 June 05,
1990
Marui 5,239,586 Aug. 24, 1993
(filed Nov. 20, 1991)
Takagi, et al. (Takagi) 03-85949 Apr. 11,
19892
(Japanese Kokai)
Wu 179989 Mar. 01,
19922
(Chinese patent)
Kudo et al. (Kudo) 04-290044 Oct. 14,
19922
(Japanese Kokai)
As expressed in some manner in both examiner’s answers,
it appears that the examiner has rejected certain claims under
both the enablement and written description portions of 35
U.S.C.
Appeal No. 97-2876
Application 08/335,008
4
§ 112. As expressed in the supplemental examiner’s answer,
this rejection is limited to claims 44 to 48 and 52 to 55.
All claims on appeal, claims 43 to 48 and 50 to 57 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner presents the collective teachings of Meyerle in
view of Schofield as to claims 43, 50 to 52 and 54, as the
basic combination of references. To this basic combination
the examiner adds Takagi as to claims 44 to 48, adds Kudo as
to claim 53, adds Spear as to claim 55, adds Wu as to claim 56
and Marui as to claim 57.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the various briefs and
answers for the respective details thereof.
OPINION
Turning first to the rejection of the claims under 35
U.S.C.
§ 112, to the extent the rejection is based upon the
enablement provision of this statutory provision, we reverse
the rejection. Appellants’ reply brief correctly reflects
that enablement is determined from the artisan’s perspective
and cites various cases, which we see no need to repeat here,
Appeal No. 97-2876
Application 08/335,008
5
which set forth that the standard must be such as to enable
the artisan to make and use the claimed invention without
undue experimentation. Our study of the written description
portion of the disclosure, the attached drawings and the
claims on appeal lead us to conclude that the examiner has not
expressed any rationale to convince us that it would have
required the artisan undue experimentation to have made and
used the presently claimed invention. Essentially, all of the
features recited in the pending claims on appeal are shown in
the drawing figures.
The focus of the examiner’s rejection of the claims under
35 U.S.C. § 112 appears to be the written description portion
according to the examiner’s reasoning as best expressed in the
supplemental answer, where the assertion is made that the
specification as filed as a whole indicated that the inventors
did not have possession of the presently claimed invention.
Initially, we note that the examiner’s earlier reasoning
for lack of "support" for the claimed invention of claims
implicitly referred to the written description requirement of
35 U.S.C.
Appeal No. 97-2876
Application 08/335,008
6
§ 112, first paragraph. In re Higbee, 527 F.2d 1405, 1406,
188 USPQ 488, 489 (CCPA 1976).
The test to be applied under the written description
portion of 35 U.S.C. § 112, first paragraph, is whether the
disclosure of the application as originally filed reasonably
conveys to the artisan that the inventors had possession at
that time of later claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117, reh’g.
denied (Fed. Cir. July 8, 1991) and reh’g, en banc denied
(Fed. Cir. July 29, 1991).
The manner in which the specification as filed meets the
written description requirement is not material. The
requirement may be met by either an express or an implicit
disclosure. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90,
96 (CCPA 1976). An invention claimed need not be described in
ipsis verbis in order to satisfy the written description
requirement of 35 U.S.C.
§ 112, first paragraph. In re Lukach, 442 F.2d 967, 969, 169
USPQ 795, 796 (CCPA 1971). The question is not whether an
added word was the word used in the specification as filed,
but whether there is support in the specification for the
Appeal No. 97-2876
Application 08/335,008
7
employment of the word in the claims, that is, whether the
concept is present in the original disclosure. See In re
Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA 1973).
There appears to be no basic dispute between appellants
and the examiner that at least two embodiments have been
disclosed. The first embodiment is essentially shown in the
early figures and relates to a telephone system separately
mounted with a vehicle’s rear-view mirror. The second
embodiment begins in Fig. 24 and shows a telephone system
which is integral with the rear-view mirror. On the basis of
the drawings presented with the application as filed, the
examiner asserts that there is no embodiment which shows a
telephone system partially integral and partially separable
with the rear-view mirror. This position of the examiner
focuses the issue upon the problem of mixing embodiments in
later than filing date claimed subject matter.
We reverse this rejection essentially because we are in
agreement with the positions first advocated by appellants in
the principal Brief on appeal. We make reference to the
summary of the invention at page 5, lines 11 through 18:
Appeal No. 97-2876
Application 08/335,008
8
In one embodiment of the invention
mirror assembly the telephone is removably
mounted on the mirror by mounting means
including a holster secured to the top of
the mirror and defining a socket for
receipt of the mobile telephone.
In further embodiments of the
invention mirror assembly at least one of
the components of the telephone is built
into the casing of the mirror. (Emphasis
added).
Even more telling, however, are the statements made in the
specification at page 18, lines 10 to 17:
Although the invention has been
illustrated and described in connection
with a portable telephone which is
removably mounted on the mirror, the
invention is also applicable to an
arrangement in which some or all of the
components of the telephone are built into
the mirror as a permanent part of the
mirror assembly. Several arrangements in
which the telephone is built into the
mirror are shown respectively in Figures
24, 25 and 26. (Emphasis added).
To these portions of the specification as filed we add the
original filed claims 16, 17, 23, 27 to 29 and 31 to 35.
These portions at pages 5 and 18 of the written
description as filed, as well as the originally filed claims
just identified, provide an ample basis within 35 U.S.C. §
112, first paragraph, for appellants to have later claimed the
Appeal No. 97-2876
Application 08/335,008
9
subject matter of the present claims on appeal set forth and
focused upon in present claims 43 to 48 and 50 to 57 under the
written description portion of this statutory provision. We
are in general agreement with appellants’ observation at the
bottom of page 2 of the second reply brief, filed on December
30, 1996 where appellants indicate that they believe that the
examiner is placing all emphasis on the drawings while
ignoring the above specified language in the specification.
Although as asserted by the
examiner at the bottom of page 2 and the top of page 3 of the
supplemental answer, there is no embodiment which "shows" the
telephone system being partially integral and partially
separable with the rear-view mirror, the specification
language as quoted clearly indicates that this was
contemplated by the appellants and therefore was in their
possession at the original filing date of the present
application. This conclusion is buttressed by consideration
of the originally filed claims identified earlier. This
decision is believed to be consistent with the above noted
case law which indicates that there is no strict ipsis verbis
Appeal No. 97-2876
Application 08/335,008
10
requirement to satisfy the written description requirement
since clearly the concept of a mixed, or perhaps third,
embodiment of the claimed invention was clearly contemplated
by the inventors as originally filed. In view of the
foregoing, the decision of the examiner rejecting the claims
44 to 48 and 52 to 58 under the written description portion of
35 U.S.C. § 112 is reversed.
Turning to the rejection of claims 43, 50 to 52 and 54
under 35 U.S.C. § 103 in light of the collective teachings of
Meyerle in view of Schofield, we reverse this rejection. On
the one hand, Meyerle teaches a telephone station set in
representative Fig. 1 of this reference mounted on a sun visor
10 for use in an automobile to which various controls are
shown to be attached and associated with the telephone set. A
modified version of Fig. 1 and Fig. 7 shows that such controls
are mounted on a control unit module box 49.
On the other hand, Schofield teaches primarily an adapter
for removably mounting an interior rear-view mirror assembly,
which is not explicitly disclosed in Schofield per se. Figure
19 of this reference shows a microphone sensor 186 mounted
within a microphone housing 180 which forms a part of the
Appeal No. 97-2876
Application 08/335,008
11
adaptor 150 to which the channel mount 50 is attached for this
mirror assembly to be further attached to ball 62 of the
mirror assembly shown in more detail in Figs 11 and 12. Thus,
this figure shows a microphone such as for a cellular phone as
indicated at col. 3, lines 42 through 62. This embodiment is
further described at col. 9, lines 42 through 51 as having "a
housing 180 integral with and positioned below the adaptor
body for a microphone for a cellular phone, dictation system
or the like and its controlling circuitry and wiring."
Similar language is found at col. 11, lines 53 through 58.
Claim 43, the only independent claim on appeal, requires
in its preamble a rear-view mirror mounted telephone system,
where the body of the claim recites the existence of a main
housing having a mirrored surface which functions as a rear-
view mirror.
The body of this claim further requires a plurality of
telephone controls located on this housing. As best construed
in light of the above noted teachings and the examiner’s
reasoning, it appears that the artisan would have found it
Appeal No. 97-2876
Application 08/335,008
12
obvious to have mounted a telephone system as in Meyerle on
the base support structure or housing adaptor 150/180 of
Schofield’s Fig. 19 and not on the mirror assembly housing per
se, again which assembly is not shown in specifics in this
reference.
Therefore, we find ourselves in a general agreement with
the appellants’ assertion at page 6 of the reply brief filed
on June 6, 1996:
Of the claims on appeal, only one
(claim 43) is drafted in independent form.
It includes the limitation of a main
housing having a mirror surface, and a
plurality of telephone controls located on
the housing ... There is no hint or
suggestion of this configuration in the
prior art. The Examiner’s reliance on
Schofield as a primary reference which
teaches such a feature for use in
combination, fails in that Schofield et al
teach only the incorporation of a
microphone within a support base to which a
rearview mirror is attached. Only
Appellant discloses and claims "a plurality
of telephone controls located on the
housing, at least certain of the controls
being integral to the housing," a
limitation which is enabled by the
specification yet nowhere to be found in
the prior art.
Appeal No. 97-2876
Application 08/335,008
13
As to the rejection of independent claim 43, the weight
of the evidence provided from the collective teachings of
Meyerle and Schofield does not support the examiner’s
conclusion of obviousness of the subject matter of this claim
on appeal. Further, the disadvantage noted by the examiner in
the discussion between pages 15 and 16 of the answer that the
physical position of such a critical device as an automobile
rear-view mirror that may be moved when a phone placed on it
is used further argues against obviousness of the subject
matter of claim 43, at least to the extent asserted to have
been obvious based upon the collective teachings of Meyerle
and Schofield alone. Schofield teaches that only a phone’s
microphone is a part of the bracket for a rear view mirror
assembly. Therefore, since we do not sustain the rejection of
independent claim 43, the respective rejections of the
dependent claims must also be reversed.
Appeal No. 97-2876
Application 08/335,008
14
Since we have reversed the rejection of certain claims
under the first paragraph of 35 U.S.C. § 112, and we have also
reversed the rejection of all the claims on appeal under 35
U.S.C. § 103, the decision of the examiner is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD TORCZON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )

Appeal No. 97-2876
Application 08/335,008
15

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