Ex parte SUZUKI

Board of Patent Appeals and Interferences

Apr 29, 1998

07990458 (B.P.A.I. Apr. 29, 1998)

Application for patent filed December 15, 1992, entitled1
"Head Mounted Display Configured To A User's Physical Features,"
which claims the foreign priority benefit under 35 U.S.C. § 119
of Japanese Application 3-346364, filed December 27, 1991,
Japanese Application 3-346365, filed December 27, 1991, Japanese
Application 4-004440, filed January 14, 1992, and Japanese
Application 4-008013, filed January 21, 1992.
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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journal, and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte YOSHIAKI SUZUKI

Appeal No. 95-2600
Application 07/990,4581

ON BRIEF

Before HAIRSTON, BARRETT, and FLEMING, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2600
Application 07/990,458
- 2 -
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's refusal to allow claims 1-16, all of the claims
pending in the application. We affirm-in-part.
The invention is directed to a goggle-type image display
apparatus having a distance adjusting mechanism for adjusting
the distance between the left and right optical blocks to bring
them into alignment with the operator's eyes.
Claim 1 is reproduced below.
1. A goggle type image display apparatus wearable on
a user's head for presenting a visible image thereon,
comprising:
left and right optical blocks each having display
means for representing an image thereon;
distance adjusting means connected to said left and
right blocks for adjusting the distance between the left
and right blocks;
a goggle-shaped housing for containing the left and
right optical blocks;
a support frame mounted to said housing for supporting
said left and right blocks and said distance adjusting
means, wherein said support frame slidably supports the
left and right optical blocks and said distance adjusting
means is mounted on the support frame for sliding the left
and right optical blocks along the support frame toward and
away from each other within the housing.
The examiner relies on the following references:
Heilig 2,955,156 October 4, 1960
Gale 4,952,024 August 28, 1990
Hilton 5,187,503 February 16, 1993
(filed February 4, 1991)
Appeal No. 95-2600
Application 07/990,458
Suwa corresponds to U.S. Patent 5,371,556, issued2
December 6, 1994, based on an effective filing date of
January 15, 1991.
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Suwa et al. (Suwa) 0,438,362 July 24, 19912
(European Patent Application)
Claims 1, 3, 4, and 14-16 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by or, in the alternative,
under 35 U.S.C. § 103 as being unpatentable over Suwa.
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Suwa and Gale.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Suwa and Hilton.
Claims 7 and 9-13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Suwa and Heilig.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Suwa, Heilig, and Gale.
We refer to the Final Rejection (Paper No. 7), the
Examiner's Answer (Paper No. 12), and the Supplemental
Examiner's Answer (Paper No. 14) for a statement of the
examiner's position and to the Brief (Paper No. 11) and the
Reply Brief (Paper No. 13) for appellant's position.
OPINION
Grouping of claims
Appeal No. 95-2600
Application 07/990,458
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The main brief separately argues claims 1, 4, 8, 11, 12,
15, and 16. As to claims 2, 5, 6, 7, 9, appellant argues that
the combinations of references do not teach the limitations of
claim 1, which does not constitute an argument why these claims
are separately patentable. Claims 3, 10, 13, and 14 are not
argued. Accordingly, the claims that are separately argued are
claims 1, 4, 8, 11, 12, 15, and 16. Claims dependent upon these
claims stand or fall therewith. See 37 CFR § 1.192(c)(5)(1994)
("it will be presumed that the rejected claims stand or fall
together unless a statement is included that the rejected claims
do not stand or fall together, and in the appropriate part or
parts of the argument under subparagraph (c)(6) appellant
presents reasons as to why appellant considers the rejected
claims to be separately patentable" (emphasis added)).
Reply Brief
In the main appeal brief, appellant did not argue the
separate patentability of claims 2, 3, 5-7, 9, 10, 13, and 14.
In the reply brief, appellant (through different counsel) now
argues the merits of claim 2 (Reply to Section 9.3, Reply Brief,
pages 5-6), claim 7 (Reply Brief, pages 13-14), claim 9 (Reply
Brief, pages 7-9), claims 10 and 13 (Reply Brief, pages 10-12).
These arguments presented for the first time in the reply brief
Appeal No. 95-2600
Application 07/990,458
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are untimely and will not be considered. Cf. Kaufman Company,
Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.*, 1 USPQ2d 1202,
1204 n.* (Fed. Cir. 1986); McBride v. Merrell Dow and
Pharmaceuticals, Inc., 800 F.2d 1208, 1210-11 (D.C. Cir. 1986)
("We generally will not entertain arguments omitted from an
appellant's opening brief and raised initially in his reply
brief. . . . Considering an argument advanced for the first
time in a reply brief, then, is not only unfair to an appellee,
. . . but also entails the risk of an improvident or ill-advised
opinion on the legal issues tendered."). Appellant elected to
have claims 2, 3, 5-7, 9, 10, and 14 stand or fall with claim 1
and to have claim 13 stand or fall with claim 12 by not
presenting separate arguments thereto in the main brief. See
37 CFR § 1.192(c)(5). Appellant cannot allege a new argument as
an excuse to argue claims which were not addressed in the first
place and for which no argument by the examiner was necessary.
New arguments as to claims which were argued in the main
brief are treated in the analysis.
Claims 1, 3, 4, and 14-16
Claims 1, 3, 4, and 14
Section 102(b)
Appeal No. 95-2600
Application 07/990,458
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"Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984).
Appellant argues that "Suwa does not have 'a support frame'
and 'a goggle-shaped housing'" (Brief, page 12). Appellant
argues that "[s]ince the attachments 22A and 22B [corresponding
to the claimed optical blocks] are not contained within the
frame 20, but rather are attached to the frame 20, Suwa's
frame 20 is not the claimed goggle-shaped housing 'for containing
the left and right optical blocks'" (Brief, page 12). Appellant
argues that "Suwa does not teach an additional element, which is
a 'support frame' mounted to the housing" (Brief, page 12).
In Suwa, "reference numeral 20 depicts a front frame to
which main portions of the spectacle type retina direct display
apparatus are secured" (col. 3, lines 35-37). "When the space
adjusting dial 23 mounted on the frame 20 is rotated, racks 22C
and 22D meshed with a gear 23A of the dial 23 are moved right and
left, the space between the attachments 22A and 22B for eyeballs
being thereby adjusted." Col. 4, lines 15-19. The attachments
22A and 22B in Suwa, which correspond to the claimed left and
right optical blocks, are slidably mounted in the frame 20 to be
Appeal No. 95-2600
Application 07/990,458
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moved right and left. Thus, the front frame 20 in Suwa has
structure corresponding the "support frame" of claim 1.
Appellant's "goggle-shaped housing" is disclosed as a
"cover" (specification, page 5, line 10, and, for example,
claim 7). Comparing figure 4, which shows the support frame 41
with hinges 56, 57, to figure 1, it is seen that the housing is a
cover (or covers) over the movable optical blocks; e.g., claim 7
recites a main cover and right and left covers. Figures 1 and 5
show that the housing may consist of a front cover 59, a rear
cover 60 (which may consist of an upper cover 61 and a lower
cover 52), and side covers 6 and 7. The claims, at most, recite
that the housing consists of "a main cover portion, and left and
right side covers attached to the opposite sides of the main
cover portion" (claims 7, 9, and 13). Claim 1 does not recite
any structure of the housing, but only recites the function of
"containing the left and right optical blocks" without defining
what is meant by "containing." Suwa has a front frame 20 with a
shield or visor that covers the front and side portions of the
device and a top flat portion in figure 3 through which dial 23
protrudes (like the cover in appellant's figures 1 and 5). Suwa
also has wide support frames (i.e., bows) 21A and 21B, which are
part of the housing as evidenced by the "left and right side
covers" in claims 7, 9, and 13. As shown by the dashed outline
Appeal No. 95-2600
Application 07/990,458
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of the goggles in figure 6, the front shield, top of frame 20,
and frames 21A, 21B collectively enclose and form a housing
around the attachments 22A and 22B. Thus, Suwa has structure
corresponding to a "goggle-shaped housing for containing the left
and right optical blocks," as claimed.
Appellant argues that: (1) "the devices for producing the
images are mounted to the frame 20 and are not contained within
any housing" (Brief, page 12); (2) "even if the frame 20 could be
considered as both the claimed support frame and the housing, the
frame 20 does not 'contain' left and right optical blocks and
thus cannot be the claimed housing" (Brief, page 13); and
(3) "Suwa simply does not perform the 'containing' function
recited in applicant's claims" (footnote omitted) (Reply Brief,
page 4). Appellant is reading some limitation into the term
"containing" without explaining what it is or where the support
for the term is in the specification. We agree with the
examiner's position (Examiner's Answer, page 13) that blocks 22A
and 22B are "contained" within the frame 20 because they are
within the boundaries of the frame 20 and side frames 21A, 21B
and are not visible when the device is worn as shown in figure 4
of Suwa. Even the more detailed claims to the housing (e.g.,
claims 7 and 9) do not recite that the housing completely
encloses the optical blocks, so the fact that blocks may be
Appeal No. 95-2600
Application 07/990,458
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exposed in figure 3 does not mean they are not contained in the
housing. It is noted, for example, that a dish can "contain"
objects even though it is open at its top.
In our opinion, the language "a support frame mounted to
said housing" in claim 1 does not require the frame to be a
separate piece from the housing, but includes a frame which is
part of the housing. That is, we read "mounted" as a structural
limitation of the frame being attached to the housing, including
being formed as one piece with the housing, not as a process
limitation of the frame being connected as a step during the
manufacture. In any case, however, the examiner points out that
"element 20 has two different portions, i.e. the front shield
portion in Fig. 4 and the flat portion in Fig. 3" (Examiner's
Answer, page 5) and also finds the side elements 21A and 21B to
be part of the housing (Examiner's Answer, page 4). The shield
portion which covers the front and sides (up to the hinges) of
frame 20 is a main cover and appears to be a separate piece from
the frame as indicated by the line parallel to the front surface
of the goggle in figures 3 and 4. The side frames 21A and 21B
are clearly separate pieces because they are attached at the
hinges. Therefore, it appears that Suwa does have a housing,
consisting of the shield and side elements, separate from the
frame in which the optical blocks are mounted.
Appeal No. 95-2600
Application 07/990,458
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For the reasons discussed above, we find claim 1 to be
anticipated by Suwa. Claims 3 and 14 are not argued in the main
brief. The rejection of claims 1, 3, and 14 is sustained.
The assembly of attachments 22A and 22B, distance adjusting
racks 22C and 22D, and space adjusting dial 23 onto the frame 20
forms a "unit" as recited in claim 4. Appellant argues that
"Suwa . . . has the attachments 22A and 22B separately mounted to
the frame 20 and thus does not anticipate claim 4" (Brief,
page 13). Since Suwa's attachments 22A and 22B are mounted to
frame 20 in the same way as appellant's optical blocks 2 and 3,
appellant's argument is not understood. Appellant argues that
"Suwa does not teach the subject matter of claim 4 since Suwa
provides no indication that the racks 22C and 22D and the gear
23A are mounted as a unit" (Brief, page 13). It is not clear
from this bare statement why appellant does not consider the
assembly to be a unit. In the Reply Brief, appellant argues that
the pieces must be mounted on the support frame as a unit (Reply
Brief, page 13). Since the optical blocks and distance adjusting
means (including the distance adjusting dial 23) do not become a
unit until assembled to the frame 41, as shown in appellant's
figure 4, we fail to see any difference between appellant's
assembly and Suwa's. The rejection of claim 4 is sustained.
35 U.S.C. § 103
Appeal No. 95-2600
Application 07/990,458
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The only possible reason we can see why claim 1 may not be
anticipated is if the limitation of "a support frame mounted to
said housing" requires the frame to be a separate piece from the
housing. As discussed, Suwa has structure corresponding to the
housing and to the support frame. It also has been discussed why
Suwa appears to have a separate housing consisting of a shield
and side support frames and, thus, anticipates a separate frame
and housing. In addition, we agree with the examiner that it
would have been obvious to make the housing separate from the
frame, if this is not taught already. It would have been obvious
to one of ordinary skill in the art to use a separate housing and
frame to facilitate the assembly in the same way that automobile
engines were assembled to frames before mounting the body or that
television components are assembled to a chassis before being
mounted in the case.
The examiner cites Nerwin v. Erlichman, 168 USPQ 177, 179
(Bd. of Int. 1969) for the proposition that the separating an
integral structure into discrete elements would be obvious. This
is like one of the negative rule of inventions that existed
before the 1952 Patent Act. No per se rules of obviousness
exist. However, in our opinion, making one piece as several
pieces which are assembled together was common manufacturing
knowledge within the level of ordinary skill in the art at the
Appeal No. 95-2600
Application 07/990,458
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time of the invention. The reason, suggestion, or motivation for
modification may come from what is known to the person of
ordinary skill or from a specific teaching in the reference.
See In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443,
1446-47 (Fed. Cir. 1992) (Nies, C.J., concurring).
Appellant argues that Big Four Automotive Equipment Corp. v.
Jordan, 184 USPQ 80 (N.D. Ohio 1974) stands for the proposition
that a single element in a reference cannot be interpreted as two
different elements where the two elements perform two different
functions at the same time. The so-called rule about double
inclusion of elements is complicated, but it is not relevant
here. Different parts of the frame 20 in Suwa constitute
separate frame and housing structure. The fact that Suwa uses a
single reference numeral does not mean that the same element is
being used to meet two separate limitations.
Claims 15 and 16
As to claim 15, we agree with appellant that Suwa does not
disclose means for attaching the earphone "for rotation about a
vertical axis." "Vertical" must be interpreted consistent with
the specification and with the normal meaning of the term, to
mean "upright" when the display apparatus is in its normal
orientation. Therefore, we do not agree with the examiner that
Appeal No. 95-2600
Application 07/990,458
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vertical can be defined in an arbitrary direction. The earphone
in figure 7 of Suwa is rotatable around an axis in the horizontal
plane and does not anticipate claim 15. The examiner does not
apply any backup obviousness reasoning to claim 15. We note that
Heilig shows earphones that are apparently mounted for rotation
about a vertical axis (see hinge attachment of earphones to rod
30 in figure 5); however, Heilig is not applied to the rejection
of claims 15 and 16. The anticipation and obviousness rejections
of claims 15 and 16 are reversed.
Claim 2
In his main brief, appellant does not argue the separate
patentability of the features of claim 2 for which Gale is
additionally cited. Instead, appellant argues that neither Gale
nor the combination of Gale with Suwa teach the features of the
"support frame" and the "goggle-shaped housing" in claim 1
(Brief, page 18). In effect, appellant argues that claim 2
should be patentable because claim 1 is patentable, i.e., that
claim 2 stands or falls with claim 1. Since we sustain the
rejection of claim 1, we will sustain the rejection of claim 2.
Appellant's new arguments regarding claim 2 in the Reply Brief
are untimely and will not be considered.
Claims 5 and 6
Appeal No. 95-2600
Application 07/990,458
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In his main brief, appellant does not argue the separate
patentability of the features of claims 5 and 6 for which Hilton
is additionally cited. Instead, appellant argues that neither
Hilton nor the combination of Hilton with Suwa teaches the
features of the "support frame" and the "goggle-shaped housing"
in claim 1 (Brief, pages 18-19). In effect, appellant argues
that claims 5 and 6 should be patentable because claim 1 is
patentable, i.e., that claims 5 and 6 stand or fall together with
claim 1. Since we sustain the rejection of claim 1, we will
sustain the rejection of claims 5 and 6.
Claims 7 and 9-13
Claims 7 and 9
In his main brief, appellant does not argue the separate
patentability of the features of claims 7 and 9 for which Heilig
is additionally cited. Instead, appellant argues that neither
Heilig nor the combination of Heilig with Suwa teaches the
features of the "support frame" and the "goggle-shaped housing"
in claim 1 (Brief, page 19). In effect, appellant argues that
claims 7 and 9 should be patentable because claim 1 is
patentable, i.e., that claims 7 and 9 stand or fall together with
claim 1. Since we sustain the rejection of claim 1, we will
sustain the rejection of claims 7 and 9. Appellant's new
Appeal No. 95-2600
Application 07/990,458
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arguments regarding claim 7 and 9 in the Reply Brief are untimely
and will not be considered.
Claim 10
Appellant did not argue claim 10 in the main brief. The
examiner dropped the Gale reference from the statement of the
rejection of claim 10 in the Examiner's Answer (page 2).
Technically, this does not create a new ground of rejection. See
In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961)
("the answer specified a rejection on Whitney in view of Harth
and if the board found it unnecessary to rely on Harth in
sustaining that rejection, as it appears to have done, that does
not amount to rejection on a new ground"). Appellant does not
explain how he has been denied an opportunity to react to the
rejection when he never sought to argue claim 10 in the main
brief. See In re Kronig, 539 F.2d 1300, 1302, 190 USPQ 425, 426
(CCPA 1976) (the "ultimate criterion" of whether a rejection is
new is "whether appellants have had a fair opportunity to react
to the thrust of the rejection"). Accordingly, we treat claim 10
as falling with claim 9 because it was not argued in the main
brief. The rejection of claim 10 is sustained.
Claim 11
Appeal No. 95-2600
Application 07/990,458
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Appellant argues that none of the references discloses a
pair of elastic band portions and a pair of non-elastic band
portions as recited in claim 11 (Brief, pages 21-22). The
examiner states (Examiner's Answer, page 11):
Using various types and configurations of such well known
headbands constitutes an obvious choice in engineering
design and not inventive skill. Furthermore, Heilig
discloses a headband which uses rotatable elastic bands (16)
and non-elastic bands (17) (col.2, ln.18-20).
We note that the band 15 of cloth material in Heilig is more
analogous to the claimed non-elastic band portions than bands 17
because it attaches to the elastic bands at respective sides of
the display apparatus, whereas bands 17 rotatably attach the
elastic band portions to the sides of the casing 10. We agree
with the examiner that many variations of head bands could be
considered matters of design choice. "Design choice" has been
used where the differences appear to be a matter of choice by the
designer in doing something one way rather than another and solve
no stated problem and do not result in a different function or
give unexpected results. See In re Chu, 66 F.3d 292, 298-99,
36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995). However, since the
specific arrangement of non-elastic band portions rotatably
attached to each other at one end requires some sort of rigid
band and allows the band to be collapsed as shown in figure 12,
we do not think the arrangement can be dismissed as providing no
Appeal No. 95-2600
Application 07/990,458
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different function or results. Therefore, we conclude that the
examiner has failed to establish a prima facie case of
obviousness with respect to claim 11. The rejection of claim 11
is reversed.
Claims 12 and 13
The same reasoning applied to claim 1 is generally
applicable to claim 12. The "support frame" and "goggle-shaped
housing" have already been discussed. Suwa manifestly must have
structure corresponding to "mounting means" to hold the frame and
housing together because it is shown as an assembly.
Appellant argues that claim 12 requires that each block have
a light as recited in claim 2, whereas Suwa uses a single lamp
(Reply Brief, page 9). This argument is new in the Reply Brief,
but will be addressed since claim 12 was addressed in the main
brief. Since the argument is new, appellant cannot complain that
our response is new. Suwa discloses that "the light from the
point-source of light can be effectively utilized by two optical
systems so that the consumption of power can be reduced" (col. 4,
lines 40-42). In our opinion, this would have reasonably
suggested to the artisan that a separate light source be used for
each block if power was not a problem.
Appeal No. 95-2600
Application 07/990,458
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Claim 12 recites "a head band rotatably attached at opposite
ends thereof to the housing, the head band being capable of
folding over the housing." Appellant argues that "[t]he
references do not suggest a head band which can be folded over
the housing" (Brief, page 23) and "[s]ince the Examiner has
failed to allege that the head band would have been obvious, the
rejection of claims 12 and 13 should be reversed" (Brief,
page 23). The examiner clearly relied on Heilig as making
obvious the use of a head band (Final Rejection, pages 8-9). As
shown in figures 2 and 3, Heilig has a band 15 of cloth material
attached to two elastic side straps 16, which are attached to
rigid side straps 17 by buckles 18. The straps 17 are rotatably
attached to the housing as best shown at the right side of
figure 5. Note that claim 12 requires only that the head band be
attached to the housing and not to the side covers as recited in
claim 13. The band of Heilig is flexible and is therefore
capable of folding over the housing. None of the claims require
the head band to be rigid as disclosed. For these reasons, we
sustain the rejection of claim 12.
Appellant did not argue claim 13 in the main brief. The
examiner dropped the Schoolman reference from the statement of
the rejection of claim 13 in the Examiner's Answer (page 2).
Technically, this does not create a new ground of rejection. See
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Application 07/990,458
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Bush, 296 F.2d at 496, 131 USPQ at 266-67. Appellant does not
explain how he has been denied an opportunity to react to the
rejection when he never sought to argue claim 13 in the main
brief. It is noted that Schoolman was only applied as an example
of the use of headbands. We treat claim 13 as falling with
claim 12 because it was not argued in the main brief. The
rejection of claim 13 is sustained.
Claim 8
Claim 8 is directed to the embodiment of appellant's
figure 8. Claim 8 depends on claim 7 which recites that an
earphone 9 and bow 69 are attached to the side covers for sliding
movement in a forward or rearward direction. Claim 8 further
recites that the earphone is attached for rotation about an axis
extending in the direction of sliding movement and comprising
means for retaining the earphone rotated at a predetermined
angle. The examiner concludes that "it would have been obvious
to one of ordinary skill in the art at the time of the present
invention to modify the combination of Suwa and Heilig by
mounting the earphones on bendable metal tubes which enable the
earphones to rotate in any direction, including about an axis in
the direction of earphone sliding movement, for the purpose of
better accommodating the physical features of the user as taught
Appeal No. 95-2600
Application 07/990,458
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by Gale" (Examiner's Answer, page 12). Appellant argues that
"the references provide no suggestion for an earphone which can
both slide along an axis and also rotate about that axis" (Brief,
page 20) or "any means for retaining the earphone at a
predetermined angle" (Brief, page 21).
We reject the examiner's application of Gale to claim 8.
Since the earphones in Gale are not mounted to the side pieces of
the goggle, the earphone mounting in Gale has little
applicability to the claimed subject matter and we fail to see
how Gale would have suggested the subject matter of claim 8. The
rejection of claim 8 is reversed.
In our opinion, however, claim 8 would have been obvious
over Suwa and Heilig as applied to claim 7, without the addition
of Gale and we therefore enter a new ground of rejection under
37 CFR § 1.192(b). Heilig states (col. 2, lines 45-51): "Each
of these ear phones is adjustably supported by the casing 10, in
this instance by a rod 30 hinged to the ear phones 27, for
lateral adjustment, which rod is slidable in a socket 31 which
carries a set screw 32 for holding the rod in proper position to
bring its ear phone 27 to a point adjacent to the user's ear."
The earphones can slide in a forward or rearward direction as the
rod 30 moves in and out of the socket 31. Although the bow
limitation of claim 7 is not argued, the relatively large
Appeal No. 95-2600
Application 07/990,458
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earphones in Heilig which fit over a user's ear act as a bow
(i.e., as a curved sidepiece passing over the ear). Since the
rod 30 is round it can pivot as well as slide in the socket 31
and so is attached "for rotation about an axis extending in said
direction of sliding movement of the earphone," as recited in
claim 8. The set screw 32 comprises "means for retaining the
earphone rotated at a predetermined angle," as recited in
claim 8. It would have been obvious to the artisan to substitute
the earphone mount of Heilig for the earphone mount in Suwa
because it is a known alternative way to mount an earphone.
CONCLUSION
The rejections of claims 1-7, 9, 10, and 12-14 are
sustained.
The rejections of claims 8, 11, 15, and 16 are reversed.
A new ground of rejection is entered under 37 CFR § 1.196(b)
as to claim 8.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, "A new ground of rejection shall not
be considered final for purposes of judicial review."
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Application 07/990,458
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellant, 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 avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
Appeal No. 95-2600
Application 07/990,458
- 23 -
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
Appeal No. 95-2600
Application 07/990,458
- 24 -
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART - § 1.196(b)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-2600
Application 07/990,458
- 25 -
Ronald P. Kananen
MARKS & MURASE
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