The Government of the United States, as Represented by the Secretary of the Army

Patent Trials and Appeals Board

Jul 23, 2020

14479412 - (D) (P.T.A.B. Jul. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/479,412 09/08/2014 Mark Govoni CECOM 5638 2712
79380 7590 07/23/2020
U.S. ARMY CECOM LCMC, LEGAL OFFICE
6565 Surveillance Loop
Third Floor, Legal Office
Aberdeen Proving Ground, MD 21005
EXAMINER
ELNAFIA, SAIFELDIN E
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
07/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kirsten.j.hiera.civ@mail.mil
ronald.c.krosky.civ@mail.mil
valaria.r.johnson.civ@mail.mil
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GOVONI and JOHN SUAREZ
Appeal 2019-002054
Application 14/479,412
Technology Center 2600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 8, 12, 14, 19 and 22–33. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed September 8, 2014 (“Spec.”); Final
Office Action, mailed February 2, 2018 (“Final Act.”); Appeal Brief, filed
July 2, 2018 (“Appeal Br.”); Examiner’s Answer, mailed November 13,
2018 (“Ans.”); and Reply Brief, filed January 11, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as The Government of
the United States, as represented by the Secretary of the Army. Appeal Br.
2.
Appeal 2019-002054
Application 14/479,412
2
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION of claims 14 and 29–33 under 35 U.S.C. § 112(a) pursuant to
our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to an underwater heads-up display. Spec.,
Title. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An underwater mask, comprising:
an eyewear element configured to be substantially
transparent; and
a disclosure component configured to cause disclosure of
a heads-up display upon the eyewear element while the eyewear
element is submerged underwater.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wulich
Olstad
US 6,272,072 B1
US 6,868,360 B1
Aug. 7, 2001
Mar. 15, 2005
Estep
Rhode
Partridge
Kabel
US 2003/0115010 A1
US 2006/0286931 A1
US 2014/0049832 A1
US 2015/0039221 A1
Jun. 19, 2003
Dec. 21, 2006
Feb. 20, 2014
Feb. 5, 2015
REJECTIONS
Claims 12 and 32 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 4.
Claims 1, 22, and 23 Stand rejected under 35 U.S.C. § 102(a)(2) as
being anticipated by Partridge. Final Act. 5–6.
Claims 12, 19, 29, and 31 stand rejected under 35 U.S.C. § 102(a)(1)
as being anticipated by Estep. Final Act. 6–9.
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Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Estep. Final Act. 9–10.
Claims 2, 4, 24 and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Partridge and Olstad. Final Act. 10–11
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Partridge and Rhodes. Final Act. 11–12.
Claims 8, 25, and 28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Partridge and Wulich. Final Act. 12.
Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Partridge, Olstad, and Kabel. Final Ans. 14.
Claims 30, 32, and 33 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Estep and Kabel.3 Final Act. 15–17.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

OPINION
The Rejection of Claims 12 and 32 under 35 U.S.C. § 112(a)

3 The Examiner indicates claims 30, 32, and 33 are anticipated under 35
U.S.C. § 102(a)(1) but explains the rejection is based on the combination of
Estep and Kabel, determining the combination obvious. Final Act. 15–17.
Accordingly, the rejection as explained finds its basis under the provisions
of 35 U.S.C. § 103 rather than pursuant to § 102(a)(1). For purposes of this
appeal, we conclude the error in citing to the wrong section of the statute
constitutes harmless error. However, should prosecution be continued, the
Examiner should clarify the statutory basis for the rejection.
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Claim 12
Claim 12 recites as follows (language added since original filing
indicated in italics and a disputed element emphasized in bold):
12. A system, comprising:
an access component that accesses a data set that pertains
to an underwater diver;
a configuration component that configures a heads-up
display in accordance with at least part of the data set, where the
heads-up display, as configured, is disclosed directly upon an
eyewear element of the underwater diver such that a lens portion
of the eyewear element functions as a display medium that
presents the heads-up display to the underwater diver and such
that the heads-up display is see through except for a disclosure
of the data set; and
a non-transitory computer-readable medium that retains at
least one instruction associated with the access component, the
configuration component, or a combination thereof.

The Examiner finds “In claim 12, [the] recited ‘a lens portion . . . ’,
line 5, . . . was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art [that the inventor had
possession of the claimed invention].” Final Act. 4. Appellant contends
“Goggles, masks, and the like have lens portions - and the specification
[goes] into further detail talking about the substantially transparent nature
[of the eyewear element]. Certainly one of ordinary skill in the art would
[have] read “an eye cover element” [to] have conveyed to them that[,] since
it is unlikely someone wants a wearer to be rendered blind, a lens would be
included.” Appeal Br. 4. The Examiner responds, finding:
[A] simple definition of lens is “a piece of transparent material
(such as glass) that has two opposite regular surfaces either both
curved or one curved and the other plane and that is used either
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singly or combined in an optical instrument for forming an image
by focusing rays of light” from Merriam Webster, so the lens is
a specific device for specific function that means not all
transparent goggles and face masks should comprise a lens.
Ans. 3.
Appellant replies, offering a definition of a lens including “a piece of
glass or plastic used (as in safety goggles or sunglasses) to protect the eye.”
Reply Br. 2 (citing the Merriam-Webster online dictionary accessible at
https://www.merriamwebster.com/dictionary/lens).
We agree the Specification as originally filed does not provide an
adequate written description of the disputed “lens portion” recited by claim
12 in compliance with 35 U.S.C. § 112(a). Claim 12 as originally filed only
recited an eyewear element with no mention of the eyewear element being
comprised of other elements, such as, for example, the claimed “lens
portion.” Looking to the Specification and drawings, we likewise find
insufficient support for any corresponding structural detail whereby the
eyewear element includes a lens portion that functions as a display medium.
In particular, we can identify no mention or depiction of a lens portion. All
that is mentioned is a transparent eyewear element represented by a simple
box 910 in Figure 9 of the drawings. Thus, even the drawings fail to depict
structure disclosing what is considered to be part of the claimed eyewear
element. Accordingly, in the absence of sufficient written support for the
recited lens portion, we sustain the Examiner’s rejection of claim 12 under
35 U.S.C. § 112(a).
Because we agree the Specification fails to describe the disputed lens
portion, we do not decide whether the Examiner’s interpretation of a lens as
requiring a curved surface is appropriate. However, we note in passing that
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the art-of-record’s use of the disputed lens term is consistent with definition
urged by Appellant. See, e.g., Estep Fig. 2 (lens 70), Spec. ¶ 49 (“the
illustrated embodiment of the diving masks includes a lens”).
Claim 32
Claim 32 recites as follows (disputed element emphasized in bold):
32. The system of claim 12,
an identification component configured to identify a depth
level of the underwater diver from the data set; and
a selection component configured to select a brightness
level for the heads-up display based, at least in part, on the depth
level,
where the configuration component configures the heads-
up display in accordance with the brightness level.
The Examiner finds the limitation “select a brightness level” does not
find appropriate written description support in the Specification as filed.
Appellant contends disclosure of selecting text color “is selection of
brightness level” and thereby provides written description support of later-
filed claim 32. Appeal Br. 4 (citing Spec. ¶¶ 56–57). The Examiner
disagrees the paragraphs of the Specification cited by Appellant describing
color selection would have reasonably conveyed to on skilled in the relevant
art Appellant’s possession of the subject matter of claim 32 including
selection of a brightness level. Ans. 4.
Appellant’s argument is unpersuasive of reversible Examiner error. In
particular, we agree with the Examiner that a disclosure of selecting a color
does not mean or support selection of a brightness level. See Ans. 4.
Although selecting a color may also affect brightness, the two visual
properties/attributes are different as evidenced by typical displays having
separate controls for brightness and color (e.g., hue, intensity, color
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temperature). Accordingly, we sustain the Examiner’s rejection of claim 32
under 35 U.S.C. § 112(a).

New Grounds of Rejection under 35 U.S.C. § 112(a)
Claims 14 and 29–33 depend from claim 12, the rejection of which
under 35 U.S.C. § 112(a) we sustain for the reasons discussed above.
Therefore, by inherency, claims 14 and 29–33 also fail to satisfy the written
description requirement of 35 U.S.C. § 112(a). The Examiner does not
indicate that these dependent claims are included in the rejection under 35
U.S.C. § 112(a). Accordingly, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we reject 14 and 29–33 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement for the reasons asserted in
connection with claim 12.

The Rejections of Claims under 35 U.S.C. § 102(a)
Claims 1, 22, and 23 – Anticipation by Partridge
Claim 1
Claim 1 recites:
1. An underwater mask, comprising:
an eyewear element configured to be substantially
transparent; and
a disclosure component configured to cause disclosure of
a heads-up display upon the eyewear element while the eyewear
element is submerged underwater.
The Examiner finds Partridge’s goggles 17 discloses the claimed
eyewear element and heads-up display 12 discloses the claimed heads-up
display. Final Act. 5. Appellant argues “In Partridge, the housing 18 of the
heads-up display 12 includes a display panel 24 and information is disclosed
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on the display panel 24.” Appeal Br. 7. According to Appellant “Nothing is
displayed upon the goggles 17 of Partridge . . . Partridge expressly states the
user looks through the goggles to a display somewhere else. In contrast, for
claim 1, the heads-up display is displayed upon the eyewear element.” Id.
The Examiner responds, explaining:
The only relationship currently claimed between the eyewear
element and the disclosure component is that there be a heads-up
display “upon the eyewear element.” The broadest reasonable
interpretation of this is seen to include the display of Partridge
that is positioned “upon” the eyewear element. In fact
applicant’s own specification contemplates a similar
arrangement in stating “the disclosure component can physically
connect to the eyewear element” (Para. 47).
Ans. 4–5. Appellant replies, arguing “that the disclosure component can
physically connect to the eyewear element . . . this has nothing to do with
Partridge nor the argument at hand.” Reply Br. 3. According to Appellant,
any physical connection would not “cause the display upon the eyewear
element.” Id.
Appellant’s contention is unpersuasive of reversible Examiner error.
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Construing
claims broadly during prosecution is not unfair to the applicant, because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage. Acad. of Sci. Tech Ctr., 367 F.3d at 1364; see also In re
Skvorecz, 580 F.3d 1262, 1267–68 (Fed. Cir. 2009) (“Applicant always has
the opportunity to amend the claims during prosecution, and broad
interpretation by the examiner reduces the possibility that the claim, once
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Application 14/479,412
9
issued, will be interpreted more broadly than is justified.” (quoting Manual
of Patent Examining Procedure § 2111)).
In construing the subject claim language we are unable to identify a
limiting definition of the claimed eyewear element. We are only informed
that the eyewear element is substantially transparent and that the wearer can
be presented with information by way of the eyewear element. Spec.¶ 47.
Appellant provides no drawings depicting the eyewear element or the
specifics of a configuration such that a disclosure component causes a
“disclosure of a heads-up display upon the eyewear element” as recited by
claim 1. Furthermore, by Appellant’s use of the phrase “disclosure of a
heads-up display” it is not clear what type of display is presented. For
example, if Appellant alleges a real image is formed on the eyewear
element, we find insufficient evidence that such a requirement is imposed by
the argued limitation. Even if formation of a real image were required, it is
not clear where upon the eyewear element such image must be formed, e.g.,
whether the image might formed in a heads-up display device positioned
upon the goggles. Therefore, under a broad but reasonable interpretation of
claim 1, by disclosing positioning heads-up display 12 on goggles 17,
Partridge discloses the disputed disclosure component configured to cause
disclosure of a heads-up display upon the eyewear element while the
eyewear element is submerged underwater as recited by claim 1.
Claim 22 recites
22. The underwater mask of claim 1,
where the eyewear element is substantially transparent and
where heads-up display is viewable when the underwater
mask is worn and where the heads-up display is not viewable
when the underwater mask is not worn.
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Appellant argues “so long as the display 12 is in the line of sight of
the user in Partridge, the user 16 can view the display 12 even without the
goggles 17. By contrast, with claim 22, the display is not viewable when the
mask is not worn.” Appeal Br. 8.
Appellant’s argument is persuasive of reversible Examiner error. In
order to anticipate under 35 U.S.C. § 102, a prior art reference must not only
disclose all elements of the claim within the four corners of the document
(whether expressly or inherently), but must also disclose those elements
“arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983).
Partridge discloses heads-up display 12 coupled to rebreather 10 by
mounting arm 14. Partridge ¶ 12. Partridge’s goggles 17 are separate and
apart from heads-up display 12. See Partridge Figs. 1 and 2 (reproduced
below). We find no disclosure and the Examiner does not explain why
Partridge’s heads-up display 12 is not viewable when goggles 17 are
removed as claimed. Accordingly, we do not sustain the rejection of claim
22.

Figures 1 and 2 of Partridge depicting a heads-up display mounted on a
rebreather and a head of a user.
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11
Claim 23 recites
23. The underwater mask of claim 1,
where a user of the underwater mask cannot see through a
part of the eyewear element displaying the heads-up display
because the heads-up display obscures vision and
where the user of the underwater mask can see through a
part of the eyewear element not displaying the heads-up display.
Appellant argues “Partridge expressly states the user sees through the
goggles 17 to the heads-up display and Figure 2 illustrates this concept. At
no point does Partridge discussing the user not seeing through part of the
eyewear element, let alone because the heads-up display obscures vision.”
Appeal Br. 8.
Appellant’s argument is unpersuasive of Examiner error. Appellant
does not define what is required to see through a part of the eyewear element
other than to recite that a user cannot see through a part of the eyewear
element . . . because the heads-up display obscures vision. As depicted in
Figures 1 and 2 of Partridge (reproduced above), heads-up display 12 blocks
or obscures the field of vision of user 16 laying beyond the display.
Accordingly, under a broad but reasonable interpretation of claim 23,
Partridge’s positioning of heads-up display 12 in front of goggles 17
discloses the disputed limitation requiring that a user of the underwater mask
cannot see though a part of the eyewear element displaying the heads-up
display because the heads-up display obscures vision. Accordingly, we
sustain the rejection of claim 23.
Claim 12 – Anticipation by Estep
Claim 12 recites, in relevant part,:
. . . where the heads-up display, as configured, is disclosed
directly upon an eyewear element of the underwater diver such
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that a lens portion of the eyewear element functions as a display
medium that presents the heads-up display to the underwater
diver . . .
The Examiner finds Estep’s display system having a small prism-type
optic 72 attached to or manufactured as part of lens 70 of face mask 10
discloses a heads-up display disclosed directly upon an eyewear element
such that a lens portion of the eyewear element functions as a display
medium. Final Act. 6–7. Appellant contends, although prism optic 72
functions as the display medium that presents the heads-up display, prism
optic 72 is not part of the lens but is a part that replaces a lens portion that is
drilled out. Appeal Br. 9.
Appellant’s contention is unpersuasive of reversible Examiner error.
As discussed infra, Appellant fails to disclose that the eyewear element has a
lens portion or what structure that lens portion represents. Furthermore,
Appellant fails to explain why Estep’s prism optic is not part of any lens
portion merely because it is attached to a drilled out portion of the lens as
argued. Still further, Appellant fails to explain why, when prism-type optic
72 of Estep is a manufactured part of lens 70 as described at paragraph 62 of
the reference, it fails to disclose a lens portion of the eyewear element that
functions as a display medium. That is, prism-type optic 72 is part of lens
70, whether by integral manufacturing as part of lens 70 or by later addition
of prism-type optic 72 to lens 70, such that, under a reasonable but broad
interpretation, a lens portion of the eyewear element functions as a display
medium as recited by claim 12. Accordingly, we sustain the rejection of
claim 12 under 35 U.S.C. § 102(a)(1) as being anticipated by Estep.
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Claim 19 – Anticipation by Estep
Claim 19 recites, in relevant part:
. . . a heads-up display component configured to cause a heads-
up display to be displayed directly upon the eye protector such
that the eye protector functions as a display screen for the user to
view the heads-up display . . .
Appellant’s argument in connection with claim 19 is substantively
similar to that which we find unpersuasive in connection with claim 12. In
particular, claim 19 fails limit the claimed eye protector so as to exclude
display by Estep’s prism optic 72. For example, claim 19 does not require
the heads-up display be displayed by projecting or forming a real image onto
a planar surface of the transparent material of the eye protector.
Accordingly, for the same reasons discussed in connection with claim 12, we
sustain the rejection of claim 19 under 35 U.S.C. § 102(a)(1) as being
anticipated by Estep.
Claim 31 – Anticipation by Estep
Claim 31 recites, in relevant part:
an inclusion determination component that makes a
determination on if the heads-up display should include a
visual indicator for a subset of the data set,
where the configuration component configures the heads-ups
display with the visual indicator when the determination is
that the heads-up display should include the visual indicator,
where the configuration component does not configure the
heads-ups display with the visual indicator when the
determination is that the heads-up display should not include
the visual indicator . . .
Appellant argues Estep’s computer system that responds to spoken
words to provide visual images to a visual display fails to disclose making a
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determination whether to include and display a visual indicator for a subset of
a data set. Appeal Br. 10–11.
Appellant’s contention is unpersuasive of reversible Examiner error. In
a finding of anticipation, “the reference need not satisfy an ipsissimis verbis
test[.]” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond,
910 F.2d 831, 832–33 (Fed. Cir. 1990)). Moreover, the prior art reference is
read from the perspective of one with ordinary skill in the art. In re Graves,
69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it
discloses the claimed invention such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and be
in possession of the invention.” (citation and quotation marks omitted)); In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a
reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would reasonably
be expected to draw therefrom.”).
Estep discloses “spoken words provide input to the computer to direct
the computer system to provide visual images to the visual display in response
thereto, to facilitate hands-free operation of the diver.” Estep, Abstract. Estep
further discloses computer input in the form of spoken words allows a user to
control the computer and, correspondingly, what is displayed:
As illustrated, the computer system 34 may provide a plurality of
predetermined functions or applications, which are displayed on
the display device 68. The computer system 34 is configured to
perform at least one of the predetermined functions in response
to the input representative of the spoken words of the diver. Each
function shown and selected may represent a self-contained task,
which can be directly performed by the computer system 34, or
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may cause one or more additional menus or sub-menus to be
displayed.
Estep ¶ 101. Estep further discloses a photography function allowing a diver
to select various menu options including “DISPLAY CURRENT CAMERA
VIEW.” Estep ¶ 106. Thus Estep discloses an inclusion determination
component (computer 34) that makes a determination on if the heads-up
display should include a visual indicator for a subset of the data set (e.g.,
determines whether the diver has requested display of the current camera
view) and configures the heads up display with the visual indicator (the
current camera view) as appropriate in accordance with claim 31.
Accordingly, because we find Estep discloses the disputed limitations, we
sustain the rejection of claim 31 under 35 U.S.C. § 102(a)(1) as being
anticipated by Estep.
The Rejections of Claims under 35 U.S.C. § 103
Claim 14
Claim 14 recites:
14. The system of claim 12, comprising:
a housing configured to retain the access component, the
configuration component, and the non-transitory computer-
readable medium such that the access component, the
configuration component, and the non-transitory computer-
readable medium function without substantial adverse impact
when submerged up to and including about 350 meter.
The Examiner finds:
[Although] Estep does not expressly disclose[] submerged up to
and including 350 meter[s] . . . it would have been obvious to a
person having ordinary skill in the art before the effective filing
date of the claimed invention as a design choice for a diving mask
to be under water “submerged” up to a certain depth for example
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350 meter as long as protect the electronic equipment from water,
the examiner assumes that it is obvious to reach such depth
through experimentation to reach the optimized level.
Final Act. 10.
Appellant contends the selection of 350 meters is not obvious,
representing a submersion level this is “quite severe.” Appeal Br. 13. The
Examiner responds, as follows:
It is the Office’s position that housing SCUBA equipment so as
to have no substantial adverse impact at 350 meters [is] a
question of routine optimization of a result effective variable. It
is unquestioned that the depth at which SCUBA equipment
operates at is recognized as a result-effective variable. At the
time of filing it would have been obvious to one to select a
housing rated for SCUBA depth diving which 350 meters
corresponds to. Notably Appellant has not disclosed any unique
structure or any special considerations that would have be
considered at a depth of 350 meters.
Ans. 7. Appellant replies, arguing the Examiner has not provided sufficient
evidence in support of the Examiner’s finding that it would have been
obvious to select a housing rated for depths up to and including 350 meters.
Reply Br. 4.
Appellant’s argument is persuasive of reversible Examiner error. The
Examiner’s reasoning that the depth at which SCUBA equipment operates is
a result-effective variable does not apply to the rejection as articulated by the
Examiner. A result effective variable is one that achieves a recognized
result. It is unclear how, as alleged by the Examiner, “it is obvious to reach
such depth through experimentation to reach the optimized level.” See Final
Act. To the extent the Examiner finds “Appellant has not disclosed any
unique structure or any special considerations that would have be considered
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at a depth of 350 meters” (Ans. 7), such deficiency might be a basis to reject
claim 14 under 35 U.S.C. § 112(a) rather than under § 103 as in the
challenged rejection. Furthermore, we do not decide whether claim 14 is
rendered obvious by other portions of the art of record. For example, we
note Olstad discloses a waterproof housing depth rated to about 200 feet
(Olstad col 3, ll. 10–12). However, because we find insufficient the
Examiner’s current reasoning for rejecting claim 14, we do not sustain the
Examiner’s rejection of that claim under 35 U.S.C. § 103.
Claims 2 and 4
Claim 2 recites:
2. The underwater mask of claim 1, where the heads-up display
comprises a directional portion configured to indicate a location
of a signal relative to a direction a wearer of the eyewear element
faces.
Claim 4 recites:
4. The underwater mask of claim 1, where the heads-up display
comprises a distance portion configured to indicate a distance of
a signal source relative to a location of a wearer of the eyewear
element.
The Examiner finds Olstad’s magnetic field sensor supplying magnetic
field data signals indicative of the direction faced by an operator teaches the
limitations of claims 2 and 4. Final Act. 10 (citing Olstad Fig. 2, col. 3, ll.
29–36, 50–52). In connection with claim 2, Appellant contends Olstad “is
silent regarding a directional portion configured to indicate a location of a
signal relative to a direction a wearer of the eyewear element faces.” Appeal
Br. 14. In connection with claim 4, Appellant contends “Olstad discusses
having the compass data at a viewing distance that is comfortable from the
viewer, not an indication of a distance of a signal source. Mere inclusion of
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the term “distance” does not teach this claim feature, especially when the
distance is a completely different distance.” Id. at 15.
We agree with Appellant. Olstad describes a signal generated by a
magnetic field sensor, not a sensor that indicates a location of signal as
required by claim 2. Furthermore, the distance described in the cited portion
of Olstad is a viewing distance in front of the eyes of the operator, not a
distance to a signal as required by claim 4. Accordingly, we do not sustain
the rejection of claims 2 and 4. For the same reasons, we do not sustain the
rejections of claim 26 and 27 which depend from claim 2.
Claim 24
Claim 24 recites:
24. The underwater mask of claim 1, comprising:
a light emitting diode configured to indicate a location of
a signal relative to a directional orientation of a viewing field of
the eyewear element.
The Examiner finds Olstad’s display may include LEDs thereby
teaching the limitations of claim 24 based on reasoning similar to that
applied in connection with claim 2. Final Act. 24. Appellant contends
Olstad merely discloses use of LEDs in general but is otherwise silent
concerning indicating a location of a signal relative to a directional
orientation of a viewing field of the eyewear element. Appeal Br. 16. The
Examiner responds, finding:
Olstad teach[es] in col. 3, lines 29-36 mounting mechanism 20
allows for attachment and adjustable location of compass system
10 at a desired position in front of the eyes 17 of operator 16 for
real-time observation of compass data images 11. This capability
assures that operator 16 will clearly see a virtual image of
compass data focused at a comfortable viewing distance by
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simply shifting the operator's view to focus on other parts of
compass system 10 to be described.
Ans. 8.
We agree with Appellant: “Using an LED to indicate the location
based on directional orientation of a viewing field is not taught by mere
discussion of the existence of LEDs.” Reply Br. 6. As discussed above in
connection with claim 2, Olstad fails to teach indicating a location of a
signal relative to a directional orientation of a viewing field of the eyewear
element. Accordingly, we do not sustain the rejection of claim 24 under 35
U.S.C. § 103.
Claims 26 and 27
We do not sustain the rejection of claim 26 under 35 U.S.C. § 103 for
the reasons discussed above in connection with claim 2 from which claim 26
depends.
Claim 3
Claim 3 recites:
3. The underwater mask of claim 1, where the heads-up display
comprises a directional portion configured to indicate a location
of a signal relative to a direction of an antenna that receives the
signal.
The Examiner finds Rhode’s use of a directional antenna “to
concentrate and maximize the power a transmitter sends in the direction of a
receiver” (Rhodes ¶ 85) teaches the limitations of claim 3. Final Act. 11–12.
According to the Examiner, “It would have been obvious to one of ordinary
skill in the art at the time of the invention to incorporate teachings of Rhodes
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et al. into Partridge et al. system in order to use directional antennas.” Id. at
12.
Appellant contends:
A concept of having directional antennas does not teach
indicating a signal relative to a direction of the antenna.
Furthermore, even if mere existence of a directional antenna does
somehow teach this, this falls well short of indicating the location
on a directional portion of a heads-up display as claim 3 recites.
Appeal Br. 17.
Appellant’s contention is persuasive of reversible Examiner error for
the reasons argued by Appellant. Accordingly, we do not sustain the rejection
of claim 3 under 35 U.S.C. § 103.
Claim 8
Claim 8 recites:
8. The underwater mask of claim 1, where the heads-up display
comprises a physical vital portion configured to disclose physical
vital information about a person that is not a wearer of the
underwater mask.
The Examiner finds Wulich’s device including an SOS mode enabling
a diver in distress to broadcast a distress signal to nearby divers teaches the
limitation of claim 8. Final Act. 12. Appellant argues “an SOS is not the
same as a signal to disclose physical vital information.” Appeal Br. 17.
In interpreting claim 8 we note Appellant discloses “physical vitals
can comprise heart rate, level of consciousness, breathing rate, body
temperature, etc.” Spec. ¶ 55. Because the Examiner fails to explain why an
SOS signal discloses physical vital information, we do not sustain the
rejection of claim 8 under 35 U.S.C. § 103.

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Claim 25
Claim 25 recites:
25. The underwater mask of claim 1,
where the heads-up display comprises a physical vital
portion configured to disclose physical vital information about a
person that is not a wearer of the underwater mask,
where the heads-up display comprises a positional portion
configured to disclose compass-based positional information
with degree information of a direction a wearer of the eyewear
element faces,
where the heads-up display comprises a directional portion
configured to indicate a location of a signal relative to a direction
of an antenna that receives the signal, and
where the heads-up display comprises a distance portion
configured to indicate a distance of a signal source relative to a
location of a wearer of the eyewear element.
The Examiner finds Wulich teaches the first limitation of claim 25
i.e., a heads-up display including physical vital portion. Final Act. 13 (citing
Wulich Fig. 1, 11, col. 6, l. 7 – col. 7, l. 17). Appellant argues
None of [the cited portions of Wulich] relate[] to direction of an
antenna or distance of a source. Antenna direction is never
discussed in this part of Wulich. The only discussion of distance
in [the cited] text is that even if a diver is not in-network, the SOS
signal can still be communicated if the diver is close enough.
However, at no point is an actual distance determined let alone
display of such a distance.
Appeal. Br. 19. The Examiner responds, finding the previously cited
portions of Wulich additionally teach the remaining limitations of claim 25.
Ans. 9–10.
Appellant replies, arguing the cited portion of Wulich fails to teach
the either the physical vital portion limitation as alleged by the Examiner or
the remaining limitations of claim 25. Reply Br. 7.
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Appellant’s argument is persuasive of reversible Examiner error for
the reasons argued by Appellant. In particular, we agree with Appellant that
the cited portions of Wulich fail, not only to teach the physical vital
limitation, but also fail to teach the remaining limitations of claim 25.
Accordingly, we do not sustain the rejection of claim 25 under 35 U.S.C.
§ 103.
Claim 28
Claim 28 depends from claim 8. Accordingly, we do not sustain the
rejection of claim 28 for the reasons discussed above in connection with
claim 8.
Claim 32
Claim 32 recites4:
32. The system of claim 12,
an identification component configured to identify a depth
level of the underwater diver from the data set; and
a selection component configured to select a brightness
level for the heads-up display based, at least in part, on the depth
level, where the configuration component configures the heads-
up display in accordance with the brightness level.
The Examiner cites to Figures 3 and 4 paragraphs 34 and 35 of Kabel
for teaching the limitations of claim 12. Final Act. 16–17. Appellant
contends the cited portion of Kabel discloses a sonar display in which depth
information is represented by appropriate map shading using various colors
or shades of colors. Appeal Br. 20. Appellant argues “This has nothing to

4 We note claim 32 omits any transitional phrase between the preamble and
body of the claim. For purposes of this appeal, we interpret claim 32 as if
including a transitional phrase of “further comprising” such that the
preamble of claim 32 reads “The system of claim 12 further comprising:”.
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do with a depth level of a diver, but instead an ocean floor depth level
irrelevant of a diver.” Id. The Examiner responds by repeating the original
rejection. Ans. 10–11.
Appellant’s contention is persuasive of reversible Examiner error.
Kabel’s shading uses colors, not brightness levels. Furthermore, Kabel’s
shading is related to underwater depth measurement based on mapping of
underwater terrain features, not a depth level of an underwater diver.
Accordingly, we do not sustain the rejection of claim 32 under 35 U.S.C.
§ 103.

Claim 33
Claim 33 recites5:
33. The system of claim 12,
a reception component that receives the data set; and
a processor component that processes the data set such that
a distance of a signal source relative to a location of a wearer of
the eyewear element is accessible, where the configuration
component configures the heads-up display to disclose a visual
indicator of the distance of the signal source relative to the
location of the wearer of the eyewear element.
The Examiner finds the limitations of claim 33 are taught by Kabel at
paragraphs 34 and 35 of the reference. Final Act. 17. Appellant contends
the cited portions of Kabel merely describe using colors to indicate
underwater depth measurements on a map display but do not otherwise teach
or suggest the subject matter of claim 33. Appeal Br. 21. We agree.

5 We note claim 33 omits any transitional phrase between the preamble and
body of the claim. For purposes of this appeal, we interpret claim 33 as if
including a transitional phrase of “further comprising” such that the
preamble of claim 33 reads “The system of claim 12 further comprising:”.
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Accordingly, we do not sustain the rejection of claim 33 under 35 U.S.C.
§ 103.
Claims 29 and 30
Dependent claims 29 and 30 are not separately argued apart from
independent claim 12 from which claims 29 and 30 depend. Because
Appellant’s arguments in connection with claim 12 are unpersuasive of
reversible Examiner error for the reasons discussed above, we likewise
sustain the rejection of claim 29 and 30 under 35 U.S.C. § 103.
CONCLUSION
We affirm the rejections of claims 12 and 32 under 35 U.S.C.
§ 112(a).
We affirm the rejections of claims 1, 12, 19, 23, 29, and 31under 35
U.S.C. § 102.
We reverse the rejection of claim 22 under 35 U.S.C. § 102.
We reverse the rejections of claims 2–4, 8, 14, 24–28, 30, 32, and 33
under 35 U.S.C. § 103.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
newly reject claims 14 and 29–33 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Rule 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, Appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[s] of rejection to avoid
termination of the appeal as to the rejected claims:
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(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 prosecution
will be remanded to the examiner. The new ground[s] of
rejection [are] binding upon the examiner unless an amendment
or new Evidence not previously of Record is made which, in
the opinion of the examiner, overcomes the new ground[s] of
rejection designated in [this] decision. Should the examiner
reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
12, 32 112(a) Written Description 12, 32 14, 29–33
1, 22, 23 102(a)(2) Partridge 1, 23 22
12, 19, 29,
31
102(a)(1) Estep 12, 19, 29,
31

14 103 Estep 14
2, 4, 24, 26 103 Partridge, Olstad 2, 4, 24, 26
3 103 Partridge, Rhodes 3
8, 25, 28 103 Partridge, Wulich 8, 25, 28
27 103 Partridge, Olstad,
Kabel
27
30, 32, 33 103 Estep, Kabel 30, 32, 33
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
Overall
Outcome:
1, 12, 19,
23, 29, 31,
32
2–4, 8, 14,
22, 24–28,
30, 33
14, 29–33
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)