Ex Parte Cazalet et alDownload PDFPatent Trial and Appeal BoardMay 16, 201613432751 (P.T.A.B. May. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/432,751 03/28/2012 98929 7590 05/16/2016 McDonnell Boehnen Hulbert & Berghoff LLP/Google Inc. 300 South Wacker Drive, Suite 3100 Chicago, IL 60606 FIRST NAMED INVENTOR Peter Cazalet 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 12-285 2479 EXAMINER PICHLER, MARIN ART UNIT PAPER NUMBER 2872 MAILDATE DELIVERY MODE 05/16/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER CAZALET and JOSEPH JOHN HEBENSTREIT Appeal2014-009806 Application 13/432,751 Technology Center 2800 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JON M. JURGOV AN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-9 and 13-23, which are all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Google Inc. (App. Br. 1 ). 2 Claims 10-12 and 24 have been canceled. Appeal2014-009806 Application 13/432,751 STATEivIENT OF THE CASE Introduction Appellants' invention relates to a head-mountable display having a band with a sliding mechanism for varying the band's stiffness (Spec. i-f 1 ). Claim 1 is illustrative of the invention and reads as follows: 1. A head-wearable frame, comprising: an outer u-shaped frame member of a first stiffness having formed thereon one of a channel or an element receivable in said channel, the outer member having a first tip- to-tip opening dimension; an inner flexible u-shaped frame member with a second stiffness different than that of said first stiffness, having the other of said channel or element receivable in said channel formed thereon, the inner member having a first tip-to-tip opening dimension; said inner and outer members being joined together in a sliding engagement with said element received in said channel, said flexible member being movable relative to said outer frame member to adjust stiffness of the frame; and a fixation device configured to (a) engage the outer member in an adjusted position in which the outer member has a second tip-to-tip opening dimension that is different from the first tip-to-tip opening dimension, and (b) engage the inner member in an adjusted position in which the inner member has a second tip-to-tip opening dimension that is different from the first tip-to-tip opening dimension. The Examiner's Rejections Claims 1-9 and 13-23 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite (see Final Act. 3-5). 2 Appeal2014-009806 Application 13/432,751 Claims 1, 2, 6-9, and 16-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jirsa et al. (US 2012/0002158 Al, published Jan. 5, 2012) (see Final Act. 6-14). Claims 3-5 and 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jirsa and Mullen (US 2009/0073084 Al, published Mar. 19, 2009) (see Final Act. 14--17). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. We disagree with Appellants' conclusions. § 112, Second Paragraph, Rejection The Examiner finds the recited limitations "a first tip-to-tip opening dimension" and "a second tip-to-tip" repeated in claim 1, are unclear as to whether they refer to the same first or second dimensions (Final Act. 3--4). Appellants contend the Examiner erred in rejecting claims 1-9 and 13-23 as indefinite, because the claims as filed distinctly claim the subject matter which the Appellants regard as the invention (App. Br. 16-17). Appellants however do not explain with sufficient particularity why the Examiner erred. Thus, we summarily sustain the 35 U.S.C. § 112, second paragraph, rejection of claims 1-9 and 13-23 as indefinite (see 37 C.F.R. § 41.37(c)(l)(iv)). § 103(a) Rejections- Claims 1, 2, 6, and 21 First Issue - A Fixation Device Appellants contend the claimed fixation device is configured to engage both an inner frame member and an outer frame member in an 3 Appeal2014-009806 Application 13/432,751 adjusted position, and the combination of Jirsa's tab and forehead bridge does not teach a single fixation device that accomplishes both functions (App. Br. 9-11). Appellants argue one of ordinary skill in the art would not have interpreted Jirsa's tab and bridge as parts of the same fixation device, because they are physically disjoint and perform unrelated functions (Reply Br. 3---6). We agree with the Examiner's finding that the broadest reasonable interpretation of "a fixation device," that is consistent with Appellants' disclosure, does not preclude the device from having multiple components, and thus the claims do not require a singular fixation device (Ans. 6-7). See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Additionally, the claimed fixation device is delimited by the function it performs, not by any particular structure. The Examiner finds Jirsa's retention tab teaches a fixation device configured to engage an inner frame member in an adjusted position (Final Act. 6-7; Ans. 6-7; citing Jirsa i-fi-136-38, tab 189 on interior temple 187), and finds Jirsa's forehead bridge teaches a fixation device configured to engage an outer frame member in an adjusted position (id., citing Jirsa i138, bridge 105 and temple 107). We agree with the Examiner's finding that Jirsa's combined structure performs the function of engaging an outer member via the forehead bridge, and engaging an inner member via the tab, and therefore teaches the claimed fixation device (id.). Accordingly, we are not persuaded of Examiner error in finding the combination of Jirsa's tab and forehead bridge teaches the recited fixation device. Second Issue - Inner and Outer Frame Members Appellants contend the second embodiment of Jirsa (i.e., Fig. 30) does not teach a fixation device that engages an outer frame member, in contrast 4 Appeal2014-009806 Application 13/432,751 to or in addition to an inner frame member, because the cited embodiment has only a single frame member (App. Br. 11-13). We are not persuaded of Examiner error by Appellants' contention. The Examiner properly relies on In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Ans. 7-8), and states that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures (id.). Therefore, contrary to Appellants' contentions based on the teachings of Jirsa's first and second embodiment separately (App. Br. 11-13), we agree with the Examiner's finding that the combination of Jirsa's interior temples 187 and temples 107 connected to bridge 105 meets the claimed inner frame member and outer frame member (Ans. 7-8). Third Issue - Inner U-shaped Frame Appellants contend Jirsa's two separate inner temples may be moved to adjust a space between the temples, but the separate inner temples do not teach an inner flexible u-shaped frame member that is adjusted from a first to a second tip-to-tip opening dimension (App. Br. 13-14). The Examiner finds, and we agree, that the broadest reasonable interpretation of "u-shaped frame" that is consistent with Appellants' disclosure does not preclude multiple parts of a frame arranged in u-form, as taught by Jirsa's inner temples (Ans. 8-9). See In re Morris, supra. Accordingly, Appellants' contention does not persuade us of Examiner error in finding Jirsa teaches or suggests the recited inner flexible u-shaped frame member. Fourth Issue-Teaching Away Appellants contend the Examiner failed to provide a rationale to combine the separate embodiments of Jirsa, and further argue Jirsa teaches 5 Appeal2014-009806 Application 13/432,751 away from the combination by providing different solutions in each embodiment for the same problem of adjusting the size of the frame (App. Br. 6-8; Reply Br. 7). We are not persuaded because the Examiner has articulated how the claimed features are met by the reference teachings with some rational underpinning to support the conclusion of obviousness: combining the different embodiments of Jirsa results in greater adjustability to accommodate different shapes and sizes of an adult or child's head (Ans. 5---6). See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Further, we agree with the Examiner's finding that Jirsa does not teach away from combining the separate embodiments by discouraging one of ordinary skill in the art from the combination, rather, it explicitly teaches the separate embodiments may be combined into a single embodiment (Ans. 5, citing Jirsa i-f 66). See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). Fifth Issue - Individual Embodiments Rendered Unsatisfactory by the combination for their Intended Purpose Appellants contend modifying Jirsa' s tab of the first embodiment into the forehead bridge of the second embodiment to form a single fixation device would render the device inoperable for its intended purpose (App. Br. 15-16). In response, the Examiner properly cites In re Keller, 642 F.2d at 425, and states: [T]he test for obviousness is not whether the features of a secondary teaching i.e. embodiment of Fig. 32 may be bodily incorporated into the structure of the primary teaching i.e. embodiment of Fig. 27; nor is it that the claimed invention must be expressly suggested in any one or all of the embodiments. Rather, the test is what the combined teachings of the references i.e. embodiments of Figs. 27 and 32 would have suggested to those of ordinary skill in the art. (Ans. 9.) 6 Appeal2014-009806 Application 13/432,751 The Examiner finds, and we agree, that the proffered combination does not modify the bridge to include the tab, but rather combines the tab and interior temples of the first embodiment with the outer temples and forehead bridge of the second embodiment, to achieve greater adjustability (Ans. 9). A unitary fixation device is not required by the claims, as discussed with regard to the First Issue, supra, and therefore combining the embodiments as suggested by the Examiner would not render the device inoperable for its intended purpose. CONCLUSIONS For the reasons discussed above, we sustain the 35 U.S.C. § 103(a) rejection of independent claims 1, 2, 6, and 21, as well as dependent claims 3-5, 7-9, 13-20, 22 and 23 which are not argued separately (see App. Br. 17). We summarily sustain the rejection of claims 1-9 and 13-23 under 35 U.S.C. § 112, second paragraph. DECISION The decision of the Examiner to reject claims 1-9 and 13-23 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation