Ex Parte Eda

Board of Patent Appeals and Interferences

Jun 26, 2008

10150933 (B.P.A.I. Jun. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TATSUJI EDA
____________________

Appeal 2007-2462
Application 10/150,933
Technology Center 2600
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Decided: June 26, 2008

____________________

Before ANITA PELLMAN GROSS, ROBERT E. NAPPI,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellant’s Request for Rehearing, filed April 1, 2008, contends that
we erred in our Decision on Appeal entered February 1, 2008, in which we
affirmed the rejection of claims 1-16.
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Application 10/150,933

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OPINION
We maintain our previous conclusion that Appellant failed to show
error in the rejection of the claims over the applied prior art. Appellant’s
Brief purported to show error in the Examiner’s rejection of claims as
anticipated by Appellant’s Admitted Prior Art Figure 3, claims 1, 6, and 11
being representative claims in our review of the § 102 rejection.
Appellant asserts that the Board erred in stating that claim 11 recites
“an optical pickup comprising …” in its preamble (Req. for Reh’g 2), and
that the Board erred in stating that Appellant did not separately argue claim
12 (Req. for Reh’g 3).
Claim 11
Appellant argues that the Board erred in stating that claim 11 recites
“an optical pickup comprising …” in its preamble, and further argues that in
independent claim 11, an “optical pickup” is a specific element of the
apparatus (Req. for Reh’g 2).
Claim 11 recites
An apparatus comprising:
an optical pickup comprising:
a plurality of laser light-emitting elements;
a photodetector for receiving laser light radiated from the
plurality of laser light-emitting elements and monitoring the power of
the radiated laser light;
a plurality of adjusters for adjusting the power of the radiated
laser light from the plurality of laser light-emitting elements via the
photodetector; and
a switch for selecting one of the plurality of adjusters.

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The “optical pickup” is the only element recited within the apparatus.
The claimed photodetector, plurality of adjusters, and switch are clearly all
sub-elements of the optical pickup. The optical pickup is not referenced at
any point in the claim, after its initial mention. Under the circumstances, we
consider the preamble of claim 11 to be “An apparatus comprising: an
optical pickup comprising ….” We therefore maintain our position in the
Decision that we perceive no difference in meaning between the two claims,
relative to Prior Art Figure 3, and that our analysis of claim 11 is the same as
for claim 1.
In the alternative, even if one were to interpret “An optical pickup
comprising …” in claim 11 as not part of the preamble of the claim, there is
no limitation in the claim prohibiting the Board from construing the “optical
pickup” of Figure 3 as including switch 34, as we stated with regard to claim
6 in the Decision. Because claim 11 is identical to claim 6, except that claim
11 does not recite the optical pickup being “used with an apparatus board”
and is an apparatus claim, claim 11 stands rejected for the same reasons as
those for claim 6 (and claim 1) in the Decision.
Therefore, Appellant has not shown any points which we
misapprehended or overlooked in our Decision with respect to claim 11.
Claim 12
Appellant argues that the Board erred in stating that claim 12 was not
separately argued, directing the Board’s attention to pages 51 and 8 of the
Appeal Brief (Req. for Reh’g 3).

1 Claim 12 is actually discussed at page 6 of Appellant’s Brief, rather than
page 5.
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Application 10/150,933

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37 C.F.R. § 41.37(c)(1)(vii) states:
Argument. The contentions of appellant with respect to
each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefor, with citations of
the statutes, regulations, authorities, and parts of the record
relied on. Any arguments or authorities not included in the
brief or a reply brief filed pursuant to § 41.41 will be refused
consideration by the Board, unless good cause is shown. Each
ground of rejection must be treated under a separate heading.
For each ground of rejection applying to two or more claims,
the claims may be argued separately or as a group. When
multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to
decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately. Any claim argued separately should be
placed under a subheading identifying the claim by number.
Claims argued as a group should be placed under a subheading
identifying the claims by number. A statement which merely
points out what a claim recites will not be considered an
argument for separate patentability of the claim.

(Emphasis added.)

Appellant’s mention of claim 12 at pages 6 and 8 of his Brief does not
constitute an argument for separate patentability of the claim. Appellant, at
page 6 of the Brief, states that “Dependent claim 12 even further recites the
apparatus including an apparatus board including an automatic laser power
control element, again further clarifying that the switch is not part of such an
apparatus board. Independent claims 6 and 11 are believed to thereby also
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Application 10/150,933

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distinguish over the admitted art of Figure 3” (emphasis in original). First,
Appellant did not place this “argument” under a subheading identifying
claim 12 by number, as 37 C.F.R. § 41.37(c)(1)(vii) requires. Second, it is
clear from context that this sentence is meant to explain how claims 6 and 11
distinguish over the prior art. It is not intended to be a separate argument for
the patentability of claim 12. Third, this sentence merely points out what
claim 12 recites. No attempt is made to distinguish this particular limitation
from the Admitted Prior Art. The argument that “the switch is not part of
such an apparatus board” is clearly intended to advance Appellant’s
argument for the patentability of claims 6 and 11. Appellant’s mention of
claim 12 at page 8 of his Brief is nearly identical to that of page 6, and
similarly fails to advance a separate argument for the patentability of claim
12, again merely pointing out what claim 12 recites.
Because Appellant failed to properly argue claim 12 separately, the
Board did not err in concluding that Appellant had waived the argument that
the Board should consider the patentability of claim 12 separately.
Therefore, Appellant has not shown any points which we
misapprehended or overlooked in our Decision with respect to claim 12.

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CONCLUSION
In summary, we have granted Appellant’s request for rehearing to the
extent that we have reconsidered our decision sustaining the rejection of
claims 1-16, but we decline to modify the Decision in any way.

DENIED

KIS

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314