Ex parte Fukuda et al.

Board of Patent Appeals and Interferences

Sep 19, 2000

07759865 (B.P.A.I. Sep. 19, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This decision is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TSUYOSHI FUKUDA,
TATSUO KONNO, and TOSHIO MATSUMOTO
____________
Appeal No. 1994-4024
Application No. 07/759,865
____________
ON REQUEST FOR REHEARING
____________
Before STONER, Chief Administrative Patent Judge, and CALVERT
and TORCZON, Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION ON REHEARING UNDER 35 U.S.C. § 6(b)
The examiner has requested reconsideration (Paper No. 29)
of the Board's decision on appeal (Paper No. 27) in which the
rejection was reversed. Upon consideration of the request,
the Appellant's response (Paper No. 30), and the
administrative record of the application, rehearing is granted
and the rejection of claims 1-18 is affirmed.
BACKGROUND
The appeal relates to a mount for attaching apparatus to
a camera. In the examiner's answer, the examiner found that
the sole difference between the admitted prior art lens mounts
and the claimed subject matter was the limitation requiring
Appeal No. 1994-4024 Page 2
Application No. 07/759,865 Paper No. 31
the lens mounts to be made of plastic (Paper No. 23 at 4).
The examiner relied on Doi, U.S. Patent No. 4,239,364 at 8-10
and 40-46 (16 Dec. 1980) for the suggestion to mold mounts
from plastic to reduce the weight of the camera (Paper No. 23
at 4).
In the appeal, the claims stood or fell together, so the
Board selected as the representative claim Appellant's
claim 7:
A mount for an apparatus adapted to be attached
to and detached from a mount of another apparatus,
said mount for the apparatus being molded of plastic
material, wherein:
a circumferential groove or projection is
provided by molding on an abutment surface of said
mount for the apparatus which comes into contact
with said mount of said other apparatus.
(Paper 7 (Supp. Amdt.) at 2-3.) While Appellant's
specification discloses a plastic camera mount with a
circumferential groove to reduce defacement of the mount
(Paper No. 1 at 7:6-23), the claim is directed to "A mount for
an apparatus" and "a mount for another apparatus" without
explicitly stating what each respective apparatus was. The
examiner's answer offered no construction for claim 7 or any
other claim.
In the decision, the Board concluded that the broadest
reasonable interpretation in light of the specification was
Appeal No. 1994-4024 Page 3
Application No. 07/759,865 Paper No. 31
that the first apparatus was a camera mount, while the second
apparatus corresponded to the lens mount (Paper No. 27 at 4-
5). The decision cautioned, however, that if claim 7 covered
a plastic lens mount having a circumferential groove, then
"the admitted prior art provides the teaching for a lens mount
with such a groove" (Paper No. 27 at 5 n.3). The decision
listed two reasons why the first apparatus had to be the
camera:
(1) the mount for the first apparatus had to be made of
plastic and only the camera mount was disclosed as being made
of plastic; and
(2) the concave portion 3c on the lens mount was not a
circumferential groove.
On rehearing, the examiner offers a claim construction
for the first time, including a basis in the specification for
reading claim 7 more broadly (Paper No. 29 at 1):
Specifically, it is apparent that the Board
overlooked the disclosure of a plastic lens mount at
page 9, lines 7-10, of the specification.
The portion of the specification cited states (Paper No. 1
at 9:5-11):
It should be noted that though in the above
described embodiments, the plastic mount has been
used for the mount for [the] camera, the mounts of
the photographic lens, [the] intermediate tube,
Appeal No. 1994-4024 Page 4
Application No. 07/759,865 Paper No. 31
[the] extender, etc.[,] may be made to be plastic
mounts according to the present invention. Even in
these cases, there are similar advantages.
Appellant's response relies on the earlier finding that
there is no circumferential groove on the claimed lens mount
as sufficient to maintain the Board's construction (Paper
No. 30 at 2-3). Appellant further argues that placing the
groove on the lens mount would be a less practical solution to
the problem the inventors faced.
DISCUSSION
The cited portion of Appellant's specification requires a
broader claim construction. Not only does the passage
disclose that the lens mount may be plastic, but it also
provides that it be made "according to the present invention"
such that "there are similar advantages" (Paper No. 1 at 9:9-
11). Generally, the claims of a patent are not limited to the
preferred embodiment, unless by their own language. Karlin
Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973, 50
USPQ2d 1465, 1469 (Fed. Cir. 1999). Thus, while a plastic
camera mount with a circumferential groove is plainly the
preferred embodiment, a plastic lens mount with the same
groove is also disclosed. Nothing in the language of the
claim excludes a plastic lens mount made according to the
Appeal No. 1994-4024 Page 5
Application No. 07/759,865 Paper No. 31
Appellant's invention from being the first apparatus of the
claim.
Under this broader construction, claim 7 reads on a
camera using the admitted prior art lens mount with the
concave portion 3c (when the mount is made of plastic as Doi
suggests) such that the claimed circumferential groove
corresponds to the lens mount abutment surface 3b.
Effect of new decision
Since this decision is, in effect, a new decision within
the meaning of 37 CFR § 1.197(b), Appellant may file a request
for rehearing under that same rule. Appellant should note
that any request for an extension of time would be subject to
the provisions of 37 CFR § 1.136(b).
Appeal No. 1994-4024 Page 6
Application No. 07/759,865 Paper No. 31
DECISION
The rejection holding the subject matter of claims 1-18
to have been obvious in view of the admitted prior art and the
Doi patent is
AFFIRMED
BRUCE H. STONER, JR., Chief
Administrative Patent Judge
IAN A. CALVERT APPEALS
Administrative Patent Judge AND
RICHARD TORCZON
Administrative Patent Judge
BOARD OF PATENT
INTERFERENCES
cc: James J. Daley
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