Ex Parte Rumsey et al

Patent Trial and Appeal Board

Oct 29, 2012

11005720 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WAYNE J. RUMSEY, JOHN W. CARTER, and
JEREMY A. FOGG
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Appeal 2010-003092
Application 11/005,720
Technology Center 2800
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Before SCOTT R. BOALICK, BRUCE R. WINSOR, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 25, 27, 28, 30-33, 36, 39, 42-47, 49, 52, 54-57, 60, 61,
63, 66-71, 95-100, 103-115, and 119-126.1 Claims 1-24, 26, 37, 50, 51, 53,
73-94, and 116 have been canceled. App. Br. 2. Claims 29, 34, 35, 38, 40,

1 Throughout this opinion, we refer to (1) the Appeal Brief filed June 30,
2009; (2) the Examiner’s Answer mailed September 18, 2009; and (3) the
Reply Brief filed November 17, 2009.
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41, 48, 58, 59, 62, 64, 65, 72, 101, 102, 117, and 118 have been withdrawn
from consideration. Id.2
Claims 25, 27, 28, 30, 32, 39, 42, 44, 46, 47, 49, 52, 54, 56, 61, 63,
66, 68, 70, and 71 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Tonar (US 5,448,397; Sept. 5, 1995). Ans. 3-6.
Claims 25, 27, 28, 30, 32, 39, 42-47, 49, 52, 54, 56, 61, 63, 66-71, 95-
97, 99, and 104-110 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Suzuki (JP 61-073102; Apr. 15, 1986). Ans. 6-12.3
Claims 31, 55, and 98 stand rejected under 35 U.S.C. § 102(b) as
anticipated by, or alternatively, under 35 U.S.C. § 103(a) as obvious over
Tonar. Ans. 12.

2 The Appeal Brief states that claims 35 and 51 are on appeal; but also that
claim 35 has been withdrawn from consideration and claim 51 has been
canceled. Compare App. Br. 2:10-11; Reply Br. 12:9-10, 21-22 with App.
Br. 2:15. Based upon the claim set Appellants filed on January 26, 2009, we
conclude that claim 35 has been withdrawn and that claim 51 has been
canceled. The Appeal Brief also states that claims 43, 67, 106, and 122 are
no longer withdrawn and are appealed. See App. Br. 2, 5-6 and Claims
Appendix. The Examiner agrees. Ans. 2, 6, 7, 9, 11, 14, 16, 23, and 25.
We therefore conclude that claims 43, 67, 106, and 122 are not withdrawn
and are appealed.
3 Neither the Answer nor either of Appellants’ Briefs identifies or discusses
in detail a rejection of claim 99. However, the Appeal Brief lists claim 99 as
being on appeal (App. Br. 2:15), the Claims Appendix recites claim 99, and
the Answer confirms that Appellants’ statement of the Status of the Claims
and their Claims Appendix are correct (Ans. 2). The appealed Office Action
states a detailed reason for the rejection of claim 99 (Office Action 10 (Apr.
3, 2009)). We therefore conclude that Appellants are appealing the rejection
of claim 99.
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Claims 31, 55, and 98 stand rejected under 35 U.S.C. § 102(b) as
anticipated by, or alternatively, under 35 U.S.C. § 103(a) as obvious over
Suzuki. Ans. 12-13.
Claims 33, 36, 57, 60, 100, and 103 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Tonar in view of DeVries (US 6,239,899 B1; May
29, 2001) (incorrectly identified in the Answer as 6,239,889). Ans. 13-14.
Claims 33, 36, 57, 60, 100, 103, 111-115, and 119-126 stand rejected
under 35 U.S.C. § 103(a) as obvious over Suzuki in view of DeVries. Ans.
14-17.
Claims 45, 69, and 108 stand rejected under 35 U.S.C. § 103(a) as
obvious over Tonar in view of O’Farrell (US 5,151,824; Sept. 29, 1992).
Ans. 17.
We affirm-in-part.

STATEMENT OF CASE
Appellants’ invention relates to holders for maintaining reflective
elements in position within vehicle rearview mirrors having a housing and a
reflective element in the housing. An elastomer abuts against part of the
reflective element to maintain the reflective element within the housing. See
generally Abstract; Spec. ¶¶ 0002, 0038, 0041, 0044-0046; Figs. 1-4. Claim
25 is illustrative with key disputed limitations emphasized:
25. A rearview mirror subassembly for a vehicle comprising:
a housing comprising a rear housing section and a bezel;
a reflective element in the housing having a front and a rear;
a carrier plate located adjacent the rear of the reflective
element; and
an elastomer directly contacting at least a portion of the
reflective element to thereby compress the reflective element between
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a first portion of the housing and the elastomer, the elastomer also
directly contacting a second portion of the housing, with the elastomer
being located between the reflective element and the second portion of
the housing;
wherein the bezel is a first source of a first force against the
front of the reflective element and the rear housing section is a second
source of a second force against the rear of the reflective element; and
wherein the bezel does not include any part thereof located
directly to the rear of the reflective element that supplies the second
force.

THE ANTICIPATION REJECTION OVER TONAR
The Examiner finds that Tonar discloses every recited feature of
representative claim 25 including a carrier plate 54 and a housing having a
first portion 42 and a second portion 40. Ans. 3; Fig. 3. Appellants contend
that because Tonar’s support plate portion 54 is part of its mirror back 40
(citing col. 5, ll. 67-68), the Examiner has improperly used mirror back 40 as
two separate elements: i.e., element 54 as the carrier plate and element 40 as
the second portion. Consequently, they contend, Tonar does not disclose a
second portion of a housing and a carrier plate located adjacent a rear of a
reflective element. App. Br. 8-9; Reply Br. 2.

ISSUE
Under § 102, has the Examiner erred by finding that Tonar discloses
both a carrier plate and a second portion of a housing?

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ANALYSIS
Claims 25, 27, 39, 42, 49, 52, 54, 61, 63, and 66
In response to Appellants’ contention, the Examiner imparts a broad
but reasonable meaning to the claim term “portion,” concluding that a
“portion” is a part of something else. Ans. 18. Using the broad but
reasonable interpretation of “portion,” the Examiner concludes that he has
not improperly relied upon a single element to meet two separate claim
elements. Instead, the Examiner concludes that, as a result of the broad but
reasonable interpretation of “portion,” Tonar’s element 40 can have multiple
portions and element 54 is one of those portions. Ans. 18.
We agree with the Examiner.
We find no error in the Examiner’s broad but reasonable interpretation
of "portion," which is consistent with the specification. In Tonar, support
plate 54 is one portion of element 40 and the part of element 40 to which
reference number 40 points is another portion of element 40. Accordingly,
we agree with the Examiner that Tonar discloses first and second portions of
the housing as well as a carrier plate 54.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 25 and claims 49 and 63 having similar disputed
limitations; and (2) claims 27, 39, 42, 52, 54, 61, and 66 not separately
argued with particularity (App. Br. 9, 12; Reply Br. 2-4). Accordingly, we
sustain the rejection of claims 25, 27, 39, 42, 49, 52, 54, 61, 63, and 66.
Claims 28 and 30
We also sustain the Examiner’s rejection of claims 28 and 30.
Regarding claim 28, the Examiner finds that Tonar’s elastomer 60,
which includes elastomer pads 62 and 64 (col. 6, ll. 4-5), is on Tonar’s
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carrier plate 54. Ans. 3, 18-19. Appellants contend that Tonar does not
disclose this limitation because element 40 is not both a carrier plate and a
second portion of a housing. App. Br. 9:15-16. We disagree based on our
findings and analysis above regarding claim 25.
Appellants also contend that element 60 is not on a carrier plate,
“abutting” a reflective element, and “abutting” a second portion of a
housing. App. Br. 9:16-18; Reply Br. 2. The Examiner correctly concludes
that these additional arguments are directed to limitations not recited in these
claims. Ans. 19. We agree with the Examiner because these claims do not
use the term “abutting” and therefore Appellants’ arguments are not
commensurate with the claim language.
We are therefore not persuaded that the Examiner erred in rejecting
claim 28 or claim 30, which has substantially identical limitations.
Claims 32, 44, 46, 56, 68, and 70
We also sustain the Examiner’s rejection of claims 32, 44, 46, 56, 68,
and 70.
Regarding claim 32, the Examiner finds that Tonar’s elastomer 60,
comprising elements 62 and 64, is located at the right and left sides of the
carrier plate 54 where the carrier plate bends, such as in the area of reference
number 58. Ans. 4, 19. Giving the claim its broadest reasonable
interpretation, the Examiner concludes that the terms “top” and “bottom” do
not suggest directionality and that therefore the right and left side edges
disclose the recited limitations. Ans. 19.
Appellants do not contest the Examiner’s directionality conclusions.
Instead, they contend that two spaced areas of a single face are not two
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different edges (App. Br. 10:16-17) and that Tonar discloses only an
elastomer on two areas of a single edge. Reply Br. 3.
We agree with the Examiner. Giving the claim its broadest reasonable
interpretation, there are two edges at opposite ends of Tonar’s carrier plate
54 where the carrier plate bends downward.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 32 and commensurate claim 56; (2) claims 44 and
68, which have similar limitations; and (3) claims 46 and 70 not argued with
particularity. App. Br. 11, 13; Reply Br. 3-4.
Claims 47 and 71
We also sustain the rejections of claims 47 and 71.
Regarding claim 47, the Examiner finds that Tonar’s elastomer
contacts at least a portion of reflective element 11 in the embodiment where
the heater circuitry is printed directly on the reflective element (col. 6, ll. 10-
13; Fig. 4). Ans. 4, 19.
Appellants contend that Tonar’s elastomer 60 is spaced from the
assembly 11 and therefore does not disclose “the elastomer directly contacts
at least a portion of a perimeter of the reflective element.” App. Br. 11:19-
20. However, this argument is directed only to the embodiment illustrated in
Tonar’s Figure 4 where element 60 is, in fact, spaced from element 11 by
heater 38. Neither Appellants’ Appeal Brief nor their Reply Brief addresses
the Examiner’s specific finding at Answer pages 4 and 19 regarding Tonar’s
alternative embodiment where the heater circuitry is printed directly on the
reflective element.
We sustain the rejection of claim 47 and claim 71, having
substantially identical limitations.
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THE ANTICIPATION REJECTION OVER SUZUKI
CLAIMS 25, 27, 28, 30, 32, 39, 42-47, 49, 52, 54, 56, 61, 63, 66-
71, 108, AND 109
The Examiner finds that Suzuki discloses every recited feature of
representative claim 25 including a housing 2 having a bezel 2a, 2b and an
elastomer (cushion material 9) located between a reflective element 30 and a
second portion of the housing (the top, rear, and bottom portion of housing 2
from above reflective element 30 to below it). Ans. 6:15-18; Fig. 2.
Appellants contend that Suzuki does not disclose (1) a housing having a
bezel; and (2) that the cushion material 9 located at the recited position
because Suzuki does not disclose the second portion is different from the
first portion 2a, 2b of the housing 2. App. Br. 14-15.

ISSUE
Under § 102, has the Examiner erred by finding that Suzuki discloses
both a bezel and an elastomer located between a reflective element and a
second portion of a housing?

ANALYSIS
Claims 25, 27, 39, 42-44, and 47
In response to Appellants’ first contention, the Examiner first provides
a dictionary definition of “bezel” to be “a rim that holds a transparent
covering (as on a watch, clock, or headlight)” and then finds that Suzuki’s
flanges 2a, 2b provide a rim to hold Suzuki’s transparent glass plate 3. Ans.
20. See also Suzuki translation at 3:5-6. Appellants do not contest the
dictionary definition of bezel. Reply Br. 4.
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In response to Appellants’ second contention, the Examiner gives the
claim its broadest reasonable interpretation consistent with the specification,
finding that virtually any part of the housing can be considered a second
portion, and that Figure 2 of Suzuki shows cushion material 9 between
reflective element 30 and at least a portion of housing 2, above and below
element 30, near reference numbers 121 and 122. Ans. 20. Appellants do
not persuasively refute the Examiner’s findings, stating only that “[i]t does
not appear” that Suzuki’s housing has two portions. Reply Br. 4 (emphasis
added).
Giving a broad interpretation to the disputed claim terms, we find no
error in the Examiner’s interpretation of Suzuki. Suzuki’s flanges 2a, 2b
come within the definition of a bezel, and Suzuki’s housing has multiple
portions, any two of which can be considered to be first and second portions
of the housing.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 25; (2) claim 27 having a similar recitation
regarding the positioning of the bezel with respect to the reflective element;
and (3) claims 39, 42-44, and 47, not separately argued with particularity.
App. Br. 15; Reply Br. 4. Therefore we sustain the rejections of claims 25,
27, 39, 42-44, and 47.
Claims 28 and 30
We also sustain the rejection of claims 28 and 30.
Regarding claim 28, the Examiner finds that Suzuki discloses the
elastomer 9 is on the carrier plate 101. Ans. 7, 21; Fig. 2. Appellants’
appeal brief only recites the claim limitations. App. Br. 16. However, this
assertion does not constitute an argument on the merits because a statement
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that merely points out what a claim recites is not considered to be an
argument for separate patentability of a claim. 37 C.F.R. § 41.37(c)(vii)
(2008). Appellants’ reply brief asserts that Suzuki does not disclose an
elastomer abutting a reflective element and abutting a second portion of a
housing. Reply Br. 4-5. This argument is not persuasive because claim 28
does not recite any “abutting” and therefore Appellants’ argument is not
commensurate with the claim language.
In addition, the argument has been waived because it is presented for
the first time in the Reply Brief. See Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner’s rejections, but were not.”).
We are therefore not persuaded that the Examiner erred in rejecting
claim 28 and claim 30, which includes substantially identical limitations.
Claim 32
We also sustain the Examiner’s rejection of claim 32. The Examiner
finds that Suzuki’s elastomer 9 is located at a top edge and bottom edge of
the carrier plate 101. Ans. 7, 21; Fig. 2. Appellants do not persuasively
rebut the Examiner’s finding. App. Br. 16-17; Reply Br. 5.
We are therefore not persuaded that the Examiner erred in rejecting
claim 32.
Claims 45 and 46
Claim 45 recites the elastomer is continuous; claim 46 recites the
elastomer is interrupted. The Examiner finds that Suzuki’s elastomer meets
both of these claims because, while the elastomer itself is continuous, it is
interrupted between its top and bottom. Ans. 7-8, 21-22. Appellants do not
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persuasively rebut the Examiner’s finding. App. Br. 17; Reply Br. 5. We
are therefore not persuaded that the Examiner erred in rejecting claims 45
and 46.
Claims 49, 52, 54, 56, 61, 63, and 66-71
We do not sustain the Examiner’s rejection of claims 49, 52, 54, 56,
61, 63, and 66-71.
Claim 49 recites that the elastomer adheres to the reflective element.
The Examiner first finds that Suzuki’s elastomer inherently adheres to the
reflective element because the elastomer will expand between support plate
portion 101 and reflective element 30 when subjected to an impact force.
Ans. 8. Citing page 1, last paragraph, to page 2, paragraph 4, of the Suzuki
translation, the Examiner also finds that Suzuki discloses that the prior art
“and the invention glues the reflective element to the housing.” Ans. 22
(emphasis added).
To the contrary, the cited translation discloses only that the prior art
uses glue and that gluing of the glass substrate to the reflecting mirror frame
causes the glass substrate to crack. Suzuki translation at 2:3-10.
We cannot say – nor has the Examiner shown – that Suzuki’s
elastomer 9 necessarily adheres to its reflective element 30 because the prior
art glued a glass substrate to a reflecting mirror frame. Nor will we
speculate regarding the obviousness of these claimed features here in the
first instance on appeal.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting independent claim 49 and dependent claims 52,
54, 56, 61, 63, and 66-71 as anticipated by Suzuki.
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Claims 108 and 109
Because these claims are commensurate with claims 45 and 46, we
find that they are anticipated by Suzuki for the same reasons that we found
that Suzuki anticipates claims 45 and 46.

CLAIMS 95-97, 99, 104-107, AND 110
The Examiner finds that Suzuki discloses every recited feature of
representative claim 95 including a housing having a bezel and the elastomer
9 being connected to the carrier plate 101. Ans. 10:4-5, 8-9. Appellants
contend that Suzuki does not disclose a housing having a bezel and that its
cushion material is not disclosed as being connected to the supporting
substrate 101. App. Br. 20.

ISSUES
Under § 102, has the Examiner erred by finding that Suzuki discloses:
(1) a housing having a bezel?
(2) an elastomer connected to a carrier plate?

ANALYSIS
Claims 95-97 and 104-107
The Examiner incorporates by reference the definition of bezel cited
in connection with the rejection of claim 25. Ans. 23. For the reasons we
stated regarding that definition in our discussion of claim 25, we find that
Suzuki discloses the claimed bezel.
We also find that Suzuki’s elastomer 9 is connected to its carrier plate
101 for two reasons. First, Figure 2 shows elastomer 9 touching carrier plate
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101. Giving the claim its broadest reasonable interpretation consistent with
the specification, touching is a form of connection.
Second, Suzuki discloses that elastomer 9 is between carrier plate 101
and reflector 30 and that elastomer 9 blocks and supports reflector 30
between parts 2a, 2b and the carrier plate 101. Suzuki translation at 2:22-26.
Such support is necessarily the result of some compression, no matter how
small, by the carrier plate 101 against elastomer 9, resulting in a connection
between elastomer 101 and elastomer 9.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 95; (2) claim 97 reciting a bezel; and (3) claims 96
and 104-107 not separately argued with particularity (App. Br. 21; Reply
Br. 7).
Claim 99
As we concluded above (footnote 3), Appellants have appealed the
rejection of claim 99 as anticipated by Suzuki, but have not stated reasons in
either of their briefs in support of a reversal of the rejection. We therefore
summarily sustain the rejection.
Claim 110
The Examiner finds that Suzuki has a housing 2 and a portion of the
housing, the portion being the rear part of housing 2 from above and slightly
in front of the carrier plate 101 to below and slightly in front of the carrier
plate 101. Ans. 10:12-14, 23.
Appellants, seeking to rely on independent claim 95, from which
claim 110 depends, contend that Suzuki does not disclose a housing portion
that contacts the “support member” because the housing portion contacts
only the “supporting substrate 101.” App. Br. 22:12-15; Reply Br. 7:18-22.
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Appellants’ reference only to supporting substrate 101 as the “support
member” does not respond to the Examiner’s mapping of the recited support
member to Suzuki’s elements 121, 122, 101, and 9. Ans. 10:7; 23:12-13.
Consequently, Appellants’ arguments regarding claims 95 and 110 are not
persuasive.
We are therefore not persuaded that the Examiner erred in rejecting
claim 110.

THE ANTICIPATION OR OBVIOUSNESS REJECTION OVER TONAR
Claims 31 and 55
The Examiner concludes that these claims are product-by-process
claims which are not limited to the manipulations of the recited step of co-
molding and are limited only to the structure implied by the steps. Ans. 12,
23-24. Therefore, the Examiner implicitly concludes that because claims 25
and 49 are anticipated by Tonar, claims 31 and 55 are likewise anticipated.
Alternatively, the Examiner finds that molding is a known method of
forming elements of rearview mirror assemblies including elastomers and
carrier plates and that one of ordinary skill in the art would have been
capable of simultaneously molding Tonar’s elastomer and carrier plate.
Therefore, the Examiner concludes that it would have been obvious to co-
mold (i.e., mold simultaneously) the elastomer with the carrier plate to
increase the speed of manufacture. Ans. 12.
Appellants do not dispute the Examiner’s conclusion that these claims
are product-by-process claims nor the legal consequences of the claims
being product-by-process claims. App. Br. 22-23; Reply Br. 8.
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Appellants also do not dispute the Examiner’s finding that molding is
a known method of forming elements of rearview mirror assemblies
including elastomers and carrier plates.
Appellants do contend, however, that it would not have been obvious
to co-mold adhesive 60 (the elastomer) with a plastic. But, Appellants do
not identify the plastic to which they refer and, as the Examiner finds, they
have not provided any persuasive reasoning or evidence to support their
conclusion. Ans. 23; Reply Br. 8.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 31 and 55 as anticipated by, or as obvious over, Tonar.
Claim 98
In the course of rejecting claim 98 as anticipated by or as obvious
over Tonar, the Examiner asserts that Tonar discloses all the limitations of
claim 95 “as stated supra.” Ans. 12. However, claim 95 has not been
rejected as anticipated by or obvious over Tonar. See Ans. 3.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claim 98 as anticipated by or as obvious over
Tonar and we therefore do not sustain this rejection.

THE ANTICIPATION OR OBVIOUSNESS REJECTION OVER SUZUKI
Claims 31 and 98
The Examiner again concludes that these claims are anticipated by
Suzuki because they are product-by-process claims (Ans. 12, 24), which
Appellants do not contest. App. Br. 23-25; Reply Br. 8.
The Examiner also finds that molding is a known method of forming
elements of rearview mirrors including elastomers and carrier plates and that
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it would have been obvious to co-mold the elastomer with the carrier plate.
Ans. 12-13. Again, Appellants do not dispute the Examiner’s finding that
molding is a known method of forming elements of rearview mirror
assemblies including elastomers and carrier plates.
Appellants do contend, however, that it would not have been obvious
to co-mold a cushion material with Suzuki’s element 101 because element
101 would not be able to support cushion material 9 because the cushion
material would be too flimsy due to its length. App. Br. 24-25.
The Examiner finds, and we agree, that Appellants have not provided
any persuasive evidence to support their conclusion. Ans. 24; Reply Br. 8.
We are therefore not persuaded that the Examiner erred in rejecting
claims 31 and 98.
Claim 55
On this record, we do not sustain the rejection of claim 55 because it
depends from claim 49 and we have not sustained the rejection of claim 49
over Suzuki.

THE OBVIOUSNESS REJECTION OVER TONAR IN VIEW OF DEVRIES
Claims 33 and 57
We sustain the rejection of claims 33 and 57 as obvious over Tonar in
view of DeVries because they have not been argued with particularity. App.
Br. 25-26; Reply Br. 9.
Claims 36 and 60
The Examiner finds that DeVries teaches a circuit board 18 connected
to a carrier plate 15 with screws, which are a form of pegs (Ans. 13:13-15,
24) and that when the screws are used to join the carrier plate to the circuit
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board, the carrier plate includes the screws, thereby meeting the limitations
of the claims. The Examiner further finds that it would have been obvious to
combine the Tonar and DeVries teachings. Appellants contend that “[a]
screw separate from a . . . carrier plate is not a carrier plate including pegs.”
App. Br. 26. The Examiner explains that when the screws are in place they
are not separate from the carrier plate. Ans. 25. We agree with the
Examiner.
Appellants have not persuaded us that these rejections are in error.
See App. Br. 26-27; Reply Br. 9.
Claims 100 and 103
In the course of rejecting claims 100 and 103 as obvious over Tonar,
the Examiner asserts that Tonar discloses all the limitations of claim 95 “as
stated supra.” Ans. 13. However, claim 95 has not been rejected over
Tonar. See Ans. 3.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claims 100 and 103 as obvious over Tonar in
view of DeVries.

THE OBVIOUSNESS REJECTION OVER SUZUKI IN VIEW OF DEVRIES
Claims 33 and 100
We sustain the rejection of claims 33 and 100 because they have not
been argued with particularity. App Br. 28-29; Reply Br. 9.
Claims 36, 103, and 119
We sustain the rejection of claims 36, 103, and 119 because, as our
previous discussion of DeVries shows, DeVries teaches these limitations.
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Claims 57 and 60
On this record, we are constrained not to sustain the rejection of these
claims because they depend from claim 49 and we have not sustained the
rejection of claim 49 over Suzuki.
Claims 111-113 and 120-123
We have fully considered Appellants’ arguments regarding claims 111
and 113. App. Br. 30; Reply Br. 9. For the reasons discussed above
regarding the rejection of claim 25, we find no error in the Examiner’s
finding that Suzuki discloses a bezel, and for the reasons discussed above
regarding the rejection of claim 95, we find no error in the Examiner’s
finding that Suzuki discloses an elastomer connected to a carrier plate.
We are therefore not persuaded that the Examiner erred in rejecting
(1) claims 111 and 113; and (2) claims 112 and 120-123 not separately
argued with particularity (App. Br. 30; Reply Br. 9).
Claim 114
We have fully considered Appellants’ arguments. App. Br. 31; Reply
Br. 9. For the reasons discussed above regarding the rejection of claims 31
and 55, we find no error in the Examiner’s finding that it would have been
obvious to co-mold Suzuki’s elastomer with the carrier plate. Ans. 15-16.
Claim 115
We have fully considered Appellants’ arguments. App. Br. 31-32;
Reply Br. 10. For the reasons discussed above regarding the rejection of
claim 32, we find no error in the Examiner’s finding that Suzuki discloses
these limitations. Ans. 16.
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Claims 124 and 125
We have fully considered Appellants’ arguments (App. Br. 32-33;
Reply Br. 10). For the reasons discussed above regarding the rejection of
claims 45 and 46, we find no error in the Examiner’s finding that Suzuki
discloses these limitations. Ans. 16-17, 25.
Claim 126
We have fully considered Appellants’ arguments (App. Br. 33; Reply
Br. 10) which are identical to the arguments presented regarding the
rejection of claim 110, except that claim 110 depends from claim 95 and
claim 126 depends from claim 111. For the reasons discussed above
regarding the rejection of claim 110, we find no error in the Examiner’s
finding that Suzuki discloses these limitations. Ans. 17, 25.

THE OBVIOUSNESS REJECTION OVER TONAR IN VIEW OF O’FARRELL
Claims 45 and 69
The Examiner finds that it would have been obvious in view of
O’Farrell to provide a continuous elastomer directly contacting at least one
of the top edge and the bottom edge of Tonar’s device. Ans. 17, 25.
Appellants’ Appeal Brief states that Tonar does not disclose its
elastomer adhesive 60 is “abutting” any edge of a reflective element. App.
Br. 34. This argument is not persuasive because it is not commensurate with
the claim language which recites “contacting” rather than “abutting.” In
addition, Appellants’ Reply Brief does not respond to the Examiner’s
findings because the Reply Brief incorrectly contends that the Examiner’s
conclusions were based on his finding that the top edge and bottom edge can
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include a first area and a second area of a single face of an element. Reply
Br. 11.
Consequently, we are not persuaded that the Examiner erred in
rejecting claims 45 and 69.
Claim 108
In the course of rejecting claim 108 as obvious over Tonar in view of
O’Farrell, the Examiner asserts that Tonar discloses all the limitations of
claim 95 “as stated supra.” Ans. 17. However, claim 95 has not been
rejected based on Tonar. See Ans. 3.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claim 108 and we do not sustain this rejection.

CONCLUSIONS
Under § 102, the Examiner did not err in rejecting claims 25, 27, 28,
30-32, 39, 42-47, 49, 52, 54-56, 61, 63, 66-71, 95-99, and 104-110. Under
§ 102, the Examiner erred in rejecting claim 67. Under § 103, the Examiner
did not err in rejecting claims 31, 33, 36, 45, 55, 57, 60, 69, 98, 100, 103,
108, 111-115, and 119-126. Although the Examiner erred in rejecting
claims 98, 100, 103, and 108 over Tonar, alone or in view of DeVries or
O’Farrell, we nevertheless sustain the rejections of those claims where
Suzuki is the primary reference. Similarly, although the Examiner erred in
rejecting claims 49, 52, 54-57, 60, 61, 63, 66, and 68-71 based upon Suzuki,
alone or in view of DeVries, we nevertheless sustain the rejections of those
claims where Tonar is the primary reference.

Appeal 2010-003092
Application 11/005,720

21
DECISION
The Examiner’s decision rejecting claims 25, 27, 28, 30-33, 36, 39,
42-47, 49, 52, 54-57, 60, 61, 63, 66-71, 95-100, 103-115, and 119-126 is
affirmed.
The Examiner’s decision rejecting claim 67 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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