Appeal No. 96-3577
Application 08/419,064
REJECTION OF CLAIMS
1- 3, 6- 8, 10- 14,17, 18, 20, 23- 24, 26- 28, 31, 37, and 39- 45
UNDER 35 U.S.C. § 103
With respect to the rejection of independent claim 1, we find that the Examiner has
not met the burden of setting forth a prima facie case of obviousness in rejecting claim 1.
As pointed out by our reviewing court, we must first determine the scope of the claim.
"[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). The claim sets forth "a single display mounted on
said support for displaying video information" and "a binocular optical system for
projecting an enlarged virtual image . . . that is less than infinity." Claim
limitations are to be given their broadest reasonable interpretation consistent with the
specification. See In re Yamamoto et al., 740 F.2d 1569, 1571, 222 USPQ 934, 936
(Fed. Cir. 1984). In the specification, as originally filed, appellants disclose only
embodiments with a single display and provide argument thereto in the amendment filed
July 25, 1994 and in the brief at pages 11 and 14-33 that the claimed invention is
specifically limited to a single display. To interpret the claim limitation "single display" to
be met by a prior art teaching of two displays would not be a reasonable interpretation of
the claim limitation as the Examiner has argued in the answer at pages 6 and 11-12.
The claim language is clear that one and only one display is present in the claimed
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