Appeal No. 1998-0871
Application No. 08/406,301
rejection is based upon a combination of references, the argument shall explain why the
references, taken as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an explanation of why features
disclosed in one reference may not properly be combined with features disclosed in
another reference. A general argument that all the limitations are not described in a
single reference does not satisfy the requirements of this paragraph.
Thus, 37 CFR § 1.192 provides that this Board is not under any greater burden than the court which is
not under any burden to raise and/or consider such issues. Therefore, we are not required to raise
and/or consider such issues.
Turning now to the rejection of claims 7-12, appellants assert (brief, page 7) that the mirror
part of claim 7 allows a relatively non-critical projection direction selection and that the examiner has
cited no reference with respect to the mirror part and has provided only general discussion of
"compactness." The position of the examiner (final rejection, page 3) is that Lim does not disclose the
mirror part, as claimed, and that conventionally mirrors are often used for reflecting lights in a projector
in order to change the optical path of the light. The examiner further asserts that by using mirrors, the
structure can be compacted because the light path length
is reduced and that if compaction is the goal of design, it would have been obvious to one of ordinary
skill in the art to include such mirrors into Lim to perform the well known functions as claimed.
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). Claims will be given their broadest reasonable interpretation consistent with the
(11)
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