Appeal No. 2002-1987
Application No. 08/880,032
or inherently, such that a person of ordinary skill in the art
could practice the invention without undue experimentation. See
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d
1943, 1947 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-
79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). In this case, as
there is no indication in Freadman that the surfaces depicted in
the speaker unit of Figure 2 are independent of the surfaces of
the computer, the examiner’s conclusion is based merely on
speculation and therefore, fails to support a prima facie case of
anticipation. Accordingly, the rejection of claims 34-39, 41 and
42 under 35 U.S.C. § 102 over Freadman cannot be sustained.4
Regarding the 35 U.S.C. § 103 rejection of claim 40, we note
the Examiner’s failure to point to any teachings or suggestions
in Hickman that would have overcome the deficiencies of Freadman
discussed above. Hickman, at best, shows a ported speaker
enclosure placed in the lower shell of a portable computer but
does not teach that the top and base surfaces of the enclosure
are independent of the computer surfaces (Figure 4 and col. 3,
line 49 et seq.). Based on our determination that Freadman does
4 Our decision not to sustain the rejction of claims 34-39, 41 and 42
under 35 U.S.C. § 102 over Freadman should not be taken as an indication of
the patentability of these claims that would prevent the Examiner from
potentially introducing new grounds of rejection under 35 U.S.C. § 103 over
the combination of Freadman with other reference(s) to show the missing
elements.
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