Ex Parte Drew et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11796667 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL L. DREW and CYNTHIA J. PURVIS
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Appeal 2010-000142
Application 11/796,667
Technology Center 3600
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
KEN B. BARRETT, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 2
decision rejecting claims 1-16 and 18-20. The Examiner objects to claim 17 3
as being dependent on a rejected base claim but indicates that the claim 4
would be allowable if rewritten in independent form. (Ans. 2 and 3). We5

1 The Appellants identify the real party in interest as Hewlett-Packard
Development Company, LP of Houston, Texas.
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have jurisdiction under 35 U.S.C. § 6(b). 1
We sustain the rejection of claims 1-12 under 35 U.S.C. § 103(a) as 2
being unpatentable over Hsu (US 2007/0076358 A1, issued Apr. 5, 2007) 3
and Chu (US 7,068,497 B2, issued Jun. 27, 2006). We do not sustain the 4
rejection of claims 13-16 and 18-20 under 35 U.S.C. § 102(a) as being 5
anticipated by Chu. 6
Claim 1 recites: 7
1. An apparatus, comprising: 8
a base; 9
an electronic display; and 10
a U-shaped mounting arm including two 11
legs with a first end of one leg connected to the 12
base and a second end of another leg pivotally 13
connected to the display, wherein a space is 14
formed between the two legs and one end of the 15
display fits in the space so the apparatus is in a 16
collapsed position. 17
18
ISSUES 19
The Appellants separately argue the rejections of independent claims 20
1 and 8. In addition, the Appellants argue the rejection of claim 5 separately 21
from the rejection of claim 1 and the rejection of claim 9 separately from the 22
rejection of claim 8. (See App. Br. 18-20; Reply Br. 3-4). The Appellants 23
themselves address the rejection of claim 5 as being representative of the 24
rejection of claim 9, however. (See App. Br. 19). Therefore, we address the 25
rejections of claims 5 and 9 together. Only issues and findings of fact 26
contested by the Appellants will be addressed. See Ex Parte Frye, 94 27
USPQ2d 1072, 1075-76 (BPAI 2010). 28
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Three issues are determinative of this appeal: 1
First, does Chu disclose a method including the step of 2
positioning one end of a display in a space formed between two 3
legs of a mounting arm? (App. Br. 12-14; Reply Br. 2). 4
Second, do the evidence and technical reasoning 5
underlying the rejection of claims 1 and 8 adequately support 6
the conclusion that an apparatus, capable of entering a collapsed 7
position in which one end of a display fits into a space formed 8
between two legs of a U-shaped mounting arm, would have 9
been obvious? (App. Br. 18 and 19-20; Reply Br. 4). 10
Third, do the evidence and technical reasoning 11
underlying the rejection of claim 5 adequately support the 12
conclusion that an apparatus capable of entering a collapsed 13
position in which the base is adjacent and parallel to a back side 14
of the display, would have been obvious? (App. Br. 19; Reply 15
Br. 4). 16
17
FINDINGS OF FACT 18
The record supports the following findings of fact (“FF”) by a 19
preponderance of the evidence. 20
21
Hsu 22
1. Hsu describes a display device 50 including a display monitor 23
52, a support arm 54 and a base 56. (Hsu, para. 0018). 24
2. Figures 3, 5, 6, 8 and 9 of Hsu depict the support arm 54 as 25
including a short, horizontal lower leg connected to the base 56; a long 26
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upper leg extending upwardly in a direction transverse to horizontal for 1
pivotal connection to the monitor 52; and a vertical connecting web 2
supporting the upper leg above the lower leg. The upper leg overhangs the 3
lower leg to define a space between the two legs. 4
3. As illustrated in Figures 3, 5, 6, 8 and 9 of Hsu, the range of 5
movement of the monitor 52 relative to the base 56 appears to be limited to 6
pivotal movement about a horizontal axis defined by the pivotal connection 7
between the support arm 54 and the monitor 52. 8
9
Chu 10
4. Chu describes a flat panel display 110 including a base 112, a 11
supporting arm 114, a display module 118 and at least one slide-bracket 12
116a. (Chu, col. 3, ll. 8-16). 13
5. Chu describes the supporting arm 114 as being pivotally 14
connected at a lower end to the base 112 by a first hinge 142. (Chu, col. 3, 15
ll. 23-26 and fig. 2A). 16
6. Chu describes the slide-bracket 116a as being pivotally 17
connected at an inner end to an upper end of the support arm 114 by a 18
second hinge 144. (Chu, col. 3, ll. 36-37 and fig. 2A). 19
7. Chu describes the slide-bracket 116a as being slideably 20
connected at an outer end to a vertical groove 132a on the back of the 21
display module 118 so that the display module 118 may slide upwardly and 22
downwardly on the slide-bracket 116a. (Chu, col. 3, ll. 58-67). 23
8. Chu teaches that the structure of the flat panel display 110 24
permits a user to conveniently move the display module 118 up and down; 25
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forward and backward; and about a horizontal axis relative to the base 112. 1
(See Chu, col. 3, ll. 47-57). 2
3
ANALYSIS 4
First Issue 5
Claim 13 recites a method including the step of “positioning one end 6
of the display in a space formed between two legs of the mounting arm.” 7
The Examiner finds that Chu discloses a space formed between two legs of a 8
mounting arm, namely, the base 112 and the slide-bracket 116a. (Ans. 4). 9
The Appellants argue that the recited step cannot be performed using Chu’s 10
flat panel display 110 because the base 112 is not a leg of a mounting arm. 11
(Reply Br. 2). Since the Examiner has not identified a space between two 12
legs of a mounting arm, no portion of Chu’s display module 118 can be 13
positioned in such a space. 14
The Appellants do not formally define the term “leg” in the 15
Specification. Nevertheless, claim 17 recites the “method of claim 13, 16
wherein the display moves to a collapsed position into the space such that a 17
base is adjacent and parallel to a front side of the display and one of the two 18
legs is adjacent and parallel to a back side of the display.” The use of 19
different terms for the base and the two legs of claim 17 implies that the 20
terms “base” and “legs” are intended to read on different structures. 21
Interpreting the term “leg” as used in parent claim 13 consistently with the 22
usage in claim 17, the “two legs” recited in claim 13 do not read on the base. 23
This interpretation is consistent with the Appellants’ Specification, which 24
identifies separate structures as the “legs” and the “base.” (See Spec. paras. 25
0033 and 0034; see also Reply Br. 2). 26
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Therefore, Chu’s base 112 does not correspond to a “leg” as that term 1
is used in claim 13. See In re Robertson, 169 F.3d 743, 734 (Fed. Cir. 2
1999)(holding that a claim requiring three separate elements was not 3
anticipated by a reference describing only two such elements on the basis 4
that one element in the reference corresponded to two elements recited in the 5
claim). We do not sustain the rejection of claims 13-16 and 18-20 under 6
§ 102(a) as being anticipated by Chu. 7
8
Second and Third Issues 9
The Appellants contend that Hsu’s support arm 54 is not a U-shaped 10
mounting arm as recited in claim 8 because the support arm 54 is J-shaped 11
and has a “bent end.” (App. Br. 20; see also Reply Br. 4). The Appellants 12
do not formally define the term “U-shaped” in the Specification. 13
Nevertheless, our reviewing court has instructed us that, where possible, 14
claim language should be construed sufficiently broadly to encompass at 15
least one embodiment disclosed in the specification. Hoechst Celanese 16
Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996). 17
The Appellants’ embodiment as depicted in Figures 3A-3D appears to 18
have a mounting arm 112 with an upper leg having a forward end hinged at 19
150 to the back of the display 102 and a lower leg having a forward end 20
connected to the base 110. The forward end of the upper leg extends farther 21
forward than the forward end of the lower leg. In other words, the mounting 22
arm 112 is J-shaped. Furthermore, the upper leg appears to have a 23
significant “bent” portion which overhangs the lower leg and extends 24
upwardly in a direction transverse to horizontal. The same appears to be 25
true of the mounting arms 112 depicted in the Appellants’ other drawing 26
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figures. Therefore, the Examiner is justified in interpreting the term “U-1
shaped” sufficiently broadly to encompass J-shaped mounting arms with 2
“bent ends” so as to read on the embodiments disclosed in the Specification. 3
(See Ans. 15-16). Hsu’s J-shaped support arm 54 is a U-shaped mounting 4
arm. (See FF 2). 5
The Examiner correctly concludes that it would have been obvious “to 6
construct the apparatus of Hsu with the pivoting and sliding portion of Chu 7
where the display pivotally moves such that one end of the display fits in the 8
space [between the legs of the support arm 54] in order to adjust the display 9
for the convenience of the user.” (Ans. 5-6). The superior adjustability of 10
Chu’s flat panel display 110 as opposed to Hsu’s display device 50 would 11
have provided one of ordinary skill in the art reason to modify Hsu’s display 12
device 50 in this manner. (Compare FF 3 with FF 8). The Appellants do not 13
present a persuasive reason why the Examiner’s reasoning is in error. 14
The teachings of Chu would have suggested improving Hsu’s display 15
device 50 by adding: 16
a hinge corresponding to Chu’s first hinge 142 between 17
Hsu’s base 56 and support arm 54; 18
at least one slide-bracket corresponding to Chu’s slide-19
bracket 116a at the upper, forward end of Hsu’s support arm 20
54; 21
a hinge corresponding to Chu’s second hinge 144 22
between the upper, forward end of Hsu’s support arm 54 and 23
the added slide-bracket; 24
and at least one groove corresponding to Chu’s vertical 25
groove 132a in the back of Hsu’s display monitor 52 for 26
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slideably receiving the slide-bracket extending from the upper, 1
forward end of the support arm 54. 2
(See FF 5-7). Once so modified, 3
the capacity of the display monitor 52 to fit into the space 4
formed between the two legs of the support arm 54 so as to 5
place the apparatus in a collapsed position in which the base 56 6
is adjacent and parallel to a front side of the display monitor 52 7
and the upper leg of the support arm 54 is adjacent and parallel 8
to the back side of the display monitor 52 as recited in claims 1 9
and 5; 10
and the capacity of the forward end of the upper leg of 11
the support arm 54 to slide along the rear surface of the display 12
to position the display into the space between the U-shape of 13
the two legs of the support arm 54 as recited in claim 8, 14
would each flow naturally from the increased adjustability provided by the 15
proposed modification of Hsu’s display device 50. See Ex Parte Obiaya, 16
227 USPQ 58, 60 (BPAI 1985)(“The fact that appellant has recognized 17
another advantage which would flow naturally from following the 18
suggestions of the prior art cannot be the basis for patentability when the 19
differences would otherwise be obvious.”). (See Ans. 13-14 and 16; see also 20
FF 8; contra App. Br. 19 and 20 (arguing to the contrary)). 21
Therefore, we sustain the rejection of claims 1-12 under § 103(a) as 22
being unpatentable over Hsu and Chu. 23
24
DECISION 25
We AFFIRM the Examiner’s decision rejecting claims 1-12. 26
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We REVERSE the Examiner’s decision rejecting claims 13-16 and 1
18-20. 2
No time period for taking any subsequent action in connection with 3
this appeal may be extended under 37 C.F.R. § 1.136(a). 4
5
AFFIRMED-IN-PART 6
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mls 9