Ex Parte Parker et al

Board of Patent Appeals and Interferences

Aug 27, 2012

10742365 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY C. PARKER, VICTOR A. CORRIN,
SCOTT T. OGLE, and DAVID W. CAWTHON
____________

Appeal 2009-015308
Application 10/742,365
Technology Center 2600
____________

Before THOMAS S. HAHN, DENISE M. POTHIER, and
JENNIFER S. BISK, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/742,365

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-12, and 15-28. Claims 3 and 14 have been
canceled. Ans. 2. Claim 13 is objected to as being dependent on a rejected
claim but would be allowable if rewritten in independent form. See Final
Rej. 1 (Box 7), 12 (Nov. 12, 2008). We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

Invention
Appellants’ invention relates to a multiple-screen display apparatus
and method that permits a side of a first display to be oriented obliquely to a
side of a second display. See Abstract. Claims 17 and 24 read as follows
with the key disputed limitations emphasized:
17. A portable computer system comprising:
a first means for displaying an image;
a second means for displaying an image; and
means for coupling a first side of said first means for displaying to
one side of said second means for displaying such that the first side of said
first means for displaying is aligned with the one side of said second means
for displaying, and
means for detachably coupling said first means for displaying to said
one side of said second means for displaying such that the first side of said
first means for displaying is oblique to the one side of said second means for
displaying.

24. A display apparatus comprising:
a first display comprising a base and a first side extending from the
base;
a hinge assembly coupled to the first side of the first display;
a second display comprising a first side coupled to the hinge
assembly;
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the first and second displays have a first orientation in which the first side of
the first display is aligned with the first side of the second display, and a
second orientation in which a portion of the hinge assembly is decoupled
while another portion of the hinge assembly remains coupled so that the first
side of the first display is oblique to the first side of the second display.

The Examiner relies on the following as evidence of unpatentability:
Kim US 2003/0043087 A1 Mar. 6, 2003
Duquette US 6,532,146 B1 Mar. 11, 2003

The Rejections
1. The Examiner rejected claims 1, 4-8, 17-19, and 24-28 under 35
U.S.C. § 102(e) as anticipated by Kim. Ans. 3-8.1
2. The Examiner rejected claims 2, 9-12, 15, 16, and 20-23 under 35
U.S.C. § 103(a) as unpatentable over Kim and Duquette. Ans. 8-12.

THE ANTICIPATION REJECTION OVER KIM
Regarding representative independent claim 24, Appellants argue that
all portions of Kim’s hinge as shown in Figure 2 remain coupled at all times.
App. Br. 13; Reply Br. 2. Giving the recitation, “the first and second
displays have . . . a second orientation in which a portion of the hinge
assembly is decoupled . . . ,” its broadest reasonable construction consistent
with the disclosure, Appellants argue that Kim does not disclose a portion of
Kim’s hinge, including element 40, decoupled to achieve the oblique
orientation as claimed. App. Br. 13-14.

1 Throughout this opinion, we refer to: (1) the Appeal Brief filed January 6,
2009; (2) the Examiner’s Answer mailed April 29, 2009; and (3) the Reply
Brief filed June 18, 2009.
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Concerning representative claim 6, Appellants argue that in Kim bolts
36a, 36b slide within slots 44 and 46 and remain coupled to each other at all
times. App. Br. 15. For this reason, Appellants assert that Kim fails to teach
a second hinge detachably attached between the first display and the second
display. Id.
As for independent claim 17, Appellants contend that the limitation,
“means for detachably coupling said first means . . . to said one side of said
second means . . . such that the first side of said first means . . . is oblique to
the one side of said second means . . . ,” invokes 35 U.S.C. § 112, sixth
paragraph. App. Br. 15-16; Reply Br. 2-3. Appellants argue that Kim does
not disclose a corresponding structure or an equivalent to this recited means.
App. Br. 16-17; Reply Br. 2-3.

ISSUES
Under § 102, has the Examiner erred by finding that Kim discloses:
(1) the first and second displays have a second orientation in which a
portion of the hinge assembly is decoupled as recited in claim 24?
(2) the hinge assembly comprises a second hinge detachably attached
between the first display and the second display as recited in claim 6?
(3) a means for detachably coupling a first display means to one side
of the second display means such that the first side of the first display means
is oblique to the one side of the second display means as recited in claim 17?

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ANALYSIS
Claims 1, 4, 5, and 24-26
We begin by construing the key disputed limitation of representative
claim 24, which calls for the first and second displays to have a second
orientation in which a portion of the hinge assembly is decoupled.
Appellants have not defined the phrase, “decouple,” in the disclosure. See
generally Specification. As such, we will give this term its ordinary and
customary meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc). Merriam-Webster’s Online Dictionary defines
“decouple” as “to eliminate the interrelationship of: separate.”2 Also and
notably, claim 24 does not recite from what the hinge assembly portion is
decoupled or separated. Thus, Kim needs only to disclose or show that a
hinge assembly portion is decoupled from some other element in the relied-
upon embodiment in Kim to teach this recitation in claim 24.
Turning to Kim and the Examiner’s finding, Kim discloses hinge
assembly portions (e.g., hinge cylinders 236, 238) are detached or decoupled
from a first side 228 of the second display 214. Ans. 4, 13. Particularly,
Kim’s Figure 8 illustrates how a portion of the hinge assembly (e.g., upper
and middle hinge cylinders 236 and hinge cylinders 238) is separated from
side 228 of display 214 so that the first display’s side (e.g., 228 of display
214) is oblique to the second display’s side (e.g., 222 of display 212).
¶¶ 0030-32; Fig. 8; see Ans. 13 (showing a marked-up version of Figure 8).
Thus, several hinge portions (e.g., upper and middle hinge cylinders 236 and
hinge cylinders 238) in Kim are separated or decoupled from a display’s side

2 Merriam-Webster’s Online Dictionary, available at http://www.merriam-
webster.com/dictionary/decouple (last visited August 13, 2012).
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(e.g., 228). Portions of Kim’s hinge assembly are therefore not “coupled at
all times” (App. Br. 13) to portions of one of the displays (e.g., 214) in Kim
when in a second, oblique orientation.
We are therefore not persuaded that the Examiner erred in finding that
Kim discloses a portion of the hinge assembly is “decoupled,” as broadly as
recited, so that the first display’s first side (e.g., 228) is oblique to the second
display’s first side (e.g., 222).
Independent claim 1 has not been separately argued (App. Br. 13-14),
but we note that this claim varies in scope slightly by reciting the “first and
second displays have . . . a second position in which a portion of the hinge
assembly is detached . . . .” Similar to claim 24, this claim does not recite
what the hinge assembly is detached from, and we find that the reasoning
applied above related to Kim and claim 24 applies equally to claim 1.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 24 and claims 1, 4, 5, 25, and 26 not
separately argued with particularity.

Claims 6-8, 27, and 28
Based on the record before us, we also find no error in the Examiner’s
rejection of representative claim 6 which calls for a second hinge detachably
attached between the first and second displays. Appellants repeat the
argument that the Kim’s hinge remains coupled at all times. App. Br. 15.
As explained above, a portion of Kim’s hinge assembly (e.g., upper and
middle hinge cylinders 236 and hinge cylinders 238) are detached from a
first side of display 214 so that the display is oriented obliquely from another
display 212. See ¶¶ 0030-32; Fig. 8. Moreover, the Examiner points to
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Kim’s Figure 5 to show how the two displays are attached. See Ans. 5,
13, 15.
Notably, like claim 24, claim 6 does not recite to what the hinge is
detachably attached but rather that the hinge is detachably attached between
two displays. Thus, Kim demonstrates how a second hinge (e.g., upper and
middle hinge cylinders components 236 and hinge cylinders components
238) are detachably attached between the first and second displays, as
discussed above and broadly as recited.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claim 6 and claims 7, 8, 27, and 28 not separately argued
with particularity (App. Br. 15).

Claims 17-19
When a claim uses “means for” language, there is a presumption that
the claim invokes 35 U.S.C. § 112, sixth paragraph. See Biomedino L.L.C.
v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Consistent with
Appellants’ position (App. Br. 15), we find 35 U.S.C. § 112, sixth paragraph
has been invoked with respect to claim 17. As such, the recited limitation,
“means for detachably coupling said first means for displaying to said one
side of said second means for displaying such that the first side of said first
means for displaying is oblique to the one side of said second means for
displaying” shall be construed to cover the corresponding structure described
in the Specification and its equivalents. In re Donaldson Co., Inc., 16 F.3d
1189, 1195 (Fed. Cir. 1994) (en banc).
Appellants map elements 26 and 32 in Figure 1 and element 38 in
Figure 11, as well as paragraphs 0020, 0027, and 0028 and Figures 4 and 10
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in the disclosure to the corresponding structure of the recited means. App.
Br. 9, 16. However, the Specification describes disconnecting lower hinges
30 and 36 in order to adjust the inclination of the displays and to enable
displays 16 and 18 to adjust to a different angle from the center display 14.3
Spec. ¶ 0024; Fig. 1. Appellants also state that, in this position, the hinged
sides are oblique to the center display’s sides. Spec. ¶ 0024. Additionally,
paragraph 0027 describes a lower hinge assembly 54 coupling stationary
display 39 to moveable display 41. Spec. ¶ 0027. This assembly comprises
a link member 56 with a shaft and ball 60 disposed at each end engaging
sockets 62. Id. The sockets 62 also permit ball 60 to be removed and break
the connection at the lower hinge assembly 54. Id.
Appellants also state “other configurations are possible.” Spec.
¶ 0028. However, the examples of the other configurations do not relate to
different structures for detachably coupling a first display to a side of a
second display such that a side of a first display is oblique to a side of the
second display. See id. Rather, they describe a single hinge similar to the
upper hinge assembly 38 that permits disassembly and separate storage. See
id. Thus, the corresponding structure to the recited means is the ball and
socket hinge assembly described. Kim’s hinge assembly having slots 240,
242 and bolts slideably received in the slots to permit the first display’s side
to be separate from and oblique to a second display’s side (see Fig. 8) is not
the same corresponding structure as that described in the Specification.

3 While the discussion states “lower hinges 28 and 34” (¶ 0024, line 9), we
presume the reference to numerals 28 and 34 is a typographical error. The
lower hinges are 30 and 36, not 28 and 34. See ¶ 0024, line 6 (discussing
“[l]ower hinges 30 and 36 . . . ”).
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Yet, the Examiner finds that recited “means for detachably coupling”
in claim 17 is not limited to the hinge assembly shown in Figure 11 of the
disclosure. Ans. 15-16. We agree since Donaldson states that
means-plus-function limitations shall be construed to cover the
corresponding structure described in the Specification and its equivalents.
Donaldson, 16 F.3d at 1195. The remaining question is whether the
Examiner has provided an explanation and rationale that Kim is an
equivalent of the recited “means for detachably coupling said first means . . .
to said one side of said second means . . . such that the first side of said first
means . . . is oblique to the one side of said second means . . . .”
Based on the finding that the hinge assembly structure is not limited to
that in Figure 11, the Examiner further states the scope of the claim “does
not necessarily result in the structure” in Figure 11 and concludes
it would be reasonable to construe that Kim teaches the
structure of the display apparatus equivalent to the structure of
the display apparatus disclosed in the claim if Kim teaches all
the elements and the functions of the elements disclosed in the
claims. . . . [The] Examiner respectfully submits that the art
rejection, itself, shows how Kim teaches a structure of a display
apparatus equivalent to the structure of the display apparatus
disclosed in the claims.
Ans. 16.
However, we find these findings and conclusion by the Examiner are
inadequate to support a finding that Kim’s hinge assembly is an equivalent.
An adequate explanation would include addressing at least one of the factors
listed in the Manual of Patent Examining Procedure § 2183. For example,
the Examiner has not shown that Kim’s prior art element performs an
identical function specified in the claim in substantially the same manner
and produces substantially the same result. See MPEP § 2183(A), (D).
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While the Examiner has demonstrated that Kim’s structure provides
substantially the same result of having a first display means oblique to a
second display means, the Examiner has not shown that Kim’s hinge
assembly performs the same function as in claim 17 of detachably coupling
a first display means to a second display means in substantially the same
manner. See Ans. 6, 13-14, 16; see also In re Bond, 910 F.2d 831, 833 (Fed.
Cir. 1990). Nor has the Examiner shown that an ordinarily skilled artisan
would have recognized the interchangeability of the element shown in Kim
for the corresponding element described in the disclosure or that there are
insubstantial differences between the prior art element and the corresponding
element disclosed in the Specification. See MPEP § 2183(B), (C).
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 17 and dependent claims 18 and 19 for
similar reasons.

THE OBVIOUSNESS REJECTION OVER KIM AND DUQUETTE
Regarding representative claim 20, Appellants argue that Kim fails to
teach or suggest the second hinge assembly having a second mode where a
portion of the second hinge assembly disconnects while another portion of
the second hinge assembly remains connected enabling a second display’s
side to be oblique to the first display’s first side. App. Br. 17. In
Appellants’ view, this is the case because Kim’s oblique angle is
accomplished using bolts and slots. Id. We agree with the Examiner (Ans.
16) that this argument is similar to that presented for claim 24. Also, the
Examiner provides a definition for “disconnect” (Ans. 17) to include “to
become detached or withdrawn.” Appellants have not disputed this
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definition. Thus, for the reasons previously discussed in connection with
claim 24 and Kim, we equally are not persuaded that Kim fails to teach a
hinge assembly that disconnects or detaches as broadly as recited in claim 20
and Duquette need not cure any purported deficiency in Kim. App. Br. 18.
For the above reasons, Appellants have not persuaded us of error in
the rejection of claim 20 and claims 2, 9-12, 15, 16, and 21-23 not separately
argued with particularity (App. Br. 17-18).

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1, 4-8, and
24-28, but erred in rejecting claims 17-19.
Under § 103, the Examiner did not err in rejecting claims 2, 9-12, 15,
16, and 20-23.

DECISION
The Examiner’s decision rejecting claims 1, 2, 4-12, and 15-28 is
affirmed-in-part.
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)(iv).

AFFIRMED-IN-PART

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