Ex Parte Wu

Patent Trial and Appeal Board

Mar 13, 2015

12344528 (P.T.A.B. Mar. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/344,528 12/28/2008 Hengning Wu U0801 6306
26669 7590 03/16/2015
HENGNING WU
Acroscape
12923 Roberts Ridge CT.
Bristow, VA 20136
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
03/16/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENGNING WU
____________

Appeal 2013-000371
Application 12/344,528
Technology Center 2400
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seek our review under 35 U.S.C. § 134(a) of the Examiner’s
final decision rejecting claims 1–9. (App. Br. 5.)
1
We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1
We refer to Appellant’s Specification (“Spec.”), filed December 28, 2008;
Appeal Brief (“App. Br.”) filed March 11, 2012; and Reply Brief (“Reply
Br.”) filed September 27, 2012. We also refer to the Examiner’s Answer
(“Ans.”) mailed July 27, 2012, and Final Office Action (Final Rejection)
(“Final Act.”) mailed September 15, 2011.
Appeal 2013-000371
Application 12/344,528

2

Appellant’s Invention
The invention at issue on appeal concerns portable computers and
methods for increasing the effective display area of a computer by providing
first and second displays, housed together, where the diagonal size of the
second display is 40%–70% of the first display, and whereby an effective
area of said display screens is larger than the total physical area of said
display screens. (Spec. ¶¶ 1, 3–9; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A portable computer, comprising:
a first display screen in a portrait format housed in a first
panel;
a second display screen in a landscape format housed in a
second panel, said second panel physically attached to said first
panel, said first panel and said second panel in a horizontal
arrangement when in an open position, the diagonal size of said
second display screen is 40% to 70% of the diagonal size of
said first display screen;
whereby an effective area of said display screens is
larger than the total physical area of said display screens, a
display functionality is enhanced, and said portable computer
can have small size, light weight, and long battery life.

Appeal 2013-000371
Application 12/344,528

3

Rejections on Appeal
2

1. The Examiner rejects claims 1–4 and 7–9 under 35 U.S.C.
§ 103(a) as being unpatentable over Willrich (US 2006/0183505 A1,
published Aug. 17, 2006) and Hack (US 2003/0109286 A1, published June
12, 2003).
2. The Examiner rejects claims 5 and 6 under 35 U.S.C. § 103(a)
as being unpatentable over Willrich, Hack, and Official Notice.

ISSUE
Based upon our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that the combination of Willrich and
Hack collectively would have taught or suggested “an effective area of said
display screens is larger than the total physical area of said display screens”
within the meaning of Appellant’s claim 1 and the commensurate limitations
of claim 9?

2
The Examiner has withdrawn the rejections under 35 U.S.C. § 112 (the
rejection of claims 1–8 under 35 U.S.C. § 112, first paragraph (Final Act. 5–
7) and the rejection of claims 1–9 under 35 U.S.C. § 112, second paragraph
(Final Act. 7–9)). (Ans. 4.) Accordingly, we do not address Appellant’s
arguments directed to the rejections under 35 U.S.C. § 112. (App. Br. 10–
12.)
Appeal 2013-000371
Application 12/344,528

4

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed September 15, 2011, as our own, except as to those findings
that we expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellant’s arguments (App. Br. 12–17), we find Appellant
provides separate arguments for claims 1, 2, and 8, but does not separately
argue with particularity the patentability of dependent claims 3, 4, and 7.
(App. Br. 12–14.) Appellant also separately argues claim 9, but these
arguments merely reiterate the arguments made with respect to claim 1.
(App. Br. 15–16.) Appellant further argues claims 5 and 6 together as a
group. (App. Br. 16–17.) Accordingly, we select independent claim 1 and
dependent claims 2, 5, and 8 as representative of Appellant’s arguments and
grouping with respect to claims 1–9. 37 C.F.R. § 41.37(c)(1)(vii) .
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2–3, 10–
16; Ans. 4–11), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 11–37) in response to Appellant’s Appeal Brief.
We concur with the findings and conclusions reached by the Examiner, and
we provide the following for emphasis.
The § 103 Rejection of Claims 1, 3, 4, 7, and 9
Appellant contends that Willrich and Hack do not teach the disputed
features of representative claim 1, namely — “an effective area of said
display screens is larger than the total physical area of said display screens”
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Application 12/344,528

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(claim 1). (App. Br. 12–13; Reply Br. 10–15.) Specifically, Appellant
contends that Hack does not teach the disputed limitation because “Hack’s
. . . effective area is the same as the physical area (Hack, Fig. 7)” (App. Br.
13), the Examiner misconstrues and/or misapplies the prior art references
(Reply Br. 12–13), and the Examiner misinterprets Appellant’s claim
language (Reply Br. 10–12). We disagree with Appellant’s contentions and
reasoning.
We first address the interpretation of “effective area,” as the dispute
hinges upon this interpretation. As pointed out by the Examiner, the only
explanation provided for this terminology explains that “[t]he effective
screen size is the rectangle enclosing the two display screen[s].” (Ans. 13–
17 (citing Spec. ¶ 16).) We understand Appellant to further contend that the
functionality (intended use, function, and/or purpose) of the recited physical
display arrangement of the displays (larger first screen and smaller second
screen) is “perform the same functions with less physical display area”
(Spec. ¶ 16), that is “instead of a single large display screen, the two display
screens can perform the same functions with less physical display area”
(Spec. ¶ 16). (See Reply Br. 10–11.) Based on Appellant’s Specification,
the only physical (structural) measure of “effective area” is a rectangle
enclosing both screens that is (measures) larger than the combined area
occupied by the two (first and second) display screens. The intended use or
purpose of this design — to “perform the same functions” as two larger
(equal-sized) displays in a smaller (“with less”) “physical display area”
(claim 1) does not distinguish the recited disputed limitation from the prior
art. As explained by the Examiner (with respect to claims 5 and 6) (Ans.
37), the relative dimensions of a device —in this instance the display screens
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Application 12/344,528

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of a device — do not change how the device functions. (See Ans. 10, 37
(citing Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1349 (Fed. Cir.
1984).) It is well-accepted law that an apparatus must be distinguished from
the prior art in terms of structure rather than function. In re Schreiber, 128
F.3d 1473, 1477–78 (Fed. Cir. 1997). “[A]pparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
Here, Appellant misconstrues the Examiner’s rejection. The
Examiner points to explicit disclosures in the prior art that describe utilizing
multiple displays in a laptop computer, utilizing different-sized displays, and
utilizing multiple displays in different orientations. For example, the
Examiner explains that Willrich describes utilizing multiple displays with
different orientations and sizes. (Ans. 18–23 (citing Willrich ¶¶ 43, 45, 46,
56.) The Examiner further explains that Willrich describes splitting a screen
into multiple windows and Hack describes changing the information
displayed in a screen (window) to alternately display an image on the entire
screen or to split the screen (into different windows) to display different
information (e.g., a keyboard and typed text). (Ans. 21–26 (citing Willrich
¶ 68 and Hack ¶¶ 9, 70, 71; Figs. 5 and 6).) We agree with the Examiner
that the prior art, in particular Willrich, would have at least suggested to one
of ordinary skill in the art the recited structure of the apparatus in question
— a portable computer with two display screens (a larger first screen and
smaller second screen).
Appellant has not effectively or persuasively explained how the
recited computer (or method of claim 9) would perform differently than the
prior art structure (or conversely, how the prior art would function
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differently). Thus, the recited limitation does not distinguish over the prior
art. It is well within the skill in the art to display data using the displays
described by Willrich (a larger and a smaller display (see Ans. 23
(Examiner’s Example I (Fig. 2))) such that the displays “perform the same
functions” as two equal-sized displays (Willrich Fig. 2, displays 207 and
209) in a smaller “physical display area.” Further, the layout described by
the Examiner (and taught by Willrich) (see Ans. 23 (Examiner’s Example I
(Fig. 2)) meets the recited limitation — the rectangle enclosing the two
display screens (i.e., the effective screen area) is larger than the actual
(physical) display screen area.
Thus, for all the reasons supra, Appellant does not persuade us of
error in the Examiner’s obviousness rejection of representative independent
claim 1. Accordingly, we affirm the Examiner’s obviousness rejection of
representative claim 1, independent claim 9, and dependent claims 3, 4, and
7, not separately argued with particularity (supra).
The § 103 Rejection of Claim 2
Appellant contends that Willrich and Hack do not teach the
“electronic paper display” recited in Appellant’s dependent claim 2. (App.
Br. 13–14; Reply Br. 15–16.) Appellant, however, concedes that “electronic
paper was known at the time of the present invention.” (App. Br. 13.) As
explained with respect to claim 1 (supra), Willrich describes and teaches
multiple display types. As Appellant concedes that electronic paper displays
were known, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of dependent claim 2. Accordingly, we affirm the
Examiner’s obviousness rejection of claim 2.
Appeal 2013-000371
Application 12/344,528

8

The § 103 Rejection of Claim 8
Appellant contends that Willrich and Hack do not teach the “specific
arrangement” recited in Appellant’s dependent claim 8. (App. Br. 14; Reply
Br. 16.) As explained by the Examiner and conceded by Appellant (App.
Br. 14), Willrich describes all of the elements of the disputed claim
limitation as well as a variety of arrangements. (Ans. 32–34 (citing Willrich
¶ 31).) Appellant does not persuasively explain how Willrich’s arrangement
does not meet the disputed arrangement. Thus, Appellant does not persuade
us of error in the Examiner’s obviousness rejection of dependent claim 8.
Accordingly, we affirm the Examiner’s obviousness rejection of claim 8.
The § 103 Rejection of Claims 5 and 6
Appellant contends that Willrich and Hack do not teach the specific
“size of the second display screen” recited in Appellant’s dependent claims 5
and 6. (App. Br. 16–17; Reply Br. 18–19.) As explained by the Examiner
such a display screen size is well known. (Ans. 9–11, 34–37.) Appellant
does not dispute the Examiner’s “Official Notice,” but instead argues one
would not be motivated to use the recited screen size (App. Br. 16). We
disagree.
As explained by the Examiner (Ans. 34–37), Appellant has not shown
why the specific recited screen dimensions, which were known, distinguish
the recited structure from the prior art. Thus, Appellant does not persuade us
of error in the Examiner’s obviousness rejection of dependent claims 5 and
6. Accordingly, we affirm the Examiner’s obviousness rejection of claims 5
and 6.

Appeal 2013-000371
Application 12/344,528

9

CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1–9 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1–9.

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
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