Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Nov 27, 2020

2019004803 (P.T.A.B. Nov. 27, 2020)

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.
14/453,435 08/06/2014 Jason M. Grimme RPS920130259-US-NP 9400
109808 7590 11/27/2020
LENOVO/PANGRLE
Pangrle Patent, Brand & Design Law, P.C.
3500 W Olive Ave
3rd Floor
Burbank, CA 91505
EXAMINER
WU, JERRY
ART UNIT PAPER NUMBER
2841
NOTIFICATION DATE DELIVERY MODE
11/27/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
brian@ppbdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON M. GRIMME, PETER HAMILTON WETSEL, and
JOSHUA NEIL NOVAK
Appeal 2019–004803
Application 14/453,435
Technology Center 2800
BEFORE BEVERLY A. FRANKLIN, MONTÉ T. SQUIRE, and JANE E.
INGLESE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 9–14, and 21–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Lenovo Singapore
Pte. Ltd. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s claimed subject matter on
appeal and is set forth below:
1. A device comprising:
a processor;
memory operatively coupled to the processor;
a keyboard housing that comprises an extractible
extension, a back side and an opposing keyboard side that
comprises a keyboard accessible to the processor; and
a display housing that comprises a display side, an
opposing back side, a display on the display side that is
operatively coupled to the processor, a keyboard housing recess
on the back side and a supplemental recess on the back side that
is adjacent to the keyboard housing recess and that facilitates
griping of the keyboard housing to extract the keyboard housing
from the keyboard housing recess of the display housing;
wherein, in a compact orientation, the keyboard housing
seats in the keyboard housing recess with keys of the keyboard
disposed in the keyboard housing recess and facing inwardly
and with the back side of the keyboard housing facing
outwardly and substantially flush with the back side of the
display housing and wherein, in an extended orientation, the
keyboard housing and the extractable extension extend to form
a base that supports the display housing at a viewing angle with
respect to the base.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tsai US 2002/0149908 A1 Oct. 17, 2002
Lin US 2004/0056843 A1 Mar. 25, 2004
Yang US 2005/0066477 A1 Mar. 31, 2005
C. Larsen US 2007/0091070 A1 Apr. 26, 2007
Ma US 2011/0133619 A1 June 9, 2011
Elmaleh US 2012/0195295 A1 Aug. 2, 2012

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REJECTIONS
1. Claims 1 and 21–26 are rejected under 35 U.S.C. §112(a) or
35U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
2. Claims 1, 6 and 21–26 are rejected under 35 U.S.C. §112(a) or 35
U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement.
3. Claims 1, 6, and 21–26 are rejected under 35 U.S.C. §112(b) or
35 U.S.C. §112 (pre-AIA), second paragraph, as being indefinite.
4. Claims 1–6, 9–11, 13, and 21–26 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Lin, in view of Tsai, Yang, Chen, and
Elmaleh.
5. Claim 12 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Lin, in view of Tsai, Yang, Chen, Elmaleh, and further in
view of MA.
6. Claim 14 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Lin, in view of Tsai, Yang, Chen, Elmaleh, and further in
view of Examiner’s Official Notice (“EON”).
7. Claim 14 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Lin, in view of Tsai, Yang, Chen, Elmaleh, and further in
view of Larsen.

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OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon consideration of the
evidence and each of the respective positions set forth in the record, we are
persuaded of reversible error in the appealed rejections essentially for the
reasons identified by Appellant in this appeal record as emphasized below,
and thus reverse the Examiner’s rejections.

Rejection 1
The Examiner rejects claims 1 and 21–26 for failing to comply with
35 U.S.C. §112(a) or 35 U.S.C. §112 (pre-AIA), first paragraph (written
description) for the reasons set forth on pages 2–5 of the Final Office
Action.
With regard to claim 1, on page 3 of the Final Office Action, the
Examiner posits that the term “a keyboard housing recess on the back side
and a supplemental recess” in claim 1 is not supported by the original
disclosure. The Examiner believes that there is no support in the original
Specification showing that the keyboard housing recess is located on the
“back side.”
We are persuaded of error in the Examiner’s position by Appellant’s
explanation as set forth on page 7 of the Appeal Brief. Therein, Appellant
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reproduces both Figure 1 and Figure 2 of the Specification, with annotations,
and states:
. . . the device 200 of FIG. 2 includes a swivel hinge 260 that allows
for swiveling of the keyboard housing 240 such that the keys thereof
can optionally face inwardly as shown explicitly in the view above
left. Further, to pull the keyboard housing 240 out of the recess 221 of
the display housing 220, the display housing 220 includes a
supplemental recess (see, e.g., the supplemental recesses 123-1, 123-2
of FIG. 1).

In light of this explanation, in conjunction with a review of
Appellant’s Figure 2 (showing recess 221 located on the backside of the
display housing), we agree with Appellant that the claim term “a keyboard
housing recess on the back side and a supplemental recess” complies with
§112, first paragraph.
With regard to claims 21–26, we refer to the Examiner’s statement of
the rejection of these claims as set forth pages 3–5 of the Final Office
Action. Therein, the issue is raised as to whether there is adequate support
in the original disclosure for the claim term “swivel hinge” or “swivel
mechanism” used throughout these claims.
We are persuaded of error by Appellant’s stated position in this appeal
record. Appellant explains on pages 7–8 of the Appeal Brief how the
original Specification describes “swivel hinge,” summarized below.
Appellant states how the embodiment shown in Appellant’s Figure 2
includes a “swivel hinge.” Appellant states that device 200 shown in Figure
2 has (1) an integral keyboard in a keyboard housing 240 hinged via a swivel
hinge to a display housing 220, (2) where the keyboard housing 240 can be
stored in a recess 221 of the display housing 220, (3) in a manner that the
keys of the keyboard housing 240 are protected/not “felt” by a user’s
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finger/hand, and (4) where it is desirable to use the keyboard of the keyboard
housing 240, an extension 270 can be extended out of the keyboard housing
240 to support the device 200 at its back in a manner that helps
prevent tipping over, particularly where a display 230 of the display housing
220 is a touch-screen display that is likely to be touched by a human finger
or fingers and/or a stylus, which would apply a force in a likely direction
of tipping over; noting that the keyboard housing 240 itself provides
support at the front. Appeal Br. 7–8.
Appellant also explains how the claim term “swivel hinge” is
understood by one skilled in the art. Appeal Brief 14–15. Appellant refers
to paragraph 37 of the Specification for a description of the swivel hinge
which specifically uses the term “swivel hinge”. Spec. p. 8. Reply Br. 6–7.
We are persuaded by the aforementioned arguments, and thus agree
with Appellant that the Specification sufficiently describes the term “swivel
hinge,” and agree with Appellant that claims 21–26 comply with 35 U.S.C.
§112, first paragraph. In so doing, we note that the test for sufficiency of a
written description is whether the disclosure of the application relied upon
“reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Possession means “possession as shown in the disclosure” and
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id.
In view of the above, we reverse Rejection 1.

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Rejection 2
The Examiner rejects claims 1, 6, and 21–26 under 35 U.S.C. §112,
first paragraph, as failing to comply with the enablement requirement for the
reasons set forth on pages 5–9 of the Final Office Action. The Examiner
relies upon the same reasons relied upon for Rejection 1 for Rejection 2. In
so doing, it appears the Examiner is improperly commingling the written
description requirement with the enablement requirement. We note that the
enablement requirement of 35 U.S.C. §112, first paragraph, is separate and
distinct from the written description requirement. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563,19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991)
(explaining “the purpose of the written description requirement is broader
than to merely explain how to make and use’”). See also MPEP § 2161. In
other words, the statement of a new limitation in and of itself may enable
one skilled in the art to make and use the claim containing that limitation
even though that limitation may not be described in the original disclosure.
Consequently, such limitations must be analyzed for both enablement and
written description using their separate and distinct criteria. Therefore, the
fact that an additional limitation to a claim may lack descriptive support in
the disclosure as originally filed does not necessarily mean that the
limitation is also not enabled. In the instant case, the Examiner has therefore
not properly analyzed the claims for enablement using the separate and
distinct criteria needed to do so. We thus reverse Rejection 2.
Rejection 3
The Examiner rejects claims 1, 6, and 21–26 under 35 U.S.C. §112,
second paragraph, as being indefinite for the reasons set forth on pages
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15–16 of the Final Office Action. Therein, the Examiner relies upon the
similar reasons used in Rejection 1.2 We agree with Appellant that the
claims are definite as explained by Appellant on pages 17–18 of the Appeal
Brief. We thus reverse Rejection 3.

Rejections 4–7
The Examiner rejects claims 1–6, 9–11, 13, and 21–26 under 35
U.S.C. § 103(a) as being unpatentable over Lin in view of Tsai, Yang, Chen,
and Elmaleh, for the reasons set forth on pages 18–24 of the Final Office
Action.
We are persuaded of reversible error by Appellant’s arguments
presented on pages 18–28 of the Appeal Brief. We agree with Appellant
that the Examiner’s proposed modification of Lin in view of Tsai lacks
sufficient motivation. As Appellant explains, the input apparatus 100 of
Tsai is an accessory and Lin already provides an anti-tipping solution (the
back cover 21). Appeal Br. 21. As such, Appellant argues that the evidence
in Lin and Tsai, absent the instant application, is insufficient to support a
finding that one would modify Lin as proposed by the Examiner. Appellant
states that Lin does not call for an accessory, rather it solves that problem,
and Lin also solves the problem of tipping by using the back cover 21, which
is used to cover the keyboard 3. Appeal Br. 21. As such, Appellant submits
the rejection is based on impermissible hindsight. Appeal Br. 20.

2 As stated in Rejection 1, we agree with Appellant that the Specification
provides adequate written description of the terms at issue for the reasons
discussed, supra.
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Appellant points out that the purpose of Tsai’s support frame 50 of the
input apparatus is for use when (a) the plate member 20 (cover) is open and
(b) a portable computerized apparatus 200 is disposed on the computerized
apparatus support member 24. Appeal Br. 21. The point being made by
Appellant is that such a support mechanism has no apparent use in Lin,
absent impermissible hindsight, and it is notable that the Examiner does not
resolve this point made by Appellant in the record before us. See Answer
generally.
In view of the above, we thus are persuaded by Appellant’s
arguments, and note that setting forth a prima facie case of obviousness
requires establishing that the applied prior art would have provided one of
ordinary skill in the art with an apparent reason to modify the prior art to
arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). As discussed, supra, the record indicates that the Examiner
used impermissible hindsight in rejecting the claims. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly
must rest on a factual basis, and these facts must be interpreted without
hindsight reconstruction of the invention from the prior art”).
In view of the above, we reverse Rejection 4. We also reverse
Rejections 5–7 for the same reasons (the additionally applied references do
not cure the deficiencies of the combination of Lin in view of Tsai).
CONCLUSION
We reverse the Examiner’s decision.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
1, 21–26 112(a) Written
Description
1, 21–26
1, 6, 21–26 112(a) Enablement 1, 6, 21–26
1, 6, 21–26 112(b) Indefiniteness 1, 6, 21–26
1–6, 9–11,
13, 21–26
103 Lin, Tsai, Yang,
Chen, Elmaleh

1–6, 9–11,
13, 21–26

12 103 Lin, Tsai, Yang,
Chen, Elmaleh,
MA

12
14 103 Lin, Tsai, Yang,
Chen, Elmaleh,
EON

14
14 103 Lin, Tsai, Yang,
Chen, Elmaleh,
Larsen

14
Overall
Outcome
1–6, 9–14,
21–26

REVERSED