Yoshiharu Uchiyama et al.

Patent Trials and Appeals Board

Aug 2, 2019

15068258 - (D) (P.T.A.B. Aug. 2, 2019)

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.
15/068,258 03/11/2016 Yoshiharu Uchiyama JP920150010-US-NP 4488
124845 7590 08/02/2019
Russell Ng PLLC (LENOVO)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
O BRIEN, JEFFREY D
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIHARU UCHIYAMA, SHIGEHIRO HORIUCHI,
RYOTA NOHARA, and HIROAKI KINOSHITA
____________

Appeal 2019-000314
Application 15/068,258
Technology Center 3600
____________

Before CHARLES N. GREENHUT, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
LENOVO (SINGAPORE) PTE. LTD. (“Appellant”)1 appeals under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 11–13 and
17–24, which are all the pending claims. Appeal Br. 3. Claims 1–10 and
14–16 have been canceled. Appeal Br., Claims App. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 LENOVO (SINGAPORE) PTE. LTD. is the applicant, as provided in
37 C.F.R. § 1.46. Lenovo Corporation is identified as the real party in
interest. Appeal Br. 3.
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Application 15/068,258

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to hinge devices in general,
and particularly to a portable computer having a hinge device for coupling
two chassis to each other so that the two chassis can be opened and closed.”
Spec., p. 1, ll. 15–17. Claim 11, reproduced below, is the sole independent
claim and is representative of the subject matter on appeal.
11. A portable information equipment comprising:
a first and second chassis; and
a hinge device rotatably connects said first chassis to said
second chassis, wherein said hinge device includes
a first shaft having a first end attached to said first
chassis, and a second shaft having a first end attached to said
second chassis;
a first power transmission mechanism having a driven
gear and a driving gear attached to a second end of said first
shaft;
a first torque generation mechanism for applying a
rotational torque to said first shaft via said first power
transmission mechanism;
a second power transmission mechanism having a driven
gear and a driving gear attached to a second end of said second
shaft; and
a second torque generation mechanism for applying a
rotational torque to said second shaft through said second
power transmission mechanism.

Appeal 2019-000314
Application 15/068,258

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Katoh US 5,867,872 Feb. 9, 1999
Hsu US 8,959,716 B2 Feb. 24, 2015

REJECTION
The following rejection is before us for review:2 Claims 11–13 and
17–24 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Katoh and Hsu. Final Act. 5–9.

ANALYSIS
Independent claim 11 recites, in relevant part, a first and a second
chassis with a hinge device rotatably connecting the same, where the hinge
device includes “a first shaft having a first end attached to said first chassis,
and a second shaft having a first end attached to said second chassis,” with a
set of both a power transmission mechanism and a torque generation
mechanism associated with each of the first and second shafts, and where
each respective power transmission mechanism has a driven gear and a
driving gear, and each respective torque generation mechanism is to apply a
rotational torque to the respective shaft via the respective power
transmission mechanism. See Appeal Br., Claims App. (emphasis added).

2 We note that a rejection of claims 21–24, under 35 U.S.C. § 112(b),
has been withdrawn by the Examiner and thus is not before us for review as
part of the instant appeal. Ans. 3; see also Final Act. 4.
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Application 15/068,258

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In rejecting all the pending claims, the Examiner relies on Katoh for
disclosing first and second chassis connected by a hinge device that includes
a single shaft, where the single hinge shaft includes a power transmission
mechanism (having a driven gear and a driving gear) and a torque generation
mechanism (for applying a rotational torque to the shaft via the power
transmission mechanism) associated with the hinge shaft. See Final Act. 5
(citing Katoh, Fig. 7). The Examiner also relies on Hsu for disclosing first
and second chassis connected by a hinge device that includes a first shaft
connected to the first chassis and a second shaft connected to the second
chassis. See id. at 6 (citing Hsu, Figs. 1, 5). As for combining these
disclosures, the Examiner states that “[i]t would have been obvious to one
having ordinary skill in the art to apply a plurality of the shafts, power
transmission mechanisms, and torque generation mechanisms [from Hsu] to
the equipment of [Katoh] in a manner as taught by [Hsu], since it has been
held that mere duplication of the essential working parts of a device involves
only routine skill in the art.” Id. (citing MPEP § 2144.04).
Appellant persuasively asserts that the Examiner’s proposal to
duplicate elements from Katoh, and then associate a set with each hinge
shaft from Hsu, simply because Hsu discloses a hinge device with two hinge
shafts, “does not provide enough justification that the claimed first power
transmission mechanism and the claimed first torque generation mechanism
should be duplicated.” Appeal Br. 5. Although the Examiner is correct that
duplicating parts can form part of an obviousness conclusion, the ability to
do so does not end the inquiry. The MPEP makes clear that duplicating
parts, among other exemplary rationales, “should not be treated as per se
rules, but rather must be explained and shown to apply to the facts at hand.
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Application 15/068,258

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A similar caveat applies to any obviousness analysis.” MPEP § 2144. In
other words “[s]imply stating the principle [e.g., duplication of parts]
without providing an explanation of its applicability to the facts of the case
at hand is generally not sufficient to establish a prima facie case of
obviousness.” Id.
Here, we agree with Appellant that the Examiner’s rejection appears
to apply the ability to duplicate known parts as a per se rule to establish the
conclusion of obviousness. Reliance on per se rules of obviousness in the
abstract is legally inappropriate; our precedents do not establish any such
rules of obviousness, just as those precedents themselves expressly declined
to create such rules. See In re Ochiai, 71 F.3d 1565, 1571–72 (Fed. Cir.
1995).
Although it may be possible that a reason exists to apply Katoh’s
features to both hinge shafts of Hsu (perhaps a benefit provided by having
these mechanisms on the single hinge shaft of Katoh would be similarly
desirable to provide on both hinge shafts of Hsu), any such analysis is absent
from the rejection. On the record before us, we agree with Appellant that
the Examiner has not provided a sufficient reason to duplicate these parts.
Stated another way, the ability to duplicate parts—in and of itself—is not a
reason to do so.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we do not sustain the rejection of independent claim 11 as being
unpatentable over Katoh and Hsu based on the Examiner’s reliance solely on
the ability to duplicate known parts. Because each of claims 12, 13, and
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17–24 depends directly or indirectly from claim 11, we likewise do not
sustain the rejection of claims 12, 13, and 17–24.

DECISION
We REVERSE the Examiner’s decision rejecting claims 11–13 and
17–24 under 35 U.S.C. § 103 as being unpatentable over Katoh and Hsu.

REVERSED