Ex Parte Lev et al

Board of Patent Appeals and Interferences

Jan 28, 2010

11076085 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JEFFREY A. LEV and PABLO J. SALAZAR
_____________

Appeal 2009-0044311
Application 11/076,085
Technology Center 2600
______________

Decided: February 1, 2010
_______________

Before JOHN C. MARTIN, KARL D. EASTHOM, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Hewlett-Packard Development Company, L.P.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellants’ invention2
Appellants’ invention relates to convertible computer systems, which
“can generally be transformed from a notebook or clamshell mode to a tablet
mode by rotating or otherwise manipulating the orientation of a display
member of the portable computer relative to a base member of the portable
computer.” Specification ¶ 0001. In their “Background of the Invention,”
Appellants explain that
after changing the portable computer from notebook mode to
tablet mode, or vice versa, a change in the viewing orientation of
images displayed on a display member may be desired, thereby
requiring further manipulation of the portable computer (e.g.,
rotation of the portable computer) or other action by the user to
cause a change in the orientation of the images displayed by the
portable computer (e.g., selection of an icon or other software-
based mechanism). One type of portable computer utilizes a
mechanical switch mechanism to change the orientation of the
displayed image in response to physical contact and/or actuation
of the switch (e.g., contact of an arm or other type of structure
extending from the display member with a switch mounted in the
base member when the display member is positioned in a tablet

2 References herein to Appellants’ Specification are to the Application as
filed rather than to corresponding Patent Application Publication
2006/0203014 A1.
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mode). However, such types of mechanisms are subject to
damage and/or contamination (e.g., from dust, dirt or other types
of debris).
Id. Appellants’ convertible computer system includes a non-contact sensor
system for automatically changing the orientation of an image displayed by a
display element of the display member in response to the display element
being re-positioned relative to the base member. Id. ¶ 0008.
Appellants’ Figure 2A is reproduced below.

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Figure 2A is a diagram illustrating an embodiment of Appellants’
convertible computer system with portions broken away. Id. ¶ 0004.
The sensor system 40 comprises a sensor element 42 (e.g., a reed
switch 48) disposed in base member 14 and a sensor element 44 (e.g., a
magnet 50) disposed in display member 12 for automatically changing the
orientation of an image displayed by display element 30 in response to
sensor elements 42 and 44 being positioned within a predetermined distance
and/or in close proximity to each other, as shown in the tablet mode,
depicted in Figure 2B. Id. ¶¶ 0008, 0010.

B. The claims
The independent claims before us are originally filed claims 1, 11, and
16, of which claims 1 and 11 read as follows:
1. A convertible computer system, comprising:
a display member coupled to a base member to enable
positioning of the display member relative to the base member
in either a laptop mode or tablet mode; and
a non-contact sensor system adapted to automatically
change an orientation of an image displayed by a display
element of the display member in response to the display
element being re-positioned relative to the base member.
11. A convertible computer system, comprising:
non-contact means for automatically changing an
orientation of an image displayed by a display element of a
display member of the computer system in response to the
display element being re-positioned relative to a base member
of the computer system.
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Specification 6-7.3

C. The references
The Examiner relies on the following references:4
Hunt et al. (“Hunt”) US 2004/0039862 A1 Feb. 26, 2004
Chang et al. (“Chang”) US 2004/0227724 A1 Nov. 18, 2004

D. The rejections
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) for obviousness
over Chang in view of Hunt. Final Action 5.
Claim 11 also stands rejected under 35 U.S.C. § 112, first paragraph
(enablement requirement), for being a “single means” claim. Id. at 3.

THE ISSUES
Appellants have the burden on appeal to show reversible error by the
Examiner in maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by

3 Throughout the Brief, including the Claims Appendix (Br. 14-16), the
letters “chang” (which is the uncapitalized name of a reference) in the words
“change” and “changing” are (improperly) capitalized and italicized so as to
read “Change” and “Changing.”
4 Because the availability of these publications as prior art against
Appellants’ claims is not at issue, only their publication dates are provided.
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rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” (citation omitted)).
The principal issue regarding the obviousness rejection of claim 1 is
whether Appellants have shown error in the Examiner’s conclusion that it
would have been obvious to modify Chang so as to automatically control the
orientation of the display.
The issue regarding the rejection of claim 11 under 35 U.S.C. § 112,
first paragraph, is whether Appellants have shown that the Examiner erred in
concluding that claim 11 is unpatentable under that paragraph because it is a
“single means” claim.

ANALYSIS OF THE 35 U.S.C. § 103(a) REJECTION
Chang discloses a notebook/tablet dual-purpose computer that can be
used as an optical disk player. Chang ¶ 0008.
Chang’s Figure 1 is reproduced below.
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Figure 1 is a schematic view of a preferred embodiment of a
notebook/tablet dual-purpose computer having a liquid crystal display and
optical disk drive control functions according to Chang’s invention. Id.
¶ 0016.
The functions associated with control buttons 160 are determined by
the proximity of an “option controller” (e.g., magnet) 140 in the liquid
crystal display 120 to an “option inductor” (e.g., reed switch) 150 in
computer base 110. Id. ¶¶ 0021, 0024.
When the computer is in the laptop mode, depicted in Figure 1 (id.
¶ 0021), wherein option inductor 150 cannot sense the presence of the option
controller 140, the liquid crystal display 120 switches to an image output
device of an optical disk player, and control buttons 160 switch to optical
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disk player function buttons, e.g., a play button, a stop button, a forward
button, a pause button, a backward button, or any other player function
button or combination function button thereof. Id. ¶ 0023.
On the other hand, when the computer is in the tablet or slate mode
depicted in Figure 2 (id. ¶ 0021), in which the option inductor 150 senses the
existence of the option controller 140, the liquid crystal display panel 170
switches to a hand writing panel, and the control buttons 160 switch to slate
mode function buttons, e.g., a security button, a function switch button, a
screen orientation button, an escape button, an enter button, a scrolling up
button, a scrolling down button, or any other function button or combination
function button thereof. Id. ¶ 0022.
The Examiner (Final Action 5, para. 12) finds that Chang fails to
disclose using option controller 140 and option inductor 150 to control the
orientation of an image displayed by a display element, as required by
claim 1, and relies on Hunt for a teaching of automatically changing the
display orientation in response a change in the position of the display
element. Id. at 5-6.
Hunt discloses a system and method for automatically switching in
real time between multiple display profiles in response to a system event,
such as a dock/undock event. Hunt ¶ 0001.
Hunt’s Figure 1 is reproduced below.
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Figure 1 is a perspective view of an example of Hunt’s tablet
computer system 10, which comprises a tablet computing device 12, a multi-
attachable keyboard 14, a digitizing pointing device 16, and a multi-
configurable docking assembly 18. Id. ¶ 0024. The display screen assembly
22 of tablet computing device 12 can comprise any suitable flat panel
display screen technology, including a variety of screen enhancement,
antireflective, protective, and other layers, and also can have touch panel
technology, digitizer panel technology, and/or various other user-interactive
screen technologies. Id. ¶ 0025.
The tablet computing device 12 and the multi-attachable keyboard 14
may be jointly or separately attachable to the multi-configurable docking
assembly 18 at a support section 28, which is movably coupled to a base
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section 30. Id. ¶ 0028. The multi-configurable docking assembly 18 can
trigger an automatic change in the viewing orientation upon moving the
support section 28 between the portrait and landscape orientations while the
tablet computing device 12 is disposed in the docked configuration. Id.
This automatic switching mechanism reduces the user’s tasks and ensures
that text/images are always displayed in an upright/readable orientation for
the user regardless of the physical orientation of the tablet computing device
12. Id.
The Examiner held that
it would have been obvious to one of an ordinary skill in the art to
apply the “automatically changing a viewing orientation in
response to the physical orientation of the display using any
suitable sensor, switch or hardware/software detecting mechanism
teaching of Hunt et al.”, to the “notebook/tablet computer
comprising of a reed switch used for changing modes of the
computer depending on whether it is in notebook or tablet mode
teaching of Change [sic] et al.”, because this “reduces the user’s
tasks and ensures that text/images are always displayed in an
upright/readable orientation regardless of the physical orientation
of the computing device.”
Final Action 6, para. 14 (citation omitted) (emphasis omitted).
As additional support for the rejection, the Examiner in the Final
Action made two findings regarding the knowledge of persons skilled in the
art. The first finding is based on the following passage from Appellants’
“Background of the Invention”:
[A]fter changing the portable computer from notebook mode to
tablet mode, or vice versa, a change in the viewing orientation of
images displayed on a display member may be desired, thereby
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requiring further manipulation of the portable computer (e.g.,
rotation of the portable computer) or other action by the user to
cause a change in the orientation of the images displayed by the
portable computer (e.g., selection of an icon or other software-
based mechanism). One type of portable computer utilizes a
mechanical switch mechanism to change the orientation of the
displayed image in response to physical contact and/or actuation
of the switch (e.g., contact of an arm or other type of structure
extending from the display member with a switch mounted in the
base member when the display member is positioned in a tablet
mode).
Specification ¶ 0001 (emphasis added). Based on this passage (quoted in
part at page 12 of the Final Action), the Examiner finds that “[t]herefore, it is
well known in the art that a change from a laptop mode to a tablet mode, as
taught by Chang, result [sic: can result] in the orientation being changed.”
Final Action 12. The second finding, which appears to be independent of
Appellants’ “Background of the Invention,” is that “it is well known in the
art that a tablet pc [sic: PC] benefits by being in portrait orientation as
supposed [sic: opposed] to the landscape orientation of the laptop mode
shown in FIG. 1 of Chang.” Id. Inasmuch as Appellants have not
addressed, let alone shown error in, either of these findings, we will treat
them as correct.
In view of these findings, we conclude that it would have been
obvious, even in the absence of Hunt, to modify Chang so as to additionally
provide automatic control of the display orientation in response to the
position of the screen relative to the base, as detected by sensor elements 42
and 44. That is, it would have been obvious to automatically select a
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landscape orientation when display 120 is in the laptop mode (Figure 1) and
a portrait orientation when display 120 is in the slate mode (Figure 2).
We are not persuaded by Appellants’ argument (Reply Br. 9) that
Chang’s disclosure of having a “screen orientation button” (Chang ¶ 0022)
when the computer is operating in the slate mode teaches away from
modifying Chang to provide automatic control of the display orientation.
Nothing in Chang would have discouraged a person skilled in the art from
making such a modification. See In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1381 (Fed. Cir. 2007) (“A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
(citation omitted)). It would have been obvious to either (1) omit the screen
orientation button in Chang as modified above in favor of automatic
orientation selection or (2) retain the screen orientation button in order to
permit a user to override the automatic orientation selection function.
For the foregoing reasons, Appellants have failed to show that the
subject matter recited in claim 1 would have been unobvious over Chang,
even without Hunt.
Hunt further reinforces the case for obviousness by demonstrating that
it was known to automatically control the orientation of a display in
response to the position of the display device. Appellants argue that
combining the teachings of Hunt and Chang is improper because
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Hunt does not appear to disclose or even suggest Changing[5] an
orientation of the an [sic] image in response to a display element
being re-positioned “relative to the base member” as recited by
Claim 1. To the contrary, the computing device 12 of Hunt moves
with the support section 28.
(Br. 7.) Appellants further argue that “in Hunt the movement of support
section 28 relative to base section 30, and not the movement of the display
screen assembly 22 relative to base section 30, triggers a change in display
orientation on the display screen assembly 22.” (Reply Br. 7 (emphases
omitted).) These arguments are unpersuasive for two reasons. First, Hunt,
for the reasons stated above, is cumulative rather than necessary to the
rejection. Second, Hunt is relied on only for a teaching of automatically
controlling the display orientation in response to the position of the display.
This teaching is not diminished by the fact that Hunt’s tablet device 12,
including display screen assembly 22, is supported in a support section 28
that is movably coupled to base section 30. Hunt ¶ 0028.
For the foregoing reasons, the rejection of claim 1 for obviousness
over Chang in view of Hunt is sustained. For the same reasons, we are
sustaining the rejection of independent claims 11 and 16, as to which
Appellants merely repeat their claim 1 arguments.
The rejection of dependent claims 2-10, 12-15, and 17-20 is sustained
because they are not argued separately from the independent claims. In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

5 See supra note 3.
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ANALYSIS OF THE 35 U.S.C. § 112, ¶ 1 REJECTION
Claim 11 stands rejected under 35 U.S.C. § 112, first paragraph
(enablement requirement), for being a “single means” claim. Final Action 3.
As support for the rejection, the Examiner relies on the MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2164.08(a), which cites In re Hyatt,
708 F.2d 712, 714-15 (Fed. Cir. 1983) for the proposition that, inasmuch as
a single means claim covers every conceivable means for achieving the
stated purpose, it is nonenabling for the scope of the claim because the
specification discloses at most only those means known to the inventor.
Accord Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993) (“Because the
count at issue purports to cover all DNAs that code for β-IF, it is also
analogous to a single means claim, which has been held not to comply with
the first paragraph of section 112. See In re Hyatt, 708 F.2d 712 . . . (Fed.
Cir. 1983) (‘[T]he enabling disclosure of the specification [must] be
commensurate in scope with the claim under consideration.’)[.] Claiming all
DNA’s that achieve a result without defining what means will do so is not in
compliance with the description requirement; it is an attempt to preempt the
future before it has arrived.” (first brackets in original)).

Appellants argue that
the basis for the holding in Hyatt (which appears to form the basis
of M.P.E.P. § 2164.08(a)) was that “a claim which is of such
breadth that it reads on subject matter as to which the specification
is not ‘enabling’ should be rejected under the first paragraph of
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§ 112 rather than the second” (Hyatt, at 715 (relying on In re
Borkowski, 422 F.2d 904, 909 . . . (CCPA 1970)). However, the
breadth or scope of a means-plus-function claim is to be construed
to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof. The Examiner has not
asserted or provided any basis for holding that Claim 11 is of
undue breadth, nor has the Examiner offered any basis or rationale
that the Examiner is construing the scope of Claim 11 to cover
something other than the “corresponding structure, material, or
acts described in the specification and equivalents thereof.”
(Br. 5 (emphasis omitted).) Appellants are incorrect to argue that the
breadth or scope of a “single means” claim must be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof. As explained in Hyatt:
The final paragraph of § 112 saves combination claims
drafted using means-plus-function format from this problem by
providing a construction of that format narrow enough to avoid
the problem of undue breadth as forbidden by the first paragraph.
But no provision saves a claim drafted in means-plus-function
format which is not drawn to a combination, i.e., a single means
claim.
Hyatt, 708 F.2d at 715. Appellants’ claim 11 is not a combination claim.
The rejection of claim 11 under 35 U.S.C. § 112, first paragraph
(enablement requirement), is therefore sustained.

DECISION
The rejection of claims 1-20 under 35 U.S.C. § 103(a) for obviousness
over Chang in view of Hunt is sustained.
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The rejection of claim 11 under 35 U.S.C. ¶ 112, first paragraph
(enablement requirement), for being a “single means” claim is sustained.
The Examiner’s decision that claims 1-20 are not patentable is
affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2009).

AFFIRMED

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