Ex Parte Orozco-Abundis

Board of Patent Appeals and Interferences

Aug 21, 2007

10636120 (B.P.A.I. Aug. 21, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GERARDO OROZCO-ABUNDIS
__________

Appeal 2007-2306
Application 10/636,120
Technology Center 2800
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Decided: August 21, 2007
__________

Before TONI R. SCHEINER, ERIC GRIMES, and NANCY J. LINCK,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an image
capture device. The Examiner has rejected the claims as anticipated or
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The Specification describes “an image capture device compris[ing] a
housing and at least one telescopic hinge operable to couple a lid to the
housing” (Specification 1). The Specification states that “the telescopic
Appeal 2007-2306
Application 10/636,120

nature of [the hinge] enables [the lid] to be raised to accommodate bulky
objects” (id. at 3).
DISCUSSION
1. CLAIMS
Claims 1-11, 13-15, 17, and 18 are on appeal. Claims 12 and 16 are
also pending but have been indicated to be allowable (Office Action mailed
November 2, 2005, p. 6).
The claims rejected for anticipation have been argued in two groups
(Br. 4-7). The claims within these groups stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). We will focus on claims 1, 10, and 11, which are
representative and read as follows:
1. An image capture device, comprising:
a housing; and
at least one telescopic hinge operable to couple a lid to
said housing.
10. The image capture device of claim [1, wherein at
least one segment of said at least one telescopic hinge is
adapted to be disposed in a recess of said housing, at least
another segment of said at least one telescopic hinge is slidably
engaged with said at least one segment, and] a third segment of
said at least one telescopic hinge is slidably engaged with said
at least another segment.
11. An image capture device, comprising:
a lid;
a housing; and
at least two telescopic hinges, each having a plurality of
extensible segments, said at least two telescopic hinges
pivotally coupling said lid to said housing.
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Thus, claims 1 and 11 each refer to a telescopic hinge. As noted by
the Examiner, a dictionary definition of “the term ‘telescopic’ . . . [is]
‘extensible or compressible by or as if by the sliding of overlapping sections.
. . . ’” (Answer 8 (emphasis omitted)). We interpret a telescopic hinge to be
a hinge that is extended or compressed by the sliding of overlapping
sections.
2. PRIOR ART
The Examiner relies on the following references:
Moore US 3,832,937 Sep. 3, 1974
Wakeman US 4,150,896 Apr. 24, 1979

3. ANTICIPATION
Claims 1-9, 11, 13-15, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Wakeman. The Examiner states that “Figures 5
and 6 of Wakeman teach an image capture device 23, comprising a
housing 21, and at least one telescopic hinge, shown generally at 35[,] . . .
operable to couple a lid 36 to the housing 21” (Answer 4). The Examiner
considers the telescopic hinge to include elements 30, 31, 33, and the sleeve
bearing in the recess of housing 21 (id. at 8). The Examiner finds that
“Wakeman teaches cylindrical hinge element 31 that slides inward or
outward in an overlapping manner with the second cylindrical member,” that
is, the sleeve bearing, and therefore meets the limitation of a telescopic
hinge (id. at 4).
With regard to claim 11, the Examiner finds that “Figure 5 of
Wakeman shows two telescopic hinges, each having a plurality of extensible
segments (hinge segment 33 and hinge segment 31 . . . ), the two hinges
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Application 10/636,120

pivotally coupling the lid 36 to the housing 21” (Answer 6). The Examiner
also finds that “hinge segment 33 is extensible from a horizontal orientation
to a vertical orientation” (id.).
We agree with the Examiner that claims 1 and 11 are anticipated by
Wakeman. Wakeman describes a copying apparatus comprising a housing
structure 21, a support member 25 comprising “support arm 30 incorporating
at least two depending positioning rods 31,” and a cover 36 that, through
arm 33, is “pivotally mounted to the arm 30 . . . by action of a . . . hinging
means 35” (Wakeman, col. 3, ll. 30-67). “Positioning holes 32 are formed in
the housing structure 21” and “preferably form loose vertical sleeve bearings
and slidingly receive the telescoping positioning rods 31 for vertical sliding
engagement” (id. at col. 3, ll. 52-59). Figure 6 of Wakeman is reproduced
below:

The figure shows a cover-and-hinge combination disclosed by Wakeman
with the different components labeled. We agree with the Examiner that
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Application 10/636,120

hinging means 35, together with arms 30 and 33, positioning rod 31, and the
sleeve bearing in which it is received, form a telescopic hinge.
Appellant argues that Wakeman “does not disclose . . . ‘at least one
telescopic hinge’ coupling a lid to a housing” (Br. 6). In particular,
Appellant argues that the “support member 25 of Wakeman appears to be
formed as a single, rigid body that is not ‘telescopic’” and is therefore “not,
by itself, ‘a telescopic hinge’” (id. at 5). Appellant also argues that the
sleeve bearing “does not form part of the support member 25 of Wakeman
and, therefore, is not part of any hinge” (Reply Br. 5). Instead, Appellant
argues that the sleeve bearing “is clearly part of the housing 21 of Wakeman.
In fact, the support member 25 of Wakeman may be completely removed
from the housing 21 of Wakeman while the sleeve bearing remains
permanently installed in the housing 21.” (Id. (emphasis omitted).)
We are not persuaded by this argument. We agree with Appellant that
support member 25 is not, by itself, a telescopic hinge. However, we agree
with the Examiner that the hinging means 35, together with arms 30 and 33,
positioning rod 31, and the sleeve bearing, form a telescopic hinge. In
particular, although it appears that the sleeve bearing may be permanently
attached to the housing rather than to the positioning rod, we do not agree
that this requires that the sleeve bearing be considered part of the housing
and, therefore, not part of the telescopic hinge.
With regard to claim 11, Appellant additionally argues that
Wakeman’s support member 25 does not include “a plurality of extensible
segments” (Br. 7). Specifically, Appellant argues that “the sleeve bearing of
Wakeman is not connected to the support member 25 of Wakeman and
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cannot be considered as an ‘extensible segment’ of any ‘telescopic hinge’”
(Reply Br. 6).
We are not persuaded by this argument. First, for the reasons
discussed above, we do not agree that the sleeve bearing cannot be
considered part of the telescopic hinge. Second, the Examiner is not relying
on the sleeve bearing for being an extensible segment, instead identifying
positioning rod 31 and arm 33 as the extensible segments (Answer 6) (“a
plurality of extensible segments (hinge segment 33 and hinge segment 31”)).
We conclude that the Examiner has set forth a prima facie case that
claims 1 and 11 are anticipated by Wakeman, which Appellant has not
rebutted. We therefore affirm the rejection of claims 1 and 11 under 35
U.S.C. § 102. Claims 2-9 fall with claim 1 and claims 13-15, 17, and 18 fall
with claim 11.
4. OBVIOUSNESS
Claim 10 stands rejected under 35 U.S.C. § 103 as obvious over
Wakeman in view of Moore. The Examiner relies on Wakeman for teaching
“all the claimed subject matter except for a third segment in the telescopic
hinge” (Answer 7). The Examiner relies on Moore for teaching “a
telescopic device similar to that taught by Wakeman” having “a third
segment slidably engaged with another segment” (id.). The Examiner
concludes that “it would have been obvious to provide a third segment as
taught by Moore et al., in the apparatus of Wakeman, in order to increase the
expansion capabilities of the telescopic hinge,” specifically “without adding
to the overall dimension (height/thickness/etc.) of the housing” (id. at 7 and
11).
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We conclude that the Examiner has set forth a prima facie case of
obviousness. Wakeman is discussed above. Moore describes a lift cylinder
comprising “first, second, third and fourth vertically oriented cylinder
members 11, 12, 13 and 14 of decreasing cross-sectional area telescopically
arranged within each other” (Moore, col. 3, ll. 41-46). Based on the
teaching in Moore of four telescopically arranged members, we agree with
the Examiner that it would have been obvious to modify Wakeman’s
telescopic hinge to include a third telescopically arranged segment, in order
to increase the expansion capabilities of the hinge.
Appellant argues that “there is no motivation or suggestion to
combine reference teachings as proposed by the Examiner” (Br. 7).
Specifically, Appellant argues that Wakeman’s “support member 25 . . . is
not ‘telescopic’” and “does not include any slidable segments” (id. at 8).
This argument is addressed above.
Appellant also argues that Wakeman “appears to teach away from the
proposed combination” (Br. 8). Specifically, Appellant argues:
[T]he support member 25 of Wakeman includes a post
(positioning rod 31) that is disposed into the opening formed in
the housing 21 of the Wakeman device. . . . [P]roviding any
extension in the Wakeman device as proposed by the Examiner
appears unnecessary and would add additional cost to the
Wakeman device at least because the proposed “increase[ed]
. . . expansion capabilities” as suggested by the Examiner
appears to be easily obtainable in the Wakeman device by
increasing the length of the post (positioning rod 31).
(Id.)
We are not persuaded by this argument. First, Appellant has provided
no evidence that it would be more cost-effective to increase the length of the
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post and the size of the corresponding positioning hole in the housing,
compared to adding another extensible segment. More importantly, even if
increasing the length of the post would be more cost-effective, we do not
agree that Wakeman teaches away from the Examiner’s combination.
“[T]he fact that the two disclosed apparatus would not be combined by
businessmen for economic reasons is not the same as saying that it could not
be done because skilled persons in the art felt that there was some
technological incompatibility that prevented this combination. Only the
latter fact is telling on the issue of nonobviousness.” Orthopedic Equip. Co.
v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 (Fed. Cir. 1983).
In addition, Appellant argues that “there does not appear to be any
suggestion in the cited references that any increase in movement of the
support member 25 beyond that illustrated or provided by the Wakeman
system is needed that would necessitate the combination of Moore
therewith” (Reply Br. 7). Thus, Appellant concludes that the “Examiner is
clearly using hindsight reconstruction to piece together purported teachings
of the references to arrive at [claim 10]” (id.).
We are not persuaded by this argument. As recently indicated by the
Supreme Court, “any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l v. Teleflex Inc.,
127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). “[E]vidence of a
motivation to combine need not be found in the prior art references
themselves, but rather may be found in ‘the knowledge of one of ordinary
skill in the art or, in some cases, from the nature of the problem to be
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solved.’” Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1366, 80 USPQ2d 1641, 1649 (Fed. Cir. 2006)
(emphasis in original, quoting In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999)). In this case, we agree with the
Examiner that one of ordinary skill in the art would have been motivated to
combine Wakeman with Moore “to increase the expansion capabilities of the
telescopic hinge.” (Answer 7.)
We conclude that the Examiner has set forth a prima facie case that
claim 10 would have been obvious over Wakeman in view of Moore, which
Appellant has not rebutted. We therefore affirm the rejection of claim 10
under 35 U.S.C. § 103.
SUMMARY
The Examiner’s position is supported by the preponderance of the
evidence of record. We therefore affirm the rejection of claims 1-9, 11, 13-
15, 17, and 18 under 35 U.S.C. § 102 and the rejection of claim 10 under
35 U.S.C. § 103.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
Ssc
HEWLETT PACKARD COMPANY
PO BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400

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