Ex Parte Suh

Board of Patent Appeals and Interferences

Aug 17, 2011

11684026 (B.P.A.I. Aug. 17, 2011)

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.
11/684,026 03/09/2007 William D. Suh PU06 0590US1 / 2002-439 1990
54472 7590 08/17/2011
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
SULLIVAN, MATTHEW J
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
08/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Sony Ericsson Mobile Communications AS
__________

Appeal 2010-001773
Application 11/684,026
Technology Center 3600
___________

Before RICHARD E. SCHAFER, JAMESON LEE, and
RICHARD TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by SONY ERICSSON MOBILE
COMMUNICATIONS AS (“Sony”), under 35 U.S.C. § 134(a), from a final
rejection of claims 1-16 and 18-25 pending in Application 11/684,026. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
Appeal 2010-001773
Application 11/684,026

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REFERENCES RELIED UPON BY THE EXAMINER
Campbell Patent 5,383,811 Jan. 24, 1995
Su Publication 2005/0138771 June 30, 2005
REJECTION ON APPEAL
Claims 1-16 and 18-25 were finally rejected by the Examiner under
35 U.S.C. § 103 as unpatentable for obviousness over Su and Campbell.
FINDINGS OF FACT
Sony’s Disclosed Invention
Sony’s disclosed invention relates to a sleeve for a hinge socket and
hinge shaft press fit into the socket. (Spec. ¶¶ 6-7.) The sleeve lines the
socket and wraps the shaft pushed into that socket, such that the sleeve is
sandwiched between the socket and shaft. (Spec. ¶¶ 6-7; Fig. 2.) Sony’s
Fig. 2, reproduced below, shows a cellphone embodiment of the invention.
(Spec. ¶ 9.)

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The cellphone has first and second shells 12, 14, which are hinged by
opposing counter-rotating shafts 32, 40 of a hinge cartridge 30. To form a
cellphone hinge, the shafts 32, 40 are pressed into respective sockets 24, 26
of the shells 12, 14. (Spec. ¶ 19.)
A tighter fit is achieved by compressing sleeves 50, 52 between the
shafts 32, 40 and sockets 24, 26. (Spec. ¶¶ 24-25.)1 The tight fit prevents
the shafts 32, 40 from moving within the sockets 24, 26 and thereby also
prevents play in the cellphone hinge. (Spec. ¶ 23.).
Two features of the sleeves 50, 52 are directed to preventing
movement of the shafts 32, 40 within the sockets 24, 26. First, the surface
friction and elasticity of the sleeves 50, 52 allow the sleeves 50, 52 to slip
into and “fill in any” spatial gap that would otherwise occur between the
shafts 32, 40 and sockets 24, 26. (Spec. ¶¶ 24-25.) Second, the sleeves 50,
52 are stiff enough that, once compressed between the shafts 32, 40 and
sockets 24, 26, the sleeves 50, 52 do not deform under expected torqueing of
the shafts 32, 40. (Spec. ¶ 25.)
According to Sony, it is “important” for the sleeves 50, 52 to ensure
the shafts 32, 40 do “not move” within the sockets 24, 26. (Spec. ¶ 23.) As
an example, some cartridge hinges are spring-tensioned to resist opening but
snap the hinge open once the resistance is overcome. (Spec. ¶¶ 3, 6, 17, and
22.) If such a hinge is used, the sleeves 50, 52 should prevent the shafts 32,
40 from rotating within the sockets 24, 26 when the hinge snaps open.
(Spec. ¶ 27.)

1 Sony’s specification refers to the sleeves 50, 52 as “boots 50, 52” and
refers to the sockets 24, 26 as a “sleeve 24” and “post 26.”
Appeal 2010-001773
Application 11/684,026

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Su
Su discloses a hinge cartridge. (Su, abstract; Fig. 1.) Su’s Fig. 4,
reproduced below, shows a cellphone embodiment of the hinge cartridge.
(Su ¶ 11.) As shown, a hinge is formed by inserting counter-rotating shafts
11, 13 of the hinge cartridge 30 into sockets of the cellphone’s shells 17, 18.
(Su ¶¶ 13-14; Fig. 4.)

Campbell
Campbell discloses a sleeve for a steering column. (Campbell
Abstract.) Campbell’s Fig. 1, reproduced below, shows a cross section view
of the steering column’s concentrically arranged shaft 14, sleeve 20, and
socket 12. (Campbell 2:5-7.) Campbell’s Fig. 2, also reproduced below,
shows a cross section view of only the sleeve 20. (Campbell 2:8-9.)
Appeal 2010-001773
Application 11/684,026

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Campbell does not specifically discuss the operations of vehicle
steering. However, a steering wheel is implicitly concentrically attached to
the shaft 14. The steering wheel is moved telescopically by sliding the shaft
14 within the sleeve 20 and socket 12. (Campbell 2:19-28.) The steering
wheel turns the vehicle by torqueing the shaft 14, along arcuate direction R-
R, to rotate the steering column assembly 14, 20, 12. (Campbell 2:28-32.)
As shown by Fig. 1, the sleeve 20 has apexes 42, 44 that contact the
shaft 14 at only its corners 40. Because of their bowed shape, the apexes 42,
44 are flexible and resilient, i.e., springy. (Campbell 2:48-51.) Under hard
steering, the corners 40 of the shaft 14 flatten the apexes 42, 44 into the open
spaces, e.g., clockwise torque flattens the clockwise-facing apexes 42. The
flattening allows a controlled rotational play of the shaft 14 within the socket
12, which in turn reduces wear on the steering assembly. (Campbell 1:25-
30; 2:52-3:7.)
Appeal 2010-001773
Application 11/684,026

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ANALYSIS
Claims 1-16 and 18-25 were rejected under § 103 as unpatentable
over the combined teachings of Su and Campbell.
Claim 1 is representative and reproduced below:
1. A hinge assembly to pivotably connect the
housings of an electronic device, the hinge assembly
comprising:

a hinge cartridge configured to fit into an opening formed
in a first housing; and

a first retaining sleeve disposed within the opening and
around the hinge cartridge, and sized to retain the hinge
cartridge within the opening, and prohibit movement of the
hinge cartridge within the opening. (Emphasis added.)

Like claim 1, independent claims 10 and 18 recite sleeves that
“prohibit movement of the hinge cartridge within the opening.” The
remaining claims depend from claims 1, 10, and 18 and therefore also
include that limitation. Thus, all claims recite a sleeve that prohibits
movement of a hinge cartridge.
With respect to claim 1, the Examiner found that Su teaches the
recited hinge cartridge, but acknowledged that Su does not teach the recited
retaining sleeve. (Ans. 4:1-2.) The Examiner determined that it would have
been obvious, in view of Campbell’s sleeve 20 surrounding the steering
column shaft 14, to surround the shafts 11, 13 of Su’s hinge cartridge with
sleeves “because that would allow the hinge to function in a broader range of
manufacturing tolerances and induced tolerance changes[.]” (Ans. 4:7-12.)
Sony argues that the proposed modification of Su’s cellphone hinge,
i.e., surrounding the shafts 11, 13 of Su’s hinge cartridge with sleeves as
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Application 11/684,026

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taught by Campbell, does not produce the recited retaining sleeve.
Particularly, Sony argues that the recited retaining sleeve prohibits
movement of the hinge cartridge within the housings and, in turn, “prevents
the ‘play’ or looseness that affects prior art devices.” (Brief 4:18.)
According to Sony, Campbell teaches away from this “prohibit movement”
feature because Campbell’s sleeve 20 is designed to allow rotational play
between the shaft 14 and socket 12. (Brief 6:20-7:3.)
The Examiner, on the other hand, determined that the feature at issue
requires only a preclusion of some movement, but not all movements. It is
explained (Ans. 6:19-7:17) (Emphasis added):
Applicant has argued that Su in view of Campbell does
not prohibit movement of the hinge cartridge within the
opening. Examiner has two responses.

First, the claims at issue do not sufficiently limit what
the Applicant means by “prohibits” movement. It is
apparent that the Applicant does not consider the combination
of Su and Campbell to “prohibit” movement while the
hinge/device is in use (although Examiner disagrees).
However, it must also be considered that the liner of
Campbell would prohibit movement when no torque is
applied to the device. If the liner of Campbell were
removed from the steering column assembly it is apparent
that the steering column shaft (14) would be free to move
around within the [housing] (12) with application of the
slightest force on either part. The presence of the bearing
liner (20) clearly prohibits this type of movement from
occurring and is therefore deemed to read on the claims.

Second, Applicant is arguing that his device prohibits
movement beyond that in which the prior art of Su and
Campbell prohibit movement. The movement of the hinge at
issue is referred to by the Applicant as “play” or
“looseness” (see section (7) of this Appeal Brief. Campbell
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refers to the motion between the shaft (14) and the sleeve (12)
as “play”, “tolerance” and “backlash”. These types of relative
motion are well known to any and all ordinary practitioners
in the art as being inherent to mechanical assemblies. It is
an inherent necessity of the Applicant’s device that there is
some level of tolerance in the fit between the hinge cartridge
and the housing. The fact that the Applicant’s device can be
assembled at all demonstrates that this tolerance exists.

Thus, the Examiner determined that the “prohibit movement” feature does
not require preclusion of all movement because play is an inherent
movement of all devices. According to the Examiner, the “prohibit
movement” feature is satisfied by preclusion of just some movement.
The Examiner found that Campbell’s sleeve 20 “prohibits movement”
by preventing lateral play – “when no torque is applied” – between the shaft
14 and socket 12. The Examiner also found that Campbell’s sleeve 20
“prohibits movement” despite allowing rotational play between the shaft 14
and socket 12.
We do not agree with the Examiner’s findings. First, the condition
when no torque is applied is not representative of the normal operating
conditions of Campbell’s device and thus is an artificial condition. Also,
“prohibit” is a negative limitation and naturally excludes everything but
recognized or stated exceptions. Sony has not established that conditions
involving application of torque are an implicitly recognized exception to the
“prohibits movement” feature of the claimed invention. The claims also
recite no such exception.
Secondly, even assuming that all mechanical devices have some
unavoidable play between fitted parts, the Examiner has not shown that the
rotational play provided in Campbell between shaft 14 and socket 12 is of
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Application 11/684,026

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that type. In other words, even assuming that a de minimis amount of play
inherently occurs in any mechanical attachment despite efforts to restrict
movement, the Examiner has not shown that in Campbell all but such
unavoidable de minimis movements are prohibited. To the contrary, the
rotational play of Campbell is provided by purposeful design and sufficient
enough to address Campbell’s objective of reducing wear on the steering
assembly. (Campbell 1:25-30; 3:3-7.)
Note that Sony’s specification shows that by “prohibit movement” the
inventors desired to preclude all movement. For example, the specification
describes the sleeves 50, 52 as stiffly compressed into all spaces between the
shafts 32, 40 and sockets 24, 26, such that the sleeves 50, 52 do not deform
and the shafts 32, 40 therefore do not move when the hinge cartridge
undergoes an expected torque. (Spec. ¶¶ 23-25.) The specification even
states: “it is important for the hinge body 32 to … not move after
installation.” (Spec. ¶ 23.)
For the above reasons, we construe the “prohibit movement” feature
as precluding all hinge cartridge movement under normal operating
conditions. During hard yet expected steering, Campbell’s sleeve 20 allows
rotation of the shaft 14 within the socket 12. (Campbell 2:52-3:7.) During
telescoping of the steering wheel, the sleeve 20 allows sliding of the shaft 14
within the socket 12. (Campbell 2:14-32.) Since the shaft 14 moves
substantially and purposefully within the socket 12 under these normal
operating conditions, we hold that the applied combination of Su and
Campbell does not teach or suggest the claimed “prohibit movement”
feature of claim 1 and its dependent claims 2-9 and 25.
Appeal 2010-001773
Application 11/684,026

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Like claim 1, independent claims 10 and 18 each recite a retaining
sleeve that prohibits movement of the hinge cartridge. For reasons noted
above with respect to claim 1, we also hold that the applied combination of
Su and Campbell does not teach or suggest the retaining sleeves of claims 10
and 18 and their respective dependent claims 11-16 and 19-24.
DECISION
We reverse the rejection of claims 1-16 and 18-25 under § 103 as
unpatentable for obviousness over Su and Campbell.
REVERSED

KMF