Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Jun 17, 2020

2019003624 (P.T.A.B. Jun. 17, 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.
15/015,114 02/03/2016 Joseph Anthony Holung RPS920150226-US-NP 8938
109808 7590 06/17/2020
LENOVO/PANGRLE
Pangrle Patent, Brand & Design Law, P.C.
3500 W Olive Ave
3rd Floor
Burbank, CA 91505
EXAMINER
MILLISER, THERON S
ART UNIT PAPER NUMBER
2841
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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 JOSEPH ANTHONY HOLUNG, TIN-LUP WONG,
JOSEPH DAVID PLUNKETT, RITCHIE ALAN RUSS,
PHILIP JOHN JAKES, and BOUZIANE YEBKA
____________

Appeal 2019-003624
Application 15/015,114
Technology Center 2800
___________

Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–7, 10–19, 21, 22, 33, and 34.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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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REJECTIONS
Claims 1–6 and 10–19 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Bathiche (US 2013/0242495 A1; published Sept. 19,
2003).
Claim 7 is rejected under 35 U.S.C. § 103 over Bathiche, further in
view of “Polymagnet® Guide” (Mechanisms Market: “Polymagnet® Guide”
(http://www.mechanismmarket.com/polymagnet-guide); version accessed
(Jan. 17, 2016)).
Claims 21 and 22 are rejected under 35 U.S.C. § 103 as unpatentable
over Bathiche.
Claims 33 and 34 are rejected under 35 U.S.C. § 103 as unpatentable
over Bathiche and Longo (US 2015/0281413 A1; published Oct. 1, 2015).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key limitation in dispute):
1. An apparatus comprising:
a processor;
memory accessible by the processor;
a display operatively coupled to the processor;
a hinge assembly that comprises an axle and leaves
wherein at least one of the leaves comprises a leaf magnet that
comprises north poles and south poles; and
a first housing and a second housing that comprise leaf
receptacles that, in a coupled state, receive the leaves of the
hinge assembly to pivotably couple the first housing and the
second housing.

Independent claim 33 is similar to claim 1 but further recites that the
hinge assembly comprises a barrel, and that the “north poles and the south
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poles of the leaf magnet attract and repel the leaf receptacle magnet to form
an inter-magnet gap in the coupled state of the first housing and the second
housing” (Claims App’x. Appeal Br. 39–43).
Appellant’s arguments focus on the limitations emphasized above.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant 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.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer.
We add the following for emphasis.
First, the Examiner’s determination that Bathiche and Longo are both
directed to devices to connect two components, including displays or
keyboards, in a folding manner is not in dispute (generally Appeal Br.;
Ans.).
Appellant mainly contends that 1) due to the election of Species A and
D (Election, Oct. 18, 2017, 7–8, in response to the restriction requirement,
July 18, 2017, 5–6), the interpretation of the claims, including generic claim
1, is restricted only to the elected species (Appeal Br. 5–18, 34), 2) that the
anticipation rejection is improper because the Examiner relies upon multiple
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embodiments of Bathiche in the anticipation rejection (Appeal Br. 19–22;
Reply Br. 2–6), and 3) that Longo, relied upon in the rejection of claim 33,
does not teach hinge barrels (Appeal Br. 36).
First, we disagree that 35 U.S.C. § 121 and the cited cases, in
particular Uship Intellectual Properties, LLC. v. United States, 714 F.3d
1311 (Fed. Cir. 2013), necessitates a different reading of the claims in the
case of an election of species. The text of 35 U.S.C. § 121 enables an
applicant to file a divisional application after a requirement for restriction,
but it does not address the interpretation of the originally filed claims that
were elected. Appellant correctly identifies the main purpose of 35 U.S.C.
§ 121 in the citation of Applied Materials v. Advanced Semi. Materials, that
the “inventor shall not be prejudiced” when complying with a restriction
requirement by having his own application used against him in a “charge of
double patenting” (Appeal Br. 10–11, citing 98 F.3d 1563 (Fed. Cir. 1996).
Further, the Examiner correctly points out that the restriction
requirement identified claim 1 as generic to all the species, and that the
restricted species claims would be rejoined once claim 1 was in condition for
allowance (Ans. 5). The Examiner notes that “a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment” (Ans. 4, citing SuperGuide
Corp. v. DirectTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)).
Here, because claim 1 is generic, it is broader than the elected species.
Because of this potential rejoinder, and because there is no clear danger of
an erroneous charge of double patenting, we do not see how 35 U.S.C. § 121
limits the claims to the elected species.
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Nor does the Appellant’s reliance on UShip change this outcome
(Appeal Br. 11). The court in UShip found that statements made by a patent
owner in a response to a restriction requirements could be prosecution
disclaimers, since these disclaimers are not limited to when the applicant is
trying to overcome a claim rejection. (714 F.3d 1311, 1315). The court
only states that the response to a restriction “may be used to interpret patent
claim terms,” not that it must. Id.
We are not persuaded therefore, that the Examiner erred by not
reading the “leaf magnet” of claims 1 and 33 in a manner so as to become
the “leaf end magnet” of the elected species.2
Second, Appellant’s argument that the Examiner impermissibly relied
upon multiple embodiments of Bathiche is not persuasive of reversible error
(Appeal Br. 19–22; Reply Br. 2–6). Appellant relies on the description by
Bathiche of Figure 4 which states that the flexible hinge has material that
bends “as opposed to mechanical rotation” supported by a pin, “although
that embodiment is also contemplated” (Bathiche at ¶ 41). Appellant
contends that the Examiner is relying on that phrase for the rejection, and
thus incorporates a second embodiment of Bathiche into the anticipation
rejection (Appeal Br. 22). However, the Examiner aptly points out that
claim 1 does not require a pin for mechanical rotation and that this sentence

2 Because of our finding in this regard, we do not address the Appellant’s
contention that Bathiche does not teach the limitation of “leaf end magnet”
that is not recited in the claim (Appeal Br. 24; Examiner’s response at Ans.
15). We note that “limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing
in the claim may not be relied upon for patentability).
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was not relied upon for the rejection (Ans. 12–13). Indeed, the rejection of
claim 1 cites Figures 1 and 2 as corresponding to the “pivotably couple”
limitation, but does not cite Bathiche ¶ 41 or explicitly rely on the language
Appellant cites (Final Act. 3). The Examiner states that the claims
encompass Figures 1 and 2 of Bathiche since claim 1 only recites that the
two housings are “pivotably coupled,” and does not require that the hinges
have a mechanical rotation (Claims App’x. Appeal Br. 39–43; Ans. 13).
Appellant does not provide persuasive reasoning or evidence why one of
ordinary skill in the art would have interpreted the claim language to have
required the mechanical rotation mentioned by Bathiche, or why the
rejection erred when it contended that the limitation of “pivotably couple”
encompasses the prior art of Bathiche.
Third, in regards to independent claim 33, Appellant argues that
secondary reference Longo does not teach hinge barrels (Appeal Br. 34–37).
They contend that the “barrel 908” of Longo, cited by the Examiner, cannot
be encompassed by the recited “barrel” of claim 33 (Appeal Br. 36).
However, “the PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. See also, Alloc, Inc. v. Int'l Trade Comm'n, 342
F.3d 1361, 1370 (Fed. Cir. 2003) (A court must not read particular
embodiments and examples appearing in the Specification into the claims
unless the Specification requires it).
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Appellant has not directed us to any special definition in the
Specification to support their position that a “barrel” is limited to a specific
type of barrel, different from the barrel of Longo. Appellant relies upon
their Specification at ¶¶ 94–95 and extrinsic evidence to argue that a hinge
barrel is a “portion of a hinge that is enlarged to receive the pin and act as
the pivot point” and it “includes one or more knuckles from each individual
leaf” (Appeal Br. 35, citing the “Door and Cabinet Hinge Glossary”).
Notably, the Examiner points out that the Specification discloses more
varieties of barrels than are referenced in the portion of the Specification
cited in the Appeal Brief, including that of Figures 4, 10, and 13, which have
portions of the leaf extending from a barrel “without any separate axel [sic],”
or Figure 15, a slotted configuration (Ans. 20–21). Only the embodiment
shown in Figure 16 has a hinge barrel that corresponds to the relied upon
extrinsic evidence (Ans. 21). Because of that narrow correspondence
between the extrinsic evidence and the Specification, the Examiner contends
the extrinsic evidence cannot limit the interpretation of “barrel” to exclude
the barrel of Longo (Ans. 21). We find such reasoning to be persuasive.
Thus, Appellant has not shown error in the Examiner’s interpretation of
barrel as encompassing the barrel of Longo.
Last, Appellant argues Bathiche doesn’t encompass the limitations of
dependent claim 16, which further recites “wherein the north poles and the
south poles of the leaf magnet attract and repel the leaf receptacle magnet to
form an inter-magnet gap” (Claims App’x., Appeal Br. 41; Appeal Br. 28;
Reply Br. 6–9). The Examiner points out that an inter-magnet gap can be
reasonably interpreted as encompassing the magnet arrangement of
Bathiche’s Figure 16 (Final Act. 14; Ans. 17–18) citing the Appellant’s
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Specification recitation that an inter-magnet gap “may be, for example, an
air gap where electromagnetic energy may be transferred between antennas”
(Spec. ¶ 58), as opposed to Appellant’s arguments that the inter-magnet gap
requires a position where “attraction force and repulsion force define a
composite force where a balance can exist at, for example, a zero crossing”
(Appeal Br. 28, citing the description of Figure 9) (emphasis omitted). The
Examiner points out that Figure 9 of the Specification discloses “an example
of behavior of a magnet spring,” the element recited in Claim 7, not the
inter-magnet gap of Claim 16 (Ans. 17–18). Under the doctrine of claim
differentiation, therefore, these two claims should be presumed to be
different in scope, not synonymous. Appellant has not directed our attention
to any special definition of the inter-magnet gap beyond what the Examiner
cites in the Specification, nor do they provide any persuasive reasoning or
credible evidence to establish that the Examiner’s interpretation of the inter-
magnet gap is unreasonable. Thus, a preponderance of evidence supports
the Examiner’s position (Ans. generally).
To the extent Appellant presents any substantive arguments for any of
the remaining dependent claims, no reversible error has been identified (see
also, Ans. 17–20). In particular, the Examiner persuasively addresses the
arguments Appellant raises regarding dependent claim 7 both from the
Examiner’s explanation of how “spring magnets” would be read (Final Act.
8) and the response that Bathiche’s use of magnets “does not remove the
benefits one of ordinary skill in the art would find in utilization of
‘Polymagnets®’ in place of other magnetic attachment(s)” (Ans. 18–19).
See also, In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
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bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
Accordingly, we sustain the § 102 and § 103 rejections of all of the
claims on appeal.
The decision of the Examiner is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 10–19 102 Bathiche 1–6, 10–19
7 103 Bathiche, Polymagnet Guide 7

21, 22 103 Bathiche 21, 22
33, 34 103 Bathiche, Longo 33, 34
Overall
Outcome
1–7, 10–19,
21, 22, 33, 34

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)(iv).

AFFIRMED