Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Apr 15, 2021

2020002350 (P.T.A.B. Apr. 15, 2021)

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.
15/339,040 10/31/2016 Brian William Wallace RPS920160035-
US-NP 18-28
4278
124906 7590 04/15/2021
The Small Patent Law Group LLC
225 S. Meramec, Suite 725
St. Louis, MO 63105
EXAMINER
MILLISER, THERON S
ART UNIT PAPER NUMBER
2841
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
docket@splglaw.com
jleclair@splglaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN WILLIAM WALLACE
and ALI KATHRYN ENT

Appeal 2020-002350
Application 15/339,040
Technology Center 2800

Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16 and 18–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Lenovo (Singapore) Pte. Ltd. Appeal
Br. 3.
Appeal 2020-002350
Application 15/339,040

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to an electronic device
such as a laptop where space inside the main body unit is reduced to make
the size of the device more desirable for storing or transporting. Spec. ¶¶ 3–
4. The Specification describes that the device may have an interface
component with a smaller height in a collapsed position. Id. ¶ 5. The
interface component could be, for example, an electrical connector such as
an HDMI connector. Id. ¶¶ 6–8; Fig. 3D–3F.
Claim 1 is illustrative, and we reproduce claim 1 below while adding
emphasis to certain key recitations on appeal:
1. An electronic device comprising:
a display unit;
memory storing program instructions;
a processor to execute the program instructions in
connection with operating the electronic device;
a main body unit housing the memory and processor, the
display unit rotatably mounted to the main body unit, the main
body unit having a sidewall divided into first and second
sidewall segments that are moved relative to one another in a
vertical plane in connection with the main body unit being
shifted between active and storage states; and
an interface component mounted within the sidewall
of the main body unit, the interface component including
members that define a frame divided into first and second
shells mounted within the first and second sidewall
segments, respectively, the first and second shells mating with

2 In this Decision, we refer to the Final Office Action dated April 16, 2019
(“Final Act.”), the Appeal Brief filed August 30, 2019 (“Appeal Br.”), the
Examiner’s Answer dated December 9, 2019 (“Ans.”), and the Reply Brief
filed January 31, 2020 (“Reply Br.”).
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Application 15/339,040

3
one another and aligned with one another within the vertical
plane when the interface component is in the operative position,
the first shell having walls movable to an offset position fitted
between walls of the second shell when the interface
component is in the collapsed position corresponding to the
storage state.
Appeal Br. 51 (Claims App.).
Independent claim 11 similarly recites, among other things, “an
interface component including first and second portions representing first
and second shells mounted within the first and second sidewall segments,
respectively, of the main body unit.” Id. at 53. Independent claim 16 recites,
among other things, “providing spaced apart members of an interface
component mounted within the sidewall to be moveable relative to one
another along the vertical plane to allow the first and second segments of the
sidewall of the main body unit to move relative to each other to reduce the
height of the main body unit.” Id. at 54.
REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1–16 and
18–20 under 35 U.S.C. § 103 as obvious over Tsai et al., US 2013/0201617
A1 (Aug. 8, 2013) (“Tsai) in view of Ladouceur et al., US 2012/0156907
A1, (June 21, 2012) (“Ladouceur”).
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
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unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). To resolve the issues before us on appeal, we focus
on the Examiner’s findings and determinations that relate to the error
Appellant identifies.
The Examiner finds that Tsai teaches an electronic device with, for
example, a main body and interface components. Final Act. 3 (citing Tsai).
The Examiner finds that Tsai teaches an interface component including
members that define a frame divided into first and second shells. Id. The
Examiner finds that Tsai does not explicitly disclose “[t]he first and second
shells mating with one another and aligned with one another within the
vertical plane when the interface component is in the operative position, the
first shell having walls movable to an offset position fitted between walls of
the second shell when the interface component is in the collapsed position
corresponding to the storage state.” Id. at 4.
The Examiner finds that Ladouceur teaches first and second shells of
an interface component moveable to an offset position when the interface
component is in the collapsed position. Id. at 4 (citing Ladouceur). The
Examiner determines that a person of skill in the art would have combined
the teachings of Ladouceur and Tsai to allow for reducing thickness of “host
portable electronic devices.” Id.
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Appellant argues that that a person of skill in the art would not have
modified Tsai based on the teachings of Ladouceur to reach claim 1’s
recitations concerning the interface component. Appeal Br. 11–25.
Appellant’s argument identifies Examiner error. We begin our analysis with
claim construction.
Claim 1 recites “an interface component mounted within the sidewall
of the main body unit” and further recites that the interface component
includes “members that define a frame divided into first and second shells
mounted within the first and second sidewall segments, respectively.”
Appeal Br. 51 (Claims App.) (emphases added). Claim 1 further requires
that one of the interface component’s shells has “walls moveable to an offset
position fitted between walls of the second shell” when in a collapsed
position corresponding to the main body unit’s storage state. Id. The
Specification’s Figures 3D through 3F illustrate an interface component (in
the figures, an HDMI interface) that is collapsible as claim 1 requires.
The Examiner interprets “within” in the context of claim 1 as meaning
“inside” or “internal.” Ans. 6; see also id. at 20–22 (interpreting “within” as
equivalent to “being inside” or “in or into the interior”). The Examiner
emphasizes that, at least in certain embodiments of Appellant’s invention,
interface components are covered by the housing. Id. at 6, 18. The Examiner
thus determines that features internal to the main body unit satisfy claim 1’s
“within” relationship. Id. at 14. Appellant, in contrast, emphasizes that the
functional interface component must be within the sidewalls themselves
rather than within the body defined by the sidewalls. Reply Br. 4–6. To
analogize, if the claim stated “within the wall of the house,” the Examiner
would posit that a table and chairs are within the wall because they are
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“inside” the wall. Appellant would posit that while a window may be within
the wall of the house, the table and chairs are not.
Here, the Examiner’s interpretation of claim 1 is overbroad because
claim 1 recites a main body unit, but it does not recite that the interface
component is merely within the main body unit. The Examiner’s claim
interpretation would incorrectly allow an interface component merely being
within the main body unit to meet the claim recitation (because, according to
the Examiner, being within the unit is the same as being within the unit’s
sidewalls). Claim 1’s language is more specific; claim 1 recites “an interface
component mounted within the sidewall of the main body unit” (emphasis
added). We interpret claim 1 as requiring that the interface component be, at
least in part, mounted within the sidewall itself. In other words, the sidewall
must be interrupted by the recited interface component structure akin to how
a window within a house’s wall interrupts the wall. Figures 3D to 3F of the
Specification illustrate such a configuration.
The “within” aspects of claims 11 and 16 are, in respects relevant to
this opinion, similar in scope to claim 1. Claim 11 requires that the interface
component’s first and second shells be “mounted within the first and second
sidewall segments respectively.” Appeal Br. 53 (Claims App.). Claim 16
requires that the interface component be “mounted within the sidewall.” Id.
at 54. As with claim 1, we interpret these claims as requiring that the surface
of the sidewall be interrupted by the recited interface component structure so
that the interface component is within the wall itself.
Based on our claim construction, we do not sustain the Examiner’s
obviousness rejection. As Appellant emphasizes, Ladouceur’s two-part jack
socket is mounted internally within a device housing. Appeal Br. 18. The
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Ladouceur socket is, by default, collapsed; it expands when a headphone
jack is inserted into it. See, e.g., Ladouceur Fig. 11B. Ladouceur does not
suggest a collapsible interface that, as claims 1 and 11 require, spans first
and second sidewall segments. Similarly, the Examiner has not adequately
established that Ladouceur suggests an interface component mounted within
the sidewall (i.e., interrupting the sidewall) and capable of the claims’
functional recitations. Thus, we agree with Appellant that if a person of skill
in the art were inclined to incorporate Ladouceur’s socket into Tsai’s
electronic device, the person would mount the two-part jacket socket into
one of Tsai’s bodies rather than across two distinct sidewall segments.
Appeal Br. 19–20.
Because the Examiner has not adequately established that a person of
skill in the art would have combined the teachings of Tsai and Ladouceur to
reach the claims’ recitations as we interpret them above, we do not sustain
the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16, 18–20 103 Tsai, Ladouceur 1–16, 18–
20

REVERSED