Apple Inc. et al.

Patent Trials and Appeals BoardOct 23, 2020

2020004469 (P.T.A.B. Oct. 23, 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. 15/882,010 01/29/2018 Phillip Michael Hobson 090911- P5377USC11-1075867 8228 65656 7590 10/23/2020 KILPATRICK TOWNSEND & STOCKTON LLP/Apple Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER PHAM, LONG D ART UNIT PAPER NUMBER 2691 NOTIFICATION DATE DELIVERY MODE 10/23/2020 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PHILLIP MICHAEL HOBSON, ERIK L. WANG, KENNETH A. JENKS, ROBERT J. HILL, RICHARD HUNG MINH DINH, TANG YEW TAN, ADAM D. MITTLEMAN, BARTLEY K. ANDRE, DANIEL J. COSTER, DANIELE G. DE IULIIS, RICHARD P. HOWARTH, JONATHAN P. IVE, STEVE P. JOBS, DUNCAN ROBERT KERR, SHIN NISHIBORI, MATTHEW DEAN ROHRBACH, DOUGLAS B. SATZGER, CALVIN Q. SEID, CHRISTOPHER J. STRINGER, EUGENE ANTONY WHANG, RICO ZÖRKENDÖRFER, and ROBERT W. SCHLUB ________________ Appeal 2020-004469 Application 15/882,010 Technology Center 2600 ________________ Before JOHNNY A. KUMAR, JASON J.CHUNG, and JASON M. REPKO, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1–20. We have jurisdiction 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. According to Appellant, Apple Inc. is the real party in interest. Appeal Br. 3. Appeal 2020-004469 Application 15/882,010 2 INVENTION The claimed invention relates to handheld electronic devices. Spec. ¶ 2. Claim 1 is illustrative of the invention and is reproduced below: 1. A wireless communications device comprising: wireless communications circuitry; a display that includes a glass element, wherein the glass element includes an opening extending through the glass element; a button included in the opening; and a plurality of touch screen sensors covered by the glass element, wherein at least one of the plurality of touch screen sensors is integrated into the display, and wherein at least a portion of the plurality of touch screen sensors are positioned between the wireless communications circuitry and the glass element of the display. Appeal Br. 15 (Claims App.). REJECTIONS Claim 1, 3–8 and 10–14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bang et al. (US 2008/0070635 A1, published March 20, 2008) in view of Liu et al. (US 2003/0206161 A1, published November 6, 2003). Claims 2, 9 and 15–20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bang in view of Liu and in view of Castaneda et al. (US 2008/0049980 A1, published February 28, 2008). ANALYSIS We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to Appeal 2020-004469 Application 15/882,010 3 make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). We agree with the Examiner and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 3–15). We have considered Appellant’s Reply Brief, but find it unpersuasive to rebut the Examiner’s responses. We highlight and address specific findings and arguments for emphasis as follows. The Examiner finds that Bang teaches all of the limitations of claim 1, except a display that includes a glass element. Final Act. 3. The Examiner finds that Liu teaches the glass element limitation of claim 1. Final Act. 4; Ans. 13–15 (citing Liu ¶ 29; Fig. 2b). In particular, Liu discloses [t]he transparent protective layer 150 is consisted of glass, plastics, acrylic fiber, or the like transparent materials. For example, the above-mentioned transparent protective layer may be a coated glass (FG-SAl T9)… Therefore, the above- mentioned coated glass can efficiently reduce monitor light damage and the loss of transparency. Liu ¶ 29 (emphasis added). The Examiner further concludes that a person having ordinary skill in the art at the time of Appellant’s invention would have found it obvious to modify the device of Bang with the teachings of Liu, for the purpose of efficiently reducing monitor light damage and loss of transparency. Final Act. 4 (citing Liu ¶ 29). Appeal 2020-004469 Application 15/882,010 4 Appellant argues that Bang and Liu are not combinable because “Liu reference pertains to a capacitive touch screen that is a fundamentally different technology than the resistive touch screen of Bang.” (Reply Br. 3), and thus “combining the disclosures of Bang and Liu would render Bang unsatisfactory for its intended purpose,” (Appeal Br. 6, 9), Namely, Appellant argues, Bang reference pertains to a Resistive Touch Screen and outer protective film layer 75 needs to be sufficiently flexible to allow the touch screen to work properly. Appellants further noted that a person of ordinary skill in the art would appreciate that the relatively thick glass layer discussed in the Liu references (which discloses a capacitive touch screen) is not sufficiently flexible to be incorporated as the outer protective layer of the resistive touch screen disclosed in Bang and doing so would make the resistive touch screen disclosed in Bang inoperable. Reply Br. 3. (emphasis added). Furthermore, Appellant contends, The Examiner's point - that Liu teaches that its protective layer 150 could be either glass or plastic - is an indication that Rejection has an element of hindsight to it. After all, if Liu teaches that either plastic or glass could be used as protective layer 150 and a person of skill in the art would recognize that the outer most layer of a resistive touch screen is typically a very thin plastic layer, such as a polyethylene terephthalate (PET) layer or other clear thermoplastic film, the combination of Bang and Liu made by a skilled artisan would result in protective film 75 of Bang being a plastic layer as disclosed in Liu, not a 2 mm glass layer. Reply Br. 3. (emphasis added). Appeal 2020-004469 Application 15/882,010 5 “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Applying the guidance above, we agree with the Examiner that Liu provides an express motivation to combine, namely “glass can efficiently reduce monitor light damage and the loss of transparency.” Liu ¶ 29; see Final Act. 4. Appellant’s argument that combining the teachings of Bang with Liu would render Bang unsatisfactory for its intended purpose (Appeal Br. 6– 11), is unavailing because: The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Here, the Examiner concludes, and we agree that: [T]he primary reference of Bang teaches the basic structure and limitations of the claimed invention as stated in the rejection above, except for a glass element. The secondary reference of Liu teaches the concept of having the transparent protective layer 150 is consisted of glass, plastic, acrylic fiber or the like transparent materials. For example, transparent protective layer may be a coated glass ... the thickness of the coated glass is about 2.00mm (Liu: fig. 2b, [0029]). Thus, Appeal 2020-004469 Application 15/882,010 6 replacing Bang's top protection film layer 75 with Liu's concept of having a top transparent protective layer 150 made of coated glass would not make Bang's device unsatisfactory for its intended purpose because the coated glass would obviously have to be modified thin enough to be applicable with the device of Bang. Also, it is obvious that one of ordinary skill in the art at the time the invention was made would be able to make/modify the thickness of the coated glass to have a certain degree of bending to be operable with Bang's device. Overall, the secondary reference Liu is simply to teach that the concept of having the top protective layer can be made of glass and be used in a touch display device is known in the art. Therefore, the combination of Bang in view of Liu would result in the top protective layer 75 be made of glass to be functional with the device of Bang. Ans. 14–15. We also disagree with Appellant’s contention that the Examiner’s rationale amounts to hindsight assertions. Appeal Br. 3. We are cognizant that our reviewing courts have not established a bright-line test for hindsight. In KSR, the Supreme Court guides that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court qualified the issue of hindsight by stating, “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Id. In reviewing the record here, we find Appellant has not identified any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of Appeal 2020-004469 Application 15/882,010 7 ordinary skill in the art at the time of invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Moreover, Appellant has not provided persuasive evidence that combining the respective teachings of the references would have been “uniquely challenging or difficult for one of ordinary skill in the art,” or that such a combination would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has the Appellant provided any objective evidence of secondary considerations, which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). As discussed above, the Examiner has instead proffered an articulated reasoning with rational underpinnings, particularly in the case of a protective layer to be made of glass for the purpose of efficiently reducing monitor light damage and loss of transparency. Final Act. 3. Based on the foregoing and by a preponderance of the evidence, we sustain the Examiner’s obviousness rejection independent claims 1, 7, 15 and their respective dependent claims not argued separately. Accordingly, we affirm the Examiner’s obviousness rejections of claims 1–20. CONCLUSIONS The Examiner did not err in rejecting claims 1–20 as being obvious under pre-AIA 35 U.S.C. § 103(a) over the cited combinations of references. Appeal 2020-004469 Application 15/882,010 8 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–8, 10– 14 103(a) Bang, Liu 1, 3–8, 10– 14 2, 9, 15–20 103(a) Bang, Liu, Castaneda 2, 9, 15–20 Overall Outcome 1–20 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED