Carl Picciotto et al.

Patent Trials and Appeals Board

Sep 4, 2019

13769356 - (D) (P.T.A.B. Sep. 4, 2019)

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.
13/769,356 02/17/2013 Carl Picciotto 337990-US-
NP / 170101-031
8399
145266 7590 09/04/2019
NovoTechIP International PLLC
1717 Pennsylvania Ave. NW
Suite #1025
Washington, DC 20006
EXAMINER
DUNLAP, JONATHAN M
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
akhlaghi@novotechip.com
docketing@novotechip.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARL PICCIOTTO, SCOTT MAIL, and DAN JOHNSON1
____________

Appeal 2018-002492
Application 13/769,356
Technology Center 2800
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–20. Claims 21–26 have been
canceled.2 See Final Act. 1; Appeal Br. 1, 28. We have jurisdiction under
35 U.S.C. § 6(b).

1 Microsoft Technology Licensing, LLC. (“Appellant”) is the applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 3.
2 We refer to Appellants’ Specification (“Spec.”) filed Feb. 17, 2013;
Appeal Brief (“Appeal Br.”) filed July 10, 2017; and Reply Brief (“Reply
Br.”) filed Jan. 2, 2018. We also refer to the Examiner’s Final Office Action
Appeal 2018-002492
Application 13/769,356

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We reverse.
Appellant’s Invention
The invention relates to structures for and methods of creating “a
touch sensitive surface structure comprising a piezo structure in
communication with a deformable surface” (Spec. ¶ 4). The piezo structure
senses pressure on the deformable surface and communicates a pressure
signal to an actuating circuit. The actuating circuit, in turn, sends a piezo
actuating signal to the piezo structure, which communicates a mechanical
signal (motion) to the deformable surface, such that a user’s finger feels a
haptic sensation similar to a button click. See Abstract; Spec. ¶ 4; see also
Spec. ¶¶ 5–7.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A piezo-actuated structure, the piezo-actuated
structure comprising:
a deformable layer formed from a glass material;
a piezo layer, the piezo layer mechanically mated to
the deformable layer and capable of transmitting a haptic
response to the deformable layer causing the glass material
of the deformable layer to bend and simulate an actuated
dome switch;
an intermediate layer, the intermediate layer
mechanically mated to the deformable layer and further the
intermediate layer capable of providing mechanical
communication between the deformable layer and said
piezo layer; and

(“Final Act.”) mailed Sept. 30, 2016; and Answer (“Ans.”) mailed Oct. 31,
2017.
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Application 13/769,356

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a capacitive sensing layer, the capacitive sensing
layer capable of triggering varying levels of haptic response
transmitted by the piezo layer.

Appeal Br. 22 (Claim App.).
Rejections on Appeal3
1. The Examiner rejects claims 1–6 and 9–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Pertuit et al. (US 2011/0074702 A1;
published Mar. 31, 2011) (“Pertuit”), Pratt et al. (US 2012/0249474 A1;
published Oct. 4, 2012) (“Pratt”), and Verweg et al. (US 2014/0009429 A1;
published Jan. 9, 2014 (filed July 3, 2012)) (“Verweg”). See Final Act. 2–
10.
2. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Pertuit, Pratt, Verweg, and Sashida et al. (US
2012/0249459 A1; published Oct. 4, 2012) (“Sashida”). See Final Act. 11.
3. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Pertuit, Pratt, Verweg, and Moilanen et al. (US
2004/0227721 A1; published Nov. 18, 2004) (“Moilanen”). See Final Act.
11.
ISSUE
Based upon our review of the record, Appellant’s contentions, and the

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103, e.g., to rename 35 U.S.C.
§ 103’s subsections. Because the present application has an effective filing
date (Feb. 17, 2013) earlier than the AIA’s effective date for applications
(March 16, 2013), this decision refers to the pre AIA versions of 35 U.S.C.
§ 103 (i.e., § 103(a)).
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Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in concluding that Pertuit, Pratt, and Verweg
collectively would have taught or suggested “a deformable layer formed
from a glass material,” within the meaning of Appellant’s claim 1 and the
commensurate limitations of claims 13 and 19?
ANALYSIS
Obviousness Rejection of Claims 1–6 and 9–20
The Examiner rejects independent claim 1 (and independent claims 13
and 19, as well as dependent claims 2–6, 9–12, 14–18, and 20) as being
obvious in view of Pertuit, Pratt, and Verweg based on claim 1. See Final
Act. 2–10; Ans. 3–13. The Examiner cites Pertuit as teaching most aspects
of the claim, including a deformable layer, and relies on Verweg to teach
“the use of gorilla glass as a deformable touch-sensitive screen” (Final Act.
4). See Final Act. 2–4; Ans. 2–8 (citing Pertuit Fig. 2B (element 118),
¶¶ 26, 30, 44; Verweg ¶ 9).
Appellant contends that Pertuit, Pratt, and Verweg do not teach the
disputed limitations of claim 1. See Appeal Br. 12–16; Reply Br. 3–5.
Specifically, Appellant contends that “Pertuit, Pratt, and/or Verweg fail to
disclose, teach, or in any way suggest ‘a deformable layer formed from a
glass material.’” Appeal Br. 14 (emphasis omitted); see Appeal Br. 12–16;
Reply Br. 3–4.
We agree with Appellant’s arguments that Pertuit and Verweg (either
alone or in combination with one another) do not teach or suggest the
disputed limitation—“a deformable layer formed from a glass material”
(claim 1). See Appeal Br. 12–16; Reply Br. 3–5. As pointed out by
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Appellant, although Verweg mentions Gorilla® Glass, but “Verweg fails to
mention anything with regards to this glass layer being deformable or
bending in order to translate a haptic feedback.” Appeal Br. 15.
Pertuit describes a movable touch-sensitive display (118). See Pertuit
¶¶ 26, 44; Fig. 2B. Although Pertuit describes a movable touch-sensitive
display, the Examiner cited portions of Pertuit do not describe the display as
being deformable. To deform means to “change the shape of by pressure.”
Webster’s New World College Dictionary (5th ed. 2011) available at
http://www.yourdictionary.com/deform (last visited Aug. 26, 2019).
Accordingly, deformable means capable of being deformed i.e., having its
shape changed by pressure. A display that is movable is not necessarily
deformable.
Verweg describes a touch panel with a cover plate made of glass, such
as Gorilla Glass. See Verweg ¶ 9. The Examiner cited portions of Verweg
do not describe the touch panel, the cover plate, or the Gorilla Glass as being
deformable. Thus, nothing in the Examiner cited portions of Pertuit and
Verweg explicitly describes a deformable glass layer.
The Examiner, in the Examiner’s Answer explains that “it is assumed
that ‘Gorilla Glass’ in general is deformable.” Ans. 7. The Examiner’s
assumption is based on Appellant’s disclosure that describes utilizing Gorilla
Glass for the glass layer. See Ans. 7 (citing Spec. ¶ 25). Ignoring, for the
moment, the propriety of citing Appellant’s Specification, a review of the
cited section of Appellant’s Specification merely describes using a particular
brand of glass (Gorilla Glass) for a deformable glass layer. See Spec. ¶ 25.
The cited section does not describe how the glass is treated (e.g., by heating
or by the addition of chemical additives), the thickness of the glass layer, or
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any other properties of the glass. See Spec. ¶ 25. At best, Appellant’s
disclosure (which is not cited as prior art) shows that in certain instances a
glass layer made of Gorilla Glass may be deformable. It is, however, not
intrinsic that all Gorilla Glass layers are, by extension, deformable.
The Examiner does not sufficiently explain how the combination of
Pertuit and Verweg at least suggests a deformable glass layer. Without
further explanation, we are left to speculate, as did the Examiner, as to how
Pertuit in combination with Verweg describes the disputed features of
Appellant’s claim 1.
Consequently, we are constrained by the record to find that the
Examiner erred in concluding Pertuit, Pratt, and Verweg teach the
deformable glass layer of Appellant’s claim 1. Independent claims 13 and
19 include limitations of commensurate scope. Dependent claims 2–6, 9–12,
14–18, and 20 depend from and stand with claims 1, 13, and 19,
respectively. Accordingly, we do not sustain the Examiner’s obviousness
rejection of claims 1–6 and 9–20.
Obviousness Rejections of Claims 7 and 8
The Examiner rejects dependent claim 7 as being unpatentable over
Pertuit, Pratt, Verweg, and Sashida. See Final Act. 11. The Examiner
rejects dependent claim 8 as being unpatentable Pertuit, Pratt, Verweg, and
Moilanen. See Final Act. 11.
The Examiner has not established on this record that the additionally
cited Sashida and Moilanen references overcome or cure the aforementioned
deficiency of Pertuit and Verweg. Dependent claims 7 and 8 depend from
claim 1. Accordingly, we do not sustain the Examiner’s obviousness
rejections of claims 7 and 8 for the same reasons as claim 1 (supra).
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CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–20
under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1–20.

REVERSED