Carl Picciotto et al.Download PDFPatent Trials and Appeals BoardSep 4, 201913769356 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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 2 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. Appeal 2018-002492 Application 13/769,356 3 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)). Appeal 2018-002492 Application 13/769,356 4 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 Appeal 2018-002492 Application 13/769,356 5 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 Appeal 2018-002492 Application 13/769,356 6 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). Appeal 2018-002492 Application 13/769,356 7 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 Copy with citationCopy as parenthetical citation