David K. Lim et al.

Patent Trials and Appeals Board

Sep 27, 2019

14716950 - (D) (P.T.A.B. Sep. 27, 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.
14/716,950 05/20/2015 David K. Lim MM01256 2868
138858 7590 09/27/2019
Motorola/
McKinney Phillips LLC
1440 W. Taylor St.
Suite 749
Chicago, IL 60607
EXAMINER
DEPEW, KEITH A
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
docketing.mobility@motorola.com
pipp@mckinneyphillips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID K. LIM, JOSEPH ALLORE, and
MICHAEL J. LOMBARDI

Appeal 2018-008950
Application 14/716,950
Technology Center 2800
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 6, 8, 10, and 12. 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. Appellant identifies the real party in interest as MOTOROLA
MOBILITY LLC. Appeal Br. 2.
Appeal 2018-008950
Application 14/716,950

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Appellant claims a portable electronic device comprising: a device
housing 611; a three-layer adhesive assembly having a top adhesive layer
601, an intermediate layer 605 and a bottom adhesive layer 603; and a lens
assembly including a device display 609 and a lens 607; wherein the display
is affixed to an underside of the lens, and “wherein the device display is
affixed to the top adhesive layer and the lower adhesive layer is affixed to
the device housing” (independent claim 1, Fig. 6 (see also Figs. 4–5)).
Appellant also claims a multilayer screen assembly for a portable electronic
device having limitations corresponding to those previously described
(remaining independent claim 8).
A copy of representative claim 1, taken from the Claims Appendix, of
the Appeal Brief, appears below.
1. A portable electronic device comprising:
a device housing;
a three-layer adhesive assembly having a top adhesive layer, an
intermediate layer and a bottom adhesive layer; and
a lens assembly including a device display and a lens;
wherein the device display is affixed to an underside of the lens,
and wherein the device display is affixed to the top adhesive layer and
the lower adhesive layer is affixed to the device housing, the lens
including at least one border region wherein the device display does
not extend, and wherein the top adhesive layer is affixed to the lens in
the at least one border region, the three layer adhesive assembly
having a step displacement from the at least one border region to the
display.
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Appellant does not present separate arguments specifically directed to
the dependent claims under rejection (Appeal Br. 10). Therefore, the
dependent claims will stand or fall with their parent independent claims, of
which claim 1 is representative.
The Examiner rejects claims 1, 3, 6, 8, 10, and 12 under 35 U.S.C.
§ 102(a)(1) as anticipated by Yamada (U.S. 2015/0062460 A1, Mar. 5,
2015) (Final Office Action (Final) 2–5).
In rejecting representative claim 1, the Examiner finds that Yamada’s
Figure 1 discloses the claimed device including a three-layer adhesive
assembly having a top adhesive layer (upper element 6), an intermediate
layer (element 4) and a lower adhesive layer (lower element 6), and a lens
assembly including a device display (element 5) and a lens (element 3) (id.
at 2). The Examiner additionally finds that Yamada’s display is affixed to
the top adhesive layer (i.e., wherein upper element 6 (the top adhesive layer)
is affixed to the display 5 through element 4 (the intermediate layer) and
lower element 6 (the lower adhesive layer)) (id. at 2–3). Moreover, the
Examiner finds that Yamada’s lower adhesive layer (lower element 6) is
affixed to the device housing (element 2) (i.e., wherein lower element 6 is
affixed to the housing 2 through elements 4 and 8) (id. at 3).
In responding to Appellant’s arguments submitted prior to the Final
Office Action, the Examiner acknowledges that Yamada’s three-layer
adhesive assembly is disposed between the lens and the display but points
out that “the claim[s] fail[] to specify that the display is directly affixed . . .
with no intervening elements” (id. at 5). The Examiner also points out that,
contrary to Appellant’s arguments, the claims do not require the three-layer
adhesive assembly to be below both the lens and the display (id. at 6).
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In the Appeal Brief, Appellant argues “[c]laim 1 expressly requires
that the 3-layer adhesive structure be configured and positioned beneath both
the lens and the display and tie that whole assembly to the housing” and then
states “Yamada does not teach this expressly required structure” (Appeal Br.
9 (emphasis removed); see also id. at 10).
Appellant’s argument is unpersuasive because claim 1 does not
contain the argued requirement as the Examiner explains in the Final Office
Action (Final 5–6) and reiterates in the Answer (Ans. 3). We emphasize
that, in the Appeal Brief, Appellant fails to acknowledge, much less show
error in, the Examiner’s explanation.
As indicated above, in the Final Office Action, the Examiner
interprets the claim term “affixed” as “fail[ing] to specify . . . directly
affixed . . . with no intervening elements” (Final 5; see also id. at 6). In the
Answer, the Examiner embellishes this claim interpretation by stating “the
claim term ‘affixed’ . . . in broad interpretation is taken to mean things
which are assembled together so as to move as one” (Ans. 3).
In the Reply Brief, Appellant argues that, “if ‘affixed to’ is rewritten
to mean nothing except the parts ‘move as one,’ then an express requirement
of claim 1 (‘the top adhesive layer is affixed to the lens in the … border
region’) is made superfluous and is thus reduced to meaningless excess
verbiage” (Reply Br. 3 (emphasis removed)).
Contrary to this argument, the quoted limitation of claim 1 is not
made superfluous even if “[the claim phrase] ‘affixed to’ is rewritten to
mean nothing except the parts ‘move as one’” (id.). This is because,
regardless how the term “affixed” is interpreted, the limitation requires the
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location where the top adhesive layer is affixed to the lens to be “in the . . .
border region” (claim 1).
In summary, the record of this appeal supports the claim interpretation
made by the Examiner in the Final Office Action that the claim term
“affixed” does not require a directly affixed attachment and therefore
encompasses the indirectly affixed attachment disclosed by Yamada.2,3
Once again, we emphasize that Appellant does not show error in, or even
acknowledge, this claim interpretation.
For the reasons given above and expressed by the Examiner, we
sustain the § 102(a)(1) rejection of claims 1, 3, 6, 8, 10, and 12.
We affirm the Examiner’s decision to reject these claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

CONCLUSION

In summary:
Claims
Rejected
Basis Affirmed Reversed
1,3,6,8,10,12 § 102(a)(1) Yamada 1,3,6,8,10,12

Overall Outcome 1,3,6,8,10,12

2 We observe that a common definition of the term “affix” is “attach” or
“fasten” (see, e.g., Concise Oxford American Dictionary 2006).
3 We express no opinion regarding the embellished claim interpretation
made by the Examiner in the Answer.
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Application 14/716,950

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AFFIRMED