Ex Parte Hsieh

Patent Trial and Appeal Board

Aug 30, 2016

12890209 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/890,209 09/24/2010
111408 7590 09/01/2016
Osha Liang LLP/Synaptics
909 Fannin Street, Suite 3500
Houston, TX 77010
FIRST NAMED INVENTOR
Lin-Hsiang Hsieh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
38018/111001 7869
EXAMINER
EARLES,BRYANE
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
hathaway@oshaliang.com
docketing@oshaliang.com
lord@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIN-HSIANG HSIEH
Appeal2015-002548
Application 12/890,209
Technology Center 2600
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 2, 4--7, 10-13, 15, and 17-19. Claims 3, 8, 9, 14, 16,
and 20 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The invention on appeal relates to electronic devices, and more
particularly, to touch sensors used as input devices. (Spec. i-f 1 ).
Appeal2015-002548
Application 12/890,209
Representative Claim
1. An input device comprising:
a touch sensor substrate having a first side and a second side, the
second side opposite the first side;
at least one sensor electrode disposed on the touch sensor substrate,
the at least one sensor electrode configured to sense input objects in a
sensing region on the first side;
a switch disposed on the second side of the touch sensor substrate;
a transmission element not integral with the touch sensor substrate,
the transmission element configured such that sufficient depression of a first
portion of the transmission element causes a second portion of the
transmission element to rotate about a pivot and actuate the switch; and
an input surface, wherein the touch sensor substrate is configured to
move to actuate the switch in response to a force applied to the input
surface;
wherein the transmission element; the pivot; and the button element
are all portions of one integral component, and [L] wherein the transmission
element is configured to rotate in a gimbal motion about the pivot due to
local material deformation proximate the pivot.
(Bracketed matter and emphasis added regarding the contested limitation,
labeled as "L").
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T"tl. • ,• 1 Kejectzon '
Claims 1, 2, 4--7, 10-13, 15, 2 and 17-19 are rejected under 35 U.S.C.
§ 103(a) over the combined teachings and suggestions of Wang (US
6,281,887 Bl; pub. Aug. 28, 2001), Sakai (US 2010/0224471 Al; pub. Sept.
9, 2010), and Rider (US 2010/0085313 Al; pub. Apr. 8, 2010).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of claims 1, 2,
4--7, 10-13, 15, and 17-19 on the basis of representative claim 1. To the
extent Appellant has not advanced separate, substantive arguments for the
remaining claims on appeal, such arguments are considered waived. See 37
C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we 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 and rebuttals set forth in
1 On May 7, 2014, the Examiner entered an after-final amendment, received
on April 16, 2014, and withdrew the rejection under 35 U.S.C. § 112, second
paragraph, of claims 1 and 11. Therefore, this rejection is not before us on
appeal. (See Ans. 3.)
2 The scope of claim 15 is unclear because it depends upon cancelled claim
14. In the event of further prosecution of this application (and if not
con-ected by arnendment), we leave it to the Examiner to consider a rejection
under 35 U.S.C. § 112, second paragraph. Although the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b)~ no inference should be drawn
when the Board elects not to do so. S'ee MPEP § 1213.02.
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Application 12/890,209
the Answer in response to Appellant's arguments. (Ans. 23-27). However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
Combinability of the References under 35 U.S.C. § 103(a)
As a threshold issue, we decide the question of whether the Examiner
erred by improperly combining the cited references under 35 U.S.C.
§ 103(a).
Appellant advances the following contentions in the Appeal Brief: ( 1)
"Sakai bears no relation whatsoever to a touch screen, touch panel, scroll
device, or touch sensor and, hence, there is no express or implied suggestion
to combine Sakai with Wang;" (2) "Rider bears no relation whatsoever to a
transmission element, a pivot, or gimbal-like motion and, hence, there is no
express or implied suggestion to combine Rider with Wang or Sakai;" and
(3) "the only motivation to combine the references in the manner proposed
by the Examiner derives from Applicant's specification and claims and, as
such, constitutes quintessentially impermissible hindsight reconstruction."
(App. Br. 11; see also Reply Br. 5.)
Regarding Appellant's first two contentions, we note Appellant has
not provided support for these statements, but instead merely alleges the
references proffered by the Examiner are "unrelated" to each other, or to
Appellant's claimed invention. (Id.). However, attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
To the extent Appellant contends Wang, Sakai, and Rider are non-
analogous art, we note it is insufficient to merely allege the references are
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Application 12/890,209
unrelated. The question of whether a prior art reference is "analogous" turns
on a two-prong test: "(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved."
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation and quotations
omitted.)
Here, we find each of the references relied upon by the Examiner is
from the same general field of endeavor as the claimed invention, namely
touch surfaces and associated tactile sensors and switches, which are
responsive to user input. (See, e.g., Wang's touchpad assembly and "switch
actuating fingers 35"; Figs. 3, 4, and 6; see also Sakai's "tach switch 58"; i-f
96; and Rider's touch screen display 38 which actuates switch 39, i-f 47, Figs.
2-3.) Given this evidence, we find unpersuasive Appellant's unsupported
allegations the cited references are "unrelated" to each other, or to
Appellant's claimed invention. (App. Br. 11; see also Reply Br. 5.)
We additionally find Appellant's allegation of impermissible
hindsight is unsupported by evidence in the record. (App. Br. 11.) Although
we are fully aware that hindsight bias often plagues determinations of
obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also
mindful the Supreme Court has clearly stated the "combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). Further, "[i]n determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls." (Id. at 419.)
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This reasoning is applicable here. Instead of relying on Appellant's
Specification and claims to use as a guide (as alleged by Appellant- App.
Br. 11 ), the Examiner relies on improvements expressly described in Sakai
(i-f 13) and Rider (i-f 39), respectively, which we find provide sufficient
articulated reasoning with some rational underpinning to establish why an
artisan would have been motivated to combine these secondary references
with the primary Wang reference. (Final Act. 5---6.) 3
Moreover, Appellant does not provide evidence sufficient to
demonstrate that combining the teachings of Wang, Sakai, and Rider, as
proffered by the Examiner (id.), would have been "uniquely challenging or
difficult for one of ordinary skill in the art," (Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor has Appellant
provided any objective evidence of secondary considerations, which our
reviewing court guides "operates as a beneficial check on
hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).4
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we do not find persuasive
3 The Suprerne Court guides: '"rejections on obviousness grounds cannot be
sustained by mere conclusory staternents; instead, there must be some
articulated reasoning with some rational underpinning to suppo1i the legal
conclusion of obviousness.'" KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
4 See Evidence Appendix (App. Br. 22) ("No evidence pursuant to 37
C.F.R. §§ 1.130, 1.131, or 1.132 has been entered by the Examiner or relied
upon by Appellant in the instant appeal beyond that which is already
contained in the as-filed application.").
6
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Appellant's arguments alleging the Examiner has improperly combined the
references under§ 103. (App. Br. 11; see also Reply Br. 5.)
Re} ection A of Representative Claim 1 under 3 5 U.S. C. § 103 (a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Wang, Sakai, and Rider would have taught or
suggested contested limitation L: "wherein the transmission element is
configured to rotate in a gimbal motion about the pivot due to local material
deformation proximate the pivot," within the meaning of claim 1? 5
(Emphasis added.)
As an initial matter of claim construction, we tum to the Specification
for context regarding the broadest reasonable interpretation of the claim term
"gimbal motion" (claim 1 ). We find no definition for this term in the
Specification, nor has Appellant provided a definition in the record. Instead,
we find a non-limiting, exemplary embodiment describing "gimbal-like"
motion in paragraph 69 of the Specification:
Depression of the button element 580 (e.g., due to user-applied
force on the button elements 580 and 582) is transmitted to the
first portion 560, and causes the transmission element 540 to
move in a gimbal-like way about the pivot 550. This gimbal-like
motion is enabled in the input device 500 by local material
deformation at and near the pivot 550.
(Emphasis added.)
Given the lack of a limiting definition, on this record, we are not
persuaded the Examiner's broader reading is overly broad, unreasonable, or
5 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
7
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inconsistent with the Specification: "the Office interprets that a gimbal
motion is the translation of the pressing force on pushbutton section 72 into
an upward force causing an actuation of the tact switch 58 causing a
rotational force about the fulcrum 88, as disclosed in by Sakai in Paras.
[0092]-[0093]." (Ans. 27, emphasis added). 6 See n.5, supra.
Thus, the Examiner finds Sakai teaches or suggests "wherein the
transmission element is configured to rotate in a gimbal motion" at
paragraph 96. (Final Act. 5, emphasis added.) Additionally, the Examiner
finds this rotation is "about the pivot" because Sakai teaches "translation of
the pressing force on pushbutton section 72 into an upward force causing an
actuation of the tact switch 58." (Id., citing Sakai i-fi-192-93.) Further, the
Examiner finds Wang teaches or suggests an "actuation due to local material
deformation proximate the actuation" where "the bending of the actuating
fingers 35 proximate the actuation of key switches 50 reads on a local
material deformation." 7 (Id. at 4, citing Wang Fig. 6 (emphasis omitted).)
6 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
7 We note the Examiner has it backwards: it is improper to read the
reference on the claim. Rather, the correct approach is to construe the
contested claim term( s) under BRI and then read the properly construed
claim term( s) on the corresponding feature( s) found in the reference. Cf with
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
("Anticipation of a patent claim requires a finding that the claim at issue
'reads on' a prior art reference."). Nevertheless, we understand the
Examiner's mapping between the claimed "local material deformation
proximate the pivot" (claim 1 ), and the corresponding feature in Wang (Fig.
6) of bending the actuating fingers 3 5 proximate to the actuation of key
switches 50. (Final Act. 4).
8
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Application 12/890,209
Appellant contends, "While Sakai discloses a 'fulcrum' 88 (see FIG. 5
of Sakai, reproduced below), there is no disclosure in Sakai of rotation due
to local material deformation proximate the pivot, as required by each and
every one of the pending claims." (App. Br. 12.)
The Examiner answers:
Sakai is not relied upon for disclosing a local material
deformation about a pivot; rather, it is the combination of Wang
as modified by Sakai and Rider that disclose the transmission
element is 'configured to rotate in a gimbal-like motion about
the pivot due to local material deformation proximate the
pivot."
(Ans. 26-27, emphasis added.)
We agree with the Examiner that Appellant is attacking Sakai in
isolation. 8 The Examiner's rejection is based on the combined teachings
and suggestions of Wang, Sakai, and Rider. The Examiner found, and
Appellant does not contest, that Wang teaches an "actuation due to local
material deformation proximate the actuation" (i.e., suggesting "proximate
the pivot" as claimed). 9 (Final. Act. 4). The Examiner does not rely on
Sakai for teaching any actuation "due to local material deformation
proximate the pivot." Instead, the Examiner concluded that it would have
been obvious to apply Sakai's gimbal rotation with Wang's material
deformation proximate the pivot. (Final Act. 3-8).
8 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
9 Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)
(1 )(iv).
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Appellant further contends: "[a]s is apparent, component 84 of Sakai
rests on what the Office Action has cited as a 'fulcrum' (88) and is not part
of 'one unified body' with item 88 such that it would provide rotation due to
local material deformation proximate the pivot." (App. Br. 12 (emphasis
omitted).) Appellant restates this contention for claims 11 and 18. (Id. at
13-15; see also Reply Br. 4---6.)
Regarding the limitation "wherein the transmission element, the pivot,
and the button element are all portions of one integral component" (claim 1 ),
we agree with the Examiner's citation to In re Larson, 340 F.2d 965, 968,
(CCP A 1965), in support of the Examiner's finding that "making
components portable, integral, separable, adjustable, or continuous is not
sufficient by itself to patentably distinguish over an otherwise old device
unless there are new or unexpected results." (Ans. 22, emphasis added.) 10
Appellant additionally urges: "none of the references, alone or in
combination, teach or suggest actuating a single switch through one of two
mechanisms, namely, either directly through the touch sensor substrate, or
indirectly using a remote button and pivoting transmission element." (App.
Br. 11, emphasis added.)
However, we find the argued limitations are not commensurate with
the scope of the claim. (Id.). Claim 1 is silent regarding the argued
"actuating a single switch through one of two mechanisms, namely, either
10 See Larson, 340 F.2d at 968 ("We are inclined to agree with the board's
construction of the term 'integral' as used in claim 12. Then, too, ... the use
of a one piece construction instead of the structure disclosed in Tuttle et al.
would be merely a matter of obvious engineering choice.")(citing In re
Fridolph, 309 F.2d 509 (CCPA 1962).
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directly through the touch sensor substrate, or indirectly using a remote
button and pivoting transmission element." (App. Br. 11-12.) 11
For all of the aforementioned reasons, on this record, and by a
preponderance of the evidence, we are not persuaded of error regarding the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding representative claim 1.
Regarding the nominal arguments advanced for the remaining claims
on appeal, Appellant recites the claim language from various claims and
merely asserts the claim language is not taught by the cited combination of
references. (App. Br. 13-16). We find such conclusory arguments are
unpersuasive of Examiner error. 12 Arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Moreover, regarding independent product-by-process claim 18, MPEP
§ 2113(!) guides: "even though product-by-process claims are limited by and
11 Our reviewing court guides that the scope of the claims is not limited to
the preferred embodiments described in the Specification: "[A ]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments .... [C]laims may embrace different subject matter than is
illustrated in the specific embodiments in the specification." Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations and
internal quotation marks omitted). Rather, "It is the claims that measure the
invention." SRI Int'! v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121
(Fed. Cir. 1985) (en bane) (citations and quotations omitted).
12 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
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defined by the process, determination of patentability is based on the product
itself." "The patentability of a product does not depend on its method of
production ... If the product in the product-by-process claim is the same as
or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985)) (citations omitted). Accord Amgen Inc.
v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1369 (Fed. Cir. 2009) (en bane)
("In determining validity of a product-by-process claim, the focus is on the
product and not on the process of making it." (citing Atl. Thermoplastics Co.
v. Faytex Corp., 970 F.2d 834, 841 (Fed. Cir. 1992).) 13
13 In contrast to determining patentability during examination, we note the
determination of infringement for a product-by process claim additionally
considers the process of making the product. See Amgen 580 F.3d at 1370:
In determining infringement of a product-by-process claim,
ho\~1ever, the focus is on the process of making the product as
much as it is on the product itself. See Abbott Labs. v. Sandoz,
Inc., 566 F.3d 1282, 1293 (Fed.Cir.2009) (en bane). In other
words, "process terms in product-by-process claims serve as
limitations in determining infringement." Id. (quotation marks
omitted). As a result, a product-by-process claim is not
infringed by a product made by a process other than the one
recited in the claim. Id. The impact of these different analyses
is significant. For product-by-process claims, that which
anticipates if earlier does not necessarily infringe if later. That
is because a product in the prior art made by a different process
can anticipate a product-by-process claim, but an accused
product made by a different process cannot infringe a product-
by-process claim. Similarly, that which infringes if later does
not necessarily anticipate if earlier. That is because an accused
product may meet each limitation in a claim, but not possess
features imparted by a process limitation that might distinguish
the claimed invention from the prior art.
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We find this reasoning is applicable here. ("The patentability of a
product does not depend on its method of production .... ") In re Thorpe,
777 F.2d at 697. Therefore, we sustain the Examiner's rejection of
independent product-by-process claim 18, for the same reasons discussed
above regarding apparatus claim 1.
Accordingly, on this record and based on a preponderance of the
evidence, we sustain the Examiner's rejection of representative claim 1, and
grouped claims 2, 4--7, 10-13, 15, and 17-19, which fall with claim 1 (see
Grouping of Claims, supra).
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered, except for good cause. See 37 C.F.R. § 41.4l(b)(2).
Conclusion
For at least the aforementioned reasons, on this record, we are not
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for all claims on appeal.
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DECISION
We affirm the Examiner's rejection of claims 1, 2, 4--7, 10-13, 15,
and 17-19 under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
14