Ex Parte Rendek et al

Patent Trials and Appeals BoardAug 29, 2014

12016089 - (D) (P.T.A.B. Aug. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LOUIS JOSEPH RENDEK, JR., LAWRENCE WAYNE SHACKLETTE, PAUL BRIAN JAYNES, and PHILIP ANTHONY MARVIN ____________ Appeal 2012-008921 Application 12/016,089 Technology Center 2800 ____________ Before BEVERLY A. FRANKLIN, MARK NAGUMO, and JAMES C. HOUSEL, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge FRANKLIN. Opinion Dissenting filed by Administrative Patent Judge NAGUMO. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1–3 and 5–9. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: Appeal 2012-008921 Application 12/016,089 2 1. An electronic device comprising: a multilayer circuit board having a non-planar three-dimensional shape defining a sealed membrane switch recess therein; said multilayer circuit board comprising at least one liquid crystal polymer (LCP) layer, and at least one electrically conductive pattern layer defining at least one membrane switch electrode within the sealed membrane switch recess to define a sealed membrane switch; and circuitry on said multilayer circuit board and coupled to said at least one electrically conductive pattern layer. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wojewnik US 6,032,357 Mar. 7, 2000 Caldwell US 2003/0121767 A1 July 3, 2003 Motoyama et al. US 6,690,362 B1 Feb. 10, 2004 Trogisch et al. US 6,796,851 B2 Sept. 28, 2004 Smith et al. US 2006/0104037 A1 May 18, 2006 Mok et al. US 2008/0061808 A1 Mar. 13, 2008 THE REJECTIONS 1. Claims 1, 5, 8, and 9 are rejected under 35 U.S.C. § 103 and over Motoyama in view of Wojewnik and Smith. 2. Claim 2 is rejected under 35 U.S.C. § 103 over Motoyama in view of Wojewnik and Smith, and further in view of Trogisch. 3. Claim 3 is rejected under 35 U.S.C. § 103 and over Motoyama in view of Wojewnik and Smith, and further in view of Mok. 4. Claims 6 and 7 are rejected under 35 U.S.C. § 103 and over the Motoyama in view of Wojewnik and Smith, and further in view of Caldwell. Appeal 2012-008921 Application 12/016,089 3 ANALYSIS As an initial matter, Appellants do not raise distinct arguments for patentability of the subject matter recited in the pending claims other than independent claim 1 (i.e., Appellants’ arguments for claims 2, 3, 6, and 7 refer to their arguments pertaining to claim 1 (Br. 9–10)). We thus consider claim 1 in this appeal. See, e.g., 37 C.F.R. § 41.37(c)(1)(vii)(2011). With regards to Rejection 1, we can focus on the combination of Motoyama in view of Wojewnik because Appellants’ arguments do so. Appeal Br. 5–9. Our determination made with regard to Rejection 1 is dispositive for Rejections 2, 3, and 4 because Appellants rely upon similar arguments. Appeal Br. 9–10. Upon consideration of the evidence on this record and Appellants’ contentions, we find that the preponderance of evidence supports the Examiner’s conclusion that the claimed subject matter is unpatentable over the applied prior art. We sustain the above rejections substantially for the reasons expressed by the Examiner in the Answer. We add the following. Appellants argue that the combination of Motoyama in view of Wojewnik does not suggest the recited subject matter of claim 1 because Motoyama discloses a recess formed from planar 2D circuit boards, and Wojewnik discloses an open recess with conductive traces on outer surfaces of the circuit board. App. Br. 7–8. However, such argument is not convincing because, as pointed out by the Examiner on page 9 of the Answer, attacking the references individually is unpersuasive. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art; one cannot show non- Appeal 2012-008921 Application 12/016,089 4 obviousness by attacking references individually where the rejections are based on combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants also argue that modifying the 2D switch of Motoyama by implementing the 3D thermoforming technique of Wojewnik would lack a reasonable expectation of success and would “almost certainly result in the destruction of the space SP separating the upper and lower layers, thereby destroying the switch” of Motoyama. Appeal Br. 8–9. However, as the Examiner points out on page 9 of the Answer, the combination suggests modifying Motoyama’s 2D switch by implementation of Wojewnik’s 3D shaped recess. Without objective evidence in the record, as in the instant case, we are unpersuaded by Appellants’ arguments that one skilled in the art would not have a reasonable expectation of success of making such a modification. A prima facie case of obviousness is established where the Examiner demonstrates that the invention is nothing more than the predictable result of a combination of familiar elements according to known methods. We note that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). CONCLUSIONS OF LAW AND DECISION Each rejection is affirmed. Appeal 2012-008921 Application 12/016,089 5 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LOUIS JOSEPH RENDEK, JR., LAWRENCE WAYNE SHACKLETTE, PAUL BRIAN JAYNES, and PHILIP ANTHONY MARVIN ____________ Appeal 2012-008921 Application 12/016,089 Technology Center 2800 ____________ Before BEVERLY A. FRANKLIN, MARK NAGUMO, and JAMES C. HOUSEL, Administrative Patent Judges. NAGUMO, Administrative Patent Judge, dissenting. I respectfully dissent. In my view, Appellants’ arguments regarding the proposed combination of teachings by the Examiner are based adequately on “common-sense” observations that rise to the level of indicating substantive and harmful error in the Examiner’s rejection. The particular problem raised by Appellants is the difficulty of preserving the space SP separating the upper and lower layers 63A and 63B, which are the contact electrodes for switch contacts points 50 to 54. (Motoyama, col. 6, ll. 41-46; see also Motoyama Fig. 4.) The thermoforming technique described by Wojewnik to Appeal 2012-008921 Application 12/016,089 2 form a 3D-flexible circuit that conforms to a contoured surface of a vehicle trim panel (Wojewnik, Abstract) is disclosed for passive wiring connections, including power supply leads (id. at col. 1, ll. 48-51). The Examiner has not directed our attention to any teaching in Wojewnik relating to molding active components with parts that move relative to one another, such as a pressure-activated contact switch. It is not sufficient, in my view, to criticize Appellants’ argument as lacking “evidence,” or to dismiss those arguments as “merely” attacking the teachings of the references individually. As for the “lack of evidence,” Appellants’ arguments may be read equally well as a criticism of the lack of evidence supporting the Examiner’s proposed combination. In this regard, as an additional example, the Examiner has not explained how using a nonplanar three-dimensional circuit board would provide “a [more] compact electronic device” (Ans. 6) than the planar configuration described by Motoyama. I would reverse the rejections of record.