Ex Parte Seelhammer et al

Patent Trial and Appeal Board

Oct 10, 2012

11333166 (P.T.A.B. Oct. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/333,166 01/17/2006 Mark A. Seelhammer 28082.138 6359
7590 10/10/2012
Paul F. Wille
Cantor Colburn LLP
20 Church St. - 22nd Floor
Hartford, CT 06103
EXAMINER
CERULLO, LILIANA P
ART UNIT PAPER NUMBER
2691
MAIL DATE DELIVERY MODE
10/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte MARK A. SEELHAMMER, ALAN C. THOMAS,
DAVID G. PIRES, and WALTER J. PACIOREK
_____________

Appeal 2010-006682
Application 11/333,166
Technology Center 2600
______________

Before: ROBERT E. NAPPI, TREVOR JEFFERSON, and JUSTIN
BUSCH, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006682
Application 11/333,166
2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 8, and 10 through 17.

We affirm-in-part.
INVENTION
The invention is directed to a device with electroluminescent (EL)
backlighting of a capacitive touch sensor. Specification 3-4. Claims 1 and 3
are representative of the invention and reproduced below:
1. A personal electronic device comprising:
a capacitive touch sensor and an integral EL panel, wherein the
sensor and the panel each include conductive layers;
wherein at least one of the conductive layers is a cured resin
selected from the group consisting of conductive resins, resins
containing particles of conductive metal oxides, and mixtures thereof.
3. A personal electronic device comprising:
a display;
a keypad;
wherein said keypad includes a capacitive touch sensor, an EL
panel backlighting the capacitive touch sensor, and a grounded
conductive layer in a unitary structure, said layer shielding the
capacitive touch sensor from the EL panel.

REFERENCES

Shacklette US 5,378,403 Jan. 3, 1995
Redmayne US 5,650,597 Jul. 22, 1997
Gum US 6,477,390 B1 Nov. 5, 2002
Iino US 6,627,689 B2 Sep. 30, 2003
Hein US 2005/0206623 Sep. 22, 2005
Ricks US 2007/0085838 A1 Apr. 19, 2007
Appeal 2010-006682
Application 11/333,166
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REJECTIONS AT ISSUE
The Examiner has rejected claims 1 and 2 under 35 U.S.C. § 102(e) as
anticipated by Ricks. Answer 3-41.
The Examiner has rejected claims 3, 8, 10 through 12, 14 through 17
under 35 U.S.C. § 102(b) as anticipated by Hein. Answer 4-5.
The Examiner has rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Hein in view of Redmayne. Answer 6.
The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Hein in view of Iino. Answer 6-7.
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Hein in view of Shacklette. Answer 7.
The Examiner has rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Hein in view of Gum. Answer 7-8.

ISSUES
Claims 1 and 2
Appellants argue on pages 4 and 5 of the Brief2 that the Examiner’s
rejection of these claims is in error. These arguments present us with the
issue did the Examiner err in finding that Ricks teaches a capacitive touch
sensor?
Claims 3, 8, 10 through 12, and 14 through 17

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
December 14, 2009.
2 Throughout this opinion we refer to Appellants’ Appeal Brief dated
September 18, 2009.
Appeal 2010-006682
Application 11/333,166
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Appellants argue on pages 5 through 8 of the Brief that the
Examiner’s rejections of these claims are in error. These arguments present
us with the issue did the Examiner err in finding that Hein teaches a
grounded conductive layer shielding the capacitive touch sensor from the
electroluminescent layer?

ANALYSIS
Claims 1 and 2
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in finding that Ricks teaches a capacitive touch sensor. The Examiner
cites to paragraph 22 and 43 of Ricks to support the finding of anticipation.
We concur. Accordingly, we sustain the Examiner’s rejection of claims 1
and 2.
Claims 3, 8, 10 through 12, and 14 through 17
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We agree with Appellants’ conclusion that the Examiner erred
in finding that Hein teaches a grounded conductive layer shielding the
capacitive touch sensor from the electroluminescent layer. Independent
claims 3 and 14 recite a limitation directed to a grounded shielding layer.
The Examiner finds that Hein’s grounded conductive layer 40 meets the
limitation of a grounded shielding layer as claimed. While we concur with
the Examiner that Hein teaches that layer 40 is grounded during part of the
device’s operation, we disagree that this layer shields the capacitive touch
sensor from the EL panel. Hein teaches that layer 40 is an electrode which
Appeal 2010-006682
Application 11/333,166
5

is part of both the capacitive sensor and the EL panel, thus it is not shielding
the capacitive sensor from the EL panel. Hein Para. 22 and 23.
Accordingly, we will not sustain the Examiner’s rejection of claims 3, 8, 10
through 12, and 14 through 17 under 35 U.S.C. § 102(b). Further, the
Examiner has not shown that teachings of the additional references make up
for the deficiency in the rejection of claim 3, accordingly, we will not sustain
the Examiner’s rejection of claims 4 through 7 and 13.

CONCLUSION
We sustain the Examiner’s rejection of claims 1 and 2 under 35
U.S.C. § 102(e). We do not sustain the Examiner’s rejection of claims 3, 8,
10 through 12, and 14 through 17 under 35 U.S.C. § 102(b) or the
Examiner’s rejections of claims 4 through 7 and 13under 35 U.S.C. § 103(a).
The decision of the Examiner to reject claims 1 through 8, and 10 through 17
is affirmed- in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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