Ex Parte Teplitxky et al

Patent Trial and Appeal BoardDec 17, 2018

14170051 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/170,051 01/31/2014 Pierre M. Teplitxky 145730 7590 12/19/2018 Dorsey & Whitney LLP/ Apple Inc. 111 South Main St Salt Lake City, UT 84111 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. P21462US1 3461 EXAMINER FIGUEROA, FELIX 0 ART UNIT PAPER NUMBER 2833 NOTIFICATION DATE DELIVERY MODE 12/19/2018 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): DWAppleteam@dorsey.com apip.docket@dorsey.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PIERRE M. TEPLITXKY, COLIN M. ELY, FLETCHERR. ROTHKOPF, ANNA-KATRINA SHEDLETSKY, and SAMUEL B. WEISS Appeal2018-003121 Application 14/170,051 Technology Center 2800 Before CATHERINE Q. TIMM, DONNA M. PRAISS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to finally reject claims 1, 3-9, and 11-14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellant is the Applicant, Apple, Inc., also identified as the real party in interest. App. Br. 3. Appeal 2018-003121 Application 14/170,051 The invention is generally directed to a waterproof button assembly. Claims 1 and 13 illustrate the subject matter on appeal and are reproduced below: 1. A waterproof button assembly comprising: a housing forming exterior and interior surfaces of an electronic device and defining an opening and a base portion at a bottom of the opemng; a button positioned at least partially within the opening; a tactile dome positioned between the button and the base portion; a set of engagement components positioned around a periphery of the button, each component of the set of engagement components engaging apertures positioned on a sidewall of the opening within the housing thereby retaining the button within the housing; and a sensing component positioned on the housing at the interior surface opposite the button and configured to detect a deformation of the base portion due to an actuation of the button along a direction substantially perpendicular to the exterior surface. 13. An electronic device comprising: a waterproof button assembly comprising: a housing coupled with a casing and defining an opening and a base portion forming a portion of the opening; a button positioned at least partially within the housing at the openmg; a tactile feedback structure coupled to the button; a set of engagement components positioned around the button for retaining the button within the housing, each component of the set 2 Appeal 2018-003121 Application 14/170,051 of engagement components engaging apertures positioned on a sidewall of the opening within the housing; and a sensing component positioned within an interior volume defined by the casing and the housing, wherein: the sensing component is configured to identify a localized deflection of the base portion due to an actuation of the button along an axial direction extending through the opening and the base portion; and the base portion of the housing separates the button from the interior volume. Appellant (see generally Appeal Brief) requests review of the following rejections from the Examiner's Final Office Action: I. Claims 13 and 14 rejected under 35 U.S.C. Â§ 102(a)(l) as anticipated by Sakakino (US 4,324,956, issued April 13, 1982). II. Claims 1, 3, 8, 9, 11, and 12 rejected under 35 U.S.C. Â§ 103 as unpatentable over Sakakino. III. Claims 4--7 rejected under 35 U.S.C. Â§ 103 as unpatentable over Sakakino and Yang (US 8,248,815 B2, issued August 21, 2012). OPINION Anticipation Rejection After review of the respective positions provided by Appellant and the Examiner, we REVERSE the Examiner's rejection of claims 13 and 14 under 35 U.S.C. Â§ 102(a)(l) for the reasons presented by Appellant. Independent claim 13 2 is directed to an electronic device having a waterproof button assembly. Spec., 7. The water button assembly 2 We limit our discussion to independent claim 13. 3 Appeal 2018-003121 Application 14/170,051 comprises a button and a housing defined by an opening and a base portion forming a portion of the opening, where the button is positioned at least partially within the housing via the opening and is actuated along an axial direction extending through the opening and the base portion of the housing to engage a sensing component. Id. ff 7, 42. The Examiner finds Sakakino discloses a device having a button assembly that anticipates the subject matter of claim 13, where the button is a horizontally movable slider for electrical connection or disconnection of the contacts in the device. See Final Act. 3--4; Sakakino Abst., col. 3, 11. 5- 21, and Figure 1. The Examiner interprets Sakakino' s horizontally movable slider as a button that is actuated along an axial direction extending through the opening and the base portion of the housing to engage a sensing component, as claimed. Final Act. 4. Appellant argues that Sakakino does not teach or suggest actuation of a button along an axial direction extending through an opening and a base portion of a housing but, instead, describes a "horizontally moveable slider" switch that does not move axially as claimed. App. Br. 8. We agree. As asserted by Appellant, the subject matter of independent claim 13 requires the movement (actuation) of the button to be along an axial direction extending through the opening and the base portion. App. Br. 8. The Examiner does not adequately explain how Sakakino's horizontally moveable slider (button) is actuated along an axial direction as required by the claimed invention. Accordingly, we reverse the Examiner's prior art rejection under 35 U.S.C. Â§ 102(a)(l) for the reasons presented by Appellant and given above. 4 Appeal 2018-003121 Application 14/170,051 Obviousness Rejections After review of the respective positions provided by Appellant and the Examiner, we REVERSE the Examiner's rejections of claims 1, 3-9, 11, and 12 under 35 U.S.C. Â§ 103 for the reasons presented by Appellant. Independent claim 13 is directed to a waterproof button assembly comprising a tactile dome positioned between a button and a base portion of a housing. The Examiner finds Sakakino discloses a button assembly using tactile elements but does not disclose the use of a tactile dome as claimed. Final Act. 4--5. The Examiner determined that it would have been obvious to a person of ordinary skill in the art to use any number of known spring elements, such as a tactile dome, to provide the desired spring characteristics in Sakakino's button assembly. Id. at 5. Appellant argues Sakakino never discusses or suggests a tactile dome and that the Examiner provides no motivation to use a dome in Sakakino' s button assembly. App. Br. 12, 14. We agree. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)). 3 We limit our discussion to independent claim 1. 5 Appeal 2018-003121 Application 14/170,051 We agree that Appellant has identified error in the Examiner's determination of obviousness. The Examiner has not pointed to evidence that a tactile dome would have been used in Sakakino 's button assembly nor adequately explained how one skilled in the art would have modified Sakakino 's button assembly by substituting Sakakino' s tactile elements for a tactile dome to arrive at the claimed invention. While the Examiner points to Kikuchi 4 in the Answer as evidence that a tactile dome can be used with a horizontal slider (Ans. 8), we agree with Appellant that this evidence is insufficient because Kikuchi requires downward movement of the slider while sliding and Sakakino' s slider only slides horizontally (laterally). Reply Br. 6; Kikuchi col. 1, 11. 64--66 and Figure 11. That is, the movement of Kikuchi' s slider is different from the movement of Sakakino 's slider. Thus, the Examiner has not provided an adequate technical explanation of how one skilled in the art would have adapted Kikuchi's tactile dome for use in Sakakino's button assembly and still arrive at the claimed invention. Accordingly, we reverse the Examiner's prior art rejections of claims 1, 3-9, 11, and 12 under 35 U.S.C. Â§ 103 for the reasons presented by Appellant and given above. ORDER The Examiner's prior art rejections of claims 1, 3-9, and 11-14 under 35 U.S.C. Â§Â§ 102(a)(l) and 103 are reversed. REVERSED 4 US 8,115,130 B2, issued February 14, 2012. 6