James McGuire et al.

Patent Trials and Appeals Board

Feb 25, 2022

2021001682 (P.T.A.B. Feb. 25, 2022)

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. 13/166,745 06/22/2011 James McGuire 26613-3000USU1 6558 128128 7590 02/25/2022 Dentons Durham Jones Pinegar 3301 N. Thanksgiving Way, Suite 400 Lehi, UT 84043 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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): djp.ipmail@dentons.com stacia.boren@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES MCGUIRE, ROBERT G. PEDERSEN II, DEREK M. SMITH, JOHN W. MELVILLE, and BRIAN S. PACKER Appeal 2021-001682 Application 13/166,745 Technology Center 1700 Before JAMES C. HOUSEL, MERRELL C. CASHION, JR., and JANE E. INGLESE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 23-36 and 47-78. See Final Office Action (“Final Act.”) dated January 8, 2020, 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies ZAGG Intellectual Property Holding Co., Inc. as the real party in interest. Appeal Brief (“Appeal Br.”) filed June 9, 2020, 1. Appeal 2021-001682 Application 13/166,745 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to an installation assembly for dry application of a protective film to surfaces of electronic devices. Specification (“Spec.”) filed June 22, 2011, ¶¶ 1, 12. Claim 23, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 23. An assembly for installing a protective layer on a surface to be protected, comprising: a polymer layer comprising a substantially planar member including an adhesion surface coated with a polymer layer adhesive material and an opposite exterior surface not coated with an adhesive material, the polymer layer having a shape of a display of an electronic device, a material of the polymer layer enabling viewing of information or images shown by the display; a release liner including an exterior surface and an interior surface, the interior surface of the release liner secured to the polymer layer adhesive material, an entire outer periphery of the release liner extending laterally beyond an outer periphery of the polymer layer; an application liner including an adhesion surface and an exterior surface, an entire outer periphery of the application liner extending laterally beyond an outer periphery of the polymer layer, coextensive with the entire outer periphery of the release liner, an application liner adhesive material removably securing the adhesion surface of the application liner over the exterior surface of the polymer layer and to portions of the interior surface of the release liner located laterally beyond the outer periphery of the polymer layer, the polymer layer and the and the release liner being visible through the application liner. Appeal 2021-001682 Application 13/166,745 3 Independent claim 47 recites an installation assembly similar to that of claim 23 and further including a protective liner between the polymer layer and the application liner. Independent claim 61 recites an installation assembly similar to that of claim 23, wherein a protective layer is broadly recited instead of a polymer layer. REFERENCE(S) The Examiner relies on the following prior art to reject the claims: Name Reference Date Heinecke et al. US 5,520,629 May 28, 1996 Kobe et al. US 5,888,335 Mar. 30, 1999 Hagen et al. US 5,951,054 Sept. 14, 1999 Marcussen et al. US 6,700,033 B1 Mar. 2, 2004 Thomas et al. US 2004/0246386 A1 Dec. 9, 2004 Crum US 2005/0087977 A1 Apr. 28, 2005 Buehler US 2005/0116334 A1 June 2, 2005 Anderson et al. US 2006/0186001 A1 Aug. 24, 2006 Brumwell US 2006/0262405 A1 Nov. 23, 2006 McGuire, Jr. US 2009/0186198 A1 July 23, 2009 Treleaven et al. WO 01/52223 A2 July 19, 2001 Edward M. Petrie, Selecting an Adhesive-Like Selecting a Marriage Partner, SPECIALCHEM, http://www.specialchem4adhesives.com/home/editoria1.aspx?id=353 (2003), accessed Dec. 4, 2013 (“Petrie”). Eclometer 142 ISO 8502-3 Dust Tape Test Kit Instruction Manual, Eclometer Instruments Ltd., www.TQC.eu (2006) (“Eclometer”). REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections: Appeal 2021-001682 Application 13/166,745 4 1. Claims 23-36 and 47-78 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement;2 2. Claims 23-25, 29-31, 35, 36, 47, 50, 53, 54, 56, 60-69, 74, 75, and 78 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen; 3. Claims 26 and 48 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Hagen; 4. Claims 27, 28, 49, 51, and 55 under 35 U.S.C. §103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Crum; 5. Claims 29-31, 53, 54, and 56 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Petrie; 6. Claims 32 and 57 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Buehler; 7. Claims 33 and 58 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Heinecke and Treleaven;3 8. Claims 34 and 59 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Heinecke, Treleaven, and Petrie; 2 The Examiner withdrew, under this rejection, the issue regarding the limitation, “having a shape of a display of an electronic device.” Ans. 33. 3 The Examiner refers to this reference using the last name of the second- named inventor. Ans. 27-28. We adopt the established convention of referring to this reference by the last name of the first-named inventor. Appeal 2021-001682 Application 13/166,745 5 9. Claims 36, 60, and 73 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Eclometer; 10. Claim 52 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Crum and Hagen; and 11. Claims 70-72 and 76 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of McGuire, Jr. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering Appellant’s arguments and the evidence of record, we are persuaded of reversible error in the stated rejections for the reasons set forth in the Appeal and Reply Briefs and below. Rejection 1: Written Description The Examiner rejects claims 23-36 and 47-78 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 4. In particular, the Examiner finds that there is no support in the Specification for “the release liner being visible through the application liner” recitation of claims 23 and 47, “the polymer layer and the release liner being visible through the protective liner” recitation of claim Appeal 2021-001682 Application 13/166,745 6 47, “the protective liner . . . being visible through the application liner” recitation of claim 47, and “the protective layer . . . being visible through the application liner” recitation of claim 61. Id. The Examiner finds that Figures 6, 13, and 14, likewise fail to show a release liner, a polymer layer (protective layer), and a display surface that are visible through an application liner. Id. at 34. To the contrary, Appellant argues that Figures 6, 13, and 14 show a release liner, a polymer layer (protective layer), and a display surface that are visible through an application liner. Appeal Br. 6; Reply Br. 2. Appellant asserts that Figure 6 shows “the polymer layer/protective layer 30 and the release liner 20 are visible through the application liner 50.” Reply Br. 2. Appellant further asserts that “Figure 13 shows the release liner 20 as being visible through the application liner 50” and “Figure 14 shows a polymer layer/protective layer 30 and a display surface 110 of an electronic device 100 as being visible through the application liner [50].” Id. at 3. Appellant’s arguments are persuasive of reversible error. The test for sufficiency of a written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Possession means “possession as shown in the disclosure” and “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 Appeal 2021-001682 Application 13/166,745 7 (Fed. Cir. 2000). Nonetheless, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. (“Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.”); Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). Here, the Examiner appears to take the position that the original disclosure is devoid of any disclosure indicating that Appellant was in possession of a release liner, a polymer layer (protective layer), and a display surface that are visible through an application liner. In other words, in order for the release liner, the polymer layer/protective layer, and the display surface to be visible through the application liner, each of these layers and liners must have some transparency. With regard to Figures 6, 13, and 14, both the Examiner and Appellant take opposing positions regarding whether these figures show this transparency or not. However, neither the Examiner nor Appellant discusses in any detail what these figures actually show and what the Specification teaches regarding these figures and the structures they show. Figure 6, reproduced below, shows an embodiment of an installation assembly from which the release liner has been partially removed. Appeal 2021-001682 Application 13/166,745 8 Fig. 6, showing an installation assembly Specifically, Figure 6 shows installation assembly 10 from which release liner 20 has been partially peeled away, a polymer layer 30 adjacent the release liner (whose profile is shown in dashed lines), protective liner 40 adjacent the polymer layer (whose profile also appears to be shown in dashed lines), and application liner 50. Spec. ¶¶ 54, 55, 70. In addition, Figure 6 shows indicia 47 of protective liner 40 which may be visible from exterior surface 42 of protective liner 40. Id. ¶ 70; see also Fig. 5A (showing exterior surface 42 adjacent application liner 50). Indicia 47 may include one or more alignment features 48, one or more instructional features 49, or any other features that may facilitate or enable proper application of polymer layer 30 to display surface 110 of electronic device 100. Id. ¶ 70; see also Fig. 14 (showing application of polymer layer 30 to electronic device 100). Further, application liner 50 is configured to facilitate alignment of polymer layer 30 over the electronic device’s surface and “may comprise a relatively thin, flexible film of somewhat transparent material.” Id. ¶ 64. Also, the Appeal 2021-001682 Application 13/166,745 9 protective film covering the electronic device’s surface is transparent which, in part, enables distortion-free viewing. Id. ¶ 93. Taking both Figures 6, 13, and 14 as well as the above Specification disclosures, an ordinary artisan would readily understand that application liner 50, being “somewhat transparent,” would allow one to at least view protective liner 40 and indicia 47 which facilitate and enable alignment and proper application of polymer layer 30 to a display surface. Moreover, the ordinary artisan would readily understand that polymer layer/protective layer are also transparent in order to enable distortion-free viewing of a device display, and would also allow one to view release liner 20 prior to its removal. However, it is not readily apparent that release liner is transparent. Nonetheless, the claims do not require the release liner be transparent, as they do not recite that the display surface or any other structure is visible therethrough. In addition, release liner 20 need not be transparent because it is removed prior to alignment and application of polymer layer 30 to the display surface. As such, the Examiner fails to establish that the inventors were not in possession of the claimed invention. To the contrary, we find the original disclosure reasonably conveys to those skilled in the art that the inventors had possession of the claimed subject matter in question as of the filing date. Accordingly, we do not sustain the Examiner’s written description rejection. Rejection 2: Obviousness over Kobe, Anderson, Thomas, Brumwell, and Marcussen The Examiner rejects claims 23-25, 29-31, 35, 36, 47, 50, 53, 54, 56, 60-69, 74, 75, and 78 under 35 U.S.C. § 103(a) as unpatentable over Kobe Appeal 2021-001682 Application 13/166,745 10 in view of Anderson, Thomas, Brumwell, and Marcussen. Ans. 5-19. In relevant part, the Examiner finds that Kobe discloses a fastener system useful as electronic display screen protective coverings, but fails to teach, among other things, a transparent application liner, and application and release liners on opposing sides of the polymer layer/protective layer having outer peripheries extending laterally beyond an outer periphery of the polymer layer/protective layer such that an adhesive material on the application liner removably secures the application and release liners together. Id. The Examiner finds that Brumwell teaches a protective cover system comprising a plurality of transparent layers removably adhered to each other such that, when applied to a surface such as a display screen, an outer layer can be peeled away when damaged or less transparent without affecting the underlying layers. Id. at 10. The Examiner finds that the outer layer reads on the application liner and, therefore, concludes that it would have been obvious to provide that Kobe’s layers are transparent and removably secured together to facilitate removal of an outer layer when it becomes damaged without affecting the underlying layers. Id. The Examiner next finds that Marcussen teaches a layered product comprising top layer 1 and bottom layer 2 which are sealed together in portions which extend laterally beyond an outer periphery of cover layer 4 such that the product is completely isolated from the surroundings. Ans. 12. The Examiner further finds that Marcussen teaches the concept that application and release liners extending laterally beyond an outer edge of the polymer layer can be used in order to install the polymer layer on a surface to be protected without touching the polymer adhesive material. Id. at 12, 39. Therefore, the Examiner concludes that it would have been obvious to Appeal 2021-001682 Application 13/166,745 11 use a releasable application liner and release liner that extend laterally beyond an outer edge of Kobe’s polymer layer in Kobe, as modified in view of Anderson, Thomas, and Brumwell, in order to install the polymer layer on a surface to be protected without touching the polymer adhesive material. Id. at 13, 39. The Examiner notes that “[t]his is the same reason the present invention uses an application liner and release liner extending laterally beyond an outer edge of the polymer layer, i.e., by grasping these extended edges, one minimizes or eliminates contact (i.e. no touch) with the polymer layer.” Id. at 39. Appellant argues, inter alia, that Marcussen is non-analogous prior art, as this reference fails to disclose an assembly for securing transparent protective layers to electronic device displays. Appeal Br. 10-11. Appellant contends that Marcussen relates to a layered package for a wound dressing, such as a big bandage. Appeal Br. 10, 13. Appellant urges that an inventor trying to solve a problem relating to the application of protective layers to electronic display surfaces would not have considered Marcussen’s teachings from the wound dressing art. Id. at 13. Appellant’s arguments are persuasive of reversible error. A reference is analogous art if it is either in the field of the applicant’s endeavor, or is reasonably pertinent to the particular problem with which the inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). While the disclosure of the references is the primary focus, the factfinder must consider each reference’s disclosure in view of the “the reality of the circumstances,” Bigio, 381 F.3d at 1326 (quoting In re Oetiker, 977 F.2d Appeal 2021-001682 Application 13/166,745 12 1443, 1447 (Fed. Cir. 1992)), and “weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor,” id. This rule reflects the “reality of the circumstances” that “an inventor could not possibly be aware of every teaching in every art.” Id. Indeed, “[t]he pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.” Sci. Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (first citing Oetiker, 977 F.2d at 1447; then citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). In this case, the Examiner does not find that Marcussen and Appellant are in the same field of endeavor. See Ans. 39. Instead, the Examiner finds that Marcussen is reasonably pertinent to the particular problem with which the inventor was concerned-no-touch application of a polymer layer to a surface. Id. However, in doing so, we note that Marcussen’s teaching is incongruent with Kobe’s structure, as modified in view of Brumwell. Both Kobe and Brumwell teach multi-layer structures that are removably secured to a structure, such as an electronic device display, and modification of Kobe in view of Brumwell provides that Kobe’s layers, including the outer layer, are transparent. Unlike both Kobe and Brumwell, Marcussen’s top layer is not meant to be part of the protective covering, but is designed to be removed upon application of the cover layer to a surface. As such, Marcussen fails to teach that the top layer is transparent. Accordingly, an ordinary artisan looking to Marcussen, at best, would have provided a top layer and a release layer with laterally extending peripheries to Kobe’s Appeal 2021-001682 Application 13/166,745 13 multi-layer fastener structure, as modified in view of Brumwell, to produce a final product package for no-touch application, rather than modify the Kobe/Brumwell outermost transparent protective layer to be the top layer in the resulting package. Doing the latter would defeat Marcussen’s purpose of no-touch application. We, therefore, do not sustain the Examiner’s obviousness rejection of claims 23-25, 29-31, 35, 36, 47, 50, 53, 54, 56, 60-69, 74, 75, and 78. Rejections 3-11: Obviousness over Kobe, Anderson, Thomas, Brumwell, and Marcussen, and further in view of various tertiary references The Examiner rejects claims 26-34, 36, 48, 49, 51-60, 70-73, and 76 under 35 U.S.C. § 103(a) as unpatentable over Kobe in view of Anderson, Thomas, Brumwell, and Marcussen, and further in view of Hagen, Crum, Petrie, Buehler, Heinecke, Treleaven, Eclometer, and/or McGuire, Jr. Ans. 20-33. The Examiner does not rely on any of the additional tertiary prior art to remedy the deficiency in the combination of Kobe, Anderson, Thomas, Brumwell, and Marcussen discussed above. Accordingly, we do not sustain these obviousness rejections for the same reasons given above. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims 23-36 and 47-78 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, and § 103(a) as unpatentable over the combination of Kobe, Anderson, Thomas, Brumwell, Marcussen, alone or further in view of Hagen, Crum, Petrie, Buehler, Heinecke, Treleaven, Eclometer, and/or McGuire, Jr., is reversed. Appeal 2021-001682 Application 13/166,745 14 DECISION SUMMARY The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23-36, 47-78 112, 1st ¶ Written Description 23-36, 47-78 23-25, 29- 31, 35, 36, 47, 50, 53, 54, 56, 60- 69, 74, 75, 78 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen 23-25, 29- 31, 35, 36, 47, 50, 53, 54, 56, 60- 69, 74, 75, 78 26, 48 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Hagen 26, 48 27, 28, 49, 51, 55 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Crum 27, 28, 49, 51, 55 29-31, 53, 54, 56 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Petrie 29-31, 53, 54, 56 32, 57 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Buehler 32, 57 33, 58 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Heinecke, Treleaven 33, 58 Appeal 2021-001682 Application 13/166,745 15 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34, 59 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Heinecke, Treleaven, Petrie 34, 59 36, 60, 73 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Eclometer 36, 60, 73 52 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, Crum, Hagen 52 70-72, 76 103(a) Kobe, Anderson, Thomas, Brumwell, Marcussen, McGuire, Jr. 70-72, 76 Overall Outcome 23-36, 47-78 REVERSED