Apple Inc.

Patent Trials and Appeals Board

Jul 30, 2021

2021003815 (P.T.A.B. Jul. 30, 2021)

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.
15/648,325 07/12/2017 Erik L. Wang P6816USC1 7520
65015 7590 07/30/2021
Treyz Law Group
6501 E. Greenway Pkwy
#103-621
Scottsdale, AZ 85254
EXAMINER
WU, JERRY
ART UNIT PAPER NUMBER
2841
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
patents@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERIK L. WANG, PHILLIP M. HOBSON,
KENNETH A. JENKS, and ADAM D. MITTLEMAN
____________________

Appeal 2021-003815
Application 15/648,325
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
PHILLIP A. BENNETT, Administrative Patent Judges.

MacDONALD, 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 1–15, 21, and 24–27. Appeal Br. 2.
Claims 16–20 have been cancelled. Appeal Br. 20. Claims 22 and 23 have
been withdrawn from consideration. Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse, and we enter a new ground of rejection.

1 Appellant identifies the real party in interest is Apple, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1–3, 11–13, 21, and 24 are illustrative of the claimed subject
matter (emphasis, formatting, and bracketed material added):
1. An electronic device having front and rear surfaces, comprising:
[A.] a housing having a glass member that forms at least part
of the rear surface;
[B.] a touch-sensitive display having a cover layer that forms
at least part of the front surface; and
[C.] a frame that attaches the display to the housing, wherein
the frame includes a plastic portion molded over a metal
portion.
2. The electronic device defined in claim 1 wherein the touch-
sensitive display comprises a capacitive touch sensor.
3. The electronic device defined in claim 2 wherein the capacitive
touch sensor is interposed between the cover layer and the
glass member.
11. An electronic device, comprising:
[A.] a housing having a glass portion that forms an exterior
surface of the electronic device;
[B.] a display mounted in the housing, wherein the display
comprises a capacitive touch sensor; and
[C.] a frame that supports the display, wherein the frame
comprises a plastic member and a metal member.
12. The electronic device defined in claim 11 wherein the display
comprises a glass cover layer.
13. The electronic device defined in claim 12 wherein the
capacitive touch sensor is interposed between the glass cover
layer and the glass portion of the housing.
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21. An electronic device having first and second opposing outer
surfaces, comprising:
[A.] a glass member that forms at least a portion of the first
outer surface;
[B.] a touch-sensitive display located behind the glass
member; and
[C.] a frame that supports the touch-sensitive display,
wherein the frame comprises a conductive portion and a
non-conductive portion and wherein the frame is in
contact with the glass member.
24. The electronic device defined in claim 21 further comprising
a gasket located between the glass member and the frame.
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Grosfeld US 2003/0184514 A1 Oct. 2, 2003
Kim US 2004/0008512 A1 Jan. 15, 2004
Sasaki US 2005/0143029 A1 June 30, 2005
Varaprasad US 2006/0050356 A1 Mar. 9, 2006
Chen US 2008/0007959 A1 Jan. 10, 2008
Lowles US 2008/0150901 A1 June 26, 2008
Han US 2008/0210843 A1 Sep. 4, 2008

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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This panel cites the following additional references:
Name Reference Date
Kwong US 2014/0139978 A1 May 22, 2014
Kwong US 2014/0192467 A1 July 10, 2014
Kwong US 2014/0193606 A1 July 10, 2014

REJECTIONS
A.
The Examiner rejects claims 1–6, 8, and 11–14, under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Grosfeld,
Varaprasad, Chen, and Lowles. Final Act. 2–8.
We select claim 1 as the representative claim for this rejection. The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Therefore, except for our ultimate decision, we do not address the merits of
the § 103 rejection of claims 2–6, 8, and 11–14 further herein.
B.
The Examiner rejects claims 21, 24, and 25, under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Grosfeld, Chen, and Lowles.
Final Act. 9–11.
We select claim 21 as the representative claim for this rejection. The
contentions discussed herein as to claim 21 are dispositive as to this
rejection. Therefore, except for our ultimate decision, we do not address the
merits of the § 103 rejection of claims 24 and 25 further herein.
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C.
The Examiner rejects claims 7, 9, 10, 15, 26, and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Grosfeld,
Varaprasad, Chen, and Lowles alone or in various further combinations with
Han, Sasaki, and Kim. Final Act. 11–15.
The contentions discussed herein as to claim 1 are dispositive as to
these rejections. Therefore, except for our ultimate decision, we do not
address the merits of the § 103 rejections of claims 7, 9, 10, 15, 26, and 27
further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A. Claims 1 and 21
Claim 1 at above part A. requires (emphasis added):3
[A.] a housing having a glass member that forms at least part
of the rear surface.
Claim 21 at above part C. requires (emphasis added):
[C.] wherein the frame is in contact with the glass member.
B.
As to claim 1, the Examiner finds:
Varaprasad teaches: a housing having a glass member that
forms at least part of the rear surface (abstract; at least fig 19-21,

3 Claim 11 at above part A. requires (emphasis added):
[A.] a housing having a glass portion that forms an exterior surface
of the electronic device.
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fig 23-25, fig 30). It would have been obvious to one of ordinary
skill in the art at the time of the invention was made to include
this feature (changing material of the housing) and modify to
previous discussed structure so as to further improve the looking
of the modified structure and/or allow the user to see through the
device; and/or protect the housing.
Final Act. 3–4.4
As to claim 21, the Examiner finds:
Lowles teaches: a glass member that forms at least a
portion of the first outer surface; a touch-sensitive display
located behind the glass member (abstract; paragraph [001]-
[009]; see also fig 4; with capacitive touch sensor). It would have
been obvious to one of ordinary skill in the art at the time of the
invention was made to include this feature (replace Grosfeld’s
display module with Lowles’s display module) and modify to
previous discussed structure so as to have (Grosfeld in view of
Chen2, Lowles): a glass member (Lowles) that forms at least a
portion of the first outer surface; a touch-sensitive display
located behind the glass member (modified by Lowles); wherein
the frame comprises a conductive portion and a non- conductive
portion (modified by Chens); and wherein the frame is in contact
with the glass member (Grosfeld’s frame contact the top surface
of the display structure which is modified by Lowles with glass
on the outer surface).
Final Act. 10.
C.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Varaprasad is directed toward a mirror assembly. The
mirror assembly includes front and rear glass layers with an
electrochromic layer between the two layers. . . . However, the
glass layers do not form a housing, and do not even house the

4 This finding is repeated for claim 11. Final Act. 5.
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illumination source 1244, as the illumination source 1244 is
located outside Varaprasad’s glass layers (see at least Figures 19-
21). The entire mirror assembly is contained in casing 15 (see at
least FIG. 2), which acts as a housing for the mirror assembly.
The presence of casing 15 enclosing the mirror assembly shows
that rear glass 1225 is not intended to be used as a housing
member. Varaprasad fails to disclose that any portion of casing
15 is formed from glass.
. . .
Varaprasad is directed toward attaching protective cover
1225a to IRT stack 1228 “via an adhesive layer 1225a,” (see
paragraph 133). This planar adhesive layer allows Varaprasad’s
protective cover 1225 to be coupled to the other planar glass
substrates 1222 and 1224 and intervening layers including IRT
stack 1228 and ITO 1230, but because Grosfeld’s housing 13 is
formed with a complex geometry, there is no similar planar area
to include Varaprasad’s adhesive layer 1225a. Therefore,
Grosfeld’s electronic device could not be modified to have
Varaprasad’s protective cover 1225 as a rear surface.
Appeal Br. 7–8.5
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103(a).
Grosfeld does not disclose that any portion of the housing
is in contact with the display. In every figure, the display is
separated from the housing by the gasket 12 or a gap maintained
by the gasket 12 “to protect the display from an impact and from
water damage,” (see paragraph 7). Therefore, even if the display
of Grosfeld had a glass member, the glass member would not be
in contact with the frame, as the gasket would be interposed
between the frame and the glass member.
Appeal Br. 15 (emphasis added).

5 This argument is repeated for claim 11. Appeal Br. 11–13.
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D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
E.
We agree with Appellant that the Examiner’s articulated rational
does not reasonably support an obviousness conclusion for (a) “a housing
having a glass member that forms at least part of the rear surface” (part A.
of claim 1) and (b) “wherein the frame is in contact with the glass member”
(part C. of claim 21). We determine that the Examiner’s reliance on
(1) Varaprasad to teach “a housing having a glass member that forms at least
part of the rear surface” (Final Act. 3) and (2) Grosfeld to show a “frame is
in contact with the glass member” are each insufficient to show it would
have been obvious to provide (a) and (b) in the manner claimed. Id. at 9.
We conclude, consistent with Appellant’s argument, that there is
currently insufficient articulated reasoning to support the Examiner’s finding
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that the references teach, suggest, or otherwise render obvious (a) part A., as
required by claim 1 or (b) part C. as required by claim 21.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claims 1 and 21 would have
been obvious to one of ordinary skill in the art at the time of Appellant’s
invention.
F. New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1–15, 26, and 27 under 35 U.S.C. § 112(a), as failing to comply with the
written description requirement.
On July 12, 2017, Appellant filed the present application as a
continuation of U.S. patent application6 13/971,684, filed August 30, 2013,
as a divisional of U.S. patent application7 12/135,139, filed June 6, 2008,
which claims benefit of U.S. provisional patent application 61/044,445 filed
April 11, 2008.
As filed on July 12, 2017, the application contained newly presented
claims 1 and 11 (now on appeal), which require-in-part:
1. An electronic device having front and rear surfaces, comprising:
[A.] a housing having a glass member that forms at least part
of the rear surface;
[B.] a touch-sensitive display having a cover layer that forms
at least part of the front surface.
11. An electronic device, comprising:
[A.] a housing having a glass portion that forms an exterior
surface of the electronic device;

6 Now U.S. Patent US 9,730,338 B1.
7 Now U.S. Patent US 8,537,543 B1
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[B.] a display mounted in the housing, wherein the display
comprises a capacitive touch sensor.
Appellant states that the glass member/portion of independent claims
1 and 11 is supported in the Specification by paragraph 55 and Figures 1, 3,
6, 10, 18, 21, and 30). Appeal Br. 3 (two occurrences). We disagree. At
best, paragraph 55 supports only a general limitation that the housing “may
be formed of any suitable materials including, plastic, glass, ceramics, metal,
or other suitable materials, or a combination of these materials.” Spec. ¶ 55.
We find no support in the cited paragraph 55 or Figures 1, 3, 6, 10, 18, 21,
and 30 (or elsewhere in Appellant’s disclosure) for the glass member/portion
structural relationships required by independent claims 1 and 11 and their
dependent claims. We note that the “glass member” of independent claim
21 avoids this problem by being supported by the cover glass (62) at
paragraph 115 referenced by Appellant. Appeal Br. 4. We further note the
cover glass (62) provides support for the “glass member” of claim 21, but
not for the “glass member” of claim 1 because claim 1 separately claims said
cover layer, and although cover glass placement is quite flexible8, we find no
support in the Specification for two cover glasses (rear and front surface).
The glass member/portion language of independent claims 1 and 11
does not find written descriptive support in the Specification as filed on July

8 Spec. ¶ 59:
In the example of FIG. 1, display screen 16 is shown as being
mounted on the front face of handheld electronic device 10, but
display screen 16 may, if desired, be mounted on the rear face of
handheld electronic device 10, on a side of device 10, on a flip-
up portion of device 10 that is attached to a main body portion of
device 10 by a hinge (for example), or using any other suitable
mounting arrangement.
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12, 2017 (or in any prior application from which continuity is claimed).
Although Appellant identifies portions of the Specification to support this
claim language (Br. 3), our review finds no mention of these limitations in
the cited portions of the Specification.9 See Ariad Pharmaceuticals, Inc. v.
Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (“[A] description
that merely renders the invention obvious does not satisfy the [written
description] requirement.)” Dependent claims 2–10, 12–15, 26, and 27
share the written description problems of claims 1 and 11 from which they
depend.
Lastly, we note that even if we were convinced that claims 1–15, 26,
and 27 themselves, standing alone, provided sufficient written description
support, such support would not entitle the claims to a priority date earlier
than these claims’ July 12, 2017 filing date. In that situation, a series of
2014 anticipatory Kwong references (assigned to the same assignee) with
front and rear cover glasses are deemed relevant.
Kwong ’978 at paragraphs 2, 29, 30, 32, 38, and 67.
Kwong ’467 at paragraphs 23, 24, 32, and 50.
Kwong ’606 at paragraphs 2, 23, 24, and 32.
CONCLUSION
Appellant has demonstrated the Examiner erred in rejecting claims 1–
15, 21, and 24–27 as being unpatentable under 35 U.S.C. § 103(a).

9 We note that withdrawn claims 22 and 23 (not on appeal) share the written
description problem of claims 1 and 11.
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The Examiner’s rejections of claims 1–15, 21, and 24–27 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
We newly reject claims 1–15, 26, and 27 under 35 U.S.C. § 112(a), as
failing to comply with the written description requirement.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–6, 8,
11–14
103(a) Grosfeld,
Varaprasad, Chen,
Lowles
1–6, 8,
11–14

21, 24, 25 103(a) Grosfeld, Chen,
Lowles
21, 24, 25
7, 26 103(a) Grosfeld,
Varaprasad, Chen,
Lowles
7, 26
27 103(a) Grosfeld,
Varaprasad, Chen,
Lowles, Han
27
9, 10 103(a) Grosfeld,
Varaprasad, Chen,
Lowles, Sasaki
9, 10
15 103(a) Grosfeld,
Varaprasad, Chen,
Lowles, Kim
15
1–15, 26,
27
112(a) Written Description 1–15, 26,
27
Overall
Outcome
1–15, 21,
24–27
1–15, 26,
27

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. 41.50(b)