Apple Inc.Download PDFPatent Trials and Appeals BoardJul 30, 20212021003815 (P.T.A.B. Jul. 30, 2021) Copy Citation 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 Claims 22 and 23 have been withdrawn from consideration.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. Appeal 2021-003815 Application 15/648,325 2 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. Appeal 2021-003815 Application 15/648,325 3 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. Appeal 2021-003815 Application 15/648,325 4 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. Appeal 2021-003815 Application 15/648,325 5 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. Appeal 2021-003815 Application 15/648,325 6 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. Appeal 2021-003815 Application 15/648,325 7 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. Appeal 2021-003815 Application 15/648,325 8 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 rejectionsâ€). “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 Appeal 2021-003815 Application 15/648,325 9 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 Appeal 2021-003815 Application 15/648,325 10 [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. Appeal 2021-003815 Application 15/648,325 11 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. Appeal 2021-003815 Application 15/648,325 12 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 Appeal 2021-003815 Application 15/648,325 13 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) Copy with citationCopy as parenthetical citation