Ex Parte Schneider et alDownload PDFPatent Trial and Appeal BoardDec 15, 201713765418 (P.T.A.B. Dec. 15, 2017) 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. 13/765,418 02/12/2013 John H. Schneider 50097/61933 8327 57726 7590 12/19/2017 MILLER, MATTHIAS & HULL LLP ONE NORTH FRANKLIN STREET SUITE 2350 CHICAGO, IL 60606 EXAMINER LU, WILLIAM ART UNIT PAPER NUMBER 2624 NOTIFICATION DATE DELIVERY MODE 12/19/2017 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): bmatthias @ millermatthiashull. com ynunez@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex Parte JOHN H. SCHNEIDER, WILLIAM A. HERRING, DANIEL W. JOHNSTON, and ILLINOIS TOOL WORKS, INC Appeal 2017-009048 Application 13/765,418 Technology Center 2600 Before ERIC B. CHEN, BETH Z. SHAW, and JOSEPH P. LENTIVECH, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1—20, which represent all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Throughout this Decision we have considered the Appeal Brief filed November 11, 2016 (“App. Br.”), Reply Brief filed June 12, 2017 (“Reply Br.”), the Examiner’s Answer mailed April 13, 2017 (“Ans.”), and the Final Rejection mailed March 11, 2016 (“Final Act.”). 2 Appellants identify Illinois Tool Works, Inc. on as the real party in interest (App. Br. 3). Appeal 2017-009048 Application 13/765,418 INVENTION Appellants’ invention is directed to “incorporating one or more logic circuits into a front panel overlay.” Spec. 11. Claim 1 is illustrative of the claims at issue and is reproduced below: 1. A front panel overlay, comprising: a first layer having a first electrical contact; a second layer having a second electrical contact; a third layer; a flex cable extending from one of the first and second layers; and a logic circuit incorporated within one of the first and second layers and in communication with the flex cable, the third layer overlying the logic circuit, the logic circuit being programmed to activate when the first electrical contact completes an electrical circuit with the second electrical contact, the logic circuit configured to receive digital information from an input and an output port of the flex cable and locally perform at least one operation configured to output digital information to the third layer. REJECTIONS The Examiner rejected claims 1, 4—7, and 9 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Komaki (US 4, 640,994) and Amiri (US 2004/0090417). Final Act. 2-5. The Examiner rejected claims 2, 3, 8, and 10-20 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Komaki, Amiri, and Davey (US 5,636,270). Final Act. 5-13. ANALYSIS Appellants argue the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Komaki and Amiri. In particular, Appellants argue Amiri does not teach the flex 2 Appeal 2017-009048 Application 13/765,418 cable as claimed. App. Br. 14—16; Reply Br. 3^4. We agree with Appellants. The Examiner finds Komaki does not teach explicitly the claimed flex cable, but that Amiri teaches the claimed flex cable. Final Act. 3; Ans. 14—15 (citing Amiri, Abstract, || 199-200, 253, 599-609, 676—683, claim 17, section J.3 started at | 655). The Examiner explains that Amiri teaches that an output connector, which may be made of “flex,” connects to Amiri’s mobile communicating computers (MCC). Ans. 14. Thus, the Examiner concludes, the cable provides information of digital input from an E-board to the MCC. Ans. 14 (emphasis added). We agree with Appellants that the cited portions of Amiri, however, do not teach that information is necessarily transmitted from the MCC to the ASIC chips of the E-board via the flex cable. Reply Br. 5—6 (emphasis added). We also agree with Appellants that the cited portions of Amiri do not teach that the on-screen E-board turns off when not in use, as asserted by the Examiner. Id. at 6. Therefore, on this record, the Examiner has not shown sufficiently how the combination of Komaki and Amiri teaches “a flex cable extending from one of the first and second layers,” and “a logic circuit incorporated within one of the first and second layers and in communication with the flex cable, . . . the logic circuit configured to receive digital information from an input and an output port of the flex cable,” as recited in claim 1. Thus, we persuaded of error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). Therefore, we do sustain the § 103 rejection of claim 1, or dependent claims 4—7 and 9, which depend from claim 1. Further, we also sustain the Examiner’s rejection of claims 2, 3, 8, and 3 Appeal 2017-009048 Application 13/765,418 10—20 because the Examiner does not find that the additional references cure the deficiencies discussed above. Because these issues are dispositive, we do not reach Appellants’ other prior art arguments. DECISION The decision of the Examiner to reject claims 1—20 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation