Ex Parte Schneider et al

Patent Trial and Appeal Board

Dec 15, 2017

13765418 (P.T.A.B. Dec. 15, 2017)

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
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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
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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
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