Ex Parte Teplitxky et al

Patent Trial and Appeal Board

Dec 17, 2018

14170051 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/170,051 01/31/2014 Pierre M. Teplitxky
145730 7590 12/19/2018
Dorsey & Whitney LLP/ Apple Inc.
111 South Main St
Salt Lake City, UT 84111
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P21462US1 3461
EXAMINER
FIGUEROA, FELIX 0
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
DWAppleteam@dorsey.com
apip.docket@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE M. TEPLITXKY, COLIN M. ELY,
FLETCHERR. ROTHKOPF,
ANNA-KATRINA SHEDLETSKY,
and SAMUEL B. WEISS
Appeal2018-003121
Application 14/170,051
Technology Center 2800
Before CATHERINE Q. TIMM, DONNA M. PRAISS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1, 3-9, and 11-14. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Apple, Inc., also identified as the real party in
interest. App. Br. 3.
Appeal 2018-003121
Application 14/170,051
The invention is generally directed to a waterproof button assembly.
Claims 1 and 13 illustrate the subject matter on appeal and are reproduced
below:
1. A waterproof button assembly comprising:
a housing forming exterior and interior surfaces of an electronic
device and defining an opening and a base portion at a bottom of the
opemng;
a button positioned at least partially within the opening;
a tactile dome positioned between the button and the base portion;
a set of engagement components positioned around a periphery of the
button, each component of the set of engagement components engaging
apertures positioned on a sidewall of the opening within the housing thereby
retaining the button within the housing; and
a sensing component positioned on the housing at the interior surface
opposite the button and configured to detect a deformation of the base
portion due to an actuation of the button along a direction substantially
perpendicular to the exterior surface.
13. An electronic device comprising:
a waterproof button assembly comprising:
a housing coupled with a casing and defining an opening and a
base portion forming a portion of the opening;
a button positioned at least partially within the housing at the
openmg;
a tactile feedback structure coupled to the button;
a set of engagement components positioned around the button
for retaining the button within the housing, each component of the set
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Appeal 2018-003121
Application 14/170,051
of engagement components engaging apertures positioned on a
sidewall of the opening within the housing; and
a sensing component positioned within an interior volume
defined by the casing and the housing, wherein:
the sensing component is configured to identify a
localized deflection of the base portion due to an actuation of
the button along an axial direction extending through the
opening and the base portion; and
the base portion of the housing separates the button from
the interior volume.
Appellant (see generally Appeal Brief) requests review of the
following rejections from the Examiner's Final Office Action:
I. Claims 13 and 14 rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Sakakino (US 4,324,956, issued April 13, 1982).
II. Claims 1, 3, 8, 9, 11, and 12 rejected under 35 U.S.C. § 103 as
unpatentable over Sakakino.
III. Claims 4--7 rejected under 35 U.S.C. § 103 as unpatentable over
Sakakino and Yang (US 8,248,815 B2, issued August 21, 2012).
OPINION
Anticipation Rejection
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's rejection of claims 13 and 14
under 35 U.S.C. § 102(a)(l) for the reasons presented by Appellant.
Independent claim 13 2 is directed to an electronic device having a
waterproof button assembly. Spec., 7. The water button assembly
2 We limit our discussion to independent claim 13.
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Appeal 2018-003121
Application 14/170,051
comprises a button and a housing defined by an opening and a base portion
forming a portion of the opening, where the button is positioned at least
partially within the housing via the opening and is actuated along an axial
direction extending through the opening and the base portion of the housing
to engage a sensing component. Id. ff 7, 42.
The Examiner finds Sakakino discloses a device having a button
assembly that anticipates the subject matter of claim 13, where the button is
a horizontally movable slider for electrical connection or disconnection of
the contacts in the device. See Final Act. 3--4; Sakakino Abst., col. 3, 11. 5-
21, and Figure 1. The Examiner interprets Sakakino' s horizontally movable
slider as a button that is actuated along an axial direction extending through
the opening and the base portion of the housing to engage a sensing
component, as claimed. Final Act. 4.
Appellant argues that Sakakino does not teach or suggest actuation of
a button along an axial direction extending through an opening and a base
portion of a housing but, instead, describes a "horizontally moveable slider"
switch that does not move axially as claimed. App. Br. 8.
We agree. As asserted by Appellant, the subject matter of
independent claim 13 requires the movement (actuation) of the button to be
along an axial direction extending through the opening and the base portion.
App. Br. 8. The Examiner does not adequately explain how Sakakino's
horizontally moveable slider (button) is actuated along an axial direction as
required by the claimed invention.
Accordingly, we reverse the Examiner's prior art rejection under
35 U.S.C. § 102(a)(l) for the reasons presented by Appellant and given
above.
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Appeal 2018-003121
Application 14/170,051
Obviousness Rejections
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's rejections of claims 1, 3-9, 11, and
12 under 35 U.S.C. § 103 for the reasons presented by Appellant.
Independent claim 13 is directed to a waterproof button assembly
comprising a tactile dome positioned between a button and a base portion of
a housing.
The Examiner finds Sakakino discloses a button assembly using
tactile elements but does not disclose the use of a tactile dome as claimed.
Final Act. 4--5. The Examiner determined that it would have been obvious
to a person of ordinary skill in the art to use any number of known spring
elements, such as a tactile dome, to provide the desired spring characteristics
in Sakakino's button assembly. Id. at 5.
Appellant argues Sakakino never discusses or suggests a tactile dome
and that the Examiner provides no motivation to use a dome in Sakakino' s
button assembly. App. Br. 12, 14.
We agree.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
3 We limit our discussion to independent claim 1.
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Application 14/170,051
We agree that Appellant has identified error in the Examiner's
determination of obviousness. The Examiner has not pointed to evidence
that a tactile dome would have been used in Sakakino 's button assembly nor
adequately explained how one skilled in the art would have modified
Sakakino 's button assembly by substituting Sakakino' s tactile elements for a
tactile dome to arrive at the claimed invention.
While the Examiner points to Kikuchi 4 in the Answer as evidence that
a tactile dome can be used with a horizontal slider (Ans. 8), we agree with
Appellant that this evidence is insufficient because Kikuchi requires
downward movement of the slider while sliding and Sakakino' s slider only
slides horizontally (laterally). Reply Br. 6; Kikuchi col. 1, 11. 64--66 and
Figure 11. That is, the movement of Kikuchi' s slider is different from the
movement of Sakakino 's slider. Thus, the Examiner has not provided an
adequate technical explanation of how one skilled in the art would have
adapted Kikuchi's tactile dome for use in Sakakino's button assembly and
still arrive at the claimed invention.
Accordingly, we reverse the Examiner's prior art rejections of claims
1, 3-9, 11, and 12 under 35 U.S.C. § 103 for the reasons presented by
Appellant and given above.
ORDER
The Examiner's prior art rejections of claims 1, 3-9, and 11-14 under
35 U.S.C. §§ 102(a)(l) and 103 are reversed.
REVERSED
4 US 8,115,130 B2, issued February 14, 2012.
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