Nokia Technologies OyDownload PDFPatent Trials and Appeals BoardMar 8, 20212019006574 (P.T.A.B. Mar. 8, 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. 14/760,501 07/13/2015 Zhigang Chen 042933/538828 1087 10949 7590 03/08/2021 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP One South at The Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER ABDIN, SHAHEDA A ART UNIT PAPER NUMBER 2692 NOTIFICATION DATE DELIVERY MODE 03/08/2021 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ZHIGANG CHEN, YONG LI, ZHENG XIA, and LIGANG SHANG ____________________ Appeal 2019-006574 Application 14/760,501 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and ADAM J. PYONIN, 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 1–3, 5, 6, 10, 11, 13–16, 18, and 21. Appeal Br. 5–11. 2 Claims 4, 7–9, 12, 17, 19, 20, 22, and 23 have been cancelled. August 21, 2018 Amendment 2–5. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, and we enter a new ground of rejection. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nokia Technologies Oy. Appeal Br. 1. 2 Despite statements indicating otherwise, these are the only claims discussed in the rejections of the September 6, 2018 Non-Final Action. Appeal 2019-006574 Application 14/760,501 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. An apparatus, comprising: [A.] a touch surface comprising one or more key tops configured to identify one or more keys to a user; [B.] a key sensing circuitry configured to detect a key press of any one or more of the key tops; [C.] a network of capacitive touch detectors configured to continually detect touching of the touch surface, the touch detectors being positioned to avoid abrasion during a key press; and [D.] an elastic layer between the key sensing circuitry and the key tops configured to relay pressing forces from the key tops to the key sensing circuitry, wherein the network of capacitive touch detectors is formed onto the elastic layer. REFERENCES3 The Examiner and this Panel relies on the following references: Name Reference Date Uusimäki US 7,006,077 B1 Feb. 28, 2006 Fabrenius US 2009/0045986 A1 Feb. 19, 2009 Tatehata US 2009/0079695 A1 Mar. 26, 2009 Chuang US 2009/0135144 A1 May 28, 2009 Takahashi US 2010/0258425 A1 Oct. 14, 2010 Kunishi US 2011/0291058 A1 Dec. 1, 2011 Kuriki US 2012/0312677 A1 Dec. 13, 2012 3 All citations herein to patent and pre-grant publication references are by reference to the first named inventor only. Appeal 2019-006574 Application 14/760,501 3 REJECTIONS A. The Examiner rejects claims 1, 2, 13, and 16, under 35 U.S.C. § 103 as being unpatentable over the combination of Uusimäki, Takahashi, and Tatehata. Non-Final Act. 2–5. 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, 13, and 16 further herein. B. The Examiner rejects claims 6, 10, 11, 14, and 15, under 35 U.S.C. § 103 as being unpatentable over the combination of Uusimäki, Takahashi, Tatehata, and Chuang. Non-Final Act. 5–8. The Examiner rejects claim 3, under 35 U.S.C. § 103 as being unpatentable over the combination of Uusimäki, Takahashi, Tatehata, and Fabrenius. Non-Final Act. 8–9. The Examiner rejects claims 5 and 18, under 35 U.S.C. § 103 as being unpatentable over the combination of Uusimäki, Takahashi, Tatehata, and Kunishi. Non-Final Act. 9. The Examiner rejects claim 21, under 35 U.S.C. § 103 as being unpatentable over the combination of Uusimäki, Takahashi, Tatehata, and Kuriki. Non-Final Act. 10. 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 3, 5, 6, 10, 11, 14, 15, 18, and 21 further herein. Appeal 2019-006574 Application 14/760,501 4 OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. A. Claim 1 Claim 1 at above part C and D requires: [C.] a network of capacitive touch detectors configured to continually detect touching of the touch surface, the touch detectors being positioned to avoid abrasion during a key press; and [D.] an elastic layer between the key sensing circuitry and the key tops configured to relay pressing forces from the key tops to the key sensing circuitry, wherein the network of capacitive touch detectors is formed onto the elastic layer. B. The Examiner finds: Takahashi (US Pub. No: 20100258425) discloses abrasion (impaired) avoided (prevented) during a key press ([0085, [0101] and [0180]) . . . . Tatehata (US Pub. No: 20090079695) discloses touch detectors is formed onto the elastic layer (21, Fig. 2) ([0049] [0052]). Non-Final Act. 3–4 (emphasis added). C. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103: [T]he asserted combination fails to teach, or suggest, a network of capacitive touch detectors positioned to avoid abrasion during a key press, as claimed in each of the independent claims. Even if Uusimaki [sic] were modified to include the elastic portions 92 of Takahashi, the resulting Appeal 2019-006574 Application 14/760,501 5 combination would fail to correspond to the claimed touch detectors being positioned to avoid abrasion during a key press. In direct contrast, Takahashi teaches that the cited elastic portions 92 are formed to fit within each key top such that a key press cannot avoid abrading any capacitive touch detectors that would allegedly be formed on the elastic portions 92 (Takahashi, paragraph [0115], Fig. 8). Appeal Br. 6 (emphasis added). D. The Examiner responds by modifying the articulated reasoning in support of the rejection. The Examiner shifts from Takahashi for disclosing the “avoid abrasion” limitation, to instead rely on Tatehata, and shifts reliance on Tatehata from item 21 to item 25 for disclosing the “formed onto” limitation. Tatehata (US Pub. No: 20090079695) discloses a network of capacitive touch detectors (20) (see Fig. 2, [0048, 0064]) formed onto an elastic layer (25, make of polyethylene terephthalate which is elastic deformation) (see Fig. 2 and [0051- 0053]). . . . It would have been obvious to have Uusimaki [sic] as modified with the teaching of Tatehata so to provide a high efficient data transmission and to avoid a touch panel from being deformed to be broken. Ans. 4 (emphasis added). E. In response, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. The Examiner . . . for the first time, now contends that Tatehata’s touch pad 20 is a network of capacitive touch detectors formed onto base sheet 25. However, Tatehata teaches that the plurality of conductive layers is formed on the upside of Appeal 2019-006574 Application 14/760,501 6 flexible board 20a and is insulated from the relied-upon base sheet 25 by insulating layer 20b (paragraph [0048]). Tatehata’s Fig. 2 is reproduced below for reference. [Tatehata, Fig. 2 omitted] Thus, it has not been shown how the alleged network of Tatehata’s touch detectors is formed onto the alleged elastic layer, as claimed. Even if one or more of Uusimaki [sic], Takahashi, or Tatehata had been shown to form a network of capacitive touch detectors onto an elastic layer, none of the references has been shown to teach, or suggest positioning the network of capacitive touch detectors to avoid abrasion during a key press, as claimed in each of the independent claims. The Examiner has not asserted that either Uusimaki’s [sic] or Tatehata’s alleged networks of capacitive touch detectors are positioned to avoid abrasion during a key press. Reply Br. 7–8 (emphasis added). F. 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. Appeal 2019-006574 Application 14/760,501 7 We agree with Appellant that the Examiner’s two distinct articulated rationales (Non-Final Action and Examiner’s Answer) to combine these references do not reasonably support simultaneous findings of “the touch detectors being positioned to avoid abrasion during a key press” and “the network of capacitive touch detectors is formed onto the elastic layer” (claim 1, emphasis added), as required by above parts C and D of claim 1. As to the articulated reasoning in the Non-Final Action, we agree with the Examiner that “Tatehata (US Pub. No: 20090079695) discloses touch detectors is formed onto the elastic layer (21, Fig. 2) ([0049] [0052]).” Non- Final Act. 4. However, we agree with the Appellant that Takahashi is not sufficient to teach, suggest, or otherwise render obvious the “avoid abrasion” limitation. Appeal Br. 6. It appears that the Examiner also agrees with this as the articulated reasoning in the Answer has been changed as we note in above section D of this Decision. As to the articulated reasoning in the Answer, we agree with the Examiner as to “Uusimaki [sic] as modified with . . . Tatehata” provides “avoid[ing] a touch panel from being deformed to be broken.).” Ans. 4 (emphasis added). See Uusimäki at column 9, lines 56–59 (“The movement of the keys cannot be too large, because most of the touch sensitive foils cannot withstand very large movements.”). Also, see Tatehata at paragraph 55 (“[C]apacitive sensor touch pad 20 is deflected, and the upside center of movable contact 26 at the downside is pressed through protrusion 25a, and a specified pressure is applied.”). The claim 1 limitation of “the touch detectors being positioned to avoid abrasion during a key press” does not require any particular structure to accomplish the abrasion avoidance nor any particular amount of abrasion avoidance (i.e., no lower Appeal 2019-006574 Application 14/760,501 8 limit on the required amount of avoidance). Therefore, we determine that avoiding being deformed to be broken, as taught or suggested by the cited references, includes at least some avoidance of abrasion and is reasonably within the “avoiding abrasion” limitation of claim 1. Regardless of the “abrasion” limitation, we agree with the Appellant that Tatehata (item 25) is not sufficient to teach, suggest, or otherwise render obvious the “formed onto” limitation. Reply Br. 7–8. We conclude, consistent with Appellant’s argument, that there is currently insufficient articulated reasoning (within a single articulated reasoning) to support the Examiner’s finding that the references teach, suggest, or otherwise render obvious both parts C and D as required by claim 1. Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner’s final conclusion that claim 1 would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention. G. Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1–3, 5, 6, 10, 11, 13–16, 18, and 21 under 35 U.S.C. § 112(b), as being indefinite.4 Claims 1, 13, and 16, recite (and their dependent claims require by their dependency) either “the touch detectors being positioned to avoid abrasion during a key press” (claims 1 and 13) or “touch detectors . . . in 4 We note that other rejections such as lack of a proper written description might also be applicable as the disclosure is limited to a single positioning embodiment for “avoiding abrasion” (Figure 4), and the claims cover all positioning embodiments for “avoiding abrasion.” However, we limit our new ground of rejection to this single rejection. Appeal 2019-006574 Application 14/760,501 9 positions to avoid abrasion during a key press” (claim 16). The “being positioned to avoid abrasion during a key press” or “in positions to avoid abrasion during a key press” limitations state a desired result of “avoid[ing] abrasion,” but do not limit the touch detectors in any objective way (e.g., by structure, by position, by amount of abrasion avoidance).5 Although we have chosen “at least some avoidance of abrasion” as the interpretation of “being positioned to avoid abrasion during a key press” of claim 1, we acknowledge that the claim alternatively could be interpreted as requiring “complete avoidance of abrasion.” We are unable to reconcile the claim construction with the language of claim 1. We find no reasonable basis in claim 1 for an artisan to adopt one interpretation over the other. Moreover, at best these interpretations are subjective. “The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). The second paragraph of 35 USC § 112—now section 112(b)— requires a claim to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. In discussing the requirements of the second paragraph of 35 USC § 112, the Court of Customs and Patent Appeals stated in In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970): Its purpose is to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the 5 Contrast this to the specific “gap” based “abrasion avoidance” structure discussed at paragraph 33 of the Specification and shown at Figure 4. Appeal 2019-006574 Application 14/760,501 10 boundaries of protection involved and evaluate the possibility of infringement and dominance. The problems we discuss above render it impossible for these claims to provide competitors with an accurate determination of the “metes and bounds” of protection involved so that an evaluation of the possibility of infringement may be ascertained with a reasonable degree of certainty, as discussed by the court in In re Hammack, supra. Language in a claim is unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is “is amenable to two or more plausible claim constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Accordingly, for this reason we reject Appellant’s claims under 35 USC § 112(b). CONCLUSION Appellant has demonstrated the Examiner erred in rejecting claims 1– 3, 5, 6, 10, 11, 13–16, 18, and 21 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejections of claims 1–3, 5, 6, 10, 11, 13–16, 18, and 21 as being unpatentable under 35 U.S.C. § 103 are reversed. We newly reject claims 1–3, 5, 6, 10, 11, 13–16, 18, and 21 under 35 U.S.C. § 112(b) as being indefinite. Appeal 2019-006574 Application 14/760,501 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 13, 16 103 Uusimäki, Takahashi, Tatehata 1, 2, 13, 16 6, 10, 11, 14, 15 103 Uusimäki, Takahashi, Tatehata, Chuang 6, 10, 11, 14, 15 3 103 Uusimäki, Takahashi, Tatehata, Fabrenius 3 5, 18 103 Uusimäki, Takahashi, Tatehata, Kunishi 5, 18 21 103 Uusimäki, Takahashi, Tatehata, Kuriki 21 1–3, 5, 6, 10, 11, 13–16, 18, 21 112(b) Indefiniteness 1–3, 5, 6, 10, 11, 13–16, 18, 21 Overall Outcome 1–3, 5, 6, 10, 11, 13–16, 18, 21 1–3, 5, 6, 10, 11, 13–16, 18, 21 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 Appeal 2019-006574 Application 14/760,501 12 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 proceeding 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