Racing Optics, Inc.

Patent Trials and Appeals Board

Mar 1, 2021

2020001399 (P.T.A.B. Mar. 1, 2021)

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.
15/090,681 04/05/2016 Bart E. Wilson 20206-138535-US 2971
22242 7590 03/01/2021
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
03/01/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BART E. WILSON
and STEPHEN S. WILSON
____________

Appeal 2020-001399
Application 15/090,681
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
I. DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 15, 17–19, and 21–23 of
Application 15/090,681. Final Act. (April 8, 2019). We have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Racing Optics, Inc. as the real party in interest. Appeal Br. 3.
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II. BACKGROUND
The ’681 Application describes a particular shield that can be used to
protect a display screen or a touch screen. Spec. ¶¶ 2–4. The protective
shield comprises a rigid base layer made from a first material, a flexible
outer layer made from a second material, a first adhesive layer that attaches
the flexible outer layer to the base layer, and a second adhesive layer that is
used to mount the shield to the screen. Id. ¶ 5.
Claim 1 is representative of the ’681 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A display surface shield comprising:
a rigid base layer having a shape that corresponds to a
shape of a display surface comprising a touch screen, the rigid
base layer comprising a first material;
a first adhesive layer applied about a lower surface of the
shield, the first adhesive layer configured to removably attach
the shield to the display surface;
a flexible outer layer forming an upper surface of the
shield that is opposite the first adhesive on the lower surface of
the shield, the flexible outer layer comprising a second
material; and
a second adhesive layer adhering the outer layer to the
base layer;
wherein the shield is configured to attach to the display
surface so that, upon removably attaching the shield to the
display surface, the flexible outer layer faces away from the
display surface, wherein the second material is a different
material than the first material such that the flexible outer layer
is softer and more flexible relative to the rigid base layer, and
wherein the shield is configured to attach to the display surface
so that the touch screen maintains touch sensitivity through the
attached shield.
Appeal Br. 23 (emphasis added).
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III. REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1, 2, 4, 5, 9–12, and 15 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Wilson.3 Final Act. 2.
2. Claims 3, 6, and 7 are rejected under 35 U.S.C. § 103 as unpatentable
over Wilson. Final Act. 5.
3. Claims 8, 17–19, and 21–23 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Wilson and Huang.4 Final
Act. 5.
IV. DISCUSSION
A. Rejection of claims 1, 2, 4, 5, 9–12, and 15 as anticipated by Wilson
Appellant only argues for reversal of this rejection based on claim 1’s
limitations. Thus, we choose claim 1 as representative of the claims subject
to this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv) (2018). We limit our
discussion accordingly.
In rejecting claim 1, the Examiner necessarily found that Wilson
describes each limitation of the claim. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009) (explaining that an anticipatory reference “must
disclose each and every element of the claimed invention, whether it does so
explicitly or inherently.”).

2 Application 15/072,913 became abandoned on February 19, 2019. Thus,
the provisional double patenting rejection, see Final Act. 6, is moot.
3 US 2015/0013891 A1, published January 15, 2015.
4 US 9,063,699 B1, issued June 23, 2015.
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Appellant argues that the Examiner erred in so finding.
We agree. We, therefore, reverse the rejection of claim 1 as
anticipated.
Claim 1 recites, among other things, that the rigid base layer
comprises a first material and the flexible outer layer comprises a second
material “wherein the second material is a different material than the first
material.”
Appellant argues that the Examiner erred by finding that Wilson
describes a display shield that satisfies this requirement. Appeal Br. 12–14.
In rejecting claim 1, the Examiner found that Wilson’s base layer may
comprise transfer materials “such as biaxially-oriented polyethylene
terephthalate (boPET), etc.” Final Act. 3 (citing Wilson ¶ 51). The Examiner
also found that Wilson’s outer layer may also be fabricated from a
transparent material such as boPET. Id. (citing Wilson ¶ 545). The Examiner
further found that
since Wilson teaches that the base layer (first material) may be
fabricated from a transparent material, such as biaxially-
oriented polyethylene terephthalate (boPET), etc. (other
materials), and the sacrificial layers (second material) 14a-n
may also be fabricated from a transparent material, such as
boPET, Wilson clearly teaches that suitable base materials is
[sic] not particularly limited, and useful transparent materials
include materials which is [sic] not boPET. That is, Wilson’s
teaching reads on the limitation as claimed.
Id. at 4.

5 We agree with Appellant that the Examiner intended to cite Wilson’s
paragraph 53.
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As the Federal Circuit has explained, “‘anticipation’ requires lack of
novelty of the invention as claimed. The invention must have been known to
the art in the detail of the claim; that is, all of the elements and limitations of
the claim must be shown in a single prior reference, arranged as in the
claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (emphasis added).
In this case, the Examiner has not demonstrated that Wilson describes
a display surface shield meeting all of the limitations of claim 1. Wilson
describes a display surface shield comprising a base transparent layer and
sacrificial layers made of transparent materials—a description not limited to
boPET. See Wilson ¶¶ 51, 53. Wilson, however, does not describe an
embodiment of the display surface shield in which the base transparent layer
and the sacrificial layers are made from different transparent materials, let
alone transparent materials having the relative softness and flexibility recited
in claim 1. Wilson, therefore, does not anticipate claim 1.6
For the reasons set forth above, we reverse the rejection of claim 1 as
anticipated by Wilson. We, therefore, also reverse the rejection of claims 2,
4, 5, 9–12, and 15 as anticipated by Wilson.
B. Rejection of claims 3, 6, and 7 as unpatentable over Wilson
Claims 3, 6, and 7 depend from claim 1. In rejecting claims 3, 6, and 7
as obvious over Wilson, the Examiner relied upon the findings made in the
rejection of claim 1 as anticipated. Final Act. 5. As discussed above, we
have determined that the Examiner erred in finding that Wilson describes

6 We express no opinion regarding whether claim 1 may be obvious in view
of Wilson, either alone or in combination with some other reference.
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each limitation of claim 1. In the analysis of the claims subject to this ground
of rejection, the Examiner does not explain how Wilson suggests the
limitations of claim 1 that we determined it does not expressly describe.
Thus, the Examiner has not established a prima facie case of obviousness
with respect to the claims subject to this ground of rejection.
In view of the foregoing, we reverse the rejection of claims 3, 6, and 7
as obvious over Wilson because the Examiner has failed to establish a prima
facie case.
C. Rejection of claims 8, 17–19, and 21–23 as unpatentable over the
combination of Wilson and Huang
The claims subject to this ground of rejection may be divided into
three groups. We address each group individually.
1. Claim 8
Claim 8 depends from claim 1. In rejecting claim 8 as obvious over
Wilson, the Examiner relied upon the findings made in the rejection of claim
1 as anticipated. Final Act. 5. As discussed above, we have determined that
the Examiner erred in finding that Wilson describes each limitation of claim
1. In the analysis of the claims subject to this ground of rejection, the
Examiner does not explain how Wilson suggests the limitations of claim 1
that we determined it does not expressly describe. Thus, the Examiner has
not established a prima facie case of obviousness with respect to the claims
subject to this ground of rejection.
In view of the foregoing, we reverse the rejection of claim 8 as
obvious over Wilson because the Examiner has failed to establish a prima
facie case.
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2. Claims 17–19, 21, and 22
Claims 18, 19, 21, and 22 depend from claim 17. Thus, we select
claim 17 as representative of this group of claims. 37 C.F.R.
§ 41.37(c)(1)(iv).
In rejecting claim 17, the Examiner found that it would have been
obvious to use Huang’s glass sheet as the rigid base layer in the Wilson’s
display surface shield. Final Act. 6. The Examiner, however, does not
explain why, in the absence of the ’681 Application’s disclosure, a person of
ordinary skill in the art would have chosen to substitute Huang’s glass sheet
for Wilson’s base layer rather than for Wilson’s sacrificial layers. We note
that Huang describes its glass sheet as the outer layer of its display surface
shield. See, e.g., Huang Fig. 5. The Examiner’s assertion that “selection of a
no material based on its suitability for its intended use support[s] a prima
facie obviousness determination” is conclusory and not supported by
sufficient reasoning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[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 view of the foregoing, we reverse the rejection of claims 17–19, 21,
and 22 as obvious over the combination of Wilson and Huang.
3. Claim 23
The Examiner rejected claim 23 for the same reasons used to reject
claim 17. Final Act. 6. For the reasons set forth above, we have reversed the
rejection of claim 17. The same defects are present in the rejection of claim
23. Thus, we also reverse the rejection of claim 23.
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V. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 9–12, 15 102(a)(1) Wilson 1, 2, 4, 5, 9–12, 15
3, 6, 7 103 Wilson 3, 6, 7
8, 17–19, 21–23 103 Wilson, Huang 8, 17–19, 21–23
Overall Outcome 1–12, 15, 17–19, 21–23
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED