3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

May 13, 2021

2020001461 (P.T.A.B. May. 13, 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.
15/023,421 03/21/2016 Matthew H. Frey 74866US005 6972
32692 7590 05/13/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
YANG, NAN-YING
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
05/13/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHEW H. FREY
__________________

Appeal 2020-001461
Application 15/023,421
Technology Center 2600
____________________

Before ANTON W. FETTING, JAMES P. CALVE, and JOHN R. KENNY,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1, 9, and 10, which are all pending claims.2
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies 3M Company and 3M Innovative Properties Company as the real
parties in interest. Appeal Br. 2.
2 Claims 2–8 are cancelled. Appeal Br. 6 (Claims App.); Final Act. 2.
Appeal 2020-001461
Application 15/023,421

2
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, recites:
1. A touch sensor comprising a resonant circuit
comprising a piezoelectric material having a resonant frequency
configured to change in response to a force applied to the touch
sensor, the piezoelectric material being compressed as a result
of the force applied to the touch sensor, the touch sensor
detecting the applied force by detecting a change in the resonant
frequency.
Appeal Br. 6 (Claims App.).
REJECTIONS
Claims 1 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over Chung3 and Zimmerman.4
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Chung, Zimmerman, and Mifune.5
ANALYSIS
Claims 1 and 9 Rejected Over Chung and Zimmerman
Regarding claim 1, the Examiner finds that Chung uses touch sensor
(haptic device 100) with a resonant circuit comprising piezoelectric material
(vibrator 30, vibration sensor 40) that has a resonant frequency that changes
when force (input 10) is applied to touch sensor 100. Final Act. 3–4 (citing
Chung ¶¶ 12, 39). The Examiner also finds that Chung detects a change in
the applied force by detecting changes in the resonant frequency of vibrator
30 with vibration sensor 40, e.g., as the pressure of touch 10 on substrate 20
increases, the resonant frequency of piezoelectric vibrator 30 decreases. Id.

3 US 2011/0291821 A1, published December 1, 2011 (“Chung”).
4 US 2005/0284231 A1, published December 29, 2005 (“Zimmerman”).
5 US 4,019,072, issued April 19, 1977 (“Mifune”).
Appeal 2020-001461
Application 15/023,421

3
The Examiner finds that Chung does not teach a piezoelectric material
that is compressed by force applied to the touch sensor, but Zimmerman uses
piezoelectric material that is compressed as a result of force that is applied to
a stress measuring sensor to measure stress. Final Act. 4. The Examiner
determines it would have been obvious to modify the touch sensor of Chung
to use the piezoelectric material to detect a compression force applied to the
touch sensor as Zimmerman teaches as an application of a known technique
to a known device ready for improvement to yield predictable results that
detect the compression of the applied force. Id.; Ans. 8.
Appellant argues there is no motivation to combine Zimmerman and
Chung because Chung measures changes in mechanical resonance frequency
of a sensor caused by adding mass (touch input 10) to a substrate 20 whereas
Zimmerman measures changes in electrical resonance of an electrical circuit.
Appeal Br. 4; Rely Br. 2. Appellant argues that these technologies differ
fundamentally so compression of Chung’s vibration sensor 40 would not
produce an electrical resonance frequency change as Zimmerman teaches.
Appeal Br. 4. Appellant asserts that compressing Chung’s vibration sensor
40, as taught by Zimmerman, would make Chung inoperable. Id.
Chung teaches a haptic device that uses a piezoelectric vibrator 30 to
vibrate a touch panel substrate 20 at a resonant frequency and a piezoelectric
sensor 40 to sense changes in the resonant frequency caused by touch input
applied to screen substrate 20 by a user’s finger 10. Chung ¶¶ 3, 10-12, 31,
34–43, Fig. 1. As the pressure of touch 10 increases, the resonant frequency
and displacement decrease, and the decreases can be used to calculate the
pressure/force of touch 10. Id. ¶¶ 39–43. Vibration velocity also varies the
friction force to provide a drag sense and a texture sense to users. Id. ¶ 34.
Appeal 2020-001461
Application 15/023,421

4
Chung’s piezoelectric vibrator 40 serves two purposes. It measures a
user’s touch 10 applied to substrate 20 by measuring changes in the resonant
frequency. Chung ¶¶ 39–43. It also provides haptic feedback such as touch,
drag, and texture sense from substrate 20 to a user’s input 10. Id. ¶¶ 10, 34.
Using Zimmerman’s compressible piezoelectric sensor 2 to measure
forces of touch input 10 on Chung’s substrate 20 would replace the resonant
frequency vibration and displacement that Chung uses to measure pressure
on substrate 20 and to provide haptic feedback to users who touch substrate
20. Chung ¶¶ 3, 10, 34–43. As modified, Chung’s touch sensor would not
provide haptic feedback as Chung intends. Thus, we are not persuaded that
a skilled artisan would have been motivated to use a compressible sensor 2
of Zimmerman to measure forces input 10 on Chung’s substrate 20 when
Chung already measures the force applied to substrate 20 by using vibrator
30 and sensor 40, and the displacement of substrate 20 due to the resonant
frequency output by vibrator 30 also is used to provide haptic feedback to
users of Chung’s haptic device. Id. It is not clear how measuring a force by
compressing a piezoelectric material sensor rather than loading its resonant
frequency and displacement would improve Chung’s device or motivate a
skilled artisan to do so.
Thus, we do not sustain the rejection of claim 1 or claim 9, which
depends therefrom.
Claim 10 Rejected Over Chung, Zimmerman, and Mifune
The Examiner’s reliance on Mifune to teach features of claim 10 does
not cure the deficiencies of Chung and Zimmerman as to claim 1 from which
claim 10 depends. See Final Act. 5. Thus, we do not sustain this rejection.
Appeal 2020-001461
Application 15/023,421

5
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9 103 Chung, Zimmerman 1, 9
10 103 Chung, Zimmerman,
Mifune
10
Overall
Outcome
1, 9, 10
REVERSED