Apple Inc.

Patent Trials and Appeals Board

May 12, 2021

2020001324 (P.T.A.B. May. 12, 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.
15/621,966 06/13/2017 James E. Pedder P30287US1 6779
62579 7590 05/12/2021
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
JOSEPH, DENNIS P
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
patentdocket@bhfs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. PEDDER, SUPRATIK DATTA, KARAN JAIN,
JUI-MING YANG, PAVAN O. GUPTA, ROBERT W. RUMFORD,
WEI LIN, XIAOFAN NIU, and XIAONAN WEN
Appeal 2020-001324
Application 15/621,966
Technology Center 2600

Before DANIEL J. GALLIGAN, JESSICA C. KAISER, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

KAISER, 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 24, 26, 27, 29–39, and 41–50. Claims
1–23, 25, 28, and 40 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 3.
Appeal 2020-001324
Application 15/621,966
2
CLAIMED SUBJECT MATTER
Claims 24, 35, and 39 are independent claims. Claim 24 is
reproduced below:
24. An electronic device comprising:
an enclosure;
a display positioned within the enclosure;
an input region positioned within the enclosure;
a sensor structure positioned below the input region,
comprising:
a sensing layer comprising an array of electrodes;
a ground layer comprising a ground electrode; and
a piezoelectric substrate positioned between the
sensing layer and the ground layer; and
sensing circuitry operably coupled to the sensor structure
and configured to:
detect, using the array of electrodes of the sensing
layer, a change in capacitance caused by a touch;
determine a location of the touch based on the
change in capacitance;
detect, using the array of electrodes of the sensing
layer, a change in electrical potential between the sensing
layer and the ground layer caused by compression of the
piezoelectric substrate in response to the touch; and
estimate an amount of force corresponding to the
touch using the change in electrical potential between the
sensing layer and the ground layer.
Appeal 2020-001324
Application 15/621,966
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Griffin US 2011/0248916 A1 Oct. 13, 2011
Lynn US 2013/0141365 A1 June 6, 2013
Kim US 2017/0185194 A1 June 29, 2017
Ham US 2017/0192560 A1 July 6, 2017
Tanemura US 2017/0255295 A1 Sept. 7, 2017
REJECTIONS
The Examiner rejects claims 24, 29–32, 35, 36, 39, 42–48, and 50
under 35 U.S.C. § 103 as being unpatentable over Ham and Kim. Final Act.
3–14.2
The Examiner rejects claims 26, 27, 37, 38, 41, and 49 under 35
U.S.C. § 103 as being unpatentable over Ham, Kim, and Lynn. Id. at 14–18.
The Examiner rejects claim 33 under 35 U.S.C. § 103 as being
unpatentable over Ham, Kim, and Tanemura. Id. at 18–19.
The Examiner rejects claim 34 under 35 U.S.C. § 103 as being
unpatentable over Ham, Kim, and Griffin.3 Id. at 19–20.
OPINION
Improper Combination
Appellant contends the Examiner improperly combined Ham and Kim
to find that the combination teaches both “detect[ing], using the array of

2 The Examiner includes claim 33 in the heading of this rejection, but claim
33 is analyzed in the later rejection over Ham, Kim, and Tanemura. Final
Act. 3, 18–19. We consider this a harmless typographical error.
3 The Examiner’s Final Action refers to U.S. 2011/0248916 A1 as “Griffen
et al.” The first-named inventor of U.S. 2011/0248916 A1 is, however,
listed as “Griffin.” We consider this a harmless typographical error.
Appeal 2020-001324
Application 15/621,966
4
electrodes of the sensing layer, a change in capacitance caused by a touch”
and “detect[ing], using the array of electrodes of the sensing layer, a change
in electrical potential between the sensing layer and the ground layer caused
by compression of the piezoelectric substrate in response to the touch,” as
recited in claim 24 and similarly recited in claims 35 and 39. Appeal Br. 7–
9; Reply Br. 3–5. Specifically, Appellant argues “Ham teaches away from
including a sensor layer to detect both touch location and compression
changes of a piezoelectric substrate.” Appeal Br. 9; Reply Br. 5. Appellant
further argues “incorporating the common electrode blocks of Kim into any
other portion of the display device in Ham would either impermissibly
change the principle of operation of Ham by requiring substantial
reconstruction and redesign of the display device or rendering the device in
the Ham reference unfit for its intended purpose.” Appeal Br. 9–10; Reply
Br. 5.
We are not persuaded. The Examiner finds, and we agree, Ham
teaches “detect[ing], using the array of electrodes of the sensing layer, a
change in capacitance caused by a touch,” a “ground layer,” and a
“piezoelectric substrate” positioned between the sensing layer and the
ground layer. Final Act. 4; Ans. 4–5. In particular, the Examiner relies on
Figures 1 and 2 of Ham, and the Figures’ associated descriptions, to disclose
a display device which teaches the claimed layers in the claimed
configuration. Final Act. 4; Ans. 4–5. Figure 2 of Ham is reproduced
below.
Appeal 2020-001324
Application 15/621,966
5

Figure 2 shows a cross-sectional view of Ham’s display device 100,
including display panel 120, touch sensitive element 130, shielding layer
140, and touch sensor 160. Ham ¶¶ 35, 49. As the Examiner points out
(Final Act. 4; Ans. 4–5), “touch sensor 160 may be a mutual capacitance
type touch sensor” (Ham ¶¶ 49, 61, Fig. 1), i.e., a “sensing layer.” Ham
details that touch sensor 160 includes “sensing electrodes” configured so
that “[w]hen the user performs a touch input by using a finger . . . touch
capacitance is formed between the finger of the user and the sensing
electrode” (id.), i.e., Ham “detect[s] . . . a change in capacitance caused by a
touch.” Below touch sensor 160, Ham describes “an electroactive layer
133” which “may be made of a dielectric elastomer . . . or a piezo ceramic
element” (id. ¶ 63), i.e., a “piezoelectric substrate.” And, “disposed on . . .
the bottom surface of the electroactive layer 133” are electrodes 132 (id.), in
which “one of the plurality of second electrodes 132” is a “grounded second
electrode 132” (id. ¶ 71), i.e., a “ground layer.”
We also agree with the Examiner’s finding that Kim teaches
“detect[ing] . . . a change in electrical potential . . . caused by compression of
Appeal 2020-001324
Application 15/621,966
6
the piezoelectric substrate in response to the touch.” Final Act. 5; Ans. 5–6.
As the Examiner points out (Final Act. 5; Ans. 5–6), Kim discloses a touch
sensitive display in which “common electrode blocks and the common
signal lines SL may be used in measuring amount of touch pressure on the
screen, generating vibration on the screen or actuating electro-active
materials in the panel” (Kim ¶ 288; see id. ¶ 55). Specifically, Kim’s
“common electrode blocks” are “loaded with voltage signals to measure
electrical changes caused by the deformation of [a] deformable material,” in
order to “measure the amount of pressure on the display panel PNL in
addition to the location of the touch inputs” (id. ¶ 289), and, accordingly,
“detect . . . a change in electrical potential . . . caused by compression of the
piezoelectric substrate in response to the touch.” “[E]xamples of such
deformable materials include piezo ceramic, electro-active-polymer and the
like.” Id.
The Examiner explains that the proffered combination of Ham and
Kim uses “the same sensing array” in the “existing electrode arrangements”
taught by Ham to “perform[] both the touch location and touch pressure
amount functions” taught by Kim. Ans. 6; Final Act. 5–6. The Examiner
determines that a skilled artisan would have been motivated to make such a
combination in order to provide “a better application of haptic responses”
and to “enhance[]” Ham’s touch screen with an “additional capability.”
Final Act. 6 (citing Kim ¶¶ 55, 288–289); Ans. 6.
Appellant’s argument that “Ham teaches away from including a
sensor layer to detect both touch location and compression changes of a
piezoelectric substrate” is unpersuasive. Appeal Br. 9; Reply Br. 5. First, to
teach away, a reference must “criticize, discredit, or otherwise discourage
the solution.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appeal 2020-001324
Application 15/621,966
7
Appellant has not shown where Ham criticizes, discredits, or otherwise
discourages detecting compression, i.e., the amount of force or pressure
applied by a user’s touch, on a touch screen device. As such, we are not
persuaded Ham teaches away from the Examiner’s proffered combination.
Moreover, Appellant’s argument (see Reply Br. 4–5; see also Appeal
Br. 7–9) is unpersuasive because that argument is premised on Appellant’s
mere assertion, without supporting evidence or persuasive explanation, that
Ham’s shielding layer 140 would block the detection of a change in
electrical potential between Ham’s sensing layer electrodes and ground layer
electrode when Ham’s piezoelectric substrate is compressed. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (Attorney argument cannot which
“cannot take the place of evidence.”). Ham discloses that “electrical noise
generated by the touch sensitive element 130 may be removed by the
shielding layer 140 disposed between the touch sensitive element 130 and
the display panel 120.” Ham ¶ 92 (emphasis added); see id. ¶¶ 89–95. Ham
further details that it “remov[es] the noise generated by the high driving
voltage of the touch sensitive element 130,” i.e., noise generated due to
applied voltage causing haptic feedback. Ham ¶¶ 9, 75 (emphasis added).
From those disclosures, Appellant asserts that blocking electrical noise due
to a high driving voltage would block detection of changes in electrical
potential due to compression of a piezoelectric substrate. See Appeal Br. 7–
9; see also Reply Br. 3–5. However, Appellant offers no evidence or
persuasive explanation as to why the type of electrical noise blocking
described by Ham’s shielding layer would also block the detection of
Appeal 2020-001324
Application 15/621,966
8
electrical potential.4 And, the Examiner points out that a high driving
voltage for haptic feedback “is a different operation from a sensing
operation designed to detect touch location and pressure amount.” Ans. 6–7
(emphasis added). Again, Appellant offers no evidence or persuasive
explanation supporting its allegation that a shielding layer which blocks
noise generated due to applied high driving voltages during haptic feedback
would also block a different function and operation, i.e., detecting changes
in electrical potential due to compression during touch detection. As such,
on the record before us, Appellant has not supported its argument with
evidence, and therefore, we are not persuaded the Examiner erred.
Additionally, Appellant’s further argument that the combination of
Ham and Kim “would either impermissibly change the principle of operation
of Ham by requiring substantial reconstruction and redesign of the display
device or rendering the device in the Ham reference unfit for its intended
purpose” (Appeal Br. 9–10; Reply Br. 5) does not address the Examiner’s
proffered combination. Appellant’s argument is premised on the
“replacement of the common electrodes 122 of the display panel 120 of Ham
with the common electrode blocks of the display panel of Kim,” or other
hypothetical rearrangements to Ham’s device. Appeal Br. 9–10. However,
the Examiner’s combination does not replace Ham’s components with Kim’s
or rearrange Ham’s components in the manner Appellant suggests. Instead,
the Examiner describes “using the same sensing array” described by Ham to
perform features described by Kim. Ans. 6. As such, Appellant’s argument

4 We note that Ham states that its shielding layer may “omit[] the
requirement for of insulating layer 141.” Ham ¶ 75.
Appeal 2020-001324
Application 15/621,966
9
fails to persuasively address the Examiner’s combination and instead
addresses modifications the combination does not require.
Accordingly, we are not persuaded the Examiner erred by improperly
combining Ham and Kim.

“between the sensing layer and the ground layer”
Appellant contends the Examiner erred in finding Kim, or the
combination of Ham and Kim, teaches “detect[ing], using the array of
electrodes of the sensing layer, a change in electrical potential between the
sensing layer and the ground layer caused by compression of the
piezoelectric substrate in response to the touch,” as recited in claim 24 and
similarly recited in claims 35 and 39. Appeal Br. 9. Specifically, Appellant
argues “neither Kim nor Ham include a ground layer in the display panel.”
Id. Appellant further argues “there is no teaching or suggestion in Kim of
detecting a change in electrical potential between a sensing layer and a
ground layer caused by compression of a piezoelectric substrate.” Id.
We are not persuaded. As discussed above, we agree with the
Examiner’s finding (Final Act. 4) that Ham teaches a “ground layer” for a
display panel because Ham discloses that “one of the plurality of second
electrodes 132,” which are “disposed on . . . the bottom surface of the
electroactive layer 133,” “is a “grounded second electrode 132” (Ham ¶¶ 63,
71, Figs. 1–2). Accordingly, Appellant’s argument that neither reference
teaches a “ground layer” (Appeal Br. 9) is unpersuasive.
Further, Appellant’s argument that Kim does not teach detecting a
change in electrical potential “between a sensing layer and a ground layer”
(id.) inappropriately attacks Kim individually when the Examiner finds the
combination of Ham and Kim teaches the disputed limitations. In re Keller,
Appeal 2020-001324
Application 15/621,966
10
642 F.2d 413, 426 (CCPA 1981). As discussed above, the Examiner relies
on Ham to teach a piezoelectric substrate between a sensing layer and a
ground layer and on Kim to teach detecting changes in electrical potential
when a piezoelectric substrate is compressed. Ans. 5; Final Act. 5–6.
Because the Examiner relies on the combination of Ham and Kim’s
teachings to teach the disputed limitations, but Appellant’s argument
addresses only Kim, we are not persuaded the Examiner erred.
As such, we are not persuaded the Examiner erred in finding the
combination of Ham and Kim teaches “detect[ing], using the array of
electrodes of the sensing layer, a change in electrical potential between the
sensing layer and the ground layer caused by compression of the
piezoelectric substrate in response to the touch,” as recited in claim 24 and
similarly recited in claims 35 and 39. Appellant does not argue separate
patentability for dependent claims 26, 27, 29–34, 36–38, and 41–50, which
depend directly or indirectly from claims 24, 35, and 39. See Appeal Br. 10.
Accordingly, for the reasons set forth above, we sustain the Examiner’s
obviousness rejections of claims 24, 26, 27, 29–39, and 41–50.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
24, 29–32,
35, 36, 39,
42–48, 50
103 Ham, Kim

24, 29–32,
35, 36, 39,
42–48, 50

26, 27, 37,
38, 41, 49
103 Ham, Kim, Lynn 26, 27, 37,
38, 41, 49

33 103 Ham, Kim,
Tanemura
33
34 103 Ham, Kim, Griffin 34
Appeal 2020-001324
Application 15/621,966
11
Overall
Outcome
24, 26, 27,
29–39, 41–
50

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).
AFFIRMED