Apple Inc.

Patent Trials and Appeals Board

Sep 28, 2020

2020003670 (P.T.A.B. Sep. 28, 2020)

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.
15/702,648 09/12/2017 Simon R. Lancaster-Larocque P32552US1 2078
65015 7590 09/28/2020
Treyz Law Group
15279 N. Scottsdale Rd., Suite 250
Scottsdale, AZ 85254
EXAMINER
AUGUSTIN, CHRISTOPHER L
ART UNIT PAPER NUMBER
2841
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON R. LANCASTER-LAROCQUE, PAUL CHOINIERE,
DINESH C. MATHEW, and PATRICK MAGANNIG BOYLE
Appeal 2020-003670
Application 15/702,648
Technology Center 2800
Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, 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 1–4, 6–9, and 12–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but designate a new ground of rejection pursuant to 37
C.F.R. 41.50(b).

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 Apple Inc. Appeal Br.
2.
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Application 15/702,648

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CLAIMED SUBJECT MATTER
The claims are directed to electronic devices including first and
second structures, such as a housing and a display mounted in the housing.
In one embodiment, a polymer gasket including a protective enzyme is
disposed in a gap between these structures. Claim 1. In another embodiment,
first and second double-sided adhesive tape layers include a lipoxygenase
enzyme and are disposed between a gasket and respective first and second
structures. Claim 4. In a third embodiment, a layer of adhesive containing a
lipoxygenase enzyme couples the structures together. Claim 9.
Claim 9, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter. The limitation at issue is
italicized.
9. An electronic device, comprising:
a first structure;
a second structure;
a layer of adhesive that couples the first structure to the
second structure; and
a lipoxygenase enzyme in the layer of adhesive that
prevents degradation of the layer of adhesive.
Appeal Br. 14–15 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art:
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Name Reference Date
McDaniel et al.
(“McDaniel”)
US 2010/0210745 A1 Aug. 19, 2010
Mathew et al.
(“Mathew”)
US 2013/0329460 A1 Dec. 12, 2013
Bae et al. (“Bae”) US 2014/0091536 A1 Apr. 3, 2014

We additionally rely on Appellant’s admitted prior art (“AAPA”) in
the Specification, paragraph 70, as will be explained in more detail below.
REJECTIONS
The Examiner maintains the following grounds of rejection under 35
U.S.C. § 103:
1. Claims 1–4, 6–9, 12–20, 22, and 23 as unpatentable over
Bae in view of McDaniel; and
2. Claims 1–3 and 21 as unpatentable over Mathew in view of
McDaniel.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections. We offer the following for
emphasis only.
Rejection 1: Obviousness over Bae and McDaniel
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Although Appellant indicates that Rejection (1) is to be reviewed on
appeal (Appeal Br. 5), Appellant separately argues claims 4, 9, 13, 18, and
22 only. Appellant fails to present any argument with regard to the rejection
of claims 1–3, 21, and 23. Accordingly, we summarily affirm Rejection (1)
as applied to claims 1–3, 21, and 23. We address Appellant’s arguments
against the rejection of the separately argued claims below.
Claims 4, 9, and 22
Appellant presents substantially the same arguments with regard to
each of independent claims 4 and 9, and dependent claim 22. See Appeal Br.
5–9, 11. Specifically, Appellant argues that Bae’s coupling member 20
would not be modified to include McDaniel’s enzyme because doing so
would merely complicate Bae’s sealing member without providing
protection on a surface exposed to a biological material. Id. at 6. According
to Appellant, Bae’s coupling member 20 will not be exposed to a biological
material because it is on the interior of the device. Id.
This argument is not persuasive of reversible error because Appellant
fails to direct our attention to any evidentiary support for the assertion that
Bae’s coupling member 20 would not be exposed to any biological, or lipid,
contaminants. On the contrary, Bae and Appellant disclose the same or
similar device, as well as the same location for the adhesive layer or the
double-sided adhesive tape as Appellant. Thus, those skilled in the art would
have reasonably expected that Bae’s coupling member 20 would be exposed
to the same contaminants as Appellant’s device.
Appellant next argues that McDaniel does not suggest a lipoxygenase
enzyme because the only enzyme McDaniel uses to catalyze the degradation
of fatty acids is a lipase enzyme which requires the presence of water.
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Appeal Br. 6–7. Appellant asserts that McDaniel’s lipase enzyme would be
inoperable because Bae’s device cannot be washed. Id. at 7. On the other
hand, Appellant contends that because lipoxygenase enzymes facilitate
degradation unsaturated fatty acids by converting the fatty acids to
hydroperoxides, which spontaneously degrade, water isn’t needed with these
enzymes. Id. Appellant urges that “[t]he use of lipoxygenase enzymes to
degrade fatty acids in electronic devices is not recognized in the cited
references, is critical to use in electronic devices, provides a different
function from the enzymes disclosed in the cited references, and is not a
‘design choice.’” Id., citing Ex Parte Maeda, 2012 WL 5294326 (BPAI
2012). In this regard, Appellant alleges that the lipoxygenase incorporated
into a double-sided adhesive tape of an electronic device “has different
properties than McDaniel’s lipase by way of degrading fatty acids in a
different way, thereby having the superior property of allowing its
integration into electronic devices.” Id. at 7–8.
This argument is also not persuasive of reversible error because it
mischaracterizes the basis of the rejection and relies on an overly restrictive
view of McDaniel’s teaching regarding the selection of a protective enzyme.
Initially, we note that the Examiner finds that lipoxygenase enzymes were
known materials. See Final Act. 3, 4, 6 (“to select a known material”).
Appellant does not dispute that lipoxygenase enzymes were known in the art
at the time of filing and, indeed, Appellant discloses that such enzymes have
been purified from diverse organisms and are widely expressed in animals,
plants, fungi, bacteria, and cyanobacteria. See Spec. ¶ 70. The Examiner also
finds that, in addition to lipases, McDaniel teaches other enzymes including
both simple enzymes and complex enzymes, such metalloenzymes. Ans. 5;
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McDaniel ¶ 70. The Examiner finds, and Appellant does not dispute, that
lipoxygenases are metalloenzymes. Ans. 5; see Spec. ¶ 71 (“lipoxygenases
may utilize either iron or manganese in their active sites”). In addition, we
note that McDaniel teaches oxidoreductase enzymes, including oxygenases,
which catalyze an oxido-reduction of a substrate (McDaniel ¶ 75), and
lipolytic enzymes which act on and degrade lipid substrates (id. ¶ 86).
Because Appellant acknowledges that lipoxygenase enzymes were known in
the art and McDaniel teaches that a wide variety of enzymes, including
lipolytic enzymes, metalloenzymes, and oxido-reductase enzymes (all of
which include lipoxygenases), may be used to improve the service life of
polymeric materials, including adhesives or sealants (McDaniel ¶¶ 3, 10)
and double-sided adhesive tapes (id. ¶ 857), a preponderance of the evidence
supports the Examiner’s obviousness conclusion.
Although Appellant attempts to distinguish the recited lipoxygenase
from McDaniel’s lipase on the basis that lipases require the presence of
water which Appellant urges is incompatible with electronic devices,
Appellant fails to dispute or otherwise address the Examiner’s finding that
sufficient water may be present in the air to permit lipase activity. See Ans. 5
(“[S]election of the lipase as the enzyme does not require the device to be
washed. Water molecules may be present in the air and come in contact with
the adhesive layer . . . ”); see also Bae ¶ 8. Also, Appellant fails to direct our
attention to any evidentiary support for the assertion that lipoxygenases hold
any superiority over lipases in terms of allowing integration into electronic
devices.
Therefore, we affirm the Examiner’s obviousness rejection of claims
4, 9, and 22 over the combination of Bae and McDaniel. However, because
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we rely not only on Appellant’s disclosure at paragraph 70 that
lipoxygenases were known as admitted prior art (AAPA), but also portions
of McDaniel’s disclosure beyond those on which the Examiner relies, we
designate our affirmance as a new ground of rejection. Because Appellant
does not separately argue dependent claims 12, 14–17, 19, and 20, these
claims fall with the claim from which they depend. 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Claim 13
Claim 13 depends from claim 9, via claim 12 (requires a material in
the gap adjacent to the layer of adhesive), and further requires a coating that
covers the material that is in the gap adjacent to the layer of adhesive.
Appellant argues that Bae fails to show or suggest any coating that
covers sealing apparatus 100. Appeal Br. 9–10. Appellant contends that Bae,
instead, forms sealing apparatus 100 on the interior of the device and
provides no motivation for including a coating thereon. Id. at 10.
In response, the Examiner explains that Bae teaches two components
20, one of which is the layer of adhesive and the other is the coating. Ans. 7.
In addition, the Examiner finds that the contact surface of Bae’s coupling
member 20 is coated onto at least a surface of sealing apparatus 100, which
itself is adjacent to the other coupling member or layer of adhesive 20. Id.
Appellant counters that Bae fails to show or suggest that coupling
member 20 is a coating. Reply Br. 5. Appellant contends that coupling
member 20 itself is an adhesive provided between part 110 and either touch
panel 12 or body 11 to fix sealing apparatus 100 in place. Id.
Appellant’s argument is not persuasive of reversible error because
claim 13 merely requires “a coating that covers the material that is in the gap
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adjacent to the layer of adhesive.” This claim does not limit what material
can comprise the coating and, importantly, does not exclude an adhesive
layer being the coating. Nor does claim 13 provide any structural limitation
or location for the coating other than covering the material in the gap
adjacent the layer of adhesive. As such, Appellant has not shown that the
Examiner interpretation of Bae’s structure such that first coupling member
20 between part 110 and body 11 corresponds to the adhesive layer of claim
9, part 110 corresponds to the material adjacent the adhesive layer of claim
12, and second coupling 20 between part 110 and touch panel 12
corresponds to the coating of claim 13, is unreasonable.
Therefore, we affirm the Examiner’s obviousness rejection of claim
13 over the combination of Bae and McDaniel, as modified above to include
Appellant’s admitted prior art (AAPA).
Claim 18
Claim 18 depends from claim 9, via claim 17,2 and further requires a
hydrophobic coating that covers the polymer material.
Appellant argues that Bae’s polymer material cannot be covered by a
hydrophobic coating if it contains an enzyme as taught by McDaniel because
McDaniel’s enzyme requires hydrolysis to degrade fatty acids. Appeal Br.
10. Appellant, therefore, contends that doing so would render the enzyme
inoperable for its intended purpose. Id.

2 We note that claim 17 is an improper dependent claim because it does not
include all the limitations of the claim from which it depends. Claim 17
recites that the lipoxygenase enzyme is not in the layer of adhesive, but
claim 9 from which it depends requires that this enzyme is in the layer of
adhesive. The Examiner and Appellant should address this issue upon
further prosecution in this application.
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In response, the Examiner explains that Bae teaches two components
20, one of which is the layer of adhesive and the other is the coating. Ans. 8.
Further, the Examiner finds that the contact surface of Bae’s coupling
member 20 is coated onto at least a surface of sealing member 100. Id. The
Examiner also finds that even if the selected enzyme is in the polymer
material and requires hydrolysis to degrade fatty acids, Bae’s polymer
material is still exposed on at least one of its sides. Id.
Appellant’s argument is not persuasive of reversible error in the
obviousness rejection of claim 18 because Appellant fails to dispute or
otherwise address the Examiner’s additional findings and explanation
provided in the Answer. Moreover, as discussed above, Appellant’s
argument relies on an overly restrictive view of McDaniel’s teaching
regarding the selection of a protective enzyme.
In addition, we note that claim 17 merely requires that a polymer
material be adjacent to the adhesive layer and the polymer material, not the
adhesive layer, contains the lipoxygenase enzyme, while claim 18 merely
recites a hydrophobic coating covering the polymer material. Given the
breadth of these claims, the polymer material may correspond to any
structure of Bae’s device including body 11, touch panel 12, the substrate of
either coupling member 20, and part 110. Further, because coupling
members 20 may be double-sided adhesive tape, the polymer material may
also correspond to the tape’s substrate on whose surfaces adhesive is
provided. McDaniel’s teaching suggests that a protective enzyme may be
provided in any of these structures to extend service life. McDaniel also
teaches that an enzyme may be provided in a variety of polymeric materials
including fluoropolymers (McDaniel ¶ 879), which are known to be
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hydrophobic. It would have been obvious to have any or all of Bae’s
structures, especially coupling members 20 (or their substrate in the case of
double sided tape) and part 110 made of fluoropolymers as such are well
known materials of construction for films and gaskets as taught by
McDaniel. The resulting structure would provide a hydrophobic coating
covering a polymeric material adjacent to an adhesive layer as explained
above with regard to claim 13.
Therefore, we affirm the Examiner’s obviousness rejection of claim
18 over the combination of Bae and McDaniel.
Rejection 2: Obviousness over Mathew and McDaniel
Although Appellant indicates that Rejection (2) is to be reviewed on
appeal (Appeal Br. 5), Appellant does not present any argument against this
rejection. Accordingly, we summarily affirm Rejection (2).
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–4, 6–9, and 12–23 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–4, 6–9,
12–20,
22, 23
103 Bae, McDaniel,
AAPA
1–3, 21,
23
4, 6–9,
12–20,
22
1–3, 21 103 Mathew, McDaniel 1–3, 21
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Overall
Outcome
1–3, 21,
23
4, 6–9,
12–20,
22

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 the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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 prosecution
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.
AFFIRMED; 37 C.F.R. 41.50(b)