Apple Inc.

Patent Trials and Appeals Board

Dec 17, 2020

2019003817 (P.T.A.B. Dec. 17, 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.
14/972,048 12/16/2015 Patrick Kessler P22052USC1 8162
62579 7590 12/17/2020
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
FLORES, ROBERTO W
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
patentdocket@bhfs.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PATRICK KESSLER, JONAH A. HARLEY,
SOYOUNG KIM, and DANIEL D. SUNSHINE
____________________

Appeal 2019-003817
Application 14/972,048
Technology Center 2600
____________________

Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and
CARL L. SILVERMAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 21–31 and 34–40. Claim 1–20 have been cancelled (see Appeal Br.,
Appendix of Claims p. i), and claims 32 and 33 have been withdrawn (see
Appeal Br., Appendix of Claims p. iii). We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention, entitled “Force
Sensor With Capacitive Gap Sending” (Title), “generally relate[s] to a force
sensor integrated into a device [see e.g., electronic device 100 shown in
Figure 1] and, more particularly, to detecting the location and magnitude of
the force of a touch using a capacitive gap sensor” (Spec. ¶ 2). Appellant
recognizes the need for touch screen displays that can do more than simply
detect whether a touch is present or not. With this in mind, Appellant
discloses and claims a device that can “detect and measure the force of a
touch that is applied to a surface” (Spec. ¶ 4; see claims 21, 30, 37).
Independent claims 21, 30 and 37 recite commensurate limitations regarding
an electronic device 100 having a housing 102, a display 240, and a force-
sensitive structure 200a (see Fig. 2A; claims 21, 30, 37). Claim 21,
reproduced below with bracketed lettering and emphases added, is
illustrative of the claimed subject matter:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Apple, Inc. (Appeal Br. 3).
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21. An electronic device comprising:
[A] a housing defining a volume;
[B] a display supported by the housing and at least
partially enclosing the volume; and
[C] a force-sensitive structure suspended from the display
into the volume and comprising:
a first substrate;
a first electrode disposed on the first substrate;
a second substrate separated from the first substrate
by a gap;
a second electrode disposed on the second substrate;
and
a compliant medium within the gap and separating
the first substrate and the second substrate; wherein:
the first substrate is configured to deflect into the volume
in response to a received force applied to the display.

Appeal Br., Appendix of Claims (p. i) (bracketed lettering and emphases
added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 21, 26–29, 37, 39, and 40 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ricks et al. (US 2007/0085837 A1;
published Apr. 19, 2007) (hereinafter, “Ricks”) and Allen et al. (US
5,942,733; issued Aug. 24, 1999) (hereinafter, “Allen”). Final Act. 3–7.
(2) Claims 22–25, 30, 31, 34, 35, and 38 stand rejected under 35
U.S.C. § 103 as being unpatentable over Ricks, Allen, and Stern (US
2014/0043289 A1; published Feb. 13, 2014). Final Act. 8–13.
(3) Claim 36 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ricks, Allen, Stern, and Sekiguchi (US 2012/0098788 A1;
published Apr. 26, 2012. Final Act. 13.
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ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 6–
10) and the Reply Brief (Reply Br. 2–5),2 the following principal issue is
presented on appeal:
Has Appellant shown the Examiner erred in rejecting claims 21–31
and 34–40 under 35 U.S.C. § 103 as being unpatentable over the base
combination of Ricks and Allen because the combination fails to teach or
suggest “a housing defining a volume” (see claim 21, limitation A) and “a
force-sensitive structure suspended from the display into the volume” (see
claim 21, limitation C), as set forth in claim 21?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 3–13) in light
of Appellant’s arguments (Appeal Br. 6–10; Reply Br. 2–5) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (Ans. 3–7). With regard to representative
claim 21, we agree with and adopt as our own the Examiner’s findings of
facts and conclusions as set forth in the Final Rejection (Final Act. 3–4) and
Answer (Ans. 3–6). We provide the following explanation for emphasis
only.

2 Appellant argues claims 21–31 and 34–40 on the basis of claims 21, 30,
and 37, and primarily argues claim 21, arguing the other independent claims
(claims 30, 37) on that same basis (see Appeal Br. 6–10; Reply Br. 2–5).
Based on Appellant’s arguments, we (i) select claim 21 as representative of
claims 21, 26–29, 37, 39, and 40; and (ii) decide the outcome of claims 22–
25, 30, 31, 34–36, and 38 on the same basis as claim 21. See 37 C.F.R. §
41.37(c)(1)(iv).
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Appellant contends that the claimed force-sensitive structure for
detecting a touch force amount is suspended “into [a] housing (i.e., without
being supported by any other component)” (Appeal Br. 6), and “a suspended
force-sensitive structure, such as claimed, is unconstrained by an electronic
device housing” (Appeal Br. 7). However, claim 21 merely requires “a
force-sensitive structure suspended from the display into the volume” (see
claim 21, limitation C), without any detail as to how the force-sensitive
structure is actually suspended, or how it interacts (or not) with the housing
or other components. In other words, claim 21 does not actually recite that
the force-sensitive structure is (i) suspended into a housing without being
supported by any other component, or (ii) unconstrained by an electronic
device housing as Appellant argues (see Appeal Br. 6–7).
Therefore, Appellant’s arguments are not persuasive insofar as being
incommensurate with the scope of the claimed invention. See In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts … are not
commensurate with the claim scope and are therefore unpersuasive.”).
Appellant’s arguments are not persuasive of Examiner error because they are
not responsive to the Examiner’s rejection and are not commensurate in
scope to the language of claim 21. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (limitations not appearing in the claims cannot be relied upon
for patentability). While the specification can be examined for proper
context of a claim term, limitations from the specification will not be
imported into the claims. CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d
1225, 1231 (Fed. Cir. 2005).
Stated another way, although Appellant’s disclosure, shown in Figure
2A and described at paragraphs 42 through 55 of the Specification, is
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commensurate with Appellant’s arguments just discussed, where force-
sensitive structure 200a is suspended underneath display 240 without
touching or being connected to the housing 102, this is not what is actually
claimed and set forth in claim 21. Claim 21 simply requires “a force-
sensitive structure suspended from the display into the volume” (see claim
21, limitation C).
The Examiner finds, and we agree, that “suspend” can be “defined as
to put or hold in suspension” (Ans. 4). Notably, Appellant does not dispute
this finding in the Reply Brief, or rebut this finding with contradictory
evidence or argument (see generally Reply Br. 2–4).
Below are some other ordinary and customary definitions for the term
suspend:
verb (used with object)
(1) to hang by attachment to something above: to suspend a
chandelier from the ceiling.
(2) to attach so as to allow free movement: to suspend a door on
a hinge.
(3) to keep from falling, sinking, forming a deposit, etc., as if by
hanging: to suspend solid particles in a liquid.

https://www.dictionary.com/browse/suspend#, last visited Dec. 6, 2020. As
can be seen, the term “suspend” has many variations in meaning and use.
Here, we conclude the Examiner’s interpretation of the “suspend” (claims
21, 30, 37) as “to put or hold in suspension” (Ans. 4), is reasonable.
Appellant’s contention that “it would be odd to construe either [Ricks’
display 10 or touchscreen 30] as being suspended from the other” (Reply Br.
2, emphasis added), is not well-taken. Because, as Appellant recognizes
“Ricks’ display 10 and touchscreen 30 are attached to each other in region
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A1” (Reply Br. 2), and therefore all throughout the portions of display 10
and touchscreen 30 inside the active display area 52 (see Ricks Fig. 15), the
touchscreen 30 is suspended (i.e., held in suspension or hung by attachment
to something above, and attached so as to allow free movement) by the
display 10 (which is above the touchscreen 30) into the area below, and
allowed to deflect into a cavity or volume below (e.g., Allen’s air gap region
58 shown in Figure 4) when a touch input is made, as taught by Allen (see
Allen Fig. 4; col. 8, l. 51–col. 9, l. 30).
In this light, and because Appellant shows a touch/force-sensitive
structure 200a that is mounted underneath a display 240 and cover glass 202
similar to the manner in which Ricks mounts a touchscreen 30 under a
display 10 (see Figs. 5, 15), Appellant has not shown the Examiner’s
interpretation of “suspend” to be in error. Put another way, the broadest
reasonable interpretation of “suspend” and that term’s use in limitation A of
claim 21 includes the result of the collective teachings and suggestions of
Ricks and Allen, as well as what is disclosed and claimed by Appellant in
Figure 2A and claim 21 at issue.
Therefore, a force-sensitive structure like Ricks’ touchscreen 30
attached underneath display 10 (see Ricks Figs. 5, 15; see also Ricks ¶¶ 59,
74 (describing Figs. 5 and 15)) is encompassed by the recitation in claim 21
that “a force-sensitive structure suspended from the display into the volume”
(see claim 21, limitation C). Of course, claim language must be given the
“broadest reasonable interpretation consistent with the specification.” See In
re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citation omitted). However,
in the instant case, there is no language in claim 21 (i) limiting the
interpretation of “suspend” to Appellant’s Figure 2A embodiment—
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requiring the housing not to touch or constrain the touchscreen layer, or the
use of a pressure sensitive adhesive (PSA) layer 232 to attach the
touchscreen or force-sensitive layer 200a to the display 240 as shown in
Appellant’s Figure 2A and described in paragraph 47 of the Specification.
See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]he PTO should
only limit the claim based on the specification . . . when those sources
expressly disclaim the broader definition.”) (citation omitted); Thorner v.
Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012)
(“We do not read limitations from the specification into claims; we do not
redefine words. . . . . To constitute disclaimer, there must be a clear and
unmistakable disclaimer.”).
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Here, Ricks and Allen. Moreover, “‘the question under 35 USC 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis
added); see also MPEP § 2123. In this light, we agree with the Examiner
that the combined teachings and suggestions of Ricks and Allen support the
legal conclusion of obviousness as to claim 21. Both Ricks (see Ricks Fig.
15, element 61) and Allen (see Allen Fig. 4, frame member 56 and air gap
region 58) teach or suggest a housing defining a volume. As recognized by
Appellant, “[t]he drive electronics assembly [61 of Ricks, as shown in
Figure 15] may be considered housed within a housing that defines a
volume” (Reply Br. 3).
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Although Ricks’ Figures 5 (see ¶ 20) (“FIG. 5 is a side view of a
touchscreen display”) and 15 (see ¶ 30) (“FIG. 15 is an isometric view of [a]
flexible touchscreen display assembly”) do not show a housing completely
enveloping the perimeter of display 10 and touchscreen 30, it is clear from
Ricks’ disclosure of a “TOUCH INPUT DEVICE WITH DISPLAY
FRONT” (Title), and “a touch sensitive device with an electronically
addressable display front and systems including such devices” (¶ 1), that the
touchscreen display assemblies shown in Figures 5 and 15, are just that,
assemblies, that are part of the completed manufactured electronic device
that includes the touchscreen display. Ricks provides the following
examples for the completed manufactured electronic device:
A touch-sensitive assembly and an electronic, rewritable display
can be combined to form a touch-input device with updateable
display capability. Such a device can be used in multiple
applications including, but not limited to, kiosks for picture-
making, airline reservations, or information; industrial
controllers; data input devices such as automated teller machines,
or ordering systems such as used in restaurants; notation board;
informational signage; or various interactive consumer products,
such as video games, toys, watches, calculators, PDAs, and
electronic books.

Ricks ¶ 32 (emphases added). As one of ordinary skill in the art of
portable electronic devices would understand, such electronic devices (e.g.,
watches, calculators, personal digital assistants, and electronic books) all
have housings that surround and ultimately support a screen. See In re
Taylor Made Golf Company, Inc., 589 Fed. Appx. 967 (Fed. Cir. 2014) (the
Board erred in failing to consider the prior art in the context of the
background knowledge that a person of ordinary skill in the art would have
had); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he
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[KSR] Court required an analysis that reads the prior art in context, taking
account of ‘demands known to the design community,’ ‘the background
knowledge possessed by a person having ordinary skill in the art,’ and ‘the
inferences and creative steps that a person of ordinary skill in the art would
employ.’” (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007))); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering
the disclosure of a reference, it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom” (citation
omitted).). In addition, Ricks description (see ¶ 74) and illustration (see Fig.
15) of an active display area 52 that is square in nature and inside the
perimeter of the touch sensor and display drive electronics structure 61, for
user input by deflecting the layers into the volume underneath, is strongly
suggestive of suspending a touchscreen (i.e., the recited “force-sensitive
structure”) into a volume as claimed.
We again emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123. In the instant case, although the Examiner recognizes that
Ricks does not explicitly show a housing defining a volume (see Final Act.
3), the Examiner finds (see Final Act. 3; Ans. 4–5), and we agree, that
Ricks’ housing (Fig. 15, element 61) “can be defining the volume” shown in
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Figure 15 (Final Act. 3), and that in a related field of endeavor (e.g.,
capacitive touchscreens), Allen more explicitly shows and describes “a
housing defining a volume” as set forth in claim 21 (see Allen Fig. 4 frame
member 56 surrounds and defines an air gap region 58 or volume; col. 8, ll.
51–62). The Examiner’s findings and reasoning, including the annotated
drawings of Ricks, Allen, and Appellant (discussing volumes V1––V3
shown annotated in the figures), found at pages 4 through 6 of the
Examiner’s Answer are well-articulated and reasonable.
In this light, Appellant’s contentions that “the touchscreen 30 [see
Ricks Figure 15] is not, in any sense, suspended from the display 10 into a
volume defined by a housing” (Ans. 8), because (i) “the purpose of Ricks is
to operate a touch screen outside the confines of a fixed or enclosed volume,
namely in free space” (Ans. 6); and (ii) “as clearly shown in the embodiment
depicted in FIG. 15, the display 10 is intentionally configured to be
unconstrained and flexible, and not supported by any housing or any device
enclosure” (Ans. 8), are not persuasive. Similarly, Appellant’s argument
that Ricks cannot be modified by Allen without rendering Ricks unsuitable
for the intended purpose of allowing Ricks’ display 10 and touchscreen 30 to
be movable in free space (see Appeal Br. 9), is not persuasive. To the
contrary, Ricks purpose is to create a display and touchscreen subassembly
for use in a completed manufactured electronic device as discussed above
and as would be understood by one have ordinary skill in the art of portable
electronics.
And, we agree with (i) the Examiner’s findings that both Ricks and
Allen are from the same field of endeavor (e.g., capacitive touchscreens)
(see Final Act. 3); and (ii) the Examiner’s motivation for modifying Ricks
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with Allen’s more explicit housing structure (see Final Act. 4), namely, to
eliminate the use of a compliant material 22 as shown in Figure 3 by
creating and using air gap region 58 shown in Figure 4 of Allen, so as to
“yield a large signal from moderate stylus pressure” (Allen col. 9, l. 5).
Indeed, the major goal of Allen is to create a capacitive touchpad for
“computers and computer cursor control input devices” (col. 1, ll. 21–22)
that can “accept input from a non-conductive stylus” (col. 1, ll. 66–67), “or a
light finger touch” (col. 2, l. 3).
To prevail, Appellant must instead present a required feature of claim
21’s electronic device with a touch screen and force sensor that distinguishes
over Ricks’ and Allen’s cited teachings. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (affirming in part because appellant “merely argued
that the claims differed from [the prior art without proffering] a serious
explanation of this difference.”); In re Baxter Travenol Labs, 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant[.]”).
For the foregoing reasons, Appellant has not demonstrated any error
in the rejection of representative claim 21 and claims 26–29, 37, 39, and 40
grouped therewith. Accordingly, the obviousness rejection is sustained.
In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 21. As a
result, we are not persuaded the Examiner erred in rejecting claim 21.
Accordingly, we sustain the Examiner’s rejection of (i) claim 21, as well as
claims 26–29, 37, 39, and 40 grouped therewith; and (ii) claims 22–25, 30,
31, 34–36, and 38, which are argued for similar reasons.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
21, 26–29,
37, 39, 40
103 Ricks, Allen 21, 26–29,
37, 39, 40

22–25, 30,
31, 34, 35,
38
103 Ricks, Allen,
Stern
22–25, 30,
31, 34, 35,
38

36 103 Ricks, Allen,
Stern, Sekiguchi
36
Overall
Outcome
21–31, 34–
40

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

AFFIRMED