Bussat, Jean-Marie et al.

Patent Trials and Appeals Board

Feb 12, 2020

14335553 - (D) (P.T.A.B. Feb. 12, 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.
14/335,553 07/18/2014 Jean-Marie Bussat P18562US1 9330
62579 7590 02/12/2020
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
TESHOME, KEBEDE T
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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 JEAN-MARIE BUSSAT, BENJAMIN B. LYON,
SCOTT A. MYERS, and TERRY L. GILTON
____________

Appeal 2019-000532
Application 14/335,553
Technology Center 2600
____________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a), the final rejection of
claims 1, 3–7, 9, 10, 21, 23, 24, 26–29, and 31. Final Act. 2.2 Claims 2, 8,
22, and 30 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Apple Inc. Appeal Br. 3.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
April 16, 2018)); the Final Office Action (“Final Act.,” mailed October 16,
2017) and the Examiner’s Answer (“Ans.,” mailed August 9, 2018); and the
originally-filed Specification (“Spec.,” filed July 18, 2014). Rather than
repeat the Examiner’s findings and determinations and Appellant’s
contentions in their entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed subject matter “relates generally to electronic
devices, and more specifically, to sensors for electronic devices.” Spec. ¶ 2.
In particular, a method of manufacturing a sensor chip may include
“connecting two or more sensors together, thereby forming a sensor stack.
This may allow two or more sensors to detect data or parameters through the
same stack (e.g., vertical location).” Id. ¶ 25.
The Specification’s Figures 7A and 7B are reproduced below.

Figure 7A “is a diagram of data captured by a first sensor in the sensing
element during the user input shown in [Figure 6, and Figure 7B] is an
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image of data captured by a second sensor in the sensing element during the
user input shown in [Figure 6].” Id. ¶¶ 20–21. Figure 6 depicts finger 300
pressed against substrate 156 above vertically stacked sensors 122 and 124.
Id., Fig. 6. Figure 7A depicts touch location 306 in image 304, produced by
capacitive data corresponding to finger 300, as captured by first sensor 122
(id. ¶ 73); and Figure 7B depicts a fingerprint 310 of finger 300 in image
308 produced by data as captured by second sensor 124 (id. ¶ 74). See id.
¶ 72 (describing Fig. 6).
As noted above, claims 1, 3–7, 9, 10, 21, 23, 24, 26–29, and 31 stand
rejected. Claims 1, 21, and 27 are independent. Appeal Br. i (claim 1),
ii (claim 21), iii (claim 27) (Claims App.). Claims 3–7, 9, and 10 depend
directly or indirectly from claim 1, claims 23, 24, and 26 depend directly
from claim 21, and claim 28, 29, and 31 depend directly or indirectly from
claim 27. Id. at i–iii (Claims App.).
Claim 1, reproduced below with disputed elements emphasized, is
representative.
1. An electronic device, comprising:
a processor;
a sensing element in communication with the processor,
the sensing element comprising:
a first sensor configured to detect a touch input; and
a second sensor vertically aligned and bonded with a
major surface of the first sensor and configured to detect a
parameter associated with the touch input; and
a substrate bonded to one of the first or second sensors and
forming an external surface of the electronic device,
wherein the substrate is a functional component of the
electronic device.
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Id. at i (Claims App.) (emphases added). Independent claims 21 and
27 recite limitations corresponding to the disputed limitations of
claim 1 (id. at ii, iii), but independent claim 27 recites the additional
disputed step of “enhancing at least one of the first image or the
second image using the first and second parameters” (id. at 8; Ans. 7–
8).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
claims:
Name3 Number Published Filed
Greschitz US 2003/0103873 A1 June 5, 2003 Oct. 15, 2002
Chatterjee US 2010/0027854 A1 Feb. 4, 2010 July 31, 2008
Ferren US 2010/0315337 A1 Dec. 16, 2010 Dec. 31, 2009
Kerness US 2012/0187515 A1 July 26, 2012 Dec. 27, 2011
Kim US 2012/0206406 A1 Aug. 16, 2012 Feb. 15, 2012
Specifically, the Examiner rejects claims 1, 3–6, 9, 27–29, and 31 under 35
U.S.C. § 103 as obvious over the combined teachings of Kim and Chatterjee
(Final Act. 3–10); claim 7 under 35 U.S.C. § 103 as obvious over the
combined teachings of Kim, Chatterjee, and Ferren (id. at 10–11); claims 10,
21, 23, and 24 under 35 U.S.C. § 103 as obvious over the combined
teachings of Kim, Chatterjee, and Kerness (id. at 11–14); and claim 26 under

3 All reference citations are to the first named inventor only.
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35 U.S.C. § 103 as obvious over the combined teachings of Kim, Chatterjee,
Kerness, and Greschitz (id. at 15).
Appellant contests the obviousness rejections of independent claims 1,
21, and 27 (Appeal Br. 6–10) and relies on similar deficiencies in the
rejections of each independent claim to overcome the rejections of the
dependent claims (id. at 10–11). Because we determine that reversal or
affirmance of the rejections of the independent claims is dispositive, except
for our ultimate decision, we do not discuss the merits of the rejections of
claims 3–7, 9, 10, 23, 24, 26, 28, 29, and 31 further herein. We review the
appealed rejections of the independent claims for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Action
and the Answer as our own and add any additional findings of fact for
emphasis. We address the rejections of claims 1, 21, and 27 below.
ANALYSIS
1. Obviousness of Claims 1, 21, and 27 Over Kim and Chatterjee, Alone
or in Combination with Kerness
The Examiner finds that Kim teaches or suggests the majority of the
limitations of independent claim 1, including that a sensing element
comprises “a first sensor configured to detect a touch input; and a second
sensor vertically aligned and bonded with a major surface of the first
sensor.” Final Act. 3–4. The Examiner acknowledges, however, that “Kim
does not explicitly teach: the second sensor is configured to detect a
parameter associated with the touch input.” Id. at 4 (emphasis added).
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Nevertheless, the Examiner finds that Chatterjee teaches this
limitation. Id. (citing Chatterjee ¶¶ 73, 74, Figs. 4–7). In particular,
Chatterjee discloses:
In one implementation, the contact surface 410 may comprise of
an optical detector that can measure the biometric features of the
user’s fingers (e.g. fingerprint). Use of such an integrated
component enables any of the embodiments described with
FIG. 4 through FIG. 7 to serve as a biometric sensor feature. In
still other embodiment, the biometric sensor feature may be
provided through an independently positioned optical sensor
that detects the biometric information apart from the capacitive
or resistive layer that detects the finger position or movement.
Chatterjee ¶ 74 (emphases added). Further, the Examiner concludes
it would have been obvious to one of ordinary skill in the art at
the time the invention was filed to have modified the invention
of Kim to incorporate the teaching of Chatterjee to configure the
first sensor to detect a touch input and the second sensor to detect
a parameter associated with the touch input. The motivation of
combining these analogous arts is to utilize the teaching of
Chatterjee to provide a multi-purpose detector-based input
feature for a computing device.
Final Act. 4; see Chatterjee, Abstract (“The input feature is multi-
dimensional in ability to detect position information, applied pressure
and/biometric characteristics about the user or finger. The input feature may
also include a haptic feedback mechanism.”), ¶¶ 32–33 (describing benefits
of Chatterjee’s input features); see also Chatterjee, Fig. 16A (depicting
stacked sensors 1610 and 1630), ¶ 102 (describing Fig. 16A).
Appellant contends the Examiner fails to show that a person of
ordinary skill in the relevant art would have had reason to combine the
teachings of Kim and Chatterjee to achieve the devices, as recited in claim 1.
Appeal Br. 8. For the reasons given below, we disagree.
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First, Appellant contends, “Kim does not disclose any sort of second
sensor that can be modified by Chatterjee’s teachings.” Id. Nevertheless, as
the Examiner finds,
Kim teaches a sensing element (the touch screen 100 in Fig. 1
includes a first sensor and a second sensor), the sensing element
comprising: a first sensor configured to detect a touch input
(second sensor layer 20 in Fig. 1); and a second sensor vertically
aligned and bonded with a major surface of the first sensor and
configured to detect a parameter associated with the touch input
(first sensor layer 10 in Fig. 1). As such the sensor is composed
of two separate sensor layers (first sensor layer and second
sensor layer) which are vertically aligned.
Ans. 3–4; see Final Act. 3. Thus, the Examiner finds that Kim teaches a
multi-layer sensor having the structure recited in claim 1, and Kim teaches a
sensor that detects a touch input. As Appellant acknowledges,
Many devices use sensors to detect one or more
characteristics or parameters. For example, many touch-screen
electronic devices may include capacitive sensors (and/or
alternative sensors) that may detect a user’s touching the screen
of the device, and register this as an input. Often, some sensors
may require one or more components to be mounted on a
substrate, such as silicon.
Spec. ¶ 3 (“Background”); see id. ¶ 88. As with the devices recited in
claim 1, Kim teaches that multiple sensors may be used. See Kim ¶ 55 (“For
example, suitable results may be achieved if the described techniques are
performed in a different order and/or if components in a described system,
architecture, device, or circuit are combined in a different manner and/or
replaced or supplemented by other components or their equivalents.”
(emphasis added)). Therefore, we are not persuaded Kim does not teach
multiple sensors and, in particular, a second sensor that may be modified by
Chatterjee’s teachings.
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Second, Appellant contends, “modifying one of Kim’s
conductive/sensor layers would seem to render Kim’s singular sensor
inoperable (e.g., because Kim’s singular sensor relies on both
conductive/sensor layers to sense a single parameter - capacitance).” Appeal
Br. 8; see MPEP § 2143.01(V), (VI).4 Appellant, however, appears to
misunderstand the Examiner’s combination of the teachings of Kim and
Chatterjee. See Univ. of Maryland Biotechnology Institute v. Presens
Precision Sensing GmbH, 711 Fed. Appx. 1007, 1011 (Fed. Cir. 2017)
(finding that the location of sensors in the proposed combination would not
require “substantial reconstruction and redesign of the element shown” in
one reference, as prohibited by In re Ratti, 270 F.2d 810, 813 (CCPA
1959)).
With regard to claim 1, the Examiner relies on Kim to teach multiple
sensor layers, the relationship between the sensor layers and the substrate,
and the substrate as a functional component of the electronic device. Final
Act. 3–4 (citing Kim ¶¶ 44, 54, Fig. 1); Ans. 3–4. Chatterjee teaches that
multiple sensors measuring different touch-related parameters may be
stacked in devices, such as those described by Kim. Chatterjee ¶¶ 73, 74,
102, Figs. 4–7, 16A; see Final Act. 4; Ans. 4–5. We are persuaded that a
person of ordinary skill in the art would have understood the benefits of
combining the teachings of Chatterjee with those of Kim to achieve devices,
as recited in claim 1. See Kim ¶ 55 (quoted above); Chatterjee ¶¶ 2, 3, 32,
33.
As in Presens, we are persuaded here that the Examiner’s

4 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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combination of the teachings of Kim and Chatterjee is “[t]he combination of
familiar elements according to known methods [and] is likely to be obvious
when it does no more than yield predictable results.” Presens, 711 Fed.
Appx. at 1011 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007)). Thus, we are not persuaded that the proposed combination would
improperly change a fundamental principle of operation of Kim.
Third, Appellant contends,
Chatterjee only discloses an “integrated component” comprising
a first sensor and a second sensor (e.g., a touch sensor and a
biometric sensor). Chatterjee does not disclose ‘a second sensor
vertically aligned and bonded with a major surface of the first
sensor and configured to detect a parameter associated with the
touch input,” as recited in claim 1.
Appeal Br. 8. Although, as noted above, Chatterjee discloses stacked
sensors (see, e.g., Chatterjee ¶ 102, Fig. 16A), the Examiner relies on Kim,
rather than Chatterjee, to teach the stacked sensors bonded to a substrate.
Final Act. 3 (citing Kim ¶¶ 44, 54, Fig. 1); Ans. 3 (citing Kim ¶ 36, Fig. 1);
see Kim ¶ 55. Further, making an integral component separable generally is
not sufficient to render a proposed device non-obvious. See MPEP
§ 2144.04(V)(C). Thus, we are not persuaded by the contention that the
Examiner erred.
Each of independent claims 1, 21, and 27 recites limitations
corresponding to the limitations discussed above. Appeal Br. i–iii (Claims
App.). Appellant raises substantially the same contentions regarding these
limitations with respect to each of the independent claims. See Appeal
Br. 6–10. We are equally unpersuaded by these contentions with respect to
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claims 215 and 27, as we are with respect to claim 1.
Nevertheless, with respect to claim 27, Appellant also contends that
Chatterjee does not teach or suggest “enhancing at least one of the first
image or the second image using the first and second parameters.” Appeal
Br. 9 (quoting id. at iii (Claims App.)). In particular, Appellant contends,
“Chatterjee does not disclose ‘enhancing at least one of the first image or the
second image,’ because Chatterjee does not disclose the existence of two
images, and does not disclose any sort of enhancement that might be made
to an image.” Id. (emphasis added). We disagree.
As noted above, the Specification’s Figure 7A depicts “a touch
location 306 may be detected in an image 304 or plane corresponding to the
location on the substrate 126 where the user pressed his or her finger 300”;
and its Figure 7B depicts “an image of the finger 300 as the finger 300
applies an input to the substrate 156[, and t]he image 308 may include a
fingerprint 310 of the finger 300.” Spec. ¶¶ 73, 74; see id., Fig. 6. Referring
to Figure 6, the Specification explains that “the sensor chip 120 may be used
to detect a fingerprint input, as well as one or more characteristics of the
input, such as pulse rate, vein mapping, blood flow, etc., that may be used to
enhance the initial sensed input.” Id. ¶ 77 (emphasis added); see Appeal
Br. 9 (citing Spec. ¶¶ 77, 82). With respect to each of Figures 7A and 7B,
the Specification explains that each figure is merely a simplified diagram of
data captured by the respective sensors. Spec. ¶¶ 73, 74.

5 With respect to claim 21, the Examiner relies on Kerness to teach or
suggest a lens may be included in the combined teachings of Kim and
Chatterjee. Final Act. 13–14. Appellant does not contest the combination of
the teachings of Kerness with those of Kim and Chatterjee, for this purpose.
Appeal Br. 9–10.
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The Examiner finds Chatterjee discloses “an optical detector that can
measure the biometric features of the user’s fingers (e.g. fingerprint)” and a
“capacitive or resistive layer that detects the finger position or movement.”
Chatterjee ¶ 74. Further, Chatterjee discloses:
If an optical, RF or capacitive sensor is used (such as in the case
of an integrated biometric position/movement sensor), an image
or other data may be detected that correlates to finger velocity or
motion. The finger detecting operation may detect the
position/movement of the finger at the start and/or end of the
swipe (e.g. range measurement), as well as record instances
between, and the time for the finger to complete the swipe (e.g.
velocity) or move to points between (e.g. acceleration or
velocity).
Id. ¶ 56. Moreover, Chatterjee discloses “[t]he input feature is multi-
dimensional in ability to detect position information, applied pressure
and/biometric characteristics about the user or finger.” Id., Abstract
(emphasis added).
Based on Chatterjee’s disclosures and the Specification’s explanations
of the data, i.e., the recited “images,” captured by the sensors; additional
data that may be captured, and at least one of those images may be enhanced
based on that additional data. Thus, the Examiner finds that Chatterjee
teaches or suggests the recited “enhancing” step. Final Act. 8 (citing
Chatterjee ¶ 56, Fig. 1); Ans. 8; see Chatterjee, Abstract (detecting
“biometric characteristics about the user or finger”), ¶ 43–44 (detecting and
employing “finger-print features”). We agree.
We are not persuaded that the Examiner erred in rejecting claim 1, 21,
or 27 as obvious over the combined teachings of Kim and Chatterjee alone
or in combination with the teachings of Kerness. Consequently, we sustain
the rejections of independent claims 1, 21, and 27.
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2. Dependent Claims 3–7, 9, 10, 23, 24, 26, 28, 29, and 31
Each of claims 3–7, 9, 10, 23, 24, 26, 28, 29, and 31 depends directly
or indirectly from independent claim 1, 21, or 27. Appeal Br. i–iii (Claims
App.). As noted above, Appellant challenges the rejections of the dependent
claims for the same reasons as their base claims. See id. at 10–11. Because
we are not persuaded the Examiner erred with respect to the rejections of
claims 1, 21, and 27; we also are not persuaded the Examiner erred with
respect to the rejections of claims 3–7, 9, 10, 23, 24, 26, 28, 29, and 31. For
this reason, we sustain the rejections of those claims.
DECISIONS
1. The Examiner did not err in rejecting claims 1, 3–7, 9, 10, 21, 23, 24,
26–29, and 31 as obvious over the combined teachings of Kim and
Chatterjee, alone or in combination with the teachings of one or more
of Ferren, Kerness, and Greschitz.
2. Thus, on this record, claims 1, 3–7, 9, 10, 21, 23, 24, 26–29, and 31
are not patentable.
CONCLUSION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1, 3–7, 9, 10, 21, 23, 24, 26–29, and 31.

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In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 3–6, 9,
27–29, 31
103 Kim, Chatterjee 1, 3–6, 9,
27–29, 31

7 103 Kim, Chatterjee,
Ferren
7
10, 21, 23,
24
103 Kim, Chatterjee,
Kerness
10, 21, 23,
24

26 103 Kim, Chatterjee,
Kerness, Greschitz
26
Overall
Outcome
1, 3–7, 9, 10,
21, 23, 24,
26–29, 31

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