Ex Parte Gibson et al

Patent Trial and Appeal Board

Oct 12, 2018

14164840 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/164,840 01/27/2014
63565 7590 10/12/2018
HILL-ROM SERVICES, INC.
Legal Dept., Mail Code K04
1069 State Road 46 East
BATESVILLE, IN 47006
FIRST NAMED INVENTOR
Luke Gibson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Nl-36912 3123
EXAMINER
KOLDERMAN, NICHOLAS E
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
10/12/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUKE GIBSON, JAMES N. HOFFMASTER,
TIMOTHY J. RECEVEUR, FRANKE. SAUSER,
GREGORY J. SHANNON, JOSHUA A. WILLIAMS, and
BRYANW. WUEBKER1
Appeal2017-009169
Application 14/164,840
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a sensing pad. The Examiner
rejected the claims as obvious under 35 U.S.C. § 103 and indefinite under
35 U.S.C. § 112. Appellants appeal the rejection pursuant to 35 U.S.C.
§ 134. We have jurisdiction under 35 U.S.C. § 6(b).
The rejections are affirmed-in-part. A new ground of rejection is set
forth pursuant to 37 C.F.R. § 41.50(b).
1 The Appeal Brief ("Br."), page 1, identifies Hill-Rom Services, Inc. as the
real party in interest.
Appeal2017-009169
Application 14/164, 840
STATEMENT OF THE CASE
Claims 1-21 stand finally rejected as unpatentable by the Examiner as
follows:
1. Claims 1-5, 7, 8, 11, 12, 15, 16, 20, and 21 under pre-AIA
35 U.S.C. § I03(a) as obvious in view of Taylor '120 (U.S. Patent No.
6,155,120; issued Dec. 5, 2000) ("Taylor '120") and Alin Drimus et al.,
Design of a flexible tactile sensor for classification of rigid and deformable
objects, ROBOTICS AND AUTONOMOUS SYSTEMS 1-13 (2012) ("Drimus").
Ans. 2.
2. Claim 6 under pre-AIA 35 U.S.C. § I03(a) obvious in view of
Taylor' 120, Drimus, and Z. Del Prete et al., A novel pressure array sensor
based on contact resistance variation: Metrological properties, 72.2
REVIEW OF SCIENTIFIC INSTRUMENTS 1548-53 (2001) ("Del Prete"). Ans. 8.
3. Claim 9 under pre-AIA 35 U.S.C. § I03(a) as unpatentable over
Taylor '120, Drimus, and Steiner et al. (WO Application 2012/114298 A2;
pub. Aug. 30, 2012) ( "WO '298"). 2 Ans. 9.
4. Claims 10 and 17-19 under pre-AIA 35 U .S.C. § I03(a) as
unpatentable over Taylor '120, Drimus, and Taylor '961 (U.S. Patent
Publication No. 2013/0091961 Al; pub. Apr. 18, 2013) ("Taylor '961").
Ans. 10.
5. Claims 13 and 14 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Taylor '120, Drimus, and Podoloff (U.S. Patent No.
5,033,291; issued July 23, 1991) ("Podoloff'). Ans. 13.
6. Claim 7 under pre-AIA 35 U.S.C. § 112, second paragraph, as
2 The Examiner referred to WO '298 as "Shalom" which is the last named
inventor of the publication.
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Application 14/164, 840
indefinite. Ans. 2.
Claims 1 and 15 are the independent claims on appeal. Claim 1 is
reproduced below:
1. A sensing pad comprising:
a piezoresistive layer having a top side and a bottom side;
a top electrically conductive layer comprising a plurality
of electrically conductive top strips extending in a first direction
along the top side of the piezoresistive layer and defining a top
interstrip space between each neighboring pair of top strips;
a bottom electrically conductive layer comprising a
plurality of electrically conductive bottom strips extending in a
second direction along the bottom side of the piezoresistive
layer and defining a bottom interstrip space between each
neighboring pair of bottom strips, the second direction being
nonparallel to the first direction;
top and bottom adhesive layers holding the respective top
and bottom strips against the piezoresistive layer so as to inhibit
relative displacement of the strips relative to the piezoresistive
layer and relative to each other.
OBVIOUSNESS REJECTIONS
Claim 1 comprises the following elements:
(1) piezoresistive layer;
(2) top electrically conductive layer comprising a plurality of
electrically conductive bottom strips which are oriented in a first direction;
(3) bottom electrically conductive layer comprising a plurality of
electrically conductive bottom strips which are oriented in a second
direction; and
(4) top and bottom adhesive layers holding the respective top and
bottom strips against the piezoresistive layer.
The ( 4) top and bottom adhesive layers are required by the claim "to
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inhibit relative displacement of the strips [(2) and (3)] relative to [(1)] the
piezoresistive layer and relative to each other."
The sandwich structure of the sensing pad is illustrated in Figure 1 of
the Specification which is reproduced below (with added annotations
identifying the name of the elements in the sensing pad).
'
/
a,~h5(/e ;~"{er 4E ~.
)\_
56 ' { \ 64
\
\
\
'{ ...
\
20 74
FIG. 1
Figure 1 of the Specification shows cover 70, adhesive layers 46 and
56, conductive strips 42 and 52, and piezoresistive layer 30.
Claim 1
The Examiner found that Taylor '120 describes a sensing pad with ( 1)
a piezoresistive layer, (2) a top electrically conductive layer, and (3) a
bottom electrically conductive layer, where each conductive layer is
comprised of strips oriented in the same directions as required by claim 1.
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Final Act. 4. The Examiner found that Taylor' 120 does not describe (4) top
and bottom adhesive layers which "inhibit relative displacement of the strips
[(2) and (3)] relative to [(1)] the piezoresistive layer and relative to each
other" as recited in the claim. Id. at 5.
To meet the deficiency in Taylor '120, the Examiner cited Drimus as
teaching a sensor pad comprising top and bottom adhesive layers holding the
respective top and bottom strips against the piezoresistive layer. Final Act.
5. The Examiner concluded it would have been obvious to one of ordinary
skill in the art to have modified Taylor '120 to incorporate top and bottom
adhesive layers holding the respective top and bottom strips against the
piezoresistive layer to "protect the sensor from water incursion, secure
conductive strips in place, and form an integrated, stable sensor." Id.
The Examiner found that the adhesive layers would be capable of inhibiting
displacement of the strips as required by the claim. Id.
The Examiner also found that Taylor' 120 provides further reason to
have utilized Drimus' adhesive layers because Taylor '120 discloses that the
conductive strips "are heat sealed or otherwise bonded to encapsulate the
piezoresistive mesh layer, thereby forming a thin, flat, flexible laminated
sensor array" (Taylor' 120, col. 5, 11. 51-55). Final Act. 5 (quoting from
Taylor' 120).
Discussion
Appellants provide a schematic of a sensing pad that they assert is
described in Taylor' 120 and contend that none of the adhesive layers
describe in it will inhibit displacement of the conductive strips relative to
each other or relative to the piezoresistive layer as required by claim 1. Br.
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12. Appellants contend that the Examiner did not give proper weight to the
limitation that the adhesive layers inhibit displacement of the conductive
strips by identifying it as an "intended use" limitation. Br. 9--10.
Appellants also argue that the Examiner has quoted Taylor' 120 out of
context with respect to the adhesive associated with the conductor strips. Id.
at 13.
Id.
Because Taylor [ '120 's] peripherally bonded construction does
not hold the conductive strips of the laminations against the
piezoresistive layer in such a way as to inhibit displacement of
the conductive strips relative to each other and relative to the
piezoresistive layer, the displacement inhibiting feature of
applicant's claim is absent from the Taylor' 120 reference, not
present as required by MPEP [§] 2143A.
Appellants contend that Drimus does not describe adhesive layers
positioned "to inhibit relative displacement of the strips [ (2) and (3)] relative
to [ (1)] the piezoresistive layer and relative to each other" as required by
claim 1. Br. 14--15. Rather, Appellants contend that the "adhesive connects
the conductive threads to the PVC, not to the piezoresistive rubber." Id. at
16.
To begin, the Examiner did not ignore the recited limitation that the
"top and bottom adhesive layers holding the respective top and bottom strips
against the piezoresistive layer so as to inhibit relative displacement of the
strips relative to the piezoresistive layer and relative to each other." Rather,
the Examiner explicitly identified a reason to have modified Taylor '120
with Drimus' teaching, and found that Drimus' adhesive layer would be
"capable" of performing the recited function. Final Act. 5, 16.
We do not agree that the Examiner took Taylor' 120's teaching out of
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context. The Examiner did not find that Taylor '120 describes the same
adhesive structure as required, but rather cited Taylor' 120 as providing a
reason to have utilized the adhesive layer ofDrimus. Taylor '120 teaches:
The piezoresistive mesh layer is sandwiched between a pair of
thin polymeric conductor strip laminations, preferably made of
nylon. Inner facing surfaces of the two conductor strip
laminations have formed thereon adjacent rows of spaced apart
row and column conductors, respectively. Peripheral
contacting surfaces of the conductor strip laminations are heat
sealed or otherwise bonded to encapsulate the piezoresistive
mesh layer, thereby forming a thin, fiat, flexible laminated
sensor array.
Taylor '120, col. 5, 11. 45-55.
Based on the express teaching in Taylor' 120 of sealing the periphery
of the strips "to encapsulate the piezoresistive mesh layer," the Examiner
had reason to find that integral sandwiched structures were known in the art,
providing additional motivation to have used Drimus' adhesive layer in
Taylor '120 to produce an integrated structure. Final Act. 16.
Appellants challenge the Examiner's finding with regard to Drimus
teaching an adhesive layer "holding the respective top and bottom strips
against the piezoresistive layer" as required by the claim. Appellants
provide a schematic of Drimus to support their contention that the adhesive
adheres the conductive strips, but not to the piezoresistive layer.
First, we find Appellants' fictionalized drawing to be extraneous,
since Drimus has an actual drawing of its device. Br. 15. Figure 5 of
Drimus is reproduced below ( annotated herein with "covered by adhesive
layer"):
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Conductive
threads
·~
··::Flexible substrates
cove!'e~ bv
, ~-- ..,t q,lhes1ve i~yer
~ ~y'\ .... Piezoresistiverubber
Figure 5 of Drimus shows the conductive strips on a flexible substrate.
Drimus explains:
To build a tactile-array sensor, we start with a flexible substrate
made of PVC covered by an adhesive layer. On top of this
substrate, we lay conductive threads spaced 2.5 mm apart in a
series of eight parallel lines. On top of the threads, we add a
piezoresistive rubber patch.
Drimus 4 ( col. 1, bottom paragraph). The conductive threads on both sides
of the piezoresistive layer correspond to the claimed top and bottom
"electrically conductive layer[ s ]".
It is true, as indicated by Appellants, that Drimus does not expressly
teach that the adhesive is connected to the piezoresistive layer. Br. 16.
However, the Examiner reasonably found applying adhesive to the flexible
substrate and then adding the piezoresistive patch on top of the conductive
threads would result in adherence of the piezoresistive patch to the substrate
and "holding the respective top and bottom strips [ conductive threads]
against the piezoresistive layer" because Drimus does not describe any other
structure which would hold the substrate to the piezoresistive layer. Thus,
because the PVC substrate is "covered by an adhesive layer," it is reasonable
to believe that, in the areas where the substrate is exposed and not covered
by the conductive threads, the adhesive layer would adhere to the
piezoresistive layer and hold the conductive threads to it. Appellants have
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not provided sufficient evidence that the Examiner erred in this finding.
While there is no express teaching in Drimus that the conductive
threads are held to the piezoresistive layer as required by claim 1 ("top and
bottom adhesive layers holding the respective top and bottom strips against
the piezoresistive layer"), it is not necessary for the Examiner to have
established an express teaching as long as the Examiner had a reasonable
basis to believe that the limitation is met. As explained above, the Examiner
had a reasonable basis for making the finding because the adhesive is in the
same location as claimed. The burden is properly shifted to a patent
applicant to show that the limitation is not met by the prior art when there is
a factual basis to believe that the limitation is possessed by the prior art.
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on "inherency" under 35 U.S.C.
§ 102, on "prima facie obviousness" under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted).
Appellants' did not meet this burden.
Appellants also argue that the Examiner did not establish that the
adhesive layer of Taylor '120 as modified by Drimus would prevent
displacement of the strips as recited in claim 1. Br. 13, 15-16. The same
principles of Best apply. The Examiner found that both Taylor '120 and
Drimus teach strips adhered to the piezoresistive layer (Final Act. 5) in the
same location as claimed, shifting the burden to Appellants to prove that the
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displacement limitation is not met. Appellants' attorney argues that the
adhesive in Drimus could not inhibit slippage of the threads, but provide no
objective evidence or scientific reasoning to support this argument when
Drimus has substantially the same structure as claimed. Br. 15-16. An
argument made by counsel in a brief does not substitute for evidence lacking
in the record. Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997). Indeed, it does not seem reasonable that Drimus' structure
would permit slippage of the conductive threads when Drimus' purpose is
configure the threads "in such a way that the conductive threads are
perpendicular to the bottom ones and face the piezoresistive material."
Drimus 4 ( second col.). Thus, Appellants did not meet the burden of
showing that the Drimus does not meet the claimed limitation.
Appellants contend that the Examiner did not provide a "technical
basis" for concluding it would have been obvious to combine Taylor '120
and Drimus. Br. 14. We do not agree. The Examiner provided a reason to
have sealed the strips to the piezoresistive layer, namely, to provide an
encapsulated piezoresistive mesh (Taylor '120, col. 5, 11. 45-55) and to
secure the conductive strips in place. Final Act. 5. The reasoning comes
from Taylor '120's express disclosure of sealing and encapsulating the
piezoresistive layer. The Examiner found that Drimus' covered substrate
would serve the same sealing purpose to "protect the sensor from water
incursion, secure conductive strips in place, and form an integrated, stable
sensor." Id. Based on this disclosure, one of ordinary skill in the art would
have had reason to have used Drimus' flexible substrates covered by
adhesive to encapsulate the piezoresistive layer, thereby holding the strips in
place.
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Appellants have not identified a defect in the Examiner's reasoning
nor factual findings, other than to say it is not supported. However, the
Examiner reasoning is sound and logical: what purpose would a sensor be if
it fell apart and/or failed to keep the conductive threads in the desired
configuration? Thus, the disclosed adhesive logically is used to hold the
sensor together, particularly in view of Taylor '120 's teaching about sealing
along the periphery to produce an integrated structure.
Appellants point out that Taylor '120 only describes sealing the
periphery of the pad (Br. 13), but the Examiner only relied on Taylor' 120's
teaching as reason to have made an integrated stable sensor and to have
adopted the adhesive layer described in the analogous sensor of Drimus.
Appellants also argue that Drimus does not apply glue between the
electrodes and the piezoresistive layer which "actually teaches away from a
construction which inhibits displacement of the electrodes ( conductive
threads) relative to the piezoresistive rubber and therefore relative to each
other." Br. 17. The claims do not require adhesive between the conductive
layer and the piezoresistive layer, but rather are held in such a way that they
do not displace relative to each other. Drimus has adhesive in the same
position as in the claims.
Taylor' 120 provides reason to have pushed the substrate against the
periphery of the strips to seal and encapsulate the piezoresistive layer.
Appellants have not provided an adequate explanation as to why such a
modified structure would show displacement of the strips, while the claimed
structure would not. Appellants have not claimed or identified a structure in
the claims that inhibits conductive strip displacement and which is absent
from the combination of Taylor '120 and Drimus. See Br. 17 (asserting that
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the adhesive is "arranged" to inhibit displacement but provides no
explanation as to why the arrangement described in Taylor' 120 as modified
by Drimus would lack such arrangement when it comprises an adhesive
layer at the same location as claimed with the goal of sealing the strips to
form an encapsulated piezoresistive mesh layer.).
Appellants contend that the displacement limitation is absent from the
prior art. Br. 13. Appellants argue that "[ a ]n absent element cannot serve as
either an element to be modified or as the modification itself." Id. This
argument is not persuasive. Rejections under § 103 do not require that all
the elements be present in a single prior art publication, as long as each
element is identified in the prior art and the Examiner provides a sound
reason, as the Examiner did here, to have combined the elements as claimed.
See MPEP § 2143A (referenced by Appellants). As explained above, both
Taylor '120 and Drimus teach adhesives in the same position, providing a
basis for the Examiner to have shifted the burden to Appellants to prove that
the adhesives in the same position would not inhibit displacement of the
strips. This burden was not met.
For the foregoing reasons, we affirm the rejection of claim 1 as
obvious in view of Taylor '120 and Drimus.
Claims 5-14 and 21 were not separately argued and fall with claim 1.
Br. 5.
Claims 15 and 1 7
Claim 15 is directed to a making a sensor pad which has substantially
the same structure as the sensor pad of claim 1. Appellants' arguments are
essentially duplicative to the arguments made for claim 1. Br. 26-28.
Appellants argue that "there is no disclosure that the peripheral bonding [in
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Taylor '120, that] holds the conducting strips to the piezoresistive sheets to
inhibit displacement of the conductive strips relative to the piezoresistive
sheet or relative to each other." Id. at 27. Claim 15 does not recite the
displacement limitation. Consequently, we do not understand the relevance
of this argument to claim 15.
The rejection of claim 15 is affirmed for the same reason as for
claim 1.
Appellants grouped claim 17 with claim 15, but did not provide
separate arguments for its patentability. Br. 5. Thus, claim 17 falls with
claim 15.
Claim 18
Claim 18, depends from claim 15 and 17 and recites the following
additional limitation:
step of disposing the first cover panel along the first side is
carried out before the adhesive holding the first strips to the
piezoresistive sheet has cured [("curing" limitation)], and the
step of disposing the second cover panel along the second side
is carried out before the adhesive holding the second strips to
the piezoresistive sheet has cured [ ("curing" limitation)].
Claim 18, depends directly from claim 17 (which depends in tum
from claim 15) which recites:
disposing a first cover panel along the first side of the
subassembly;
disposing a second cover panel along the second side of
the subassembly; and
securing the first and second cover panels to each other at
perimeters thereof to enclose the subassembly.
With respect to the curing limitations in claim 18, the Examiner
found:
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Drimus further teaches the method wherein the step of
disposing the first cover panel (base layer) along the first side is
carried out before the adhesive holding the first strips to the
piezoresistive sheet has cured (i.e., piezoresistive rubber will
adhere only if adhesive layer is uncured), and the step of
disposing the second cover panel ("Next, a similar layer to the
base layer is added on top", (page 4, paragraph 6) along the
second side is carried out before the adhesive holding the
second strips to the piezoresistive sheet has cured (page 4,
paragraphs 5-6, See also Figure 5).
Final Act. 12 (emphasis added).
The Examiner found reason to have modified Taylor' 120 by
performing the curing as claimed to "promote proper adhesion of conductive
layers to substrate as well as piezoresistive layer" and to achieve "the
desired sandwiched formation for proper sensor functioning." Id. at 13.
Appellants argue that Drimus makes no explicit mention of curing the
adhesive. Br. 32. Appellants also argue that Drimus does not "even
disclose[] if the adhesive is one that requires curing as assumed in the Office
action (see the parenthetical statement at p. 12 lines 18-20) or if it is simply
a sticky layer like the adhesive on a strip of adhesive tape." Id.
An explicit suggestion to modify the prior art is unnecessary to
establish obviousness. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007). KSR held that an obviousness "analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. "A person of ordinary
skill is also a person of ordinary creativity, not an automaton." Id. at 421.
In this case, the Examiner provided a logical reason to apply the cover
panel prior to curing, namely, because a cured adhesive would not be sticky.
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Appellants have not identified a flaw in this reasoning. While Drimus does
not teach using an uncured adhesive, the Examiner provide a scientific
explanation in response to Appellants' argument as to why a glue would be
selected and how a glue can be an adhesive which undergoes curing. Ans.
3 5. Appellants did not respond to this argument.
Appellants also assert there is an inconsistency between the rejection
of claim 2 and the rejection of claim 18. Br. 32. Specifically, Appellants
argue that the Examiner relied upon the insulating strips of Taylor '120 as
the cover in the rejection of claim 2, but in the rejection of claim 18, the
Examiner "portrays" Drimus' entire base layers (PVC and adhesive layer,
plus conductive thread) as the equivalent of the claimed first and second
panels. Id. at 33.
We do not agree with Appellants' characterization of the rejection.
First, as to the stated inconsistency between the rejections of claims 2
and 18, the rejections are independent rejections and involve different
references. Final Act. 11. Claim 2 recites a "cover," while claims 17 and 18
have a "cover panel." The rejection of claims 17 and 18 which have the
"cover panel" limitation cite an additional reference, Taylor '961, not cited
in the rejection of claim 2. There is no inconsistency in the rejections when
the Examiner decides to cite different structures in the prior art to meet the
limitations of a "cover" and "cover panel," respectively. Appellants did not
provide a legal basis for their argument. Br. 34.
Secondly, we can find no support for Appellants' allegation that the
Examiner is citing the base layer and conductive threads of Drimus as the
cover panel.
In the rejection of claim 17, the Examiner relied upon Taylor '961 for
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teaching cover panels. The Examiner cited Taylor '961 as teaching
disposing a first cover panel along the first side of the
subassembly (Figure 2, 30); disposing a second cover panel
along the second side of the subassembly (Figure 2, 38); and
securing the first and second cover panels to each other at
perimeters thereof to enclose the subassembly ("Top cover 30
and bottom cover 3 8 are sealed together about their periphery",
paragraph [0021 ]).
Final Act 12.
Id.
The Examiner found:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have modified Taylor [']120
in view of Drimus to incorporate disposing a first cover panel
along the first side of the subassembly; disposing a second
cover panel along the second side of the subassembly; and
securing the first and second cover panels to each other at
perimeters thereof to enclose the subassembly described Taylor
[']961.
Thus, it is clear that the Examiner cited Taylor '961 for teaching a
cover panel.
Id.
In rejecting claim 18, the Examiner further stated:
Drimus further teaches the method wherein the step of
disposing the first cover panel (base layer) along the first side is
carried out before the adhesive holding the first strips to the
piezoresistive sheet has cured (i.e., piezoresistive rubber will
adhere only if adhesive layer is uncured), and the step of
disposing the second cover panel ("Next, a similar layer to the
base layer is added on top", (page 4, paragraph 6) along the
second side is carried out before the adhesive holding the
second strips to the piezoresistive sheet has cured (page 4,
paragraphs 5-6, See also Figure 5).
Here, the Examiner invokes Drimus' teaching of a "base layer" as a
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cover panel in providing a reason to have utilized an uncured adhesive to
attach to the piezoresistive layer. The Examiner does not refer to the panel
plus the conductive threads as the cover. Appellants' characterization of the
rejection is not supported by the facts in this record.
For the foregoing reasons, we affirm the Examiner's obviousness
rejection of claim 18.
Claim 19
Claim 19 depends from claim 18 and further recites "the step of
disposing the first cover panel is followed by smoothing the first cover panel
against the first side of the piezoresistive sheet and the first set of electrically
conductive strips" and the same "smoothing" step for the second cover
panel. The claim requires that the "smoothing" is carried out "so that the
first and second cover panels occupy spaces between neighboring
conductive strips and adhere to the piezoresistive sheet."
The Examiner found that Drimus describes the steps of "smoothing"
such that "the first and second cover panels occupy spaces between
neighboring conductive strips and adhere to the piezoresistive sheet." Final
Act. 13.
Appellants contend that there is no mention of "smoothing" in
Drimus. Br. 35-36.
We agree with Appellants that there is no explicit mention of
smoothing in Drimus. However, if the base layer/cover panel of Taylor '961
and Drimus is added as a cover panel to the piezoresistive element, it would
be routine to smooth it down to "promote", as found by the Examiner,
"proper adhesion of conductive layers to substrate as well as piezoresistive
layer." Final Act. 13. We take note of the fact that "smoothing" one surface
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to another is conventionally done when surfaces are adhered together. Such
"smoothing" would result in the cover panel attaching to the spaces between
the strips because the smoothing action would push the panel into the spaces.
Taylor' 120 provides additional to smooth the panels such that they occupy
the spaces between the periphery, namely, to produce an encapsulated
piezoresistive mesh layer. Taylor '120, col. 5, 11. 45-55.
Appellants attempt to distinguish the claims, arguing "[h ]ow can the
'cover' (strips 38, 39) be smoothed against something they are coplanar with
(strips 31, 32)?" Br. 36. This argument is not persuasive. The Examiner's
rejection is based on the cover panel as being supplied by Taylor '961 and
Drimus. Strips 3 8 and 39 of Taylor '120 were not cited by the Examiner in
the rejection of claim 19 as serving as the cover panel. Indeed, Appellants
are aware that the strips of Taylor '120 were not cited in the rejection as the
cover since they expressly found this to be inconsistent with the rejection of
claim 2. Id. at 32.
Claims 2- 4, 16, and 20
Claim 2 depends from claim 1 and further requires a "cover." The
cover is recited in the claim as "having a top side that covers the top strips
and a bottom side that covers the bottom strips" and "occupying the top and
bottom interstrip spaces so as to prevent neighboring top strips from
contacting each other and to prevent neighboring bottom strips from
contacting each other."
To meet this limitation, the Examiner cite the insulating strips
described by Taylor' 120. Taylor' 120 teaches:
In regions exterior to piezoresistive layers 33 of sensor
elements 30, column and row conductive strips 31 and 32 are
electrically isolated from one another, to prevent short
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circuiting, by means of thin column and row insulating strips 3 8
and 39, respectively. The insulating strips may be made of any
suitable electrically insulating material, such as nylon. In the
preferred embodiment, insulating strips 3 8 and 39 are integral
with conductor strips 31 and 32, and formed therefrom by
photoetching conductive plating on the strips where insulating
areas are required.
Taylor '120, col. 9, 11. 55---65.
We agree with Appellants that the strips in Taylor' 120 cannot be
interpreted to be a "cover" as recited in claim 2 because the strips do not
have a "top side" and "bottom side" covering the top and bottom conductive
strips respectively, as required by the claim, but rather are individual strips
between the conductive strips and are not connected in such a way that they
could be characterized as a cover.
For this reason, we reverse the rejection of claim 2, and claims 3, 4,
16, and 20 which either depend from claim 2 or rely upon the same
disclosure in Taylor '120 for a cover.
INDEFINITENESS
Claim 7 is directed to the sensing pad of claim 1, and further recites
"wherein the adhesive layers are substantially continuous." The Examiner
found the term "indefinite" under 35 U.S.C. § 112, second paragraph,
because the term is not defined in the Specification nor does the
Specification provide "a standard for ascertaining the requisite degree."
Final Act. 3.
This rejection is reversed. Claim 1 requires the adhesive layers "to
inhibit relative displacement of the strips relative to the piezoresistive layer
and relative to each other." Claim 1 does not require the layer to be
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continuous or substantially continuous or local in only some areas. Claim 7,
depends from claim 1, and further limits the layers to being "substantially
continuous," namely, a layer which has a considerable or large portion
which is continuous, while still capable of inhibiting the relative
displacement of the strips. Thus, the scope of the dependent claim would be
understood by one of ordinary skill in the art.
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 4I.50(b). The rejection is as follows:
Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious in view of
Taylor '120, Drimus, and Taylor '961.
As the Examiner found for claim 17 (Final Act. 12), Taylor '961
describes first and second cover panels which, when sealed together, form a
cover with a top and bottom side as required by the claim. Taylor '961 ,r 21.
Taylor '961 establishes that it would be routine to provide a sensing pad
with a cover in order to protect it, making it obvious to cover the sensing pad
of Taylor '120 as modified by Drimus.
With regard to claims 3, 4, 16, and 20, we leave to the Examiner to
determine the obviousness of these claims in view of the cover described in
Taylor '961.
SUMMARY
The obviousness rejections of claims 1, 5-15, 17-19, and 21 are
affirmed.
The obviousness rejections of claims 2--4, 16, and 20 are reversed.
The indefiniteness rejection of claim 7 is reversed.
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A new ground of rejection of claim 2 is set forth pursuant to 37 C.F.R.
§ 4I.50(b).
TIME PERIOD; NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.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:
When the Board enters such a non-final decision, 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. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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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)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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