Ex Parte Haffenden et al

Patent Trial and Appeal Board

Mar 28, 2016

12012015 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/012,015 01/30/2008
10948 7590 03/30/2016
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
FIRST NAMED INVENTOR
Ian Haffenden
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.
884A.0191.Ul(US) 1560
EXAMINER
CHANG, KENT WU
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
USPTO@hspatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN HAFFENDEN, ANDREW ROBINSON, DAVID KELLER,
and GRAHAM CLAY
Appeal2014-003913
Application 12/012,015
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 7-16, and 20-29, which constitute all the
claims pending in this application. 1 Claims 4---6 and 17-19 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is Nokia Corporation.
App. Br. 1.
Appeal2014-003913
Application 12/012,015
STATEMENT OF THE CASE
Introduction
Appellants' invention relates generally to an apparatus and method for
enabling user input. Spec. p. 1, 11. 7-8.
Claim 1 is representative and reads as follows:
1. An apparatus comprising:
a first sensor configured to sense force applied to a display
by the user, the display including an array of picture elements
which are configurable to provide information to a user, the first
sensor comprising a substantially transparent conductive
member extending over at least a portion of the array of picture
elements and configured to be deformable by the user, the first
sensor being configured to provide an output associated with the
deformation of the conductive member; and
a second capacitive touch sensor configured to sense the
position of an input to the display by the user and to provide an
output associated with the sensed position of the user input,
wherein the conductive member of the first sensor is
configured to provide a ground plane for the second capacitive
touch sensor.
App. Br. 37 (Claims App.).
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Appeal2014-003913
Application 12/012,015
Wilson et al.
("Wilson")
Kent et al.
("Kent")
Kurashima et al.
("Kurashima")
Foo et al.
("Foo")
References
US 6,504,530 B 1 Jan. 7,2003
US 2004/0061687 Al Apr. 1, 2004
US 2004/0183788 Al Sept. 23, 2004
US 2008/0143689 Al June 19, 2008
Rejections on Appeal
1. Claims 1-3, 7-9, 11-16, 20-22, and 24--27 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Wilson and Foo.
2. Claims 10 and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Wilson,
Foo, and Kent.
3. Claims 28-29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wilson, Foo,
and Kurashima.
Issue on Appeal
Appellants' arguments in the Appeal Brief2 and Reply Brief present us
with the following issue: does the combination of Wilson and Foo teach or
2 Our Decision refers to the Final Office Action (mailed July 24, 2012,
"Final Act."), Appellants' Appeal Brief (filed July 8, 2013, "App. Br.") and
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Appeal2014-003913
Application 12/012,015
suggest or otherwise render obvious "wherein the conductive member of the
first sensor is configured to provide a ground plane for the second capacitive
touch sensor," as recited in claims 1, 14, and 25?
ANALYSIS
We are not persuaded by Appellants' arguments that the Examiner has
erred. App. Br. 5-34; Reply Br. 1--4. We agree with, and adopt as our own,
the Examiner's findings and reasons as set forth in the Final Action from
which this appeal is taken (Final Act. 2-12) and the Examiner's Answer
(Ans. 3-13). For emphasis, we highlight specific arguments and findings as
follows.
Appellants argue Wilson fails to teach a conductive member of a
primary sensor configured to provide a ground plane for a secondary
capacitive touch sensor. App. Br. 7. More specifically, Appellants argue
Wilson teaches that an indium tin oxide ("ITO") coating is either a resistive
coating layer of a display or a layer of a secondary capacitive touch sensor,
and, thus, Wilson does not teach that the ITO coating is comprised in (i.e.,
part of) a force sensor that is utilized as a primary sensor for a touchscreen.
App. Br. 8-9 and 13-14; Reply Br. 2--4. Appellants further argue: (a) Foo
does not teach that an ITO ground plane is part of a sensor and (b) Foo
teaches away from including an ITO ground plane configured to provide a
ground plane for a capacitive touch sensor because Foo teaches the removal
of the ITO ground plane would reduce both the size and manufacturing cost
Reply Brief (filed Jan. 6, 2014, "Reply Br."), the Examiner's Answer
(mailed Nov. 5, 2013, "Ans."), and the original Specification (filed Jan. 30,
2008, "Spec.").
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Appeal2014-003913
Application 12/012,015
of the overall touchscreen display that houses the capacitive touch sensor.
App. Br. 10-15; Reply Br. 3--4.
The Examiner finds Wilson's ITO coating teaches a "conductive
member," as recited in claims 1, 14, and 25. Final Act. 2. The Examiner
concedes Wilson is silent as to the ITO coating providing a ground plane for
a capacitive touch sensor, but finds Foo teaches an ITO ground plane that
provides a ground plane for a capacitive touch sensor. Final Act. 3.
We are not persuaded by Appellants' argument. As a threshold
matter, Appellants do not dispute the Examiner's findings that Wilson's
secondary sensor teaches the claimed "first sensor configured to sense force
applied to a display by the user" and that Wilson's primary capacitive touch
sensor teaches the claimed "second capacitive touch sensor configured to
sense the position of an input to the display by the user." Final Act. 2-3;
Ans. 13; see also Wilson col. 7, 11. 35-38 and 52-58. We agree with the
Examiner that Wilson's ITO coating teaches the claimed "conductive
member." Final Act. 2. We also agree that Wilson teaches that the ITO
coating is deposited onto a substrate of a capacitive touch sensor, and, thus,
Wilson teaches that the ITO coating is comprised in (i.e., part of) the
capacitive touch sensor. Final Act. 2; Ans. 13. Wilson further teaches that
the capacitive touch sensor, rather than the force sensor, can be the
secondary sensor configured to sense force associated with a touch. Wilson
col. 6, 11. 44--48. Thus, despite Appellants' arguments, we agree with the
Examiner that Wilson teaches an ITO coating that is in (i.e., a part of) the
secondary sensor, and thus, Wilson teaches "the first sensor comprising a
... conductive member," as recited in claims 1, 14, and 25.
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Application 12/012,015
Regarding Foo, Appellants' argument that Foo fails to teach an ITO
ground plane that is part of a sensor is not persuasive because, as described
above, Wilson teaches an ITO coating that is part of a capacitive touch
sensor. Final Act. 2; Ans. 13. It is well established that one cannot show
non-obviousness by attacking references individually where the rejection is
based upon the teachings of a combination of references. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Further, Appellants' argument that Foo teaches away from including a
conductive member "configured to provide a ground plane for the second
capacitive touch sensor" is not persuasive. A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. See
Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567. F.3d 1314, 1327
(Fed. Cir. 2009) (citations omitted). A reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention, but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed. See id. Appellants do not dispute
the Examiner's finding that Foo's ITO ground plane teaches a conductive
member "configured to provide a ground plane for [a] capacitive touch
sensor," as recited in claims 1, 14, and 25. Final Act. 3; Ans. 13. Although
Foo teaches it may be more preferable to eliminate the ITO ground plane
from the touchscreen, Foo also teaches that the inclusion of the ITO ground
plane will control electrical noise and improve touchscreen operation. Foo
i-fi-13--4. Therefore, Foo merely teaches an alternative to including an ITO
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Application 12/012,015
ground plane configured to provide a ground plane for a capacitive sensor,
and does not teach away from the claimed invention. Thus, we sustain the
Examiner's rejection of claims 1, 14, and 25, as well as claims 2-3, 7-13,
15-16, 20-24, and 26-29, which are not argued separately.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 7-16, and
20-29 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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