Ex Parte Hotelling

Patent Trial and Appeal Board

Jun 29, 2016

11552746 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111552,746 10/25/2006 STEVEN P. HOTELLING
69753 7590 07/01/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
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.
106842009900(P4479US1) 2619
EXAMINER
BANH, DAVID H
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN P. HOTELLING1
Appeal2015-000602
Application 11/552,746
Technology Center 2800
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and JULIA
HEANEY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 24, 26---30, and 32 as
unpatentable over Aufderheide et al., (US 2005/0083307 Al, published
April 21, 2005) in view of Kawamura (JP 2002-358918, published Dec. 13,
2002, as translated) and Bourdelais et al. (US 2004/0213954 Al, published
Oct. 28, 2004), and of claim 31 as unpatentable over these references in
1 Apple Inc. is identified as the real party in interest. Br. 2.
Appeal2015-000602
Application 11/552,746
combination with Suzuki ( JP 04150024 A, published May 22, 1992, as
translated). 2 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a method of fabricating a touch sensitive device
comprising forming on a substrate 101 a plurality of electrodes 108 with
substantially zero horizontal separation by depositing conductive material
simultaneously on plateaus 105 of different heights formed by imprinting the
substrate with a tool 102 (sole independent claim 24, Figs. 1--4).
A copy of representative claim 24, taken from the Claims Appendix of
the Appeal Brief, appears below.
24. A method of fabricating a touch sensitive
device, comprising:
providing a substantially transparent substrate;
imprinting the substantially transparent substrate by
applying a tool to the substrate in the presence of at least one
of heat and pressure;
forming a first plurality of substantially transparent
patterned electrodes as conductive lines with substantially
zero horizontal separation by substantially uniformly
depositing a first substantially transparent conductive material
simultaneously on plateaus of different heights formed during
the imprinting of the substrate; and
forming a plurality of electrically isolated conductive
traces over adjacent conductive lines with substantially zero
horizontal separation to provide electrical connectivity to the
adjacent conductive lines.
2 The Examiner's rejection under the second paragraph of 35 U.S.C.
§ 112 has been withdrawn (Ans. 2).
2
Appeal2015-000602
Application 11/552,746
Appellant does not present separate arguments specifically directed to
any of the dependent claims on appeal (Br. 7-12). Therefore, dependent
claims 26-32 will stand or fall with their parent independent claim 24.
We sustain the§ 103 rejections for the reasons given in the Non-final
Action (i.e., dated November 19, 2013), the Answer, and below.
Appellant argues that "Auf[ d]erheide teaches away from forming
electrodes on plateaus of different heights formed during the imprinting of
the substrate [as claimed]" (Br. 8, underlining removed). Appellant explains
the rationale for this argument as follows.
The main objective of Aufderheide is to reduce the
visibility and improve the transparency of the electrodes by
selecting the electrodes, filler material, and coating to have
similar optical indexes, and by controlling the thicknesses of
the material (see, e.g., paragraph [0017] of Aufderheide).
However, Auferheide does not teach, contemplate nor desire
depositing a first substantially transparent conductive
material simultaneously on plateaus of dij]erent heights
formed during the imprinting of the substrate, as required by
the claims. In fact, an electrode stackup involving substrate
plateaus of different heights would necessarily involve
stackups of material having nonuniform thicknesses, and
decreased optical uniformity. Thus, Aufderheide actually
teaches away from conductive lines on plateaus of different
heights formed during the imprinting of the substrate, as
required by the claims.
(Id.).
We do not agree with Appellant that paragraph 17 of Aufderheide
teaches away from nonuniform thicknesses and thus teaches away from the
claim 1 feature of forming electrodes on plateaus of different heights.
Rather, this paragraph discloses a transparent conductor pattern that is less
3
Appeal2015-000602
Application 11/552,746
visibly distinguishable by using a lower index of refraction coating and a
higher index of refraction transparent conductor layer to form "an anti-
reflection stack that functions to reduce reflections of visible light"
(Aufderheide i-f 17). Therefore, Appellant's teaching away argument is not
persuasive because it is not supported by the cited Aufderheide disclosure.
Appellant also contends that "[t]here would have been no motivation
for one skilled in the art to combine the teachings of Aufderheide,
Kawamura and Bourdelais" (Br. 10, underlining removed).
Appellant's contention lacks persuasive merit. As more fully detailed
by the Examiner, one having ordinary skill in this art would have been
motivated to form the electrodes of Aufderheide on plateaus of different
heights as taught by Kawamura "for the purpose [of] providing complete
coverage of the surface with electrodes and eliminating any gaps
therebetween in the horizontal direction in order to increase the coverage
area of the electrode" (Final Action 6-7) and would have been motivated to
provide Aufderheide' s substrate with such plateaus by the step of imprinting
the substrate with a tool using heat and/or pressure as taught by Bourdelais
"as it is an easily reproducible step for producing large quantities of
substrates allowing for vertical separation of electrodes formed thereon" (id.
at 7). Significantly, Appellant does not address, and therefore does not show
error in, the Examiner's proposed motivations for combining Aufderheide,
Kawamura, and Bourdelais.
As correctly explained by the Examiner, Appellant's remaining
arguments are unconvincing because they attack the applied references
individually whereas the rejection of claim 24 is based on the combination
of Aufderheide, Kawamura, and Bourdelais (Ans. 2--4).
The decision of the Examiner is affirmed.
4
Appeal2015-000602
Application 11/552,746
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
5