Ex Parte Jones

Patent Trial and Appeal Board

Mar 28, 2014

11293723 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TERENCE A. JONES
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Appeal 2011-012150
Application 11/293,723
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/293,723

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STATEMENT OF THE CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19 and 21-23. Claim 20 has been canceled. Claims 2 and 16 are
neither rejected by the Examiner nor argued by Appellant, and are therefore
not before us on appeal. We have jurisdiction under 35 U.S.C. § 6(b) over
the appeal of claims 1, 3-15, 17-19, and 21-23. We reverse (i) the
Examiner’s enablement rejection of claims 1 and 21, (ii) anticipation
rejection of claims 1, 3, 4, 6-8, 14, 15, 21, and 22, and (iii) obviousness
rejections of claims 5 and 9-15 (which all depends from claim 1). We affirm
the Examiner’s obviousness rejection of claims 17-19 and 23.
Exemplary Claims
Exemplary independent claims 1 and 17 under appeal, with emphases
added to the disputed limitations, reads as follows:
1. A touch sensor comprising:

an electrically resistive layer covering a touch sensitive
area;

an electrically insulative layer disposed on the
electrically resistive layer, the insulative layer having randomly

1 We note that in Appellant’s claims appendix submitted with the Appeal
Brief, claims 9-15 depend improperly from proceeding claims, e.g., the
claims depend from claim “0” (App. Br. 12). Each dependent claim must
refer to a preceding claim. 37 C.F.R. § 1.75(c); see MPEP
§ 608.01(n)(I)(B)(2). In the amendment submitted September 4, 2009,
claims 9-15 depend from claim 1. We will treat the improper dependency as
harmless error for purposes of this appeal.
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located open areas, each of the randomly located open areas
exposing a portion of the resistive layer; and

a plurality of electrically conductive segments disposed
on the insulative layer, each of the conductive segments making
electrical contact with the resistive layer through at least one of
the randomly located open areas in the insulative layer, wherein
the plurality of electrically conductive segments improves
linearity of the touch sensitive area.

17. A touch sensor comprising:

an electrically resistive layer defining a touch sensitive
area;

an electrically insulative porous layer disposed on the
electrically resistive layer; and

a field linearization pattern disposed on the insulative
porous layer and capable of improving a linearity of the touch
sensitive area by making electrical contact with the resistive
layer through the insulative porous layer.

Examiner’s Rejections
(1) The Examiner rejected claims 1 and 21 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the enablement requirement (Ans.
3-4).
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(2) The Examiner rejected claims 1, 3, 4, 6-8, 14, 15, 21, and 22 under
35 U.S.C. § 102(b) as being anticipated by Richter et al (US 6,488,981 B1)
(Ans. 4-7).2
(3) The Examiner rejected claims 5, 17-19, and 23 under 35 U.S.C.
§ 103(a) as being obvious over Richter in view of Blanchard (US
2004/0095332 A1) (see Final Rej. 5-8; see also Ans. 2-3).
(4) The Examiner rejected claims 9-13 under 35 U.S.C. § 103(a) as
being obvious over Richter in view of Gibson et al (US 4,731,508) (see Final
Rej. 8-9; see also Ans. 2-3).
(5) The Examiner rejected claims 14 and 15 under 35 U.S.C. § 103(a)
as being obvious over Richter in view of Geaghan (US 2003/0067447 A1)
(see Final Rej. 9; see also Ans. 2-3).

Principal Issues on Appeal
Based on Appellant’s arguments presented in the Appeal Brief (App.
Br. 5-10), we are presented with the following principal issues on appeal:
Enablement
(1) Did the Examiner err in rejecting claims 1 and 21 because the
Specification fails to enable one of ordinary skill in the art at the time of
Appellant’s invention to make and/or use the touch screen recited in claims
1 and 21, by failing to describe how the randomly located open areas came
to be in the insulating layer recited in claims 1 and 21?

2 Because of the alleged § 112, first paragraph, enablement deficiency in
claims 1 and 21, the Examiner did not address the “randomly located”
limitation for purposes of examination under §§ 102 and 103.

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Anticipation
(2) Did the Examiner err in rejecting claims 1, 3, 4, 6-8, 14, 15, 21,
and 22 under 35 U.S.C. § 102(b) because Richter fails to disclose the touch
screen including an insulative layer having randomly located open areas, as
recited in claims 1 and 21?
Obviousness
(3) Did the Examiner err in rejecting claims 5 and 9-15 under § 103(a)
as being obvious over Richter in view of the various, applied, secondary
references because Richter fails to disclose the touch screen including an
insulative layer having randomly located open areas, as recited in base claim
1?
(4) Did the Examiner err in rejecting claims 17-19 and 23 under
§ 103(a) as being obvious over Richter in view of Blanchard because Richter
fails to disclose the touch screen including an electrically insulative layer
and an electrically insulative porous layer, as recited in representative claim
17?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief that the Examiner has erred (see Br. 8-9), as
well the Examiner’s response in the Answer (see Ans. 7-8). We agree that
the Examiner erred in rejecting (i) claims 1 and 21 under 35 U.S.C. § 112,
first paragraph, for lack of enablement, (ii) claims 1, 3, 4, 6-8, 14, 15, 21,
and 22 under 35 U.S.C. § 102(b) as being anticipated by Richter, (iii) claim
5 under 35 U.S.C. § 103(a) as being obvious over Richter in view of
Blanchard, (iv) claims 9-13 under 35 U.S.C. § 103(a) as being obvious over
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Richter in view of Gibson, and (v) claims 14 and 15 under 35 U.S.C.
§ 103(a) as being obvious over Richter in view of Geaghan, because Richter
fails to disclose the touch screen including an insulative layer having
randomly located open areas, and for the reasons that follow.
However, we disagree with Appellant’s conclusions with regard to the
obviousness rejection of claims 17-19 and 23 over Richter in view of
Blanchard. As to the obviousness rejection of claims 17-19 and 23, we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Rej. 5-9).
Enablement Rejection
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (citations omitted). See also In re Vaeck, 947 F.2d 488, 496 (Fed.
Cir. 1991) (the specification must teach those of ordinary skill “how to make
and how to use the invention as broadly as it is claimed”). Based on the
record before us, Appellant’s Specification would reasonably convey to one
of ordinary skill in the art at the time of Appellant’s invention the ability to
understand, make, and/or use the touch screen recited in independent claim
1, including the insulative layer having randomly located open areas. The
process of spray coating, described in Appellant’s Specification, would be
enabling to form randomly located open areas in the insulative layer because
the spray coating process randomly disperses the insulative layer onto the
resistive layer while leaving the other areas of the resistive layers uncovered
(Spec. 6:29-30).
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We agree with Appellant’s conclusion that the Examiner erred in
rejecting claims 1 and 21 under 35 U.S.C. §112, first paragraph, as failing to
provide enablement to make and/or use the invention recited in claims 1 and
21. Accordingly, we do not sustain the Examiner’s enablement rejection.

Anticipation Rejection
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347
(Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
Appellant argues, and Examiner does not dispute, that Richter fails to
disclose “the insulative layer having randomly located open areas” of
representative claim 1. Br. 8-9. Richter’s Figure 4 shows a touch screen
panel including an electrically insulative layer 30 disposed above an
electrically resistive layer 32. The electrically insulative layer 30 has open
areas for exposing portions of the electrically resistive layer 32, where the
open areas are formed in an ordered fashion. The open areas are not
“randomly located” as set forth in claims 1 and 21.
Because Appellant’s arguments (Br. 8-9) are persuasive of Examiner
error, we do not sustain the Examiner’s anticipation rejection of independent
claims 1 and 21, as well as claims 3, 4, 6-8, 14, 15, and 22 grouped
therewith.
Obviousness Rejections
Claim 5 is rejected under 35 U.S.C. § 103(a) as being obvious over
Richter in view of Blanchard, claims 9-13 are rejected under 35 U.S.C.
§ 103(a) as being obvious over Richter in view of Gibson, and claims 14 and
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15 are rejected under 35 U.S.C. § 103(a) as being obvious over Richter in
view of Geaghan. “[D]ependent claims are nonobvious if the independent
claims from which they depend are nonobvious . . . .” In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992). Claim 1, from which claims 5 and 9-15
depend, is not anticipated by Richter because Richter fails to disclose “the
insulative layer having randomly located open areas.” Therefore, for similar
reasons, dependent claims 5 and 9-15 are also not obvious over Richter
taken with the various other secondary references.
Accordingly, we do not sustain the Examiner’s obviousness rejections
of dependent claims 5 and 9-15.
Claims 17-19 and 23 are rejected under 35 U.S.C. § 103(a) as being
obvious over Richter in view of Blanchard. Appellant argues that
“Blanchard does not teach or suggest an insulative layer having randomly
located open areas, or a linearization pattern making electrical contact with a
resistive layer through an insulative layer at a plurality of random locations
on the insulative layer” (Br. 9) (emphasis added). The features upon which
Appellant relies (i.e., randomly located open areas and/or random locations
on the insulative layer) are not recited in rejected claims 17-19 and 23.
Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). In view of the foregoing, Appellant has
not shown that the Examiner erred in rejecting claims 17-19 and 23.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 17-19 and 23.

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CONCLUSIONS
(1) The Examiner erred in rejecting claims 1 and 21 as being
unpatentable under 35 U.S.C. § 112, first paragraph, for lack of enablement
to make and/or use the invention.
(2) The Examiner erred in rejecting (a) claims 1, 3, 4, 6-8, 14, 15, 21,
and 22 under 35 U.S.C. § 102(b) as being anticipated by Richter, and (b)
claims 5 and 9-15 under 35 U.S.C. § 103(a) as being obvious over Richter in
view of the various, applied, secondary references, because Richter fails to
disclose the touch screen including an electrically insulative layer having
randomly located open areas, as recited in independent claims 1 and 21
(3) The Examiner did not err in rejecting claims 17-19 and 23 under
§ 103(a) as being obvious over Richter in view of Blanchard.

DECISION
(1) The Examiner’s rejection of claims 1 and 21 under
35 U.S.C. § 112, first paragraph, is reversed.
(2) The Examiner’s rejection of claims 1, 3, 4, 6-8, 14, 15, 21, and 22
under 35 U.S.C. § 102(b) as being anticipated by Richter is reversed.
(3) The Examiner’s rejections of (a) claim 5 under 35 U.S.C. § 103(a)
as being obvious over Richter in view of Blanchard, (b) claims 9-13 under
35 U.S.C. § 103(a) as being obvious over Richter in view of Gibson, and (c)
claims 14 and 15 under 35 U.S.C. § 103(a) as being obvious over Richter in
view of Geaghan, are reversed.
(4) The Examiner’s rejection of claims 17-19 and 23 under 35 U.S.C.
§ 103(a) as being obvious over Richter in view of Blanchard is affirmed.
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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)(1)(iv).

AFFIRMED-IN-PART

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