Ex Parte Leonhard et al

Patent Trial and Appeal Board

Mar 20, 2018

14272329 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/272,329 05/07/2014
68769 7590 03/22/2018
HOUSTON OFFICE OF
POLSINELLI PC
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002
FIRST NAMED INVENTOR
Michael LEONHARD
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.
12NPUS00-528481 1640
EXAMINER
FIGG, LAURA B
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
salaniz@polsinelli.com
patentgroup@polsinelli.com
houstonipassistant@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LEONHARD, JONATHAN LIN,
and STEVEN HUANG
Appeal2017-007012
Application 14/272,329
Technology Center 1700
Before MICHAEL P. COLAIANNI, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal2017-007012
Application 14/272,329
Appellant's 1 invention is best illustrated by independent claim 1,
reproduced below:
1. A glass touch screen protector for a portable
electronic device having a front face that includes a touch
screen portion and an outer perimeter, the glass screen protector
compnsmg:
a glass sheet having front and back sides, an outer band
that corresponds to that of the device, and having a transparent
window portion that corresponds in size to the touch screen
portion, the glass sheet being convexed with respect to the
corresponding touch screen portion of the portable electronic
device; and
a spacer provided along the outer perimeter of the glass
sheet substantially continuously surrounding the transparent
window portion, having a thickness sufficient to space the glass
sheet near but not in contact with the touch screen portion, the
spacer comprising an exposed adhesive facing the portable
device and having adhesive strength enabling repeated removal
and re-attachment,
wherein the distance between the glass sheet and the
touch screen portion allows a capacitive value on the touch
screen portion when touched on the glass sheet and the glass
sheet is sufficiently convexed to reduce or prevent visible
interference patterns during use.
Appellant (see generally Appeal Brief) appeals the following
rejections:
(a) claims 1-3, 5, 7, 9, 10, 12-15, 17, 18, and 20 rejected under 35
U.S.C. § 103(a) as unpatentable over Lee (KR 1020110013813, published
October 4, 2011, and relying on an English machine translation entered into
1 AEVOE INTERNATIONAL LTD is the Applicant and is also identified as
the real party in interest. Br. 2.
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Application 14/272,329
the record by the Examiner on June 19, 2015) and Hung (US 2007 /0279853
Al, published December 6, 2007);
(b) claims 4---6, 10, 11, and 19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Hung and Leonhard (US 2012/0183713 Al,
published July 19, 2012); and
(c) claim 8 rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Hung and Kim (KR 1020120054088, published August 23, 2012 and
relying on US 2013/0316133 Al to Kim, published November 28, 2013, as
the English equivalent).
For Rejection (a), Appellant argues independent claims 1 and 15
together and rely on these arguments to address the rejection of their
respective dependent claims. Br. 4, 8. For the separate Rejections (b) and
( c ), Appellant relies on the arguments presented when discussing Rejections
(a) and do not distinguish the additional features of the claims so rejected
based on the additionally cited references. Id. at 8-9. Accordingly, we
select claim 1 as representative of the subject matter before us for review on
appeal and decide the appeal as to all grounds of rejection based on the
arguments made by Appellant in support of patentability of claim 1.
OPINION
Claim 1
We have reviewed each of Appellant's arguments for patentability.
However, a preponderance of the evidence supports the Examiner's position
that the subject matter of claim 1 is unpatentable. Accordingly, we sustain
the Examiner's prior art rejections of claims 1-20 for the reasons explained
in the Answer, and we add the following for emphasis.
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Application 14/272,329
Independent claim 1 is directed to a glass touch screen protector for a
portable electronic device comprising a glass sheet convexed with respect to
a corresponding touch screen portion of the portable electronic device.
The Examiner finds, and Appellant does not dispute, that Lee teaches
a protective film of tempered glass for portable displays having a touch
screen portion that differs from the claimed invention in that Lee does not
disclose the protective film being convexed in shape. Ans. 2-3; Lee 6, 9 and
Figure 2. The Examiner finds Hung teaches a convex screen protector for
mobile phones for the purpose of magnifying the display view. Ans. 3;
Hung i-fi-15, 8, 10, 22 and Figures lB, 6. The Examiner determines it would
have been obvious to one of ordinary skill in the art to modify the glass
screen protector of Lee to incorporate the convex shape of Hung for the
reasons presented by Hung. Final Act. 3--4; Ans. 9.
Appellant argues that the Examiner relied on impermissible hindsight
in combining the teachings of the cited art because Lee' protector is attached
to a display screen more permanently via an adhesive while Hung's
convexed protector is used only temporarily and not permanently. Br. 4--5;
see Lee 6 and Hung i128. Appellant also contends there is no reasonable
basis to provide permanent magnification in Lee's protector because Lee
addresses a different problem than Hung. Br. 5; Lee 5. Appellant then
argues that combining the teachings of the cited art would frustrate the
purposes of each reference because they teach away from the combination.
Br. 6.
We are unpersuaded of Examiner error for the reasons provided in the
Answer. Ans. 8-11. It is well established that the obviousness inquiry does
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Application 14/272,329
not ask "whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see
also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference").
As noted above (Ans. 3--4; Ans. 9), the Examiner provided a
reasonable basis for a person of ordinary skill in the art desiring to improve
the display view of a portable electronic display to have reasonably expected
that modifying Lee's glass touch screen protector to have a convex shape, as
taught by Hung, would lead to such an improvement. In re O'Farrell, 853
F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness under§ 103, all that is
required is a reasonable expectation of success."). See also Hung i-f 10
("[T]he displayed characters or pictures can be magnified and thus are
convenient to read. Therefore, the elders and those who have impaired sight
can easily read the information displayed on the screen. ") (emphasis
added). Thus, there is a reasonable basis to combine the teachings of the
prior art and arrive at the claimed invention.
Appellant's argument (App. 4--5) that Lee's protector is attached to a
display screen more permanently via an adhesive is unpersuasive for the
reasons presented by the Examiner (Ans. 10). Moreover, the Examiner finds
that Lee's protector is also removable. Ans. 3; Lee 9. Appellant has not
disputed this finding by the Examiner and, in essence, the argument tacitly
recognizes this by stating that Lee's protector is "more permanently"
attached. Thus, the references do not teach away from using a removable
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protector nor do the combined teachings frustrate their purposes because
both Lee and Hung disclose removable protectors. In addition, the subject
matter of independent claim 1 does not require permanent attachment of the
protector.
Appellant argues that the claimed glass sheet is sufficiently convexed
to reduce or prevent visible interference patterns during use. Br. 4.
We are unpersuaded by this argument for the reasons presented by the
Examiner. Ans. 10. Moreover, Hung's disclosure that a convex-shaped
protector improves viewing of a portable device's display (more convenient
to read) suggests that the viewing would be clear to the user. Hung i-f 10.
That is, Hung's convex-shaped cover permits viewing without visible
interferences. Thus, Appellant has not adequately explained how this
limitation distinguishes the invention from the teachings of the cited art.
Further, Appellant has directed us to no evidence of criticality with respect
to the convexed-shape protector.
Appellant further argues that Hung's convexed-shaped protector is not
used for touch actuation. Br. 5, 7; Hung i-f 28. We are also unpersuaded
because Appellant's argument does not adequately explain why one skilled
in the art would not have been capable of modifying Lee's glass touch
screen protector, used for touch actuation, to incorporate the convex shape
taught by Hung and expect Lee's glass touch screen protector to provide
adequate magnification of the display screen as well as touch screen
capabilities. As noted by the Examiner (Ans. 9), the rejection is based on
modifying Lee's glass touch screen protector by providing it with a convex
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shape for the reasons presented by Hung. The Examiner's rejection is not
based on substitution of Hung's screen protector for Lee's screen protector.
Accordingly, we affirm the Examiner's prior art rejections of claims
1-20 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
ORDER
The Examiner's prior art rejections of claims 1-20 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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