Ex Parte Livingston et al

Patent Trial and Appeal Board

Feb 24, 2017

12757503 (P.T.A.B. Feb. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/757,503 04/09/2010 Andrew Livingston 49256-111795 2838
23644 7590 02/28/2017
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
MCLOONE, PETER D
ART UNIT PAPER NUMBER
2692
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW LIVINGSTON, MARK BURLESON, and DERON
STAMBAUGH
Appeal 2016-001957
Application 12/757,503
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1—3, 5—8, and 10—22. See App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
Appellants’ disclosure relates to a user interface including “a user
interface substrate and an associated integrated sensing electrode and
Appeal 2016-001957
Application 12/757,503
backlight mask in the form of an opaque material having an aperture or
otherwise light-transmissive portion therein.” Abstract.
Claims 1, 6, and 11 are independent. Claim 1 is reproduced below for
reference (with formatting and emphasis added):
1. A user interface comprising:
a user interface substrate, said user interface substrate
having a front surface and a rear surface;
a touch sensor sensing electrode disposed on said user
interface substrate, said sensing electrode comprising a
substantially opaque, conductive material, said sensing electrode
defining one or more first apertures therein, said one or more first
apertures having the form of a first indicia;
an electrical circuit trace disposed on said user interface
substrate, said electrical circuit trace coupled to said sensing
electrode, and
a first light source associated with said sensing electrode,
said first light source adapted to project light toward said sensing
electrode and through said one or more first apertures but not
toward portions of said user interface substrate surrounding said
sensing electrode, whereby said light is visible at said front
surface of said user interface substantially in the form of said first
indicia when said first light source is energized;
wherein said sensing electrode is located between said first
light source and said front surface of said user interface substrate;
wherein saidfirst indicia generally is not visible when said
first light source is not energized with ambient light present at
said first surface of said user interface substrate; and
wherein said first indicia is defined solely by said first
apertures.
The Examiner’s Rejection
Claims 1—3, 5—8, and 10-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Roth (US 2009/0115645 Al; May 7, 2009),
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Boddie (US 2008/0202912 Al; Aug. 28, 2008), and Muurinen (US
5,408,060; Apr. 18, 1995). Final Act. 2.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). We adopt the Examiner’s
findings and conclusions (see Final Act. 2—14; Ans. 2—3) as our own, and we
add the following primarily for emphasis.
Appellants argue the Examiner erred in the rejection of independent
claims 1, 6, and 11, because “[njowhere does [Muurinen] disclose or suggest
that the indicia are defined by one or more first apertures” and “one skilled
in the art would not attempt to modify [Muurinen] by removing the
translucent portions of the pushbuttons because doing so would render
Muurinen inoperable for its primary purpose.” App. Br. 18. Appellants
contend that for the Examiner’s position to have any merit, “one would need
to construe the term ‘aperture’ to mean a structure” (App. Br. 18) and
Appellants’ disclosure “unequivocally indicates that a light transmissive
material is not the same thing as an aperture” (App. Br. 19, referring to Spec.
121).
We are not persuaded of Examiner error. As an initial matter, we give
claims their broadest reasonable interpretation consistent with the
Specification as they would be understood by one of ordinary skill in the art.
In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We
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Application 12/757,503
agree with Appellants that an “aperture,” as claimed, is “commonly defined
as an opening.” App. Br. 18. We disagree with Appellants, however, that
such apertures necessarily require an “open space” (i.e., the absence of all
material). Contra id.', see also Ans. 2; Spec. 13 (defining apertures as “light-
transmissive portions”); Spec. 21 (“sensing electrodes . . . could further
include a substantially transparent conductive material (not shown) at least
in the area of apertures 38”). Rather, we find the recited indicia, defined
solely by an aperture, encompasses the translucent (i.e., light-transmissive)
symbol of Muurinen, which is formed within (i.e., in an opening of)
Muurinen’s “mainly opaque material 12.” See Muurinen 3:67-4:69; Final
Act. 3. Accordingly, we find Muurinen’s translucent symbol teaches the
recited indicia defined solely by the aperture.
Further, The Examiner finds, and we agree, that:
Muurinen is not relied upon to teach an aperture, but rather the
indicia in the combination. The [Final Office Action] clearly
cites the Roth reference for teaching “one or more first
apertures”. The rejection explains that “the translucent apertures
comprising ‘A’ or ‘1’ are defined solely by the corresponding
aperture.” In laying the translucent indicia of Muurinen over the
aperture of Roth, replacing the print of Roth, it is obvious to one
of ordinary skill in the art that the aperture will define the indicia
as blocking light to the indicia [and] will prevent its being seen.
Ans. 2. We are not persuaded by Appellants’ contentions, in which the
apertures of Roth are not properly accounted for, and further in which the
translucent apertures used to define the indicia in Muurinen are bodily
incorporated to the exclusion of Roth’s apertures. “[T]he test [for
obviousness] is what the combined teachings of the references would have
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Application 12/757,503
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citations omitted.).
Here, the Examiner combines the teachings of Muurinen with the
teachings of Roth and Boddie in order “to enable a user to conveniently
switch between modes of operation” by alternating visible indicia. Final
Act. 4; see Muurinen 4:42-46; Roth Fig. 1; Boddie Fig. 8. The Examiner
finds that “such a function would be desirable aesthetically for hiding user
interface panels in plain sight when not in use.” Final Act. 4. We are not
persuaded the Examiner erred in finding one of ordinary skill would
combine the cited references in the manner claimed. Nor do Appellants
persuade us the limitations of the independent claims 1, 6, and 11 are
distinguished over the teachings of the combination of the cited references.
Appellants present new arguments in the Reply Brief, regarding the
apertures of Roth {see Reply Br. 2); and the combination of Muurinen with
Roth {see Reply Br. 3). Appellants, however, had the opportunity to raise
these arguments in the Appeal Brief in response to the Examiner’s findings
in the Final Office Action {see Final Act. 2-4). As the new arguments by
Appellants were not timely raised, they are deemed waived. See Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (“[A]n issue not raised by an appellant in its opening brief... is
waived.”) (internal citations and quotation marks omitted); see also 37
C.F.R. § 41.41(b)(2).
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 6, and 11, and the claims which depend therefrom. See App. Br.
20.
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Application 12/757,503
DECISION
We affirm the Examiner’s rejection of claims 1—3, 5—8, and 10—22
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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