Ex Parte Osborn et al

Patent Trial and Appeal Board

Jun 27, 2018

12906025 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/906,025 10/15/2010
69753 7590 06/29/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Jay Kevin Osborn
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.
106842050400
(Pl0137US1)
CONFIRMATION NO.
9270
EXAMINER
MANDEVILLE, JASON M
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY KEVIN OSBORN and PETER W. RICHARDS
Appeal2017-010818
Application 12/906,025 1
Technology Center 2600
Before JOHNNY A. KUMAR, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1---6, 8-10, and 12-20. Claims 7 and 11 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify Apple Inc. as the real party in interest of this
application. App. Br. 2.
Appeal2017-010818
Application 12/906,025
STATEMENT OF THE CASE
Introduction
Appellants generally describe the disclosed and claimed invention as
directed to techniques for forming touch sensor arrays for touch sensors in
electronic devices. Spec. 1. 2
Claim 1 is illustrative and reproduced below ( with the disputed
limitations emphasized in italics):
1. A touch sensor array, comprising:
a substrate having a sensor array region and a tail that
extends from the sensor array region; and
conductive touch sensor structures on the substrate,
wherein at least some of the conductive touch sensor structures
are formed in the sensor array region and at least some of the
conductive touch sensor structures form parallel interconnect
lines in the tail;
wherein at least one of the conductive touch sensor
structures comprises first and second layers of conductive
material in the tail having substantially the same widths at a
contact region at which the first and second layers overlap and
electrically contact each other, the widths at the contact region
having substantially the same width as at least a portion of the
second layer of conductive material outside the contact region,
and wherein the tail has a tip region that is uncovered by a layer
of insulator.
App. Br. 11 (Claims App'x).
2 Our Decision refers to the Final Office Action mailed May 21, 2015
("Final Act."); Appellants' Appeal Brief filed Mar. 14, 2016 ("App. Br.")
and Reply Brief filed Nov. 4, 2016 ("Reply Br."); the Examiner's Answer
mailed Sept. 7, 2016 ("Ans."); and the original Specification filed Oct. 15,
2010 ("Spec.").
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Application 12/906,025
Rejections on Appeal
Claim 20 stands rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written-description requirement. Final Act. 2.
Claims 1---6, 8-10, and 12-20 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Richter et al. (US 2005/0126831 Al; published
June 16, 2005) ("Richter") and Applicant Admitted Prior Art. 3 Final Act. 3-
14.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Briefs. For the reasons discussed infra, we are not
persuaded by Appellants' arguments that the Examiner erred in rejecting
claim 20 under 35 U.S.C. § 112, first paragraph, but we are persuaded by
Appellants' arguments that the Examiner erred in rejecting claims 1-6, 8-
10, and 12-20 under 35 U.S.C. § I03(a).
Rejection of Claim 20 Under§ 112, First Paragraph
Claim 20 depends from apparatus claim 19 that recites, inter alia, "a
substrate having a tail." Claim 20 reads as follows:
The apparatus defined in claim 19 wherein the substrate
comprises a rectangular region in which the upper and lower
patterned ink layers form touch sensor conductors and a
rectangular tab that extends from the rectangular region and
wherein the plurality of first and second interconnect line
segments are oriented along a common axis in the rectangular
tab.
3 The Examiner finds the Applicant Admitted Prior Art ("AAP A") is the
structures shown in Figures 5 and 6, and described at page 9, line 19 through
page 11, line 6 of the Specification. See Final Act. 4--5.
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App. Br. 14 (Claims App'x) (underlining added).
The Examiner finds that claim 20 does not explicitly limit the
structural definitions of claim 19, particularly with respect to the tail.
Ans. 17-18. The Examiner also finds the recitation in claim 20 of "a
rectangular tab that extends from the rectangular region" introduces a new
structural element-"a rectangular tab"-"that is not 'the tail' [recited in
claim 19] and is not disclosed." Id. at 18.
Appellants argue "claim 20 places some additional geometric
limitations on the substrate and tail, wherein the substrate (including the tail)
is recited as a 'rectangular region' and a 'rectangular tab."' App. Br. 7. In
response to the Examiner's findings in the Answer, Appellants argue the
"rectangular tab" is not a new structural element, different from the "tail."
Reply Br. 2. According to Appellants, claim 20 does not introduce new
structures, but rather "introduces new structural limitations." Id.
We are not persuaded by Appellants' arguments. Instead, we agree
with the Examiner's finding that the recitation in claim 20 of a "rectangular
tab" does not limit the "tail" of claim 19 because claim 20 does not state that
"'the tail is a rectangular tab that extends from the rectangular portion."'
Ans. 18. Appellants do not provide persuasive argument that the Examiner
erred in finding that claim 20 "introduces 'a rectangular tab' as a new, and
unsupported, element." Id. Thus, we sustain the rejection of claim 20 under
§ 112, first paragraph.
Rejection of Claims 1-6, 8-10, and 12-20 Under§ 103(a)
Appellants contend that Figure 2 of Richter, which shows lines 150 on
the tail of the substrate make electrical contact with lines 198 off the tail,
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Application 12/906,025
does not teach or suggest the first and second layers of conductive material
in the tail having "substantially the same widths at a contact region" at
which the layers overlap and electrically contact each other, as recited in
claim 1 and commensurately recited in independent claims 15 and 19. App.
Br. 7-8. Appellants argue Figure 2 of Richter is not drawn to scale and
"[ n ]othing in Richter suggests that any special importance is to be given to
the line widths of FIG. 2." Id. at 8. Appellants also argue that lines 150 and
198 are "merely symbols of electrically conductive pathways" and do not
convey any information about the actual widths of those lines. Id.
Appellants also contend that Figure 6 of the application, which is cited
by the Examiner as AAPA, does not teach or suggest "'the widths at the
contact region having substantially the same width as at least a portion of the
second layer of conductive material outside the contact region,"' as recited
in claim 1 and commensurately recited in claims 15 and 19. App. Br. 8-9.
Specifically, Appellants argue Figure 6 clearly shows the width at the
circular contact region 64 "is always greater than the width outside the
contact region (e.g., width of lines 66 and/or 68)." Id. at 9. Appellants
further contend that the combination of Richter and AP A fails to disclose the
disputed limitations of claims 1, 12, and 19. Id.
The Examiner finds that the figures of Richter would suggest to a
person of ordinary skill in the art "that the interconnect lines have the same
width." Ans. 18-19. The Examiner also finds this suggestion is supported
by Appellants' statement in the Appeal Brief that the interconnect lines
"appear to have the same widths in the figure." Id. at 19. The Examiner
further finds that Figure 6 of the AAPA shows that, at the contact region 64,
"the conductive materials (66, 68) have 'substantially the same widths,' as a
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difference between these two widths would be measurable in fractions of a
millimeter." Id. at 20. In addition, the Examiner finds that, based on Figure
6 of the AAP A, the difference between the width at the contact region and
the vertical height of the lines ( 66, 68) would be on the order of fractions of
a millimeter-that is, "these widths would be 'substantially the same."' Id.
The Examiner notes that claim 1 recites the widths at the contact region have
"'substantially the same width as at least a portion of the second layer' ...
'outside the contact region."' Id. ( emphasis omitted). The Examiner then
finds that, from a different viewpoint, the phrase "at least a portion" could be
a horizontal distance, as opposed to a vertical distance, in which event the
width of the contact region 64 is "'substantially the same width' as the
portion of ... the second layer [] that extends horizontally for the same
distance as the width of the contact region." Id. at 20-21. The Examiner
further finds the "'at least a portion' limitation can be arbitrarily
interpreted." Id. at 21.
We are persuaded by Appellants' arguments that the Examiner erred.
First, we agree with Appellants that Figure 2 of Richter is a line drawing that
is not intended to be dimensionally accurate or to scale and that a person of
ordinary skill in the art "would understand that lines ('auxiliary electrodes')
150 and lines ('external electrodes') 198 do not convey any information
about their actual composition or width." Reply Br. 2-3. Hockerson-
Halberstadt, Inc. v. Avia Group Int'! Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) ("[I]t is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue."). Thus,
we agree with Appellants that Figure 2 of Richter does not teach or suggest
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first and second layers of conductive material in the tail having
"substantially the same widths at a contact region."
Second, Appellants argue, and we agree, the Examiner's conclusion
that the phrase "at least a portion" of the second layer in the limitation
reciting "the widths at the contact region having substantially the same width
as at least a portion of the second layer ... outside the contact region" could
be a horizontal distance, as opposed to a vertical distance, is unreasonably
broad. Reply Br. 6. In that regard, Appellants argue, and we agree, that a
person of ordinary skill in the art, when presented with a horizontal
conductor of a fixed length and an unspecified length, as in layers 66 and 68
of Figure 6, would understand the "width" is the vertical dimension and not
a horizontal dimension. Id. In describing a top view of the tail, as shown for
example in Figure 10, the Specification uses the term "width" in that
manner-----to refer to the vertical dimension of the interconnect lines, rather
than the horizontal length of the line. See Spec. 14:4--18; 16:1-20. Thus,
based on the claim language and the Specification, we conclude that the
broadest reasonable interpretation of the phrase "at least a portion" of the
second layer does not mean or include "a horizontal dimension" of the
second layer.
Third, regarding the Examiner's finding that Figure 6 of the AAP A
shows line widths that are "substantially the same," Appellants argue that
while an absolute difference of "fractions of millimeters" might sound small,
when relative differences are considered, Figure 6 does not show "widths at
the contact region having substantially the same width as at least a portion
of the second layer of conductive material outside the contact region."
Reply Br. 3. Referring to the annotated version of Figure 6 in the Reply
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Brief, Appellants also argue that "the width at the contact region 64 ( marked
as WI) appears to be over three times larger than the widths (vertical
heights) of the second layer outside the contact region (either W2 or W3)."
Id. at 3--4. Appellants further argue that finding Figure 6 shows the widths
at the contact region have "substantially the same width" as at least a portion
of the conductive material outside the contact region would be inconsistent
with the Specification's description of minimizing the size of sensor arrays
and touch pads by using interconnect lines with "minimal width" and
"straight edges." Id. at 5 (citing Spec. 14:4--18; 15:25-28).
We agree with Appellants that "relative differences" in widths are
important when the dimensions of interconnect lines are measured in
millimeters. See Reply Br. 3. We also agree with Appellants that the
Specification explains that conventional screen printing techniques result in
interconnect patterns and layouts with "undesirably bulky touch sensors"
(see Spec. 2:26-28; 11:7-13) and that to help minimize size, "interconnect
lines may include inter-layer contacts with minimal width" (Spec. 14:5-8).
Thus, although Figure 6 is not drawn to scale and may not be relied on to
show particular sizes, we find it is appropriate to consider Figure 6 as
teaching or suggesting relative sizes. Considering the relative dimensions of
the widths of the first and second layers at the contact region 64 shown in
Figure 6, one could argue they are not "substantially the same width." Even
if we were to agree with the Examiner's finding, however, that Figure 6 of
the AAP A teaches or suggests the limitation that the first and second layers
have "substantially the same widths" at the contact region 64, we agree with
Appellants' arguments that Figure 6 does not teach or suggest "the widths at
the contact region having substantially the same width as at least a portion of
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the second layer of conductive material outside the contact region." In that
regard, considering the relative widths of the layers at the contact region 64
and the widths of the layers 66 and 68 outside the contact region, we agree
with Appellants' argument that Figure 6 shows that the widths at the contact
region 64 are not substantially the same as the widths (vertical heights) of
the second layer ( 66 or 68) outside the contact region. See Reply Br. 3--4.
Based on this record, we are persuaded the Examiner erred in finding
the combination of Richter and AAP A teaches or suggests the limitation "the
widths at the contact region having substantially the same width as at least a
portion of the second layer of conductive material outside the contact
region," as recited in claim 1 and commensurately recited in claims 15 and
19. Accordingly, we do not sustain the Examiner's rejection of claims 1, 15,
and 19, and dependent claims 2---6, 8-10, 12-14, 16-18, and 20, under
§ 103(a).
DECISION
We affirm the Examiner's rejection of claim 20 under 35 U.S.C.
§ 112, first paragraph.
We reverse the Examiner's rejection of claims 1-6, 8-10, and 12-20
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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