Ex Parte Teck

Patent Trial and Appeal Board

Dec 11, 2018

13790212 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/790,212 03/08/2013
36844 7590 12/13/2018
Cermak Nakajima & McGowan LLP
127 S. Peyton Street, Suite 200
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Teo Chong Teck
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.
113-001 8612
EXAMINER
OSELE, MARK A
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
CGOODE@cnmiplaw.COM
IP@cnmiplaw.com
ACERMAK@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TEO CHONG TECK 1
Appeal2018-000067
Application 13/790,212
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 39-46, 69, and 70. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to methods of removing the
protective glass surface from a display unit such as that of a mobile phone.
E.g., Spec. ,r 2; Claim 39. Claim 39 is reproduced below from page 25
( Claims Appendix) of the Appeal Brief:
1 The Appellant is the Applicant, Saxum LLC, which is also identified as the
real party in interest. See App. Br. 3.
Appeal2018-000067
Application 13/790,212
1. A method of removing a protective glass top surface from a
display unit having a glass top, an electronic display portion, and
a planar intermediate layer there between, the method comprising
the steps of:
fixing the display unit in a carriage with the intermediate layer
being exposed on all sides;
aligning a cutting device in a coplanar relationship with the
intermediate layer;
biasing the cutting device in the intermediate layer adjacent the
electronic display portion and away from the glass;
driving the cutting device into the intermediate layer while
moving the cutting device and display unit relative to each other
along an axis generally orthogonal to the cutting device; and
advancing the cutting device into the intermediate layer to
separate the glass top from the electronic display portion.
REJECTIONS ON APPEAL 2
The claims stand rejected as follows:
1. Claims 39, 42--44, 46, and 69-70 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Sampica (US 2009/0183615 Al, published July 23, 2009)
in view of Tajima (US 7,150,804 B2, issued Dec. 19, 2006). Ans. 2.
2. Claims 40, 41, and 45 under 35 U.S.C. § I03(a) as unpatentable
over Sampica alone or in view of Tajima and further in view of Ciliberti (US
2011/0180218 Al, published July 28, 2011). Ans. 4.
2 Prior to filing the Appeal Brief, the applicant cancelled claims 4 7---68. E.g.,
Amendment dated Nov. 30, 2016; entry of amendment dated Dec. 29, 2016.
As a result of the cancellation, several rejections that appear in the Office
Action from which this appeal is taken are moot and do not appear in the
Examiner's statement of the rejections in the Answer and repeated above.
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Application 13/790,212
3. Claims 39-46 for nonstatutory double patenting over claims 1-8 of
Teck '953 (US 8,888,953 B2, issued Nov. 18, 2014). Ans. 6.
4. Claims 39--43 and 45--46 for nonstatutory double patenting over
claims 1-5 and 7 of Teck '501 (US 8,956,501 B2, issued Feb. 17, 2015).
Ans. 7.
ANALYSIS
Re} ections 1 and 2
The issue before us is whether Sampica or Tajima teaches or suggests
the step of "biasing the cutting device in the intermediate layer adjacent the
electronic display portion and away from the glass," as recited by claim 39.
A similar limitation appears in claim 46. All other claims subject to
Rejections 1 and 2 depend from either claim 39 or claim 46.
The Examiner states that the "customary and ordinary definition" of
"bias," "in the context of a machine and mechanical manipulation of
articles," is "the application of some force." Ans. 3; Office Action dated
Sept. 2, 2016, at 3 ("Act."). The Examiner also states that "the definition in
the on line dictionary of engineering" is "[t]he force applied to a relay to
hold it in a given position." Ans. 3; Act. 6. In the Appeal Brief, the
Appellant does not contest those definitions. 3 See generally App. Br.
3 In the Reply Brief, the Appellant agrees that "the term 'force', as a possible
synonym [for 'bias'], is not inconsistent with the use of the word in this
application." Reply Br. 5. However, the Appellant notes for the first time
that it is unclear what the "on line dictionary of engineering" referenced by
the Examiner is. Id. at 4. We agree that it is unclear to what dictionary the
Examiner is referring. However, given the general agreement between the
Examiner and the Appellant that "bias" refers to force, the Examiner's stated
definition does not appear to be a source of material dispute.
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Application 13/790,212
The Examiner finds that Sampica teaches a method of removing a
protective glass top surface from a display unit in which calibration
assemblies are used to position a cutting element at the plane of the
intermediate layer. Ans. 2-3. The Examiner finds that, in view of
Sampica's disclosure that its cutting unit may be positioned "any additional
amount" "above the zero point corresponding with the thickness of any
laminated assembly components," Sampica ,r 36, "Sampica et al. is teaching
that the cutting element can be biased adjacent the electronic display portion
and away from the glass, especially in view of paragraph 0040 which
teaches that one layer of the laminated substrate assembly may contain an
amount of adhesive not removed by the elongated cutting member." Ans. 3.
Largely for reasons stated by the Appellant, see App. Br. 17-20, we
are persuaded that the Examiner's rationale is not sound. Read in context, it
appears that paragraph 36 is teaching that Sampica's cutting member 110
may be raised above or below a point referred to by Sampica as the "zero
point." Sampica ,r 36. However, the positioning of the cutting member
appears to take place before the cutting member enters the intermediate
layer, e.g., id. ,r,r 36-42, and the Examiner does not assert otherwise, Ans. 7-
9 (rejecting the Appellant's argument that the claim requires biasing to occur
after the cutting member is in the adhesive layer). Instead, the Examiner
finds that, because a force is applied to the cutting member to move it up or
down before cutting begins, and because that force may place the cutting
member "adjacent the electronic display" (i.e., "away from the glass," as
recited by claim 39) "rather than in the center of the adhesive layer,"
Sampica's disclosure falls within the scope of the term "biasing the cutting
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Application 13/790,212
device in the intermediate layer adjacent the electronic display portion and
away from the glass." Ans. 7-8.
The Appellant interprets claim 3 9 as requiring that the cutting device
first be placed "in the intermediate layer," and subsequently lowered "away
from the glass," to achieve the recited "biasing" step. E.g., App. Br. 19
("Sampica does not describe setting [ the position of its cutting member] after
the cutting element is in the adhesive layer, which is the only way biasing
can be performed in this context; [Sampica's] calibration assemblies would
have to locate the cutting member in the adhesive layer, and then move the
calibration assemblies up or down in order to induce a bias-a disclosure
which is plainly not in Sampica."); Reply Br. 9 ("[T]he biasing step is
performed in the intermediate layer . ... [T]he claims specifically say that
the biasing step is performed after the cutting member has entered the
adhesive/ intermediate layer, because that is how the step is performed 'in
the intermediate layer', and the claim makes no sense unless it is."
( emphasis in original)). In other words, the Appellant asserts that biasing
must literally occur "in the intermediate layer," as recited by the claim, and
that biasing the cutting device next to the intermediate layer or relative to the
intermediate layer before the cutting device enters the intermediate layer
does not fall within the scope of the claim. App. Br. 19; Reply Br. 9.
On this record, the Appellant has identified reversible error in the
stated rejection. As the Appellant points out, claim 39 expressly recites
"biasing the cutting device in the intermediate layer adjacent the electronic
display portion and away from the glass" ( emphasis added). The Examiner
does not meaningfully address the "in the intermediate layer" language of
the "biasing" limitation, but the plain language of the claim is consistent
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Application 13/790,212
with the Appellant's position. The Examiner relies on ,r 51 of the
Specification, which discloses "a method wherein said biasing step includes
locating wire guide posts in a plane below that of the electronic display
portion so that the wire is biased against that portion as it enters and exits
the intermediate layer." Ans. 8-9 (emphasis added by Examiner).
However, the immediately preceding paragraph discloses "a method
further including the step of biasing the wire in the intermediate layer"
( emphasis added), which indicates that the wire enters the intermediate layer
before it is biased so that it is biased "in the intermediate layer." Spec. ,r 50.
The disputed language of claim 39 is essentially the same as that of ,I 50. In
any event, ,r 51 relied on by the Examiner discloses that the cutting device is
biased "as it enters" the intermediate layer, not "before it enters" the
intermediate layer. The Examiner identifies no other portion of the
Specification that suggests the disputed claim limitation encompasses
biasing the cutting device before it enters the intermediate layer, as occurs in
Sampica.
Essentially the same analysis applies to Tajima. Namely, the
Examiner relies on the same interpretation of the "biasing" step discussed
above and fails to identify a portion of Tajima that teaches or suggests that
biasing occurs "in the intermediate layer," as recited by claim 39. E.g.,
Ans. 3, 7-9.
We offer one additional observation. To the extent that the
Examiner's reasoning is grounded on an assumption that the biasing and
driving steps must be carried out in the order in which they appear in claim
3 9 (i.e., that the cutting member is not initially "driv[ en]" into the
intermediate layer until after "biasing" occurs), the Examiner's reasoning is
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Application 13/790,212
not well-founded. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d
1338, 1345 (Fed. Cir. 2008) ("[A]s a general rule the claim is not limited to
performance of the steps in the order recited .... "). Here, the "in the
intermediate layer" language of the "biasing" step is consistent with the
Appellant's position that the cutting device initially enters the intermediate
layer before biasing occurs so that "biasing" occurs "in the intermediate
layer," as explicitly recited by the claim.
Accordingly, we must reverse the Examiner's stated rejections of
claims 39-46, 69, and 70.
Rejections 3 and 4
Rejections 3 and 4 involve nonstatutory double patenting rejections.
E.g., Ans. 6-7. As the Appellant observes, see App Br. 23, it is somewhat
unclear whether the rejections are intended to be based on obviousness or
"on the equitable principle against permitting an unjustified timewise
extension of patent rights," see MPEP § 804 (citing In re Schneller, 397 F.2d
3 50 ( CCP A 1968) ). However, in the Answer, the Examiner also refers to
the rejections as "obviousness double patenting rejections," indicating that
the rejections are based on obviousness-type double patenting. See Ans. 9.
To the extent that the rejections are based on obviousness-type double
patenting, the entirety of the Appellant's argument is that, because the
Examiner allowed similar claims in the '953 and '501 patents (the patents
that provide the bases for the nonstatutory double patenting rejections), but
has maintained the rejections of the claims at issue in this appeal, the claims
at issue in this appeal must be patentably distinct from the claims of the '953
and '501 patents, because, if they are not, the '953 and '501 patents should
not have issued. App. Br. 22-26 ("Thus, the foregoing obviousness-type
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Application 13/790,212
double patenting rejection must simply [be] in error, because it amounts to a
repudiation of the grant of the '953 patent and the '501 patent .... "). The
Appellant does not compare the claims on appeal to the reference claims or
otherwise attempt to identify any nonobvious differences between the claims
on appeal and the reference claims. Id.
The Appellant cites no authority for the proposition that it advances,
i.e., that the claims of an issued patent are necessarily patentably distinct
from the claims of a pending application that is subject to prior art
rejections. Issued patents may serve as the basis for obviousness-type
double patenting rejections. E.g., In re Van Ornum, 686 F.2d 937, 938
(CCPA 1982) (considering obviousness-type double patenting rejection
based on issued patents). On this record, we are not persuaded of error in
the double patenting rejections to the extent they are based on obviousness.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections .... ").
To the extent that the double-patenting rejections are based "on the
equitable principle against permitting an unjustified timewise extension of
patent rights," see MPEP § 804 (citing Schneller, 397 F.2d 350); see also
App. Br. 23, the Appellant also fails to identify reversible error in the
rejections. The Appellant alleges that such rejections require "the
Technology Director's signature," see App. Br. 23, and that a signature was
not obtained here. That is a procedural issue that is "not directly connected
with the merits of issues involving rejections of claims," and it is
appropriately addressed by petition rather than appeal. See In re Berger, 279
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Application 13/790,212
F.3d 975, 984 (Fed. Cir. 2002) (quoting In re Hengehold, 440 F.2d 1395,
1403 (CCPA 1971)); see also 37 C.F.R. § 1.181.
The Appellant also argues that a rejection based on Schneller is
inappropriate because "all of the patent applications at issue here have the
same effective filing date" and "there would be no timewise extension of the
monopoly right." App. Br. 23. That argument is unpersuasive because the
doctrine of double patenting is not concerned solely with patent term.
"[T]here is a second justification for obviousness-type double patenting-
harassment by multiple assignees." In re Fallaux, 564 F.3d 1313, 1319
(Fed. Cir. 2009). Absent a terminal disclaimer, common ownership of the
patents would not be required. Thus, even if the claims at issue would have
the same expiration date as the claims of the reference patents, that does not
establish that a nonstatutory double patenting rejection is inappropriate.
On this record, we are not persuaded of error in the nonstatutory
double patenting rejections.
CONCLUSION
We REVERSE the Examiner's rejections of claims 39--46, 69, and 70
under 35 U.S.C. § 103(a).
We AFFIRM the Examiner's rejections of claims 39--46 for
nonstatutory double patenting.
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-IN-PART
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