Ex Parte WACHINGER

Patent Trials and Appeals Board

Jun 7, 2018

15314905 - (D) (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/314,905 11/29/2016
21171 7590 06/11/2018
ST AAS & HALSEY LLP
SUITE 700
1201 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Michael W ACHIN GER
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.
2319.1222 4750
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL W ACHIN GER
Appeal2018-004845
Application 15/314,905 1
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejection of claims 11 and 12. App. Br. 2-6.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
SUBJECT MATTER
The subject matter on appeal concerns touch-sensitive operating
elements that contain a glass panel having a wave-shaped surface
1 Appellant is the Applicant, Audi AG, which is identified as the real party
in interest. App. Br. 1.
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Application 15/314,905
microstructure, such operating elements being useful in motor vehicle
applications as touchscreens or touchpads. Spec. i-fi-1 8-9.
Figures la and lb are illustrative of the claimed subject matter.
Fig.1b
Figure 1 a depicts a magnified illustration of a glass surface 1 Oa with a
wave-shaped microstructure 12a having a cut line S between points Pl and
P2. Figure lb illustrates the contours of the microstructure along cut line S.
Spec. i128. The wave-shaped surface microstructure according to the
appealed claims has elevations l 4a and depressions l 4b, with a height H
there between of between 5 and 20 micrometers, and a distance between
"two closest elevations and two closest depressions [BJ respectively
separated by between 80 and 130 micrometers." App. Br. 8 (Claims App'x,
Claim 11 ).
Independent claim 11 is illustrative:
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Application 15/314,905
11. An operating element for a motor vehicle, comprising:
a glass panel having a touch-sensitive operating surface
formed by deep-drawing that produces a surface microstructure
in a wave shape having elevations and depressions with a
respective height therebetween of 5 to 20 micrometers and two
closest elevations and two closest depressions respectively
separated by between 80 and 130 micrometers.
App. Br. 8 (Claims App'x).
STATEMENT OF THE CASE
Claims 11 and 12, which are the only claims on appeal, are rejected
under AIA 35 U.S.C. § 103(a) as being unpatentable over Wei2 in view of
Karkkainen. 3 Final 2--4.
The Examiner finds that Wei discloses glass with "a number of
concave and convex shapes which can be used ... in touch sensor devices,"
but does not disclose the recited wave-shaped elevations and depressions
having the height and separation distances within the claimed ranges. Final
2-3. The Examiner additionally finds that Karkkainen discloses an
apparatus for a user interface in an electronic device having a textured
surface in a wave shape that extends substantially in a single direction and
that is configured to produce predefined vibrations in the user's skin.
Final 3. The Examiner concludes that it would have been obvious to modify
Wei with Karkkainen's wave-shaped texture "in order to provide haptic
technology that provides tactile feedback by taking advantage of a user's
sense of touch to convey information." Final 3. The Examiner additionally
2 Kang Wei, US 2012/0287057 Al, published Nov. 15, 2012.
3 Asta Maria Karkkainen, US 2011/0285637 Al, published Nov. 24, 2011.
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Application 15/314,905
concludes that, even though the cited art does not expressly disclose the
recited height and distance requirements between the elevations and
depressions, it would have been obvious to the skilled artisan to adjust or
optimize the amplitude and spacing of the structures "in order to ensure the
surface is accurately detectable by a specific mechanical receptor in the skin
of the user." Final 3--4.
OPINION
Appellant argues the rejected claims as a group, so we select
independent claim 11 as representative and decide the propriety of the
rejection on the basis of this claim alone. Claim 12 stands or falls with
claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
We have considered Appellant's arguments (App. Br. 2---6; Reply Br.
1--4) and are unpersuaded that Appellant has identified a reversible error in
the Examiner's rejections. Therefore, we sustain the obviousness rejection
before us based on the findings of fact, conclusions of law, and rebuttals to
arguments expressed by the Examiner in the Final Action and in the Answer.
We add the following.
Several of Appellant's arguments (App. Br. 2-5) focus on the
teachings of Wei individually- specifically Wei's molding technique - to
the exclusion of the Karkkainen disclosure. Such arguments are not
persuasive of reversible error, however, because they do not address the
collective teachings of the relied-upon references, nor what such teachings
would have suggested to the skilled artisan. "Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
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be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Furthermore, we hold that the Examiner's finding regarding Wei's use
of a mold to form the shaped or sculpted surface (Final 3), and Appellant's
arguments directed thereto (App. Br. 2-5), are not particularly relevant to
the rejection of claim 11, which is a product-by-process claim. "The
patentability of a product does not depend on its method of production ....
If the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process." In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985). Here, barring some structural difference in the recited
glass surface microstructure by virtue of the claimed "deep-drawing"
method, it is of no moment whether Wei uses a molding technique, or some
other method, to form impressions in glass.
Moreover, Appellant's argument that the Examiner "failed to provide
evidence that 'using a mold' and 'formed by deep-drawing' results in the
same structure" reflects a misunderstanding of burdens before the Office.
App. Br. 3. To establish a prima facie case of obviousness of a product-by-
process claim, the Examiner must first show that the claimed structure exists
or would have been an obvious variation of a structure disclosed in the prior
art. Upon doing so, the burden shifts to the Appellant to establish that the
recited process imparts a distinguishing structural difference. See In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Here, Appellant has provided
no such evidence.
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Appellant also makes several arguments that Karkkainen teaches
away from arriving at the recited spacing relationship between elevations
and depressions in the surface microstructure. App. Br. 5---6; Reply Br. 3--4.
These arguments are unpersuasive for several reasons.
First, Karkkainen expressly discloses "a roughness lengthscale" that
overlaps the recited range of "between 80 and 13 0 micrometers,"
(Karkkainen, Fig. 1 c, i-f 60 (explaining that tactile feedback vibrations may
be detected via the Pacinian corpuscle at an elevation and depression spacing
of 0.1 mm, i.e., 100 µm)). It is well-settled that where claimed ranges
"overlap or lie inside ranges disclosed by the prior art," a prima facie case of
obviousness exists. In re Wertheim, 541F.2d257, 267 (CCPA 1976). Such
is precisely the case with the recited separation distance of between 80-130
µm-it overlaps with Karkkainen's expressly disclosed spacing of "as low
as 0.1 mm." Karkkainen i-f 60. As to the recited height between the
elevations and depressions, Karkkainen further expressly discloses that the
amplitude threshold for the Pacinian corpuscle is between 1 and 100 µm, and
that "in order to stimulate [the Pacinian receptor], the height of each feature
should be above the corresponding amplitude threshold." 4 Karkkainen i-f 62.
Thus, because the amplitude threshold to stimulate the Pacinian corpuscle
may be as low as 1 µm, Karkkainen expressly discloses an amplitude
threshold that fully encompasses the recited amplitude of 5-20 µm. When,
as is the case here, "the claimed ranges are completely encompassed by the
4 We disagree with Appellant (Reply Br. 3) that it is only the "higher end of
this range [ 1-100 µm] that must be exceeded" to stimulate the Pacinian
receptor because Karkkainen discloses the amplitude threshold can be as low
as 1 µm for this particular receptor. Karkkainen i-f 62.
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prior art, the [obviousness] conclusion is even more compelling than in cases
of mere overlap." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). In
any event, "the existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious." Peterson, 315 F.3d at 1330. Here, no such evidence has been
presented. 5
Furthermore, Appellant's teaching away argument is unpersuasive
because "[t]he prior art's mere disclosure of more than one alternative does
not constitute a teaching away from ... alternatives because such disclosure
does not criticize, discredit, or otherwise discourage the solution claimed."
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has identified
no disclosure in Karkkainen that would have led the skilled artisan to believe
that the recited amplitude and spacing parameters would not have worked.
Indeed, we view Karkkainen' s express disclosure of overlapping and fully
encompassing ranges as evidence that the skilled artisan would have
considered the claimed ranges as workable.
Thus, for the reasons provided by the Examiner, as well as the reasons
outlined above, we sustain the Examiner's rejection of claims 11 and 12.
5 We disagree with Appellant's contention that the Appeal Brief and the
Specification "contain 'a showing of criticality'." Reply Br. 2. The relied-
upon portions of the Specification are general in nature (Spec. i-fi-f l 0, 11) and
only specify one general distance measurement, i.e., "significantly shorter
than I mm." Such statements do not evince any criticality of the recited
dimensions.
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DECISION
The Examiner's final decision to reject claims 11 and 12 is affirmed.
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
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