Ex Parte Yoon et al

Patent Trials and Appeals Board

Apr 17, 2019

15071561 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/071,561 03/16/2016
84212 7590
The Belles Group, P.C.
337 S. 18th Street
Philadelphia, PA 19103
04/19/2019
FIRST NAMED INVENTOR
Sangsic Yoon
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.
KNP-141-US-CON 7987
EXAMINER
CHANG, KENT WU
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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):
uspto@thebellesgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANGSIC YOON, SEYEOB KIM, and
BONKEEKIM
Appeal2018-007683
Application 15/071,561
Technology Center 2600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1, 3-7, 11, 13-17, and 21, which are all
claims pending in this application. Although Appellants appeal from a non-
final rejection, we have jurisdiction pursuant to 35 U.S.C. §§ 6(b) and 134(a)
because the claims have been twice presented and rejected. See Ex parte
Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed March 16, 2016, claiming the benefit of earlier-filed
patent applications; "Non-Final Act." for the Non-Final Office Action,
mailed Aug. 10, 2017; "Br." for Appellants' Appeal Brief, filed Jan. 2, 2018;
and "Ans." for Examiner's Answer, mailed May 10, 2018.
2 According to Appellants, the real party in interest is HiDeep Inc. Br. 2.
Appeal2018-007683
Application 15/071,561
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to a
touch input device. Spec. ,r 2. Claim 1, reproduced below, is representative
of the claimed subject matter:
1. A touch input device comprising:
a touch sensor comprising a plurality of touch electrodes;
a display panel; and
a reference potential layer,
wherein the touch sensor is completely laminated with the
display panel,
wherein, when a touch pressure is applied, the touch sensor and
upper and lower part of the display panel are bent,
wherein the reference potential layer is disposed apart from the
touch sensor,
wherein the reference potential layer is disposed at a position
where the reference potential layer is not bent when the touch
pressure is applied,
wherein the plurality of touch electrodes comprises a receiving
electrode,
wherein a touch position is detected based on a first capacitance
which is detected from the receiving electrode and is changed
by an approach of an object to the touch sensor, and
wherein a magnitude of the touch pressure is detected based on
a second capacitance which is detected from the receiving
electrode and is changed according to a distance between the
touch sensor and the reference potential layer.
Br. 11 (Claims App'x).
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Appeal2018-007683
Application 15/071,561
THE REJECTION
Claims 1, 3-7, 11, 13-17, and 21 stand rejected under 35 U.S.C. § 103
as obvious over Honda (US 2011/0175845 Al, published July 21, 2011),
Eguchi (US 2009/0160822 Al, published June 25, 2009), and Badaye
(US 2012/0086666 Al, published Apr. 12, 2012). Non-Final Act. 5-9.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv). In particular, Appellants argue
claims 1, 3-7, 11, 13-17, and 21 together as a group. Br. 4. Therefore, we
limit our discussion to independent claim 1. Claims 3-7, 11, 13-1 7, and 21
stand or fall with claim 1.
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
The Reference Potential Layer Limitation
Claim 1 recites: "wherein the reference potential layer is disposed at a
position where the reference potential layer is not bent when the touch
pressure is applied." Br. 11 (Claims App'x) (emphasis added). The
Examiner found Honda's metal shield 9 teaches the claimed reference
potential layer. Non-Final Act. 5 (citing Honda ,r 170, Fig. 19).
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Application 15/071,561
Appellants allege Honda fails to disclose that metal shield 9 is not
bent, as required by the claim. Br. 7-8. Appellants explain "Honda
discloses that the display cover 5, touch panel 2, and display panel 7 are
bent, but does not disclose that the reference potential layer is not bent when
a touch pressure is applied." Id. at 7 (some emphasis omitted). Specifically,
Appellants contend Honda "does not show" what happens to metal shield 9
when touch pressure is applied. Id. at 8.
The Examiner responds by explaining why Honda indicates that metal
shield 9 is not bent when touch pressure is applied. Ans. 4. The Examiner
notes the layers above pressure sensor 703 deform when pressure is applied.
Id. The Examiner states sensor 703 detects the applied pressure, and the
Examiner reasons that the component underneath that sensor (i.e., metal
shield 9) is not designed to be bent when touch pressure is applied. Id.; see
Honda, Fig. 19 (illustrating placement of components).
Appellants' argument does not persuade us of error. Although we
agree Honda does not explicitly disclose this aspect of the claim, the
Examiner persuasively explains that a person of skill in the art would read
Honda to teach or suggest this claim limitation. Appellants elected not to
file a Reply Brief to address Examiner's finding or rationale, and
consequently, Appellants have not shown error in these findings. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (Ifan examiner presents a
prima facie case, "the burden of coming forward with evidence or argument
shifts to the applicant.").
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the Honda to teach or
suggest the disputed limitation of claim 1.
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Application 15/071,561
Motivation to Combine the References
Appellants also argue Honda teaches away from the claimed
combination. Br. 6-7. Specifically, Appellants argue "Honda teaches away
from modifying its sensor apparatus to detect touch position." Id. at 6. In
support, Appellants point to shield layer 317 and assert it would "hinder[]
the pressure sensor's ability to detect touch position" because it "is designed
to suppress capacitance change." Id. ( emphasis removed). 3 In addition,
Appellants assert it would not be obvious to combine the references because
they use different "configurations for the display panel" that would be "very
difficult" to combine. Id. at 9.
Appellants' arguments do not persuade us that Honda teaches away
from the combination proposed by the Examiner. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) ("A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.").
Notably, Appellants rely on a different embodiment of Honda than the
embodiment cited by the Examiner. In the Non-Final Action, the Examiner
relied on Honda's seventh embodiment of the touch sensor, but Appellants
discuss shield layer 31 7, which is a component from the third embodiment.
Non-Final Act. 5 (citing Honda ,r 170, Figs. 19 & 20); Br. 6 (quoting Honda
3 Appellants also contend the proposed combination would require
"substantial reconstruction ... that would impact Honda's fundamental
principles of operation," but do not explain this contention. Br. 7. We are
not persuaded by this argument because the differences identified do not
constitute a "change in the basic principles under which [ the reference] was
designed to operate." In re Ratti, 270 F.2d 810,813 (CCPA 1959).
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Application 15/071,561
,r 137). The seventh embodiment, cited by the Examiner, does not appear to
have a shield layer, and Appellants fail to show why a person of skill in the
art would read Honda to require such a layer in this embodiment. See Honda
,r,r 167-75, Fig. 19, 20 (describing and illustrating seventh embodiment);
Br. 6-7 (not addressing discrepancy). In fact, Honda states that a shield
layer is not required. See Honda ,r 184 ("[T]he differential electrode
described in the second embodiment and the like may be formed in place of
the shield layer[]."). Accordingly, Appellants' arguments regarding shield
layer 317 do not persuade us of error in the Examiner's rejection.
In addition, as noted above, Appellants argue it would not have been
obvious to combine the references because "the references use distinct
display panel configurations and accompany [sic] attributes that could not be
easily alternated." Br. 9. In support, Appellants submit each reference
bends different parts of the panel. Id. Appellants assert it would have been
"very difficult" to combine the teachings "for such differing panel
configurations." Id.
We are not persuaded of error. Appellants provide neither
explanation nor evidence to explain the significance (if any) of these alleged
differences. Appellants also do not show how or why these modifications
are "difficult," and Appellants fail to establish that these differences place
the proposed modifications beyond the level of ordinary skill in the art. The
fact that there are differences between the references, by itself, does not
show that it would not have been obvious to combine the references as
proposed by the Examiner. See MCM Portfolio LLC v. Hewlett-Packard
Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
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Application 15/071,561
into the structure of the primary reference." (quoting In re Keller, 642 F.2d
413,425 (CCPA 1981)); In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1382 (Fed. Cir. 2007) ("[W]e do not ignore the modifications that one
skilled in the art would make to a device borrowed from the prior art.").
Moreover, Appellants do not respond to the reasoning provided by the
Examiner. Br. 9; see Non-Final Act. 3, 6-7 (providing rationale for
combining the references); Ans. 3 (identifying motivations to combine).
Appellants do not contend the Examiner's proposed modifications are
beyond the level of skill of one of ordinary skill in the art, and Appellants do
not assert the modifications are more than the use of known elements to
yield predictable results. Appellants have not explained why a person of
ordinary skill in the art would not have reached the conclusions reached by
the Examiner. Accordingly, Appellants do not persuade us of error in the
Examiner's factual findings or ultimate legal conclusion of obviousness. See
In re Oetiker, 977 F .2d at 1445 (If an examiner presents a prima facie case,
"the burden of coming forward with evidence or argument shifts to the
applicant.").
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's factual findings or resulting legal
conclusion of obviousness. Accordingly, we sustain the Examiner's
obviousness rejection of independent claim 1 and grouped claims 3-7, 11,
13-17, and 21, which fall therewith.
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Application 15/071,561
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-7, 11, 13-17,
and 21.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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