Jong Hee Hwang et al.

Patent Trials and Appeals Board

Aug 30, 2019

14714180 - (D) (P.T.A.B. Aug. 30, 2019)

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.
14/714,180 05/15/2015 Jong Hee HWANG 29272-29227/US 3115
138354 7590 08/30/2019
LG Display/FENWICK
801 California Street
Mountain View, CA 94041
EXAMINER
LIN, HANG
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
FWLGDisplayPatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONG HEE HWANG, KI DUK KIM, SUNG YONG CHO, and
EUN JUNG KIM
____________________

Appeal 2017-009545
Application 14/714,1801
Technology Center 2600
____________________

Before THU A. DANG, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–3, 5–16, 18–23, and 26. Appellants have canceled claims 4, 17,
24, and 25. See Amend. 3–8 (filed July 13, 2016). We have jurisdiction
over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify LG Display Co., Ltd. as the real party in interest. App.
Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention generally relates to “a
touch panel enabling both touch force sensing and touch point sensing . . . .”
Spec. ¶ 2. In a disclosed embodiment
a touch panel includes first electrodes and second electrodes
separated from and intersecting the first electrodes. The first
electrodes are applied with a touch driving pulse during a first
sensing mode and a second sensing mode. The second electrodes
sense a first touch sense signal responsive to the touch driving
pulse in the first sensing mode. A subset of the second electrodes
senses a second touch sense signal responsive to the touch
driving pulse in the second sensing mode.
Spec. ¶ 14. More particularly, the Specification describes that in a first
sensing mode, a force of touch on the touch panel may be determined and in
a second sensing mode, the location of the touch may be determined. Spec.
¶ 18.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A touch panel comprising:
first electrodes applied with a touch driving pulse during a
touch force sensing mode to determine a force of a touch on the
touch panel and a touch point sensing mode to determine a
location of the touch on the touch panel; and
second electrodes separated from and intersecting the first
electrodes, the second electrodes including touch sensing
electrodes and adjacent electrodes adjacent to the touch sensing
electrodes, the touch sensing electrodes and the adjacent
electrodes to sense a first touch sense signal responsive to the
touch driving pulse in the touch force sensing mode, and the
touch sensing electrodes to sense a second touch sense signal
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responsive to the touch driving pulse in the touch point sensing
mode,
wherein the adjacent electrodes are not used to sense the
second touch sense signal during a first time period, at which the
touch point sensing mode is performed, but only used to sense
the first touch sense signal responsive to the touch driving pulse
during a second time period, at which the touch force sensing
mode is performed.

The Examiner’s Rejection
Claims 1–3, 5–16, 18–23, and 26 stand rejected under 35 U.S.C. § 103
as being unpatentable over Coulson et al. (US 2013/0033450 A1; Feb. 7,
2013) (“Coulson”); Inada et al. (US 2013/0082763 A1; Apr. 4, 2013)
(“Inada”); and Olson et al. (US 8,874,396 B1; Oct. 28, 2014) (“Olson”).
Final Act. 3–24.

ANALYSIS2
Claims 1–3, 5–14, and 26
Appellants assert, inter alia, the prior art, as relied on by the
Examiner, fails to teach or suggest a dual mode sensing touch panel wherein
touch sensing electrodes and adjacent (sensing) electrodes are used in a
touch force sensing mode, but only touch sensing electrodes (i.e., not the
recited adjacent electrodes) are used in a touch point sensing mode. App.
Br. 11–15; Reply Br. 2–12. Additionally, Appellants assert the Examiner

2 Throughout this Decision, we have considered the Appeal Brief, filed
January 18, 2017 (“App. Br.”); the Reply Brief, filed June 30, 2017 (“Reply
Br.”); the Examiner’s Answer, mailed May 4, 2017 (“Ans.”); and the Final
Office Action, mailed August 19, 2016 (“Final Act.”), from which this
Appeal is taken.
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failed to set forth sufficient reasoning in support of the proffered
combination of references. App. Br. 15–19; Reply Br. 12–15.
Claim construction is an important step in a patentability
determination. A legal conclusion that a claim is obvious involves a two-
step inquiry wherein first, the claims are properly construed, and second, the
properly construed claims are compared to the prior art. See Medichem, S.A.
v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); see also In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004).
Claim 1 is an apparatus claim that claims a touch panel. Claim 1
further recites the touch panel comprises first electrodes and second
electrodes, wherein the second electrodes include touch sensing electrodes
and adjacent electrodes adjacent to the touch sensing electrodes. In addition,
the second electrodes are separated from and intersect the first electrodes.
These limitations (i.e., identifying the different electrodes and how they are
positioned relative to each other) define the structure of the touch panel
apparatus.
Claim 1 also recites which electrodes (i.e., the touch sensing
electrodes and adjacent electrodes) are used to sense a first touch sense
signal in a touch force sensing mode and which electrodes (i.e., the touch
sensing electrodes and not the adjacent electrodes) are used to sense a
second touch signal in a touch point sensing mode. These limitations do not
impart structure to the touch panel apparatus, but instead describe how the
components (electrodes) of the claimed apparatus are used.
Similarly, we construe independent claim 26 to also recite a touch
panel apparatus comprising first electrodes and second electrodes, wherein
the second electrodes include touch sensing electrodes and adjacent
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electrodes adjacent to the touch sensing electrodes, and further wherein the
second electrodes are separated from and intersect the first electrodes. As
with claim 1, the remaining limitations of claim 26 recite how the claimed
apparatus is used, but do not otherwise impart structure to the touch panel
apparatus.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990); but cf. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)
(explaining that when supported by the specification, recited elements of an
apparatus “adapted to” or “configured to” perform a function have a
narrower meaning than merely an intended use of the elements themselves).
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
809 (Fed. Cir. 2002).
Accordingly, the Examiner need only identify prior art that teaches
the recited structure of the touch panel apparatus.
Here, the Examiner finds that Coulson teaches the claimed touch
panel. Final Act. 3–4. In particular, the Examiner finds, and we agree, that
Coulson describes a touch panel comprising a plurality of drive electrodes
(i.e., the claimed first electrodes) and a plurality of sense electrodes (i.e., the
claimed second electrodes).
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Figure 6 of Coulson is illustrative and is reproduced below:

Figure 6 of Coulson shows an arrangement of the drive electrodes
(710) and sense electrodes (720). Coulson ¶ 184. Coulson describes (and
illustrates) the drive and sense electrodes are electrically insulated from one
another and are arranged such that the sense electrodes are formed in a
direction orthogonal to the direction in which the drive electrodes are
formed. Coulson ¶¶ 183–184, Fig. 6. Moreover, Coulson describes and
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illustrates the sense electrodes as a plurality of electrodes, such that each
electrode has at least one electrode adjacent to it. See Coulson ¶ 182, Fig. 6.
Thus, we find Coulson describes a touch panel apparatus comprising
first electrodes and second electrodes, wherein the second electrodes include
touch sensing electrodes and adjacent electrodes adjacent to the touch
sensing electrodes, and further wherein the second electrodes are separated
from and intersect the first electrodes, as recited in independent claims 1 and
26. Because we find Coulson teaches all of the structure of the claimed
apparatus, we need not rely on the other cited prior art references. See In re
Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (explaining that limiting an
affirmance of obviousness rejection to less than all of the references cited by
the Examiner does not constitute a new ground of rejection); In re Bush, 296
F.2d 491, 495–96 (CCPA 1961). Moreover, because our affirmance of the
Examiner’s rejection does not rely on the combined teachings of prior art
references, Appellants’ arguments regarding the Examiner’s rationale to
combine references are moot.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claim 1. For similar reasons, we also sustain the
Examiner’s rejection of independent claim 26. Additionally, we sustain the
Examiner’s rejection of claims 2, 3, and 5–14, which depend directly or
indirectly therefrom and were not argued separately. See App. Br. 19; see
also 37 C.F.R. § 41.37(c)(1)(iv) (2016).

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Claims 15, 16, and 18–23
Unlike the touch panel apparatus recited in independent claims 1 and
26, independent claim 15 (and dependent claims 16 and 18–23) recites a
method of operating a touch panel. Thus, all of the steps of the method of
operation must be taught or suggested by the prior art. Claim 15 is
reproduced below:
15. A method of operating a touch panel including first
electrodes and second electrodes separated from and intersecting
the first electrodes, the second electrodes including touch sensing
electrodes and adjacent electrodes adjacent to the touch sensing
electrodes, the method comprising:
applying a touch driving pulse to the first electrodes during
a touch force sensing mode to determine a force of a touch on the
touch panel and a touch point sensing mode to determine a
location of the touch on the touch panel;
sensing a first touch sense signal responsive to the touch
driving pulse in the touch force sensing mode through the touch
sensing electrodes and the adjacent electrodes; and
sensing a second touch sense signal responsive to the
touch driving pulse in the touch point sensing mode through the
touch sensing electrodes except the adjacent electrodes,
wherein the adjacent electrodes are not used to sense the
second touch sense signal during a first time period at which the
touch point sensing mode is performed, but only used to sense
the first touch sense signal responsive to the touch driving pulse
during a second time period at which the touch force sensing
mode is performed.
In rejecting claim 15, the Examiner relies on the combined teachings
of Coulson, Inada, and Olson. Final Act. 3–8, 22. In particular, the
Examiner finds Coulson teaches a touch panel comprising first and second
electrodes arranged as recited in Appellants’ claims. Final Act. 3–4 (citing
Coulson ¶¶ 182–183, Fig. 6). Further, the Examiner finds Coulson teaches
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operating the touch panel in both a touch force sensing mode and a touch
location sensing mode. Final Act. 3–4 (citing Coulson ¶¶ 182–183, Fig. 6);
see also Coulson ¶¶ 189–192. The Examiner relies on Inada to teach the
second electrodes include touch sensing electrodes and electrodes adjacent
to the touch sensing electrodes and that the touch sensing electrodes and
adjacent electrodes are used collectively in a touch force sensing mode.
Final Act. 4–6 (citing Inada ¶¶ 43–44, 50, 47, 62, Figs. 1, 2, 3A–3D, 5). In
addition, the Examiner finds Olson describes sensing a touch location on a
touch panel by using one sensing electrode at a time (i.e., not using
electrodes adjacent to a sensing electrode) and, therefore, teaches the
claimed touch sensing mode of operation. Final Act. 6–8 (citing Olson,
col. 8, ll. 49–59).
The Examiner determines an ordinarily skilled artisan would have
been motivated to modify Coulson’s touch force sensing method with that of
Inada and to further modify Coulson’s touch location sensing method with
that of Olson because the methods of Inada and Olson “offer a substituted
method” of operation. Final Act. 6, 8. Additionally, the Examiner explains
“the modification of Coulson with Inada and Olson would have been
obvious for one [ordinarily] skilled in the art at the time of the invention to
yield a predictable result of carrying out force and point sensing by
adopting the known methods as taught by Inada and Olson.” Ans. 8.
Appellants argue, inter alia, the Examiner fails to provide sufficient
rationale or reasoning for the proffered combination of references and
instead relies on improper hindsight. App. Br. 24–28; Reply Br. 12–15. In
particular, Appellants assert the Examiner’s rationale of a “substituted
method” to sense touch force and touch location is conclusory and lacks
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articulated reasoning with rational underpinning. App. Br. 24–26 (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). More specifically,
Appellants argue the touch panel of Coulson is structured and operates in a
different manner than those described by Inada and Olson. App. Br. 25–26;
Reply Br. 14–15. As such, Appellants assert the proposed modification
would change Coulson’s principle of operation. Reply Br. 14–15.
“[T]he desire to enhance commercial opportunities by improving a
product or process is universal . . . .” DyStar Textilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). “[A]n implicit
motivation to combine” may result from a desire to make a product or
process “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or
more efficient.” DyStar, 464 F.3d at 1368. Moreover, the law does not
require that the references expressly articulate a motivation to combine. See,
e.g., Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350,
1359 (Fed. Cir. 2017). Instead, an obviousness analysis can “consider a
range of real-world facts to determine ‘whether there was an apparent reason
to combine the known elements in the fashion claimed by the patent at
issue.’” Intercont’l Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d
1336, 1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
However, we are mindful that although one of ordinary skill in the art
may understand that two references could be combined as reasoned by the
Examiner, this does not imply a motivation to combine the references.
Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir.
2017); see also Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015) (“[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
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modifications of prior art to arrive at the claimed invention.”); InTouch
Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir.
2014). “Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). Additionally, we are mindful “of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. Deere, 383 U.S. 1,
36 (1966)).
Moreover, in KSR, the Supreme Court explained:
The principles underlying these cases [(reviewing cases
involving the combination of familiar elements according to
known methods to yield predictable results)] are instructive
when the question is whether a patent claiming the combination
of elements of prior art is obvious. When a work is available in
one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different
one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
KSR, 550 U.S. at 417. However, the Court cautioned that in cases where the
claimed subject matter involves more than the simple substitution of one
known element for another, additional factors (e.g., the interrelated teachings
of multiple patents and the effects of demands known to the design
community) should be considered. KSR, 550 U.S. at 417–18. In such cases,
“this analysis should be made explicit.” KSR, 550 U.S. at 418.
We provide a brief overview of the cited prior art references to
determine whether the Examiner’s proposed combination is merely the
simple substitution of one known element for another to yield a predictable
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result, or if the rationale for combining the teachings demands a more
explicit analysis.
Coulson describes a structure of a dual mode capacitive touch panel as
comprising a sensor substrate and an electrode layer further comprising an
array of sensor electrodes arranged over the sensor substrate. Coulson
¶ 182. Coulson describes the array of sensors as including a plurality of
drive electrodes and a plurality of sense electrodes. Coulson ¶¶ 182–183. In
addition, Coulson’s touch panel includes “a shield layer arranged over and
spaced apart from the electrode layer, the shield layer having a
predetermined resistance that permits transmission of an electric field at a
first frequency and prevents transmission of an electric field at a second
frequency.” Coulson ¶ 182. The shield layer affects the amount of current
that flows into the sense electrodes. Coulson ¶ 187. Moreover, Coulson
discloses the shield layer is capacitively coupled to the drive and sense
electrodes, as well as being capacitively coupled to a grounded and
capacitive object (e.g., a finger) when placed in proximity to the shield layer
of the touch panel structure. Coulson ¶ 187, Fig. 8. Because the shield layer
is capacitively coupled to the drive electrodes, when a stimulus signal is
applied to the drive electrodes, local stimulus perturbations are induced on
the shield layer. Coulson ¶ 188.
In addition, Coulson describes a touch panel operating in two different
modes—a first mode to sense touch location, and a second mode to sense
touch force. Coulson ¶¶ 189–192. Rather than floating or switching in
adjacent electrodes during the different operating modes, Coulson describes
applying a sinusoidal voltage stimulus to the drive electrodes at different
frequencies for the different operating modes. Coulson ¶¶ 188–192.
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Coulson teaches that based on the frequency of the stimulus signal, the
sinusoidal voltage perturbations induced on the shield layer may or may not
be attenuated by a resistive path to a DC voltage source. Coulson ¶¶ 189–
192. In a disclosed mode of operation, Coulson teaches applying a stimulus
signal at a first frequency such that “the presence of a finger can be
determined separately from the applied forces.” Coulson ¶ 190. In a second
operating mode, Coulson describes applying a stimulus signal at a second
(lower) frequency such that the “compression of the shield layer [(i.e., touch
force)] can be determined separately from the presence of a finger.”
Coulson ¶ 192.
Inada, as relied on by the Examiner, describes a touch panel display in
which pairs of drive electrodes and pairs of sense electrodes are switched on
and a capacitance measurement is performed for the electrode pair group.
Inada ¶¶ 43–44, 47, 50, Fig. 2. Inada describes subsequently switching out
one drive electrode and one sense electrode and switching in another drive
electrode and sense electrode and again measuring the capacitance of the
new electrode pair group. Inada ¶ 47, Figs. 3A–3D. Based on the measured
capacitance of a plurality of electrode pair groups, Inada determines a
magnitude of external force applied to the pairs of electrodes. Inada ¶ 50.
Olson generally relates to improving touch detection (i.e., location
sensing) on a touch panel display by inducing an injected touch to simulate
the data produced during an actual touch (including the coupling of any
noise signals that may accompany an actual touch) and calculating a noise
metric based on the injected touch. Olson, col. 2, l. 58–col. 3, l. 1. Olson
describes a general structure of a mutual capacitive touch panel comprising a
plurality of transmit (i.e., drive) electrodes and a plurality of receive (i.e.,
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sense) electrodes arranged orthogonal to the transmit electrodes. See Olson,
Fig. 2. As identified by the Examiner (see Final Act. 6), Olson describes
measuring a receive signal on each of the receive electrodes sequentially.
Olson, col. 8, ll. 49–59. Thus, the Examiner finds Olson teaches a mode of
sensing touch by not using adjacent receive (sense) electrodes. See Final
Act. 6.
We agree with Appellants that the Examiner’s rationale for combining
the references in the manner suggested is insufficient. As an initial matter,
Coulson already teaches a dual mode touch panel display capable of sensing
a touch force and touch location. The Examiner has not identified a benefit
to modifying the manner in which Coulson senses touch force and touch
location to incorporate the structure and approach taught by Inada and
Olson, respectively. In other words, although the prior art may separately
teach the different touch force and touch point sensing operations, the
Examiner has not set forth articulated reasoning with rational underpinning
as to why an ordinarily skilled artisan would have been motivated to make
the proffered modifications.
Additionally, we disagree that the proposed combination is merely a
simple substitution of known elements operating in a known manner to yield
predictable results. The structure of Coulson’s touch panel apparatus and
method of operation do not readily lend themselves to the approaches of
Inada and Olson.
Because we find it dispositive that the Examiner has not set forth
sufficient reasoning with rational underpinning for the proposed
combination of references, we do not address other issues raised by
Appellants’ arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
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(Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a
decision based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claim 15. For similar reasons we do not sustain the
Examiner’s rejection of claims 16 and 18–23, which depend directly or
indirectly therefrom.

DECISION
We affirm the Examiner’s decision rejecting claims 1–3, 5–14, and 26
under 35 U.S.C. § 103.
We reverse the Examiner’s decision rejecting claims 15, 16, and 18–
23 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART