8730191 et al.

Patent Trials and Appeals Board

Sep 1, 2020

96000213 - (D) (P.T.A.B. Sep. 1, 2020)

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.
96/000,213 05/19/2017 8730191 142560/411598-02882 1626
23363 7590 09/01/2020
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMSUNG DISPLAY CO., LTD
____________________

Appeal 2020-003494
Reexamination Control 96/000,213
Patent No. US 8,730,191 B2
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1–7 and 15–29.1 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We reverse.
The ’191 patent issued to Kim on September 30, 2008. The ’191
patent is a touch screen panel protected against failure due to static
electricity. Kim includes a plurality of static electricity induction patterns
extending between first and second sensing cells such that an end portion
overlaps the neighboring sensing cell. Spec., Abstr.

1 Claims 8–14 have been cancelled. Claims 30 and 31 do not stand rejected.
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Claim 1 is exemplary of the claims on appeal:
1. (Previously Presented) A touch screen panel,
comprising:
a transparent substrate;
a plurality of first sensing cells connected along a first
direction on the transparent substrate, and a plurality of second
sensing cells disposed between the respective first sensing cells
and connected along a second direction;
a plurality of first connection patterns which connect the
first sensing cells along the first direction;
a plurality of second connection patterns which connect
the second sensing cells along the second direction;
a plurality of static electricity induction patterns, each
static electricity induction pattern being connected to one of the
first sensing cells or one of the second sensing cells, and
extending directly therefrom in a direction toward a sensing cell
immediately adjacent to a sensing cell to which said each static
electricity induction pattern is connected so that an end portion
of the static electricity induction pattern overlaps the adjacent
sensing cell; and
a first insulating layer interposed between the first and
second connection patterns and between said each static
electricity induction pattern and the adjacent sensing cell,
wherein an entirety of each of the static electricity
induction patterns is spaced apart from any first imaginary line
having a shortest distance between adjacent ones of the first
sensing cells in the first direction and any second imaginary
line having a shortest distance between adjacent ones of the
second sensing cells in the second direction.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
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Name Reference Date
LIN CN 101655755 A Feb. 24, 2010
Guo CN 101840285 A Sept. 22, 2010

Throughout this decision, we make reference to Appellant’s Brief
(“Appeal Br.,” filed December 26, 2019), the Reply Brief (“Reply Br.,” filed
April 2, 2020) the Examiner’s Answer (“Ans.,” mailed February 13, 2020),
and the Final Rejection (“Final Act.,” mailed May 30, 2019) for their
respective details.
REJECTIONS
Claims 1–7 and 15–27 stand rejected under 35 U.S.C. § 112(a), or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 10.
Claims 1–7 and 15–27 stand rejected under 35 U.S.C. § 112(b), or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant, regards as the
invention. Final Act. 12.
Claims 1–5, 15–23, 26, and 272 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lin. Ans. 6.
Claims 6, 7, 24, 25, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lin and Guo. Ans. 19.

2 Claims 28 and 29 are not included in the Examiner’s statement of rejection,
but are discussed in detail within the body of the rejection. Final Act. 28–38.
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ISSUE
Appellant’s arguments present us with the following issue:
Does Lin teach or suggest that
an entirety of each of the static electricity induction patterns is
spaced apart from any first imaginary line having a shortest
distance between adjacent ones of the first sensing cells in the
first direction and any second imaginary line having a shortest
distance between adjacent ones of the second sensing cells in
the second direction?

Principles of Law
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “One shows that one is 'in
possession' of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious.” Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claims must “particularly point[] out and distinctly claim[] the
subject matter which the applicant regards as his invention.” 35 U.S.C.
§ 112, ¶ 2. However, “[o]nly claims not amenable to construction or
insolubly ambiguous are indefinite. . . . A claim term is not indefinite just
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because it poses a difficult issue of claim construction.” Star Scientific, Inc.
v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008)
(internal citations and quotation marks omitted). “Thus, the definiteness of
claim terms depends on whether those terms can be given any reasonable
meaning.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005).

ANALYSIS
Rejection under 35 U.S.C. § 112(a)
The Examiner determined that the originally-filed Specification and
drawings does not provide support for the claimed static electricity induction
patterns being “spaced apart from any first imaginary line having a shortest
distance between adjacent ones of the first sensing cells in the first direction
and any second imaginary line having a shortest distance between adjacent
ones of the second sensing cells in the second direction.” Final Act. 10.
We do not agree with the Examiner. While it is true that Appellant’s
drawings do not provide a figure that illustrates the claimed “imaginary
lines,” Appellant’s drawing figures do illustrate first sensing cells 12a and
second sensing cells 12b. During prosecution, Appellant provided an
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illustration showing where the claimed “any first imaginary line” and “any
second imaginary line” would lie. Amendment filed March 30, 2019, p. 12.

Applicant-Annotated versions of Figures 2 and 6 of U.S. Patent No.
8,730,191 B2, showing first imaginary lines having a shortest distance
between adjacent ones of the first sensing cells 12a in the first direction, and
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showing second imaginary lines having a shortest distance between adjacent
ones of the second sensing cells 12b in the second direction.

It may be perceived from Appellant’s annotated Figures that the static
electricity induction patterns 14a, 14b (the “tails” of connection patterns
13a) are located entirely outside of (“spaced apart from,” in the language of
the claims) the imaginary rectangle defined by any first imaginary line
having a shortest distance between adjacent ones of the first sensing cells, in
a first direction, and defined by any second imaginary line having a shortest
distance between adjacent ones of the second sensing cells 12b, in a second
direction. Given the cells’ particular geometry and arrangement in Figures 2
and 4–9, we agree with Appellant that these figures illustrate the claimed
concept of “first imaginary lines” and “second imaginary lines,” and locating
the static electricity induction patterns 14a, 14b spaced apart from any such
first and second imaginary lines. We further agree with Appellant, therefore,
that the originally filed drawing figures show that the inventor possessed the
claimed invention, including the limitation concerning the location of the
static electricity induction patterns 14a, 14b.
We conclude that the Examiner erred in rejecting claims 1–7 and 15–
27 under 35 U.S.C. § 112(a) as lacking written description support. We do
not sustain the Examiner’s rejection.
Rejection under 35 U.S.C. § 112(b)
The Examiner rejects the claims as being indefinite, relying on the
same remarks made with respect to the § 112(a) rejection, and concludes that
the claims are indefinite because the claim language regarding “any first
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imaginary line” and “any second imaginary line” “does not provide a
definite claim element with clear bounds.”
We do not agree with the Examiner’s conclusion. We find supra that
Appellant’s drawing figures illustrate the claimed first sensing cells and
second sensing cells, and, given their particular geometry and arrangement
in those figures, also illustrate “imaginary lines” having a shortest distance
between adjacent ones of the sensing cells. We find, therefore, that one of
ordinary skill in the art would understand what is claimed when the claims
are read in light of the specification, of which the drawings form a part.
We conclude that the Examiner erred in concluding that claims 1–7
and 15–27 are indefinite under 35 U.S.C. § 112. We do not sustain the
Examiner’s rejection.
Rejection under 35 U.S.C. § 103
Claims 1–5, 15–23, 26, and 27
Independent claim 1 recites that “an entirety of each of the static
electricity induction patterns is spaced apart from any first imaginary line
having a shortest distance between adjacent ones of the first sensing cells in
the first direction and any second imaginary line having a shortest distance
between adjacent ones of the second sensing cells in the second direction.”
The Examiner finds that Figures 5D and 5E of Lin “make clear that there is a
space between the cell in which the static electricity induction pattern leaves
and the dielectric region [Fig. 5E, 140].” Advisory Action 3. “Here this
space is in a vertical direction, but none the less (sic) spaced apart from other
directions forming the critical region.” Id.
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We do not agree with the Examiner’s finding. We agree with
Appellant that an interpretation of “spaced apart” as being in the vertical
direction is inconsistent with the Specification and drawings. Appeal Br. 9.
We further agree with Appellant that every depiction in the Patent (i.e.,
Figures 2 and 4–9) shows the static electricity induction patterns outside the
subject ‘imaginary region’ in both the claimed ‘first direction’ and the
claimed ‘second direction.’” Id. As discussed supra, we rely on the
depictions in Figures 2 and 4–9 to supply written description support under
35 U.S.C. § 112, first paragraph, for the claimed spaced apart from a first
imaginary line and a second imaginary line.
We further agree with Appellant that the Examiner’s interpretation
that “spaced apart” can refer to the vertical direction ignores the plain
language of the claims, which require horizontal spacing corresponding to
the “first direction” and the “second direction.” Reply Br. 10. We agree with
Appellant’s argument that were a static electricity induction pattern to be
only vertically spaced from the “imaginary region,” the capacitance of the
static electricity induction pattern 14a would necessarily be formed with the
second connection pattern 13b, rather than with the corresponding sensing
cell 12a, 12b. Reply Br. 10.
We determine that Lin does not teach or suggest all the limitations of
representative claim 1. We do not sustain the Examiner’s § 103 rejection of
claims 1–5, 15–23, 26, and 27 over Lin.

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Claims 6, 7, 24, and 25
Each of these claims depends from independent claim 1, whose
rejection over Lin we do not sustain. On this record, the Examiner does not
find that Guo overcomes the deficiencies of Lin that we have noted. We do
not sustain the Examiner’s § 103 rejection of claims 6, 7, 24, and 25 over
Lin and Guo, for the same reasons expressed supra with respect to the § 103
rejection of independent claim 1 over Lin alone.
Claims 28 and 29
The Examiner finds that insulating layer 140 of Lin is entirely formed
within the touch active area in which the first and second sensing cells are
formed. Final Act. 36. We do not agree with the Examiner’s finding, and we
agree with Appellant’s argument that Figures 3A and 3B of the ’191 Patent
show a first insulating layer 30 that covers an entirety of touch active area
101 while also covering a portion of the non-touch active area 102.
Accordingly, Appellant’s first insulating layer 30 is not formed only, or
entirely, within the touch active area 101. Appeal Br. 16. We agree with
Appellant that the Examiner’s interpretation of “entirely formed on” as
meaning “entirely formed within” is not supported by Appellant’s
Specification. Id.
We further agree with Appellant that Lin does not disclose a first
insulating layer entirely formed on a touch active area in which the first and
second sensing cells are formed. Appeal Br. 16. Lin teaches an “island type”
dielectric layer defining holes therethrough. Id.
Because we find that the combination of Lin and Guo does not teach
all the limitations of independent claim 28, and claim 29 dependent
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therefrom, we do not sustain the Examiner’s § 103 rejection of claims 28
and 29 over Lin and Guo.

CONCLUSION
Lin does not teach or suggest that “an entirety of each of the static
electricity induction patterns is spaced apart from any first imaginary line
having a shortest distance between adjacent ones of the first sensing cells in
the first direction and any second imaginary line having a shortest distance
between adjacent ones of the second sensing cells in the second direction.”
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–7, 15–27 112(a) Written
description
1–7, 15–27
1–7, 15–27 112(b) Indefiniteness 1–7, 15–27
1–5, 15–23,
26, 27
103 Lin 1–5, 15–23,
26, 27
6, 7, 24, 25,
28, 29
103 Lin, Guo 6, 7, 24, 25,
28, 29
Overall
Outcome

1–7, 15–29

ORDER
The Examiner’s decision to reject claims 1-7 and 15-29 is reversed.

REVERSED

Appeal 2020-003494
Reexamination Control 96/000,213
Patent No. 8,730,191 B2

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