Apple Inc.

Patent Trials and Appeals Board

Jun 30, 2021

2021001169 (P.T.A.B. Jun. 30, 2021)

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.
14/915,224 02/27/2016 Anna-Katrina SHEDLETSKY 106842148500
(P19291US1)
1029
161038 7590 06/30/2021
Apple c/o Kubota & Basol LLP
445 S. Figueroa Street
Suite 2140
Los Angeles, CA 90071
EXAMINER
TUNG, DAVID
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
docket@kuba-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNA-KATRINA SHEDLETSKY,
CHRISTOPHER WERNER, COLIN M. ELY, and
FLETCHER R. ROTHKOPF
Appeal 2021-001169
Application 14/915,224
Technology Center 2600
Before MAHSHID D. SAADAT, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 15, 18, 26, and 28. Oral argument
was heard on June 3, 2021. A copy of the transcript was entered into the
record on June 16, 2021. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 2.
Appeal 2021-001169
Application 14/915,224
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CLAIMED SUBJECT MATTER
Appellant’s invention generally relates to sensing mechanical inputs
to a device using a device’s capacitive touch panel. Spec. ¶ 1. The claimed
subject matter relates to devices with a mechanical input element and a
touch sensitive surface having two portions—a first portion that detects
touch inputs and a second portion that detects movement of the mechanical
input element—and methods for detecting these inputs. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A device comprising:
a mechanical input element, wherein at least a portion of
the mechanical input element is disposed within the device, and
the mechanical input element is manipulable by a user to cause
the mechanical input element to move within the device; and
a touch-sensitive surface, wherein the touch sensitive
surface comprises:
a first portion configured to detect one or more
touch inputs from one or more objects external to the
device, and
a second portion configured to detect the movement
of the mechanical input element that is at least partially
internal to the device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Perotto US 6,252,825 B1 June 26, 2001
Gauthey US 2004/0113819 A1 June 17, 2004

REJECTION
Claims 1, 4, 15, 18, 26, and 28 stand rejected under 35 U.S.C. § 103
as being unpatentable over Gauthey and Perotta. Final Act. 3–5.

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ANALYSIS
CLAIM 1
The Examiner finds the combination of Gauthey and Perotto teaches
every limitation recited in claims 1, 4, 15, 18, 26, and 28. The Examiner
finds Gauthey does not explicitly teach a portion of the touch sensitive
surface configured to detect moving of the mechanical input element, but
finds Perotto’s substrate and electrodes teach a portion “configured to detect
the movement of the mechanical input element that is at least partially
internal to the device.” Final Act. 3 (citing Perotto 3:61–4:19, Figs. 1, 2, 10,
11). Final Act. 3–5. The Examiner concludes it would have been obvious to
modify Gauthey’s mechanical input element and touch-sensitive surface
with Perotto’s teachings to configure a portion of the touch-sensitive surface
to detect movement of the mechanical input element to improve “the
reliability and reduc[e] the manufacturing costs of the device.” Final Act. 4
(citing Perotto 1:23–31, 1:61–67). The Examiner further finds Perotto’s
disclosure for the substrate of the capacitive sensor that detects the
mechanical element’s movement to be an existing element “in an electronic
or electro-mechanical clockwork movement.” Ans. 8 (citing Perotto
2:20–26).
Appellant argues the rejection of claim should be reversed because
neither Gauthey nor Perotto alone teaches the same touch-sensitive surface
sensing both touch inputs and movement of the mechanical input. Appeal
Br. 6–8; Reply Br. 2. Appellant argues that, consistent with the Examiner’s
findings, Gauthey is silent regarding using a touch-sensitive surface to detect
movement of a mechanical input element. Appeal Br. 7. Appellant then
argues Perotto does not cure this deficiency because Perotto discloses a
capacitive detection device dedicated to detecting movements of a rotating
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Application 14/915,224
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mechanical member, but Perotto does not disclose a touch screen or touch-
sensitive surface. Appeal Br. 8. Appellant argues Perotto, therefore, cannot
teach a dual-purpose surface for detecting both touch and movement of a
mechanical input element. Appeal Br. 8.
As already noted, the Examiner finds Gauthey teaches a surface that
detects a touch on a watch screen and Perotto teaches a surface for detecting
movement of a mechanical element. See Final Act. 3. Because the
Examiner does not rely on either Gauthey or Perotto alone to teach two
distinct surface portions of a surface that detect the two distinct input types,
it follows that the Examiner does not find that either Gauthey or Perotto
alone teaches single surface having two portions that detect both inputs.
Final Act. 4 (“It would have been obvious . . . to modify . . . the touch-
sensitive surface of the device of Gauthey, such that . . . the touch-sensitive
surface further incorporates a second portion configured to detect the
movement of the mechanical input element”). Therefore, although the
statement of the rejection explains the combination in general terms, the
most reasonable way to understand the Examiner’s rejection is that, when
combined, the individual cited teachings result in a single surface having two
portions, one that detects a touch input as taught by Gauthey and one that
detects movement of a mechanical input as taught by Perotto.
Given this understanding of the Examiner’s rejection—i.e., that it is
the combination that results in a single surface with one portion configured
to detect a touch input and one portion configured to detect movement of a
mechanical input—we disagree that addressing whether Gauthey or Perotto
alone teaches the recited two portions of a single surface is a proper
traversal. Accordingly, Appellant’s argument that neither reference, by
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itself, teaches two portions of a single surface, Appeal Br. 6–8; Reply Br. 2,
is unpersuasive.
Appellant also argues the proposed combination is based on improper
hindsight. Appeal Br. 8–11. Appellant also argues that, even if a person of
ordinary skill in the art would have modified Gauthey with Perotto’s
teaching of replacing dedicated electronic switches with a capacitive sensor
for a mechanical element, the combination would merely result in a device
having both Perotto’s capacitive detection device dedicated to detecting
movements of a rotating mechanical member and Gauthey’s distinct touch
surface, but the two capacitive sensors would not be two portions of the
same surface. Appeal Br. 9–10. Appellant thus argues that, even if
combined, Gauthey and Perotto do not teach the claimed features without
further modifying the combination based only on impermissible hindsight.
Appeal Br. 9–10. Appellant asserts that the Examiner’s rationale for
modifying Gauthey thus provides, at best, a reason to replace Gauthey’s
conventional crown with a capacitive-sensor based crown like Perotto’s, but
not integrating such a sensor with Gauthey’s touch-sensitive surface.
Appeal Br. 10. Appellant further contends that Perotto’s disclosure of using
existing elements of a timepiece do not cure this deficiency. Reply Br. 2.
Specifically, Appellant asserts Perotto does not suggest integrating the
substrate with a touch screen and merely suggests doing what was already
done in “conventional switch-based detection mechanisms” and placing the
capacitive system where the conventional mechanisms previously existed
Reply Br. 2–3. Finally, Appellant argues that “merely placing Perotto’s
electrodes next to the electrodes of G[a]uthey’s touch screen would result in
two touch-sensitive surfaces, not one touch-sensitive surface with two
portions, as claimed.” Reply Br. 3.
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An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421.
Gauthey and Perotto both disclose using capacitive sensors to detect
an input. Gauthey ¶ 24; Perotto 3:61–4:7. In particular, Gauthey discloses
that “[t] control keys 4 are preferably capacitance-type sensors which can
each be activated by a finger of a user or a stylus (not shown) placed in a
specific zone of the sensor to be activated.” Gauthey ¶ 24. Perotto describes
the invention as relating to “a timepiece, in particular a watch, including a
rotating member and an electric capacitive detection device for detecting
positions and/or movements of said wheel.” Perotto 1:4–7.
Appellant is correct that Perotto does not explicitly disclose
apportioning an existing capacitive sensor in one device into two portions—
one portion to be used for touch and one portion to detect movement of the
mechanical input element. However, Perotto provides the general teaching
that a device’s mechanical input element could employ a capacitive sensor to
detect movement of the input element. See Perotto, Abstract, Figs. 1–3.
Perotto further discloses that it is beneficial, particularly in small devices
such as a watch, to utilize existing structures already present. Perotto
2:20–26.
At the time of Appellant’s invention, capacitive touch sensitive watch
faces were known. See, e.g., Gauthey, Abstract, Figs. 1–2. Capacitive
sensing of movement of a mechanical input element also were known. See,
e.g., Perotto, Abstract. “[W]hen a patent ‘simply arranges old elements with
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each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative
question is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417. Accordingly, the evidence indicates that a person of ordinary skill
and ordinary creativity in the art at the time of Appellant’s invention, when
reviewing Gauthey and Perotto, would have utilized the existing capacitive
sensing surface in order to minimize size (by minimizing the number of
components) and manufacturing costs. See Perotto 1:61–67, 2:20–26.
Appellant argues that benefits of the claimed invention include that
“the associated structures that can be required for a mechanical input can be
simplified, reduced or eliminated” thereby reducing manufacturing costs and
reducing the volume occupied in the device by the mechanical input sensing
elements. Appeal Br. 4 (citing Spec. ¶ 19). Notably, Perotto addresses
similar problems relating to the costs of manufacturing timepieces with
electromechanical switches and the associated testing and adjustment as well
as the space occupied inside the timepiece. Perotto 1:23–31, 1:55–57. We
find no evidence on this record indicating that the cost of manufacturing or
the space occupied by two side-by-side sensors would be greater than that of
a single sensor having two “portions.”
Moreover, and contrary to Appellant’s argument, Reply Br. 3, we see
nothing in claim 1, read in light of the Specification, demonstrating a
patentable distinction between two adjacent capacitive sensors/surfaces,
which Appellant admits the proposed combination teaches, see, e.g., Reply
Br. 3, and two portions of one touch-sensitive surface as recited. Various
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embodiments disclosed in Appellant’s Specification and presumably
encompassed by claim 1 depict and describe the two “portions” of the single
surface functioning separately—i.e., without interaction, so the evidence
does not demonstrate that the claimed arrangement requires. In fact, the
claim language itself explicitly recites that the first portion detects touch
inputs and the second portion detects movement of the mechanical input
element. Appeal Br. 13 (claim 1). Although not precluded, claim 1 does not
require that the first portion detect movement of the mechanical input
element or that the second portion detects a touch input. We reproduce
Appellant’s Figure 3 below:

Figure 3 “illustrates an exemplary configuration for sensing input from a
button according to examples of this disclosure.” Spec. ¶ 9. As seen in the
figure, mechanical input sensing portion 312 is separate and distinct from
the touch layer portion 304. Absent explanation and evidence of a structural
or functional difference, we fail to see why two side-by-side capacitive
sensors do not teach, or at least suggest, first and second portions of a sensor
as recited. For these reasons, we sustain the rejection of claim 1 as obvious
over Gauthey and Perotto.
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Application 14/915,224
9
CLAIMS 4, 15, 18, 26, AND 28
Appellant separately argues the rejection of claims 4, 15, 18, 26, and
28 separately from independent claim 1. Appeal Br. 11. However,
Appellant merely argues that these claims are not obvious because
independent claim 15 recites limitation similar to those recited in claim 1
and argue claim 17 and because claims 4, 18, 26, and 28 ultimately depend
from, and incorporate the limitations of, one of claims 1 and 15. Appeal
Br. 11. Therefore, for the same reasons discussed above regarding claim 1,
we also sustain the rejection of claims 4, 15, 18, 26, and 28 as obvious over
Gauthey and Perotto.
DECISION SUMMARY
Claims Rejected 35 U.S.C. § References Affirmed Reversed
1, 4, 15, 18, 26, 28 103 Gauthey, Perotto 1, 4, 15,
18, 26, 28

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED