Apple Inc.

Patent Trials and Appeals Board

Feb 2, 2021

2020000895 (P.T.A.B. Feb. 2, 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.
15/487,233 04/13/2017 James R. Wilson P31241US1 6093
65015 7590 02/02/2021
Treyz Law Group
6501 E. Greenway Pkwy
#103-621
Scottsdale, AZ 85254
EXAMINER
MALKOWSKI, KENNETH J
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
patents@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. WILSON, KENICHI NAKAJIMA, LIGANG WANG,
MARK T. WINKLER, MATTHEW S. ROGERS, NAOTO MATSUYUKI,
and XIANWEI ZHAO
Appeal 2020-000895
Application 15/487,233
Technology Center 3600
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “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.
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CLAIMED SUBJECT MATTER
The claims are directed to infrared-transparent window coatings for
electronic device sensors. Appellant describes the invention as relating to
“coating layers for infrared-transparent sensor windows in electronic
devices.” Spec. ¶ 1. In electronic devices such as mobile telephones, for
example, light sensors such as infrared proximity sensors may be included to
detect external objects, such as a user’s head, in the vicinity of the phone.
Spec. ¶ 2. These infrared proximity sensors emit infrared light and detect
reflected light back to the sensor to indicate the presence of an object. Spec.
¶ 2. The Specification further notes that the “sensors may be mounted
behind an inactive area of a display,” and that “[t]he display may have a
protective layer of clear glass that serves as a display cover layer.” Spec. ¶
3. However, in order to hide the infrared proximity sensors from view by
user infrared ink may be used to allow infrared light to pass through while
remaining opaque at visible wavelengths. Spec. ¶ 3. According to the
specification, “infrared ink windows that are suitably opaque at visible
wavelengths . . . may scatter more light then desired at infrared wavelengths
[and] can make it difficult or impossible to achieve desired levels of sensor
performance.” Spec. ¶ 4.
Appellant’s disclosed invention seeks to address these problems by
providing “enhanced visible-light-blocking-and-infrared-light-transparent
window coatings to accommodate components such as sensors in an
electronic device.” Spec. ¶ 5.Claim 1 is reproduced below, and is illustrative
of the claimed subject matter:
1 An electronic device, comprising:
a housing;
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a display in the housing having an active area with an array
of pixels and having an inactive area without pixels, wherein the
display has a display cover layer and has an opaque masking
layer on the display cover layer in the inactive area;
at least one optical component; and
a window in the inactive area that is aligned with the at
least one optical component, wherein the window includes an
opening in the opaque masking layer and a coating in the
opening, wherein the coating includes a polymer containing
pigment, and wherein the polymer and pigment are configured to
block light at visible wavelengths while transmitting light at
near-infrared wavelengths and exhibiting a haze of less than 5%
at the near-infrared wavelengths.
Appeal Br. 15 (Claims Appendix).
REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Hellring US 9,057,835 B2 June 16, 2015
Weir US 2011/0220855 A1 Sept. 15, 2011
Jia US 2016/0054175 A1 Feb. 25, 2016
Powell US 2017/0068027 A1 Mar. 9, 2017
REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Powell and Hellring. Final Act. 2–3.
Claims 3–6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Powell, Hellring, and Weir. Final Act. 3–4.
Claims 7–12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Powell, Hellring, Weir, and Jia. Final Act. 4–5.

2 All citations herein to the references are to the first named inventor/author
only.
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Claims 13 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Jia, Powell, and Hellring. Final Act. 5–6.
Claims 14–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Jia, Powell, Hellring, and Weir. Final Act. 6–7.
ISSUES
First Issue: Has the Examiner erred in finding that Powell and
Hellring teach or suggest “wherein the coating includes a polymer
containing pigment,” as recited in claim 1?
Second Issue: Has the Examiner erred in combining the teachings of
Powell with those of Hellring?
Third Issue: Has the Examiner erred in finding Weir teaches or
suggests “wherein the pigment comprises aggregate particles formed from
nanoparticles,” as recited in claim 3?
Fourth Issue: Has the Examiner erred in finding Weir teaches or
suggests “nanoparticles having diameters of less than 20 nm,” as recited in
claim 5?
Fifth Issue: Has the Examiner erred in combining the teachings of
Jia, Powell, and Hellring in rejecting claims 13–20?
ANALYSIS
First Issue
In rejecting claim 1 as obvious, the Examiner finds the prior art
teaches the limitation “wherein the coating includes a polymer containing
pigment.” Final Act. 2–3 (citing Powell ¶ 72). The Examiner finds that
Powell’s use of Teikoku IRK-HF40908 infrared transmittable ink teaches a
coating that includes a polymer containing pigment. Because Powell only
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identifies the Teikoku ink, and does not specifically describe its
composition, the Examiner presents a Teikoku technical document which
describes characteristics of infrared transmittable ink, including a
recommendation of the use of pigment based infrared transmittable ink.
Final Act. 3; see also Ans. 4–5. The Examiner further finds that Hellring
also teaches the use of pigment-based ink. Final Act. 3 (citing Hellring col.
5, ll. 52 – col. 6, ll. 10).
Appellant argues the Examiner’s erred because Powell does not teach
the use of a pigment-based ink. Appeal Br. 7–8. Appellant asserts that
“Powell is directed toward using a ‘non-volume scattering dye-based
infrared transmissive/visible blocking ink’ (see [Powell] para. 40).” Appeal
Br. 7–8. Appellant further asserts that the Examiner’s reliance on the
Teikoku technical document is misplaced because the technical document
does not specifically reference IRK-HF40908 ink, and “merely mentions
that pigment-based IR transmittal ink exists.” Appeal Br. 8. According to
Appellant, “[w]hile it may be true the Teikoku generally ‘recommends’
pigment-based IR transmittal ink, this does not mean that Teikoku IRK-
HF40908 ink is necessarily pigment based.” Appeal Br. 8.
We are not persuaded of error.
We note that the Examiner also cites Hellring as teaching the use of
pigment-based ink. Appellant does not appear to contest this finding, and as
we discuss in the next issue below, only asserts that Hellring is not properly
combinable with Powell. Thus, even if we assume arguendo that Powell
fails to teach the use of a pigment-based ink, Appellant’s argument against
Powell separately from Hellring does not persuasively rebut the combination
made by the Examiner. One cannot show non-obviousness by attacking
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references individually, where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
In re Keller, 642 F.2d 413, 425–26 (CCPA 1981).
Specifically, Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner’s prima
facie case of obviousness. See In re Keller, 642 F.2d at 425 (“The test for
obviousness is not whether the . . . the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”) (citations omitted). This reasoning is applicable
here given that Appellant fails to rebut Hellring’s teachings.
In any case, regarding the Powell reference, we agree with the
Examiner that Teikoku recommends the use of pigment-based infrared ink.
As such, it seems appropriate that Teikoku would not recommend the use of
pigment-based infrared ink, and then sell infrared ink that is not pigment-
based. That is, in view of Teikoku’s recommendation, we find that one of
ordinary skill in the art would find it reasonable that Powell suggests an
infrared ink that is pigment-based.
Second Issue
As noted above, the Examiner rejects claim 1 as obvious over the
combination of Powell and Hellring. The Examiner finds that Powell is
deficient in that it “fails to specifically discuss haze ramifications or
requirements,” and in particular the limitation “the polymer and pigment . . .
exhibiting a haze of less than 5% at the mere-infrared wavelengths.” The
Examiner introduces Hellring, finding that it teaches a pigment-based
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infrared ink “exhibiting a haze of less than 5%.” Final Act. 3 (citing
Hellring col. 5, ll. 52 – col. 6, ll. 10). The Examiner concludes that “it
would have been obvious to one of ordinary skill in the art at the time of
invention to provide a reduced haze pigment as disclosed by Hellring in
order to reduce light scatter. Final Act. 3 (citing Hellring col. 1, ll. 46–62).
Appellant argues the Examiner has improperly combined Powell and
Hellring. Appeal Br. 8–9. Specifically, Appellant contends:
Hellring is directed to coatings for automobiles, aerospace
components, building components, or industrial components. As
a result of Hellring's concern about these components being
subject to intense wear and weathering, Hellring's coating uses a
configuration with multiple layers, pigments, and tints (see Col.
1, line 25 - Col. 2, line 14). In contrast, Powell teaches away
from the use of multilayer coatings. In particular, Powell
explicitly states that “layering often further increases surface
roughness, which further impacts vision system MTF,” (para.
0040). Because Powell teaches that a multilayer coating of the
type shown in Hellring should not be used, Hellring cannot be
combined with Powell under 35 U.S.C. § 103 as suggested in the
Office Action.
Appeal Br. 8–9. We disagree.
Appellant asserts that Powell’s acknowledgment of the impact of
layering teaches away from the proposed combination because Hellring
describes a multilayer configuration for applying its coating. However,
Powell also teaches that surface roughness may be addressed “by filling in
surface irregularities and height variations . . . with index-matching media
over a desired surface area.” Powell ¶ 41. Moreover, Powell does not
disparage or otherwise discredits the use of multiple layers, but rather notes
that certain advantages and certain disadvantages may be realized from their
use. Powell notes that “double-pass or multiple pass ink screening may be
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used to improve hiding by achieving more attenuation a visible light,” which
is advantageous in that it hides system components from the user. Powell ¶
40. At the same time, Powell also recognizes that the advantages provided
by layering also bring associated trade-offs, namely that “layering often
further increases surface roughness, which further impacts vision system
MTF (modulation transfer function).” Powell ¶ 40 (parenthetical added for
context).
The Federal Circuit has recognized when a proposed modification of a
reference may impede some of its functionality, a combination of references
is still proper. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) (“[A] given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
combine”). Here, incorporating the teachings of Hellring into Powell would
bring advantages regarding improved hiding, and disadvantages with respect
to surface roughness. Similar to Medichem, the proposed combination
would have simultaneous advantages and disadvantages, and a person of
ordinary skill in the art would have not been dissuaded from the
combination. Accordingly, we do not find Appellant’s arguments against
the combination of Hellring and Powell persuasive.
Third Issue
Appellant’s claim 3 recites “wherein the pigment comprises aggregate
particles formed from nanoparticles, wherein the aggregate particles each
have a diameter of 50-250 nm.” Appeal Br. 16 (Claims Appendix). In
rejecting claim 3 (which depends indirectly from claim 1), the Examiner
finds that Powell and Hellring “fail to disclose the pigment comprises
aggregate particles formed from nanoparticles, wherein the aggregate
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particles each have a diameter of 50-250 nm.” Final Act. 3. The Examiner
introduces Weir to address this deficiency:
However, it was known to one of ordinary skill in the art at the
time of invention to use nanoparticles in light blocking pigment.
For example, Weir teaches implementing nanoparticles with a
size of about 20 nm to 50 nm into light blocking pigment (para.
[0028] “nanoparticles have a typical average size of less than 100
nm, usually within the range of about 20 nm to 50 nm . . . the
coating composition of the present invention may be mixed with
other pigments which may be light blocking”).
Final Act. 3–4.
Appellant asserts error because “Weir fails to show or suggest
‘aggregate particles formed from nanoparticles’ at all, much less aggregate
particles that ‘each have a diameter of 50–250 nm,’ as recited in claim 3.”
Appeal Br. 10.
This issue turns on the meaning of “aggregate particles formed from
nanoparticles.” We interpret a disputed claim term based on its broadest
reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004).
In the Answer, the Examiner reasons that the Specification does not provide
a definition for aggregate particles, and offers that “the broadest reasonable
interpretation . . . of ‘aggregate’ includes simply ‘a collection’ or ‘group’ of
a particular thing.” Ans. 8 (citing Dictionary.com definition of aggregation
and aggregate).
Appellant challenges the Examiner’s interpretation, arguing that the
Specification defines the phrase in paragraph 46, where it states that “carbon
black pigment or other pigment 72 . . . is characterized by relatively small
aggregates and nanoparticles to help reduce light scattering.” Reply Br. 5
(also citing Spec. Fig. 9). Appellant asserts that “Weir fails to show or
suggest aggregate particles formed from nanoparticles as described in
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paragraph 46 of Applicant’s specification and shown in associated FIG. 9.”
Id. at 6.
We are not persuaded of error. Although Appellant argues the
Examiner’s proposed interpretation is flawed, Appellant does not offer a
specific definition of its own. The statement in the specification relied upon
by Appellant is not a definition, but merely describes “one suitable
arrangement” for an aggregate. Spec. ¶ 46. Nothing in Appellant’s
specification provides a specific definition of what an aggregate particle
might be, other than to differentiate between aggregates and particles. As
such, we discern no error in the Examiner’s reliance on a dictionary
definition to interpret the phrase. Applying that definition, we agree with
the Examiner that Weir teaches the claimed “aggregate particles formed
from nanoparticles.”
As correctly found by the Examiner, Weir teaches that nanoparticles
may be disbursed in an inorganic binder which binds the nanoparticles
together to form a connected structure. Weir ¶ 23; see also Ans. 8. Weir
further teaches that the nanoparticles forming the connected structure may
have a size anywhere from 20–50 nm. Weir ¶ 28; Ans. 8. Applying the
broadest reasonable interpretation of aggregate, which requires that an
aggregate particle be a collection or a group of particles, we agree with the
Examiner that a connected structure of a plurality of nanoparticles with a
size of 50 nm would result in an aggregate particle having a diameter of 50–
250 nm. As such, we agree that the combined teachings of Powell, Hellring,
and Weir render obvious Appellant’s claim 3.
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Fourth Issue
Claim 5, which depends from claim 3 via claim 4, recites the
additional limitation “wherein the nanoparticles have diameters of less than
20 nm.” The Examiner finds this limitation taught or suggested by Weir.
Final Act. 4. Appellant argues the Examiner erred because “Weir fails to
disclose ‘aggregate particles formed from nanoparticles,’ at all, much less
aggregate particles formed from ‘nanoparticles having diameters of less than
20 nm,’ as recited in claim 5.” Appeal Br. 11. We disagree.
As discussed above in connection with claim 3, Weir teaches the
recited “aggregate particles formed from nanoparticles.” With respect to
Appellant’s assertion that Weir does not teach “diameters of less than 20
nm,” we note that the nanoparticles are described in Weir are described as
being “usually within the range of about 20 nm to 50 nm.” Weir ¶ 28.
Because Weir uses the word “about,” the stated 20 nm diameter is not a
floor, but merely an approximation of a lower end of the typical range. As
such, Weir teaches that nanoparticles may be sized smaller than 20 nm as
recited in claim 5.

Remaining Claims
Appellant presents no separate arguments for patentability of any
other claims. Accordingly, we sustain the Examiner’s rejections of these
claims for the reasons stated with respect to the independent claims from
which they depend. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject the claims.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 103 Powell, Hellring 1, 2
3–6 103 Powell, Hellring,
Weir
3–6
7–12 103 Powell, Hellring,
Weir, Jia
7–12
13, 19 103 Jia, Powell,
Hellring
13, 19
14–18, 20 103 Jia, Powell,
Hellring, Weir
14–18, 20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED