Apple Inc.

Patent Trials and Appeals Board

Sep 17, 2021

2021004945 (P.T.A.B. Sep. 17, 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.
15/961,016 04/24/2018 Paul X. Wang P34132US1 1071
65015 7590 09/17/2021
Treyz Law Group
6501 E. Greenway Pkwy
#103-621
Scottsdale, AZ 85254
EXAMINER
PHAM LU, NGAN T
ART UNIT PAPER NUMBER
2691
NOTIFICATION DATE DELIVERY MODE
09/17/2021 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 PAUL X. WANG, AIDAN N. ZIMMERMAN,
MICHAEL Y. CHEUNG, and MING YU
___________

Appeal 2021-004945
Application 15/961,016
Technology Center 2600
____________

Before TREVOR M. JEFFERSON, JAMES B. ARPIN, and
STACEY G. WHITE, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner’s final
rejection of claims 1–15, 17, 18, 20, 21, and 23, all of the pending claims.
Final Act. 2.2 Claims 16, 19, and 22 are canceled. Appeal Br. 18–19
(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Apple Inc. Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
April 26, 2021) and Reply Brief (“Reply Br.,” filed August 13, 2021); the
Final Office Action (“Final Act.,” mailed November 27, 2020) and the
Examiner’s Answer (“Ans.,” mailed June 17, 2021); and the Specification
(“Spec.,” filed April 24, 2018). Rather than repeat the Examiner’s findings
and Appellant’s contentions in their entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed equipment, apparatus, and keyboards “relate[]
generally to electronic equipment, and, more particularly, to electronic
equipment with input devices such as keyboards.” Spec. ¶ 1. Appellant’s
Figure 22, depicting a key member with a coating layer and trim structure, is
reproduced below.

Figure 22 depicts key member 74 having a rectangular cross-section and an
upper and lower surface. Coating layer 100 formed from an opaque material
covers the sides and lower surface of member 74. Id. ¶ 69. On the bottom
surface of key member 74, coating layer 100 has opening 94, for example, a
symbol-shaped opening. Id. Coating layer 90 (i.e., a trim structure) covers
coating layer 100 on the sides of member 74. “Coating layer 90 may be a
metal layer (e.g., a metal layer deposited by physical vapor deposition, a
press-fit metal ring, a metal foil that has been attached to member 74 using
adhesive, and/or other metal structure).” Id.
As noted above, claims 1–15, 17, 18, 20, 21, and 23 are pending.
Claims 1, 15, and 18 are independent. Appeal Br. 14 (claim 1), 17
(claim 15), 18 (Claim 18) (Claims App.). Claims 2–14 depend directly or
indirectly from claim 1; claim 17 depends directly from claim 15; and
claims 20, 21, and 23 depend directly or indirectly from claim 18. Id. at 14–
19.
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Claim 1, reproduced below with a disputed limitation emphasized, is
representative.
1. Electrical equipment, comprising:
an array of keys each of which includes a key press sensor
and a key member; and
a layer of material having a first surface facing the key
members and having an opposing second surface facing the key
press sensors; and
light sources that provide backlight illumination for the
keys, wherein each key member includes a coating layer with a
symbol-shaped opening and each key member is surrounded by
a metal trim that forms an exterior surface of the key member.
Id. at 14 (emphasis added). Each of claims 15 and 18 recites a limitation
corresponding to the disputed limitation of claim 1. Id. at 17, 18.
REFERENCES AND REJECTIONS
The Examiner relies upon the following references:
Name3 Reference Issued/Published Filed
Hwang US 7,414,213 B2 Aug. 19, 2008 Aug. 8, 2007
Yeh US 2008/0034577 A1 Feb. 14, 2008 Mar. 29, 2007
Wu US 2011/0056817 A1 Mar. 10, 2011 Apr. 1, 2010
Hu US 2011/0182643 A1 July 28, 2011 Jan. 27, 2010
Peterson US 2012/0092263 A1 Apr. 19, 2012 Dec. 22, 2011
Mahowald US 2012/0154289 A1 June 21, 2012 Dec. 20, 2010
Leong US 2015/0090571 A1 Apr. 2, 2015 Sept. 30, 2014
Hao US 2018/0366284 Al Dec. 20, 2018 Dec. 2, 2016

3 The reference citations are to the first named inventor only.
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The Examiner rejects:
a. claims 1, 8, and 18 under 35 U.S.C. § 103 as obvious over the
combined teachings of Peterson, Hu, and Wu (Final Act. 5–8);
b. claims 2–5 under 35 U.S.C. § 103 as obvious over the combined
teachings of Peterson, Hu, Wu, and Hwang (id. at 9–12);
c. claim 6 under 35 U.S.C. § 103 as obvious over the combined
teachings of Peterson, Hu, Wu, Hwang, and Mahowald (id. at 12–13);
d. claim 7 under 35 U.S.C. § 103 as obvious over the combined
teachings of Peterson, Hu, Wu, Hwang, and Leong (id. at 13–14);
e. claims 9–11, 14, 20 under 35 U.S.C. § 103 as obvious over the
combined teachings of Peterson, Hu, Wu, and Leong (id. at 14–18);
f. claims 12 and 13 under 35 U.S.C. § 103 as obvious over the combined
teachings of Peterson, Hu, Wu, and Hao (id. at 18–19);
g. claims 15 and 17 under 35 U.S.C. § 103 as obvious over the combined
teachings of Peterson, Wu, and Hwang (id. at 19–21); and
h. claims 21 and 23 under 35 U.S.C. § 103 as obvious over the combined
teachings of Peterson, Hu, Wu, Leong, and Yeh (id. at 21–24). See
Appeal Br. 5–6.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Appellant and the Examiner focus their contentions and
findings, respectively, on claims 1, 15, 18, and 23, so we do as well. See
Appeal Br. 6, 9–12; Ans. 3, 6. Because we determine that reversal of the
rejection of independent claim 1, as well as the rejections of independent
claims 15 and 18, is dispositive, except for our ultimate decision, we do not
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discuss the merits of the rejections of claims 2–14, 17, 20, 21, and 23 further
herein. We address the rejections below.
ANALYSIS
A. Obviousness Over Peterson, Hu, and Wu
As noted above, the Examiner rejects independent claim 1 as obvious
over the combined teachings of Peterson, Hu, and Wu. Final Act. 5–6. For
the reasons given below, we do not sustain the Examiner’s obviousness
rejection of claim 1.
The Examiner finds that Peterson teaches or suggests the majority of
the limitations of claim 1. Id. at 5. The Examiner finds, however, that
“Peterson does not explicitly teach wherein each key member includes a
coating layer with a symbol-shaped opening.” Id. Nevertheless, the
Examiner finds Hu teaches or suggests this missing limitation. In particular,
the Examiner finds, “Hu (Fig. 2B-2C) teaches each key member (210)
includes a coating layer (213) with a symbol-shaped opening (i.e. symbol
area hb2; see [0025 and 0026]).” Id. Further, the Examiner finds,
it would have been obvious for one ordinary skill in the art at the
time of the filing to modify the key member of Peterson with
Hu’s feature of wherein each key member includes a coating
layer with a symbol-shaped opening so that the keycaps have
better design sense to attract consumers’ attention and improve
market competitiveness (see [0005] and [0026] of Hu).
Id. at 6.
Appellant does not challenge the Examiner’s findings regarding the
combined teachings of Peterson and Hu. See Appeal Br. 6–9.
The Examiner further finds, “Peterson and Hu do not teach wherein
each key member is surrounded by a metal trim that forms an exterior
surface of the key member.” Final Act. 6. In particular, the Examiner finds,
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“Wu (Fig. 1) teaches wherein each key member is surrounded by a metal
trim that forms an exterior surface of the key member (keycap 112 is
surrounded by metal oxide film 20 as shown in Fig. 1, par [0012] and
[0014]).” Id. Further, the Examiner finds,
it would have been obvious for one ordinary skill in the art at the
time of the filing to modify the key member of Peterson and Hu
with Wu’s feature of wherein each key member is surrounded by
a metal trim that forms an exterior surface of the key member,
and therefore protecting the body (see [0011] of Wu).
Id.
Appellant contends the Examiner errs in finding the combined
teachings of Peterson and Wu teach or suggest the disputed limitation of
independent claim 1. Appeal Br. 6–9; Reply Br. 2–4. For the reasons given
below, we agree with Appellant.
Referring to Peterson’s Figure 21, Peterson discloses, “The example
assembly 2100 includes a translucent and/or transparent keycap 2102.”
Peterson ¶ 107. Further, Peterson discloses:
Unlike example assembly 900 discussed above, this
example assembly 2100 includes a keyboard backlighting
system, which his represented in FIG. 21 by lighting elements
2112 and 2114 (i.e., backlighting elements). Both lighting
elements are located inside the interior of the keyboard chassis
and positioned under the keycaps (like keycap 2102).
Id. ¶ 109; see also id. ¶110 (such transparent or translucent structures may
be plastic or glass).
Wu discloses that keycaps typically were made from plastic, but Wu’s
keycaps are made from metal and anodized with a film of metal oxide. Wu
¶¶ 12, 14; see also id. ¶¶ 4 (“However, keycaps of the keyboard, typically
have a certain size and height and are made of plastic, therefore the
thickness of the keyboard cannot be decreased any further.”) (emphases
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added), 13 (“Comparing with a traditional keycap made of plastic, the
keycap 112 is thinner. . . . Because the keycap 112 is made of metal, the
keycap 112 has a pleasant appearance and is resilient and comfortable.”
(emphasis added)). Generally, anodizing is a process usable for applying a
metal oxide film to a metal substrate, not to plastic or glass. Appeal Br. 7;
see Ans. 4 (“First of all, the process of anodizing of Wu to form a metal
oxide film (20) is using aluminum or other metal alloy. This metal oxide
film (20) is coated to the body (10) or the keycap (112).”).
The Examiner finds that, despite Wu’s disclosure of anodizing a metal
oxide film on a metal keycap and Peterson’s teaching of transparent or
translucent (e.g., plastic or glass) keycaps,
applicant’s key member (74) is transparent plastic key member
(see [0065] of the specification) which is similar to the
transparent keycap of Peterson; thus if the transparent plastic
keycap (74) of applicant’s device can have metal trim coated
surrounding the key member (see [0068] and [0069] of the
specification), then it would have been obvious to one of ordinary
skill in the art the metal oxide film (20) of Wu can be coated on
the transparent keycap of Peterson so as to protect the body of
the keycap.
Ans. 4 (emphasis added); see Final Act. 3–4 (similarly relying on the
Specification to provide a reason for combining Peterson’s and Wu’s
teachings). Thus, the Examiner relies on the Specification’s disclosure to
combine Peterson’s teaching of a translucent or transparent keycap made, for
example, from plastic or glass with Wu’s teaching of a metal keycap with an
anodized metal oxide coating.
Appellant contends the Examiner relies on impermissible hindsight to
combine the teachings of Peterson and Wu. Appeal Br. 8; Reply Br. 4. In
particular, Appellant contends,
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the sole motivation to combine [Wu]4 and Peterson comes from
the Applicant’s specification and relies upon improper hindsight
reasoning. No reference has been shown that shows or suggests
an external metal trim on an illuminated key. This positively
claimed feature is only gleaned from applicant’s disclosure. The
rejection of claim 1 is therefore based on impermissible hindsight
reasoning and should be withdrawn (see MPEP §2145(X)).
Appeal Br. 8 (emphasis added). We agree with Appellant.
As our reviewing court explains,
Our case law makes clear that the best defense against the subtle
but powerful attraction of a hindsight-based obviousness analysis
is rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references.
Combining prior art references without evidence of such a
suggestion, teaching, or motivation simply takes the inventor’s
disclosure as a blueprint for piecing together the prior art to
defeat patentability—the essence of hindsight.
In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999) (emphasis added;
citations omitted)), abrogated on other grounds, In re Gartside, 203 F.3d
1305, 1316 (Fed. Cir. 2000). In response to Appellant’s contention that the
Examiner relies on impermissible hindsight, the Examiner asserts:
In response to [the] third argument that the examiner’s
conclusion of obviousness is based upon improper hindsight
reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
claimed invention was filed, and does not include knowledge
gleaned only from the applicant’s disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392,
170 USPQ 209 (CCPA 1971). . . . Furthermore, the motivation
to modify the key member of Peterson and Hu with Wu’s feature

4 The Appeal Brief incorrectly refers to “the sole motivation to combine Hu
and Peterson,” instead of Wu and Peterson. Appeal Br. 8 (emphasis added).
However, the preceding sentence in the Appeal Brief makes clear this is a
harmless, typographical error.
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wherein each key member is surrounded by a metal trim that
forms an exterior surface of the key member, is to protect the
body of the key member as suggested by Wu (see page 6 of the
Final Rejection).
Ans. 5 (emphases added).
Nevertheless, here, the Examiner relies on the Specification –
primarily if not solely – to provide the reason why and how a person of
ordinary skill in the relevant art would have combined the specific teachings
of Peterson and Wu. More importantly, the Examiner solely relies on the
Specification as evidence supporting an expectation of success in combining
the teachings of Peterson and Wu to achieve the disputed limitation of
claim 1. See Reply Br. 4 (“Faced with the Peterson and Wu disclosures
without the benefit of hindsight, one of ordinary skill would not consider
forming a metal oxide, which Wu discloses is formed from anodizing a
metal keycap, on Peterson’s non-metal keycap.”). In other words, there is
no evidence in the record that one of ordinary skill in the relevant art would
have understood, without undue experimentation, how to apply the teaching
of anodizing metal to a non-metallic keycap. Thus, we are persuaded the
Examiner relies on impermissible hindsight to combine the teachings of
Peterson and Hu with those of Wu to achieve the equipment of claim 1.
For the reasons given above, we agree with Appellant that the
Examiner errs in finding the combined teachings of Peterson and Wu teach
or suggest the disputed limitation of independent claim 1, as well as that of
independent claim 18. Because the identified deficiencies in the Examiner’s
rejection of claim 1 are dispositive, we need not reach Appellant’s other
challenges to the rejection of claim 1. Consequently, we are persuaded that
the Examiner errs in rejecting independent claims 1 and 18, and we do not
sustain the obviousness rejection of those claims. Moreover, because the
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Examiner does not find that any of the additional references relied upon to
reject claims dependent from claim 1 or 18 teach or suggest the disputed
limitation, we also do not sustain the obviousness rejections of claims 2–14,
20, 21, or 23.
B. Obviousness Over Peterson, Wu, and Hwang
As noted above, the Examiner rejects claims 15 and 17 as obvious
over the combined teachings of Peterson, Wu, and Hwang. Final Act. 19–
21. Appellant challenges the obviousness rejection of independent claim 15
for substantially the same reasons as claim 1. Appeal Br. 6 (“Appellant
argues that Wu’s metal oxide layer is not equivalent to a metal. Wu’s metal
oxide layer could not be formed on Peterson’s transparent plastic keycap.”);
Reply Br. 5; see Final Act. 19–20. Moreover, the Examiner does not find
Hwang teaches or suggests the disputed limitation, allegedly taught by the
combination of Peterson and Wu. Final Act. 21. Thus, we also are
persuaded that the Examiner errs in rejecting claim 15 for substantially the
same reasons set forth above with respect to claim 1. Therefore, we do not
sustain the obviousness rejection of claim 15.
Claim 17 depends directly from independent claim 15. Appeal Br. 18
(Claims App.). Because we are persuaded the Examiner errs with respect to
the obviousness rejection of claim 15, we also do not sustain the obviousness
rejection of claim 17.
DECISION
1. The Examiner errs in rejecting:
a. claims 1, 8, and 18 as obvious over the combined teachings of
Peterson, Hu, and Wu;
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b. claims 2–5 as obvious over the combined teachings of Peterson,
Hu, Wu, and Hwang;
c. claim 6 as obvious over the combined teachings of Peterson,
Hu, Wu, Hwang, and Mahowald;
d. claim 7 as obvious over the combined teachings of Peterson,
Hu, Wu, Hwang, and Leong;
e. claims 9–11, 14, 20 as obvious over the combined teachings of
Peterson, Hu, Wu, and Leong;
f. claims 12 and 13 as obvious over the combined teachings of
Peterson, Hu, Wu, and Hao;
g. claims 15 and 17 as obvious over the combined teachings of
Peterson, Wu, and Hwang; and
h. claims 21 and 23 as obvious over the combined teachings of
Peterson, Hu, Wu, Leong, and Yeh.
2. Thus, on this record, claims 1–15, 17, 18, 20, 21, and 23 are not
unpatentable.
CONCLUSION
For the above reasons, we reverse the Examiner’s decision rejecting
claims 1–15, 17, 18, 20, 21, and 23.
In summary:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1, 8, 18 103 Peterson, Hu, Wu

1, 8, 18
2–5 103 Peterson, Hu, Wu,
Hwang
2–5
6 103 Peterson, Hu, Wu,
Hwang, Mahowald
6
7 103 Peterson, Hu, Wu,
Hwang, Leong
7
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Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
9–11, 14,
20
103 Peterson, Hu, Wu,
Leong
9–11,14,
20
12, 13 103 Peterson, Hu, Wu,
Hao
12, 13
15, 17 103 Peterson, Wu,
Hwang
15, 17
21, 23 103 Peterson, Hu, Wu,
Leong, Yeh
21, 23
Overall
Outcome
1–15, 17,
18, 20, 21,
23

REVERSED